THE INTERNATIONAL PATENT SYSTEM
– Dr. Vinod Patidar
Principal, Indore Institute of Law
The international patent system evolved and developed to govern relations between states and deal with the difficulties arising from the territoriality of patents. The system includes international legal instruments as well as organizations entrusted with the administration of these instruments. The international patent legal regime consists of multilateral agreements, international organizations, regional conventions, treaties or protocols as well as bilateral agreements. The international patent institutional or administrative framework mainly involves organizations established to administer the multilateral patent agreements. This includes the World Intellectual Property Organization (WIPO), the World Trade Organization (WTO) and Regional patent organizations such as the European Patent Office (EPO), the African Intellectual Property Organization (OAPI) and the African Industrial Property Organization (ARIPO). The purpose of this paper is not to deal with each of the constituent elements of the international patent system but to examine existing major multilateral patent agreements concluded at the international level that may have an impact on the developing countries.
Rationale and Nature of The International Patent System
The reasons behind the conclusion of international patent agreements lie in the nature of inventions in the sense that inventions protected by patents do not know borders. However, patent protection is territorial in nature. As a result, various difficulties arise that may defeat the purpose of patents and affect the relation between states. If an invention is not protected under national law then it will constitute a public domain and can be freely used in the country concerned. Seeking patent protection in a foreign country could be difficult for a number of reasons such as possible discriminatory treatment, the variation between national laws, the problem of cost, time and distance relating to the filing and processing of patent applications etc. In order to avoid unwanted results that may arise in such circumstances and to mitigate the difficulties in securing a patent in a foreign country, international agreements were concluded.
The multilateral treaties concluded in the field of patents and are effective to-date include the 1883 Paris Convention on Industrial Property; the 1970 Patent Cooperation Treaty (PCT); the 1971 Strasbourg Agreement concerning International Patent Classification; the 1979 Budapest Treaty on the Deposit of Micro-organism and the 1994 Agreement on Trade Related Aspects of Intellectual Property (TRIPS). These international undertakings may be classified as substantive and procedural. International agreements that deal with substantive issues include the Paris Industrial Property Convention and the TRIPS Agreement. The PCT and the Strasbourg Agreement intend to harmonize formal standards and procedures.
In spite of the fact that the above agreements try to harmonize national patent systems by setting standards and common requirements, patents are still governed by national laws and where appropriate by regional agreements. There is no international patent law that provides for a world patent. The international patent agreements are not meant to replace national patent regimes, but facilitate the protection of the interests of nationals or residents of a member state in another member state.
The international agreements that deal with substantive issues such as the Paris Convention and the TRIPS Agreement merely set the minimum requirements. Countries that desire to go beyond the minimum standards are free to do so, as far as the step would not defeat the underlying objectives of the international agreements. There are, thus, variations among national laws. That is why the effort to harmonize national laws is going on. The discussion in this Chapter is limited to the existing international patent legal regimes. Furthermore, it is limited to briefly explaining the main agreements that deal with procedural and substantive issues. As a result, the Strasbourg Agreement and the Budapest Treaty are not considered for the purpose of this paper.
Major Multilateral Patent Agreements
The Paris Industrial Property Convention
The Paris Convention, that was concluded in 1883 and amended in 1900, 1911, 1925, 1934, 1956, 1967 and 1993, is considered as the first multilateral agreement in the field of patents. From historical perspective, the 19th century, among other things, was characterized by the unprecedented expansion of trade across national boundaries. Thus, this new development required close international cooperation among nations with respect to various economic matters including patents. To be sure, the patent system is one of the factors that tie the economic and political sub-systems of nations to each other. Moreover, it was during this period than ever before that the centrality of patent to inventive activities was recognized. At the same time two developments took place, which tend to oppose each other (Davis, 1989). On the one hand, there was a growing demand, particularly from inventors and manufacturers for strong patent protection. On the other hand, advocates of free trade, particularly trade associations came on the scene to challenge the patent system.
By 1873, a propitious condition was created in favour of patent proponents. The international exhibition held in Austria in 1873, was considered as an important landmark towards the establishment of an international mechanism for the protection of intellectual property. It was the reluctance of the manufacturers, because of the fear that their ideas would be stolen, to participate in the Vienna Exhibition that eventually led to the conclusion of the Paris Convention on the protection of industrial property in 1883.
The Convention could be described as the institutionalization of the patent system at the international level for the first time and signaled a more global concern for the protection of the intangible assets. Although, only a few countries signed the Convention, it laid down the fundamental principles of international patent protection. The basic principles and rules as stipulated in the Convention include the principle of national treatment, the right of priority and common rules.
