HARMONISATION OF PATENT LAWS
-S.Jagathis, IP Dome
The Deputy Director of the US Patent and Trademark Office described the granting of compulsory license for Bayer’s Sorafenib Tosylate to Natco as the “most egregious” example of anti-TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights) behaviour. The denial of patent grant to the Novartis too brought severe criticism from innovator sector of MNC pharmaceutical industry. The call is for India to ‘Harmonise’ her patent laws and her interpretation of the TRIPs obligations with that of mature IP economies, primarily, the US and the EU.
It was on this subject, that Swapna Sundar, CEO of IP Dome, addressed the National Conference on IP issues conducted by the TN Dr. Ambedkar Government Law University on the 25th of May, 2013. The presentation was well received. Below are some of the salient points of the presentation.
What is harmonization of Patent Laws
In general, harmonization is understood as the process of creating common standards across the internal market. Unlike unification which contemplates the substitution of two or more legal systems with one single system, harmonisation of law seeks to create consistency of laws, regulations, standards and practices, so that the same rules will apply to businesses that operate in more than one member State, and so that the businesses of one State do not obtain an economic advantage over those in another as a result of different rules.
There have been several efforts at harmonization, such as the Paris Convention, the Patent Cooperation Treaty (PCT), TRIPs, and the Patent Law Treaty (to which India is not a party). A draft Substantive Patent Law Treaty (SPLT) was also put forward. The treaties lay down some common minimum standards, and provide for applicants under the treaties to be treated on par with the nationals of the country where the receiving office is situated. Moreover, the applicant enjoys the right of preserving the priority date. Countries are also enabled to interpret the provisions to suit the requirements of their countries in certain circumstances. Compulsory license provisions too have been incorporated in the TRIPs since it took effect in 1995.
What are the different types of harmonization activities going on currently
On September 16, 2011, the America Invents Act was signed into law. The law made a crucial change in that, the person entitled to grant of a patent was changed from ‘first to invent’, to ‘first-inventor-to-file’ system, in harmony with the rest of the world where the right belongs to the ‘first to file’. Simultaneously, the USPTO began engaging in earnest with harmonization issues around the world. The same year, the ‘trilateral offices’, comprising the Japan Patent Office, the European Patent office and the USPTO celebrated 30 years of cooperation. The Tegernsee Group comprising the Heads of the European, Danish, French, German, Japanese, UK and United States patent offices was set up to study key harmonisation issues include grace period, 18-month publication, treatment of conflicting applications, first-to-file, and prior user rights.
The Five IP Offices (IP5) was set up to study harmonization between the five largest intellectual property offices in the world. The members of IP5 are:
the European Patent Office (EPO),
the Japan Patent Office (JPO),
the Korean Intellectual Property Office (KIPO),
the State Intellectual Property Office of the People's Republic of China (SIPO),
and the United States Patent and Trademark Office (USPTO).
The IP5 Offices account for 90% of all patent applications filed worldwide and for 93% of all work carried out under the Patent Cooperation Treaty (PCT). The IP5 have formed a Patent Harmonization Expert Panel (PHEP) to work on a comparative analysis study of the substantive laws which govern the five Offices’ practices with an eye on identifying potential areas in which harmonization may be achieved.
Is harmonization good for India
It is better for India to arrive at a negotiated trade-off with the industrialised countries with respect to Patent Law Harmonisation than to accept the ‘global best practices’ theory of harmonization. Accepting a standardized set of rules and activities would lead to unhealthy practices being entrenched in the system globally. For instance, methods of treatment which are patentable in the US, but not India, would become patentable in India as well.
Secondly, the advantages of harmonization accrue either to the industries with large budgets for invention, or to the patent offices which could see dramatic decrease in work pressure. MNCs would be able to benefit from the certainty and stability offered by a globally standardized patent regime and stronger broader patents. Harmonisation is not likely to lead to better social conditions particularly in the third world countries. Technology exporting countries would see a rise in royalty payments from technology importing countries.
Thirdly, India needs a period of calm and stability in which to devise intellectual property strategies consistent with both the TRIPS Agreement and the needs of their own emerging national and regional systems of innovation. We are only now learning to exploit the ‘flexibilities’ provided in TRIPs to better the life of the people.
Finally, some writers have called harmonization a way to ‘pull up the ladder’ to prevent those who have been left behind from climbing up. Others, have said that the harmonization agenda keeps shifting the goal posts forcing the less mature IP economy to reach an un-achievable goal of benefiting from IP and innovation.
Can we follow our own agenda
Swapna also called for policy makers in India to create an India-friendly harmonization regime in the countries where Indian innovation could result in material and social well-being of people. Some of the regions with which India could have treaties are the neighbouring countries of Pakistan, Sri Lanka, Nepal, Bhutan, Afghanistan and Myanmar. Countries in South East Asia and Africa would also be good markets for India. Secondly, the countries of the region could provide combined protection for petty patents, or innovation patents that would be useful to their people.