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Monday, 4 April 2011

The Time for Global Harmonisation is Now: so says David Kappos, Director of the USPTO

It’s Monday (as many of you will have already noticed. For those that have not, you’re probably late for work – at least the roads should be clear), and the IPKat has spent the morning, with many others in the IP community, in the presence of an all-star panel for a breakfast discussion. The event, organised by the Directors Roundtable Institute with the co-operation of AIPPI UK, and hosted at UCL, was billed as “A Dialogue with David Kappos, Director of the U.S. Patent & Trademark Office”. Also giving presentations were: the Rt Hon Sir Robin Jacob, Sir Hugh Laddie Professor of Intellectual Property at University College London; Richard Vary, Director of European Litigation for Nokia; and Avril Martindale, Partner, Freshfields. The event marked the David Kappos’ first public address in the UK since taking up office. The weather in London this morning was glorious, which was a good job considering the day kicked off with an impromptu game of ‘hunt the breakfast’ – presumably thrown in to work up an appetite. However, enough scene-setting, what about the talks?


Following a brief introduction by the Rt Hon Sir Robin Jacob, David Kappos took the floor. He outlined his main topic for discussion, a topic that was reflected by all of the presentations made this morning: Harmonisation. The Kat paraphrases, however, the essential elements of the presentations were as follows:

Starting with patents: Global harmonisation, Mr Kappos noted, would be difficult with so many legal traditions and so many language differentials to contend with, however, it was a goal worth pursuing. The U.S. had recently started the ball rolling by unilaterally (a word that was to appear frequently in his presentation) tidying its own back yard. Accordingly, the key carbuncles encrusting the U.S. system (described by Mr Kappos as “deficiencies”) were in the process of being remedied. Specifically, the U.S. was dealing with first-to-invent and the Hilmer doctrine (eloquently explained here), and the requirement for disclosing the best mode of an invention, and was also moving towards full and rigorous enforcement of an 18-month publication requirement for patent applications.

Mr Kappos noted that the passage of the America Invents Act (“AIA”) (a.k.a. the Patent Reform Act 2011 – discussed by the AmeriKat here) was looking promising, with a rose-garden signing expected for the summer. Accordingly, the U.S. was at the starting line for a global push towards harmonisation on matters patent.

Mr Kappos remarked that it was “bizarre” that IP is stuck using nineteenth century models in an age of international transactions and a global marketplace. He therefore explained that he was in Europe to discuss harmonisation as a global topic, and had accordingly met with the EPO and WIPO, the Germans, French and British in order to capitalise on moves made unilaterally (that word again) in the U.S. to allow IP to enhance global commerce rather than impede it. The time for harmonisation, he said, is now.

Turning his attention to trade marks (or trademarks as he would inevitably have spelt it), Mr Kappos said that this was not currently in the spotlight of review in quite the same way as patents were in the U.S., however he was still interested in talking about the benefits of a “use-based” trade mark system in Europe. There were still some issues to iron out concerning the policing of such a use-based system and avoiding the prospect of trade mark bullying by larger firms towards small entrants, but that these were “bumps” that were being dealt with.

Following on with the harmonisation theme, Avril Martindale, Partner, Freshfields, noted that one of the main ways in which transactions concerning IP assets have changed over the years was in relation to their increasing globalisation. This could lead to problems: big blockages could occur with different standards and laws in various different states.

Thereafter, using a case-study of the sale of Volvo by Ford to the Chinese Zhejiang Geely Holding Group Co, the audience was treated to a thorough and engaging discussion of some of the general obstacles that would lie in the way of a smooth transaction in cases such as this. The end perspective on this particular transaction was that China may still have some way to go in terms of ensuring its IP system’s effectiveness on a world stage (the practical inability to gain interim relief being one matter that needed addressing), but it is no longer true to say that it does not protect IP.

Richard Varey, Director of European Litigation for Nokia, was third to speak. As will be expected, he also concentrated on the harmonisation theme, noting that the degree of co-operation between European courts in different states was increasing all the time. Accordingly, it was now common practice for the courts of one state to look to the outcome of litigation in another in cases concerning the same patents. Even in areas where there had traditionally been very different practices adopted in different states, the courts were stated to be beginning to walk in similar ways – examples were given of the practice relating to amendment of patents in Germany and to issues of disclosure (discovery) as well. However, certain discords were noted to remain – declarations of non-infringement, for example, being noted to be particularly difficult to gain in Germany.

Therefore, again, the main theme was a need to co-operate and to sing to a harmonised hymn-sheet. This theme was once more stressed by the Rt Hon Sir Robin Jacob, who noted that there were still many differences between the world’s main patent systems, but that the differences were slowly getting less. In Europe this was partly because of the biennial Patent Judges’ Symposia (the 15th of which was held in Lisbon last year), which gave a constant drive towards the exchange of ideas. However, a more global view was still needed, and there might be things to learn from the U.S. – noting dryly that just because something is in U.S. legislation does not necessarily mean that it is wrong.

All in all, the take-home message from today’s event was clear: harmonisation is on the agenda, and the U.S. wants to make renewed moves on a global patent standard. Much was made by Mr Kappos of the “unilateral and unconditional” offering that the U.S. looks like it will be making when, and his tone suggested that ‘when’ is definitely the correct word to use, the America Invents Act (“AIA”) passes into law and the U.S. adopts first-to-file. Whether this will be enough to command reform on a global scale remains to be seen, but it’s certainly a step in the right direction.

Global patent index: here
Global patent sources: here
Revolving Globe Apparatus patent: here

5 comments:

Michael Factor said...

There was I, thinking the Hilmer doctrine was a way to swing a Kat having a fishbone stuck in its catgut.

Anything designed to favor US inventors over foreigners goes against TRIPS, GATT, etc. and shouldn't be allowed.

It doesn't work anyway, but that's a minor issue.

MaxDrei said...

The feature of US patent law that offends me is the routine use of Article 54(3) docs, unknown to any member of the public, as the basis of obviousness attacks. When the USA moves to First to File, this provision will deliver a turbo-charged "All or Nothing" winner-takes-all landscape in which the first filer gets a dominating position and everybody else gets...nothing. But that is The American Way, right?

With that unilateral leapfrog over the Rest of the World, no harmonisation there then.

Gentoo said...

Because what we really need is USPTO standards in the rest of the world - oh, BTW, please can we have software patents too? They're sooo useful.

Anonymous said...

I think that Mr. Varey will find that it is the UK which is out of step with regard to declarations of non-infirngement compared with the rest of Europe. Even Italy, famed for its torpedoes ultimately requires the plaintiff to have a good reason for seeking such a declaration, quite unlike the UK with its S. 71 provision.

Anonymous said...

Does anyone know if the transcript of this meeting is available yet (as promised, I think)? If do, where?

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