PCT - The Forerunner of a World Patent?
Reproduced below is a paper delivered by Spoor and Fisher's senior partner Tony Hooper in September 1997 at the FICPI World Congress in Copenhagen (FICPI is an international association of patent attorneys.)
I will be looking at PCT from the outside and from the perspective of a country with an economy which in many ways is still developing. Does PCT have relevance and meaning for these countries and where should PCT be going to meet the needs of these countries?
The PCT union has 92 contracting states and the system which is provided by the treaty is used extensively and on an ever-increasing basis. South Africa is one of the countries with a relatively large and sophisticated, yet still developing, economy which is not yet a PCT member state. Up to a few years ago, political barriers effectively prevented South Africa from joining, but these barriers have now fallen away. Initiatives are well under way to bring South African Patent Law into a form enabling it to handle PCT applications and also for South Africa to accede to the treaty. Both initiatives involve passage through the two houses of Parliament. This process is time-consuming and may result in a short further delay in South Africa´s accession to the treaty. It is hoped that this accession will take place towards the end of this year or, at the latest, in the first quarter of next year.
I have been involved in the amendment of the South African Patent Law to adapt it to accommodate PCT applications and this involvement, and the procedure for obtaining a patent in South Africa, have raised the question in my mind: Can, or should, the PCT system develop into a world patent?
Let me start with a system with which I am most familiar. South Africa is a non-examining country and there are no plans to change this. The country simply does not have sufficient resources, either financially or technically, to contemplate an examining system. That is not a bad thing. When resources are limited it makes sense to leave the validity or otherwise of a patent to a time when it really matters - to a time when there is infringement or a third party challenge. The courts should be in as good a position as an underfunded Patent Office to make this determination. One consequence of South Africa being a non-examining country is that it is important to provide a mechanism to examine, and challenge if needed, actions taken by an applicant before the patent issues. One such action is amendment. As liberal as the South African approach may be to amendments before grant, there are certain constraints on that amendment and, if not met, the amendment can be set aside after grant by appropriate application to court. This is an important safeguard, particularly as the South African Patent Office does not have the capabilities to evaluate the technical merit of an amendment and whether it satisfies the prescribed requirements.
In terms of the PCT Regulations, it is permissible to amend a PCT application while it is in the international phase. Once South Africa has acceded to the Treaty, that application will in due course become a national application and the question arises as to whether an amendment made in the international phase can be set aside, as can any other pre-grant amendment? This is not as simple as it may sound. First, the provisions for allowable amendments in the international phase are not the same as those when the application enters the South African national phase. Will it now become encumbent on our courts to understand and adjudicate on matters which took place in the international phase and before an administrative system different to the South African Patent Office? Second, an amendment made in the international phase of a PCT application is examined by an examining authority and should not be capable of being set aside in later proceedings. One of the objectives of an examining system, it seems to me, is that pre-grant amendments and related matters should be immune from attack after grant.
Let me take this one step further. If PCT was to develop into a system which granted a world patent or went only so far as forced acceptance of an examination, as has been suggested, we would find ourselves, in a country such as South Africa, with some patents which issued via the PCT world patent system, and others which issued through the national route. The patent which issued through the PCT world patent system would have been examined and many pre-grant activities, e.g. amendment, would not be open to challenge. In contrast, there would be other patents which issued through the national Patent Office and different considerations would apply to these patents, particularly in the possibility of challenge to some of the pre-grant actions. This will unduly complicate the patent system as different rules will have to be applied to the patent, depending on its pedigree. I have given one example, but there are many other provisions which make it difficult for a registration national system to live comfortably side by side with another system which follows a completely different procedure to grant.
It is not uncommon for different examining Patent Offices, faced with the same prior art, to take different positions on obviousness and even lack of novelty. The finding of one Patent Office may not be the correct one and if that incorrect decision leads to a rejection, prejudice follows. The prejudice is limited with a bundle of separate applications, but is severe with a single application. The risk of "putting all your eggs in one basket", which some people feel is a disadvantage of proceeding via the EPO rather than nationally, is compounded or multiplied many times with any system which is one designed to achieve a world patent.
