Best Practices for Utilizing Regional and International Patent Application Systems

An inventor has several options for seeking patent protection internationally in a variety of jurisdictions. Industrial property rights, including patents, are essentially territorial and subject to a certain duration, normally 20 years from the date of application filing. This means that to obtain a patent protection for an invention, the inventor must successfully obtain patent application approval in each country in which protection is sought. In order to streamline and facilitate this process, several parts of the world have instituted Regional Patent Offices in which inventors may seek patent protection. In addition to the United States Patent and Trademark Office (USPTO), other offices include the European Patent Organization (EPO), Eurasian Patent Organization (EAPO), Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC Patent office), African Intellectual Property Organization (OAPI) (The Bangui Agreement), and the African Regional Intellectual Property Organization (ARIPO) (The Harare Protocol).[1] Other Regional Patent Agreements include European Union Legislation and Decision 486 of the Andean Community.

Image 1: Gallery of the Louvre. 1831-1833. Samuel F.B. Morse (April 27, 1791 – April 2, 1872). Artist and Inventor. Public Domain. Morse worked concurrently on Gallery of the Louvre and his telegraph and Morse Code inventions.

The European Patent Organization (EPO) was established in 1973 and consists of 39 contractual nation-states. The EPO affords patent protection to up to 44 countries as part of the European Patent Organisation.[2] [3] [4]  The EPO serves as a Supplementary International Searching Authority (SISA), International Searching Authority (ISA), an International Preliminary Examining Authority (IPEA), and a receiving office for patent applications internationally.[5]  Supplementary searches as per the SISA help obviate the possibilities that the invention for which the patent is being sought duplicates prior art.[6]  Regional prior art searches can aid in contextualizing and diversifying searches – even including prior art searches in foreign languages – for prior art to increase the likelihood that duplications or similarities are discovered.[7]  The Eurasian Patent Organization (EAPO) operates under the auspices of the 1994 Eurasian Patent Convention. Eight countries, including the Russian Federation and the Eurasian Patent Office (EPO) are contractual parties to the Eurasian Patent Convention.[8]  The EAPO processes, examines, conducts regional and international patent searches, maintains the Eurasian Patent and Information System (EAPATIS), and publishes information on patent applications.[9]

The Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC Patent office) establishes patentability for inventions, certifying that they are novel, innovative (non-obvious to a person having ordinary skill in the art (PHOSITA)), or useful for industrial or commercial applications.[10]  Otherwise, the GCC Patent office performs duties similar the duties of the USPTO, EPO, and the EAPO. African nation-state members of the African Intellectual Property Organization (OAPI) (The Bangui Agreement) agree to abide by the terms of the Patent Cooperation Treaty (PCT).[11] Inventors in countries who abide by the Bangui Agreement eventually receive OAPI patents. The African Regional Intellectual Property Organization (ARIPO) (The Harare Protocol) also agree to abide by the terms of the Patent Cooperation Treaty (PCT). Decision 486 made it possible for inventors from certain South American countries, including Bolivia, Colombia, Ecuador, and Peru, to obtain patents.[12]

Image 2: Communication via Morse Code facilitated and expedited international correspondence. Patent number 1,647 for Telegraph Signs. Samuel F.B. Morse. June 20, 1840. United States Patent and Trademark Office. Public Domain.

There is currently no such mechanism through which one may obtain worldwide intellectual property or patent protection for an invention.[13]  Patent protection is territorial, meaning that individual inventors, companies, or other entities must file for patents in different countries, regions, or areas of origin. However, under the Patent Cooperation Treaty, inventors may file for patents in 153 different countries.[14] The Patent Cooperation Treaty is not an international patent application. Yet, contractual parties to the Patent Cooperation Treaty typically are contractual parties to the Paris Convention, as well. Thus, nations party to the Patent Cooperation Treaty abide by provisions of the Paris Convention.

Articles 2 and 3 of the Paris Convention for the Protection of Industrial Property (entered into force in 1884) ensure reciprocal intellectual property protections amongst nation-states through national treatment and priority right. National treatment ensures that contractual nation-states must offer at minimum the same patent protections it would offer to its citizens or nationals as it would offer to foreign entities. Time-limited priority right ensures that inventors who reside in or are naturals of countries that are contractual parties to the Patent Cooperation Treaty have adequate time to ensure patent protection for their inventions in that the effective date of filing is the filing date of the first patent application.[15]

Image 3: Morse Code. Public Domain. Online: https://www.publicdomainpictures.net/en/view-image.php?image=35529&picture=morse.