The first signatories of the Paris Convention were the major advanced countries including Brazil and Tunisia from the developing countries. However, after the Second World War, a number of developing countries that enacted patent laws or inherited from their colonial masters joined the Convention. The number of developing countries joining the Convention has increased particularly in the 1990s and the reason is attributable to the TRIPS Agreement.
On 15 January 2002, 164 countries, of which the majorities are developing countries, are party to the Paris Convention. Some argue that the Paris Convention, which was first signed and concluded mainly by developed countries to reflect their conditions and to cater their needs, is inappropriate to and disadvantageous to the interests of developing countries. In this regard, it has been noted that:
“Developing countries, such as Kenya, which have acceded to the Paris Convention, have joined a regime of obligations that was not originally designed for their present condition. With the protection provided for by the Convention, the new states have in effect committed themselves to give a one sided advantage to foreigners who operate from their land, as these have a much larger technological base than their own nationals. Under these obligations the developing countries adhering to the Paris Convention have restricted their own direction to make such policy or legislation, as they deem best to enhance local priorities regarding inventions and patenting. Since the commitments already assumed by these countries are binding and ought, in principle to be compiled with, the only respectable open course is for the countries to seek appropriate international negotiations leading to adjustments in the world regimes of patents. Indeed the developing countries have been calling for revisions in the Paris Conventions but no such changes have been made”
It has, however, been argued that the Paris Convention gives rooms to accommodate the needs and interests of developing countries regarding the requirements and standards for patents. The Convention is said to be weak compared to the patent requirements and standards in the developed economies. Moreover, it allows wide discretion to national laws as far as compulsory license, patentability, and setting opposition procedures are concerned.
The Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty was concluded in 1970, amended in 1979 and further modified in 1984. The PCT was adopted mainly to deal with the problem of filing several applications in several countries within the period of time prescribed by the Paris Industrial Property Convention and overcome the duplication of effort by national patent offices. This is made possible by streamlining pre-patent granting procedures and requirements such as filing, search and examination. It provides for filing a single application, performing international prior art search and international publication. The Treaty also provides for international preliminary examination that is made optional to member countries.
Membership of the Treaty, in particular those of the developing countries, has increased in the 1990s mainly due to the benefits the system gives to applicants, the patent offices as well as countries. Nationals or residents of member states, among other things, have the opportunity to file international application with their national patent offices and receive international prior art search report from an international searching authority to decide to continue or not with their application. This would save considerable cost for the applicant. The availability of prior art search, international publication and examination facility would lessen the burden of national offices of developing countries, which often lack the requisite qualified manpower, information and documentation as well as financial resource the tasks require. The PCT aims at assisting the economic development of the developing countries by providing easily accessible information on the availability of technological solutions applicable to their special needs as well as build their capacity through the technical assistance that may be obtained under the treaty.
PCT is considered as the most advanced mechanism in international cooperation in the field of patents since the conclusion of the Paris Convention. The PCT does not grant patent, but facilitates obtaining national patents in several countries. The patent granting procedure under the PCT system consists of two phases: an international phase and a national phase. The international phase deals with a centralized filing and searching procedure and optional international preliminary examination. The national and where appropriate the regional, phase is concerned with the final patent granting procedure by the national and regional industrial property offices. The filing of only one international application has the same effect as if separate national or regional applications have been filed in all the countries which the applicant designates in his international application.
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) The TRIPS Agreement that forms part of the WTO regime was signed on April 15, 1994 in Marrakech, Morocco, and came in to effect on January 1, 1995. Before the TRIPS Agreement, intellectual property was not part of a multilateral trade agreement.
When the developed countries led mainly by the USA and Japan tried to bring the intellectual property (IP) protection issues, during the Uruguay Round, under the frame work of the General Agreement on Tariffs and Trade (GATT), developing countries strongly opposed the idea saying that GATT is not the appropriate forum. However, the opposition was ignored and the effort to force some of the developing countries to revise their IP system and provide with stronger protection was successful before the formal linkage of intellectual property protection to international trade.
The role of patents in technological progress and economic development is well recognized. Almost all developing countries have national patent systems. The majority of developing countries are also party to the major multilateral agreements concluded at the international level. The reason for the existence of the national patent system in developing countries as well as their membership to international patent system lies in the belief that such a system contributes to national socio-economic development. The experience of some developing countries shows how useful the patent system is in the creation of wealth. In others, where the impact is not big, the reason could be attributed to the low level of importance given to patents as well as other factors such as weak indigenous technological base, inadequate R&D funding and facility. In this regard, it may be plausible to note that the patent system by itself does not ensure success in technology development. In order to benefit from the patent system national technological capacity is of critical importance.
The belief and the role that patents may play in wealth creation are shared among writers. The patent debate now is not the same like the debate in the nineteenth century between the proponents and opponents of patents. The debate now is on whether strong or weak patent helps to stimulate inventive and innovative activity, encourage transfer of technology and FDI.
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