The PCT system, as it exists today, provides for several searching and examining authorities. I would imagine that if PCT was to develop into a system which grants a world patent, that arrangement would not change. The sheer volume of work would, I believe, be too great for any one authority to deal with it adequately. Assuming this to be so, the situation would almost certainly arise that different standards or approaches would be applied depending on the examining authority. Consistency in the approach would, I believe, be almost impossible to achieve. We might thus well find ourselves in a situation where applicants would "forum shop" for the examining authority most sympathetic to the particular invention for which protection is being sought. Even if the nationality requirement for applicants was strictly enforced, that could still lead to an inequitable situation with nationals of some countries being prejudiced relative to nationals of other countries.
The patent laws of a country reflect, to some extent, the culture and economic realities of that country. Patent laws are also dynamic. The interpretation of the law and its application can and do change with time. And, so it should for otherwise the law could lose some of its relevance. Now, I realise that there is a momentum to harmonise patent laws around the world and we are all well aware of the provisions of TRIPS. I am not suggesting that those initiatives are not well founded. However, the law must always be allowed to have a certain latitude in any country. The coming into being of a world patent would tend to act against this.
Countries should, I believe, be allowed flexibility in deciding what constitutes patentable subject matter and what does not. Whilst some subject matter ought to be patentable in all or most countries, there is other subject matter which could conflict with the religious, ethical or moral standards which prevail in a particular country. Further, the emotionally sensitive issue of patenting life forms gives rise to hot debate and different approaches in the USA and in Europe. The flexibility required dictates against a world patent system.
For a country such as South Africa, and I am sure many other PCT member states, the filing of a PCT application is an expensive exercise. This is particularly so as fees have to be paid in a hard currency and many of these countries suffer from the burden of a depreciating currency. All over the world there are many small and medium sized businesses which have interests primarily in their home territories or regions geographically close to the home territory. An expensive PCT application which itself will be the subject of a strict and expensive examination system, if PCT was to become a world patent, could be out of the financial reach of many companies. This could discourage companies from taking out patent protection.
I have assumed all the way through that the national Patent Offices will survive attack from a world patent. The preservation of national Patent Offices is vital, particularly for small and medium sized businesses and for individuals. If a world patent, whether it be PCT or some other system, was to take a hold, then the diminishing importance and even the demise of national Patent Offices is a real possibility. That this is not just a possibility, but a real threat, can be seen from the relegation of the Netherlands Patent Office from one of the leading examining offices to its present registration status. The demise of national Patent Offices will not foster innovation or development. Indeed, it is more likely to have the opposite effect.
For many years the only way of obtaining patent rights in some African and Asian countries was the extension of a British, Portuguese or other European patent. Most of these countries have moved on to their own intellectual property legal systems. This has been achieved because they have wanted it and their efforts have been encouraged and assisted by WIPO. I doubt that these countries would be too enthusiastic at the prospects of a world patent, granted elsewhere and extended to their country, which is very much an echo from their past.
The PCT system as it exists today has achieved remarkable acceptance and success. The reason it does this is because it satisfies a real need. Applicants require more than the twelve months which the Paris Convention provides to assess the commercial viability and patentability of an invention. Any further developments in the system should, I believe, be aimed at improving and adding to this basic concept, rather than attempting to develop the system into a "world patent". One such improvement which has been proposed is the so-called Supplementary International Search. There are Patent Offices which search a PCT originating application again during the national phase. The Supplementary International Search seeks to deal with this problem and offers an applicant another option for deferring entry into the national phase. This is to be welcomed.
I am not in favour of extending the 30 month period for entering the national phase. Certainly as to whether there is a real intention to seek protection in each designated State is required. It is all too easy to tick boxes particularly when most of the ticks do not cost any money. A more tangible commitment to each country is needed and 30 months is a reasonable time within which to make that commitment. Yes, lets make changes to PCT but broadly within its present eminently workable and successful framework.
Spoor & Fisher