Incomplete harmonization of national laws with regard to patent processes across the world is a likely reason that an international patent registration system does not exist. Currently, several member states are working to establish a unitary patent system within the European Union. The European Union attempted harmonization with Directive 98/44/EC, which was an early attempt to harmonize patents dealing with human genetics and other forms of biotechnology. Regulations (EU) No. 1257/2012 and No. 1260/2012 of the European Parliament and of the Council deal with provisions for unitary patents with a goal of harmonization of patent laws – along with a Unified Patent Court. Advantages of a Unified Patent Court would be to ensure fairness and equity in patent application decisions, consistency and cohesion within the European Union with regard to approval of patent applications, and efficiency of the market economy with regard to innovation.[16]  So far, the goals of the unitary patents have yet to be realized and the Unified Patent Court has yet to be established. A Substantive Patent Law Treaty (SPLT) was proposed in the Standing Committee on the Law of Patents (SCP) within the World Intellectual Property Organization.[17] 

Currently within the World Intellectual Property Organization, there is a working group that is dealing with issues concerning the harmonization of patents.[3] There is also a Trilateral Harmonization Working Group consisting of the European Patent Office (EPO), the Japan Patent Office (JPO), and the United States Patent and Trademark Office (USPTO) that is working on patent harmonization.[18] Again, as with unitary patents and a Unitary Patent Court in the European Union, there is still no established international patent registration system.

References

[1] Examination by a Regional Patent Office. International Worksharing and Collaboration: Search and Examination of Patents. World Intellectual Property Organization. Online: https://www.wipo.int/patents/en/topics/worksharing/regional-patentoffices.html.

[2] The European Patent Organization (EPO). European Patent Convention (16th edition) (Authentic text). 13 December 2007. World Intellectual Property Organization. Online:  https://wipolex.wipo.int/en/text/312166.

[3] The EPO at a glance. Online: https://www.epo.org/about-us/at-a-glance.html.

[4] European Patent Organization (EPO). Online: https://www.epo.org/about-us/governance.html.

[5] PCT Newsletter No. 04/2010, “European Patent Office to Offer Supplementary International Search”; “Notification under PCT Rule 90.4(d) and 90.5(c) (European Patent Office).” Online: https://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_04.pdf.

[6] Chapter 8: Supplementary International Search. World Intellectual Property Organization. Online:  https://www.wipo.int/pct/en/guide/ip08.html.

[7] Chapter 8: Supplementary International Search. World Intellectual Property Organization. Online:  https://www.wipo.int/pct/en/guide/ip08.html.

[8] States Party to the Convention. Eurasian Patent Organization (EAPO). Online:  https://www.eapo.org/en/members.html.

[9] Eurasian Patent Office. Eurasian Patent Organization (EAPO). Online: https://www.eapo.org/en/ea.html.

[10] Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC) – GC. World Intellectual Property Organization. Online: https://www.wipo.int/export/sites/www/patent_register_portal/en/docs/gcc.pdf.

[11] African Intellectual Property Organization (OAPI). Online: https://www.wipo.int/export/sites/www/patent_register_portal/en/docs/oapi.pdf.

[12] Decision 486-Common Provisions on Industrial Property (of September 14, 2000) https://wipolex.wipo.int/en/text/223717.

[13] Frequently Asked Questions. World Intellectual Property Organization. Online: https://www.wipo.int/patents/en/faq_patents.html.

[14] The PCT Now Has 153 Contracting States. World Intellectual Property Organization. Online: https://www.wipo.int/pct/en/pct_contracting_states.html.

[15] Article 4. Paris Convention for the Protection of Industrial Property of 1883.

[16] Agreement on a Unified Patent Court. Official Journal EPO. 05/2013. http://archive.epo.org/epo/pubs/oj013/05_13/05_2873.pdf.

[17] Patent Law Harmonization. Standing Committee on Patents and the Trilateral “Reduced Package.” USPTO. Published Aug 11, 2018. 01:49 AM EDT. Last Modified: Oct 31, 2019 10:17 AM EDT.

[18] Id.

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