[Ip-health] IP-Watch: WIPO’s Gurry Details Efforts On Int ernational Patent Needs

[Thiru Balasubramaniam]

http://ip-watch.org/weblog/wp-trackback.php?p=736


12 September 2007
WIPO’s Gurry Details Efforts On International Patent Needs



By Liza Porteus for Intellectual Property Watch
NEW YORK - A supplementary international patent search will be
introduced and likely approved during the World Intellectual Property
Organization (WIPO) General Assembly meeting later this month, WIPO
Deputy Director Francis Gurry told Intellectual Property Watch on
Tuesday.

Gurry also raised an idea discussed this week between the European
Patent Office, Japan Patent Office and US Patent and Trademark Office
(USPTO) that he described as a proposal to “look at using, to a greater
extent, the international search report in the national phase.”

Not only is the demand for patents increasing, but so is the number of
countries sending in applications. From 1995 to 2005, for example,
China’s resident patent applications increased 834 percent, while
Korea’s grew by 100 percent. The size of office in terms of
applications received is now: Japan, United States, China, South Korea
and Europe.

Under the WIPO Patent Cooperation Treaty (PCT), the usual procedure
includes an international search report prepared by an international
search authority. But with increasing diversity in the origin of patent
applications comes a bit of a language problem during searches,
according to Gurry.

“What we are witnessing is in fact a 500-year shift,” Gurry said during
a luncheon address to hundreds of Intellectual Property Owners
Association members and their guests at the Waldorf Astoria in New York
City on Monday. “For the last 500 years, most of the world’s technology
has been produced in European languages, now we’re seeing roughly a
quarter of it being produced in Japanese, Chinese and Korean.”

Gurry later told Intellectual Property Watch that, “because of the
increasing linguistic diversity, it is increasingly difficult for a
single office to cover all languages,” adding, “This supplemental
international search would enable an applicant to request, in addition
to the principal search, a supplementary search from another
international authority.”
But under the supplemental search, an initial search by the USPTO, for
example, could be supplemented by a search by the Chinese patent
office.

“You’re supposed to do that anyway but practically speaking, if you’re
an American or a German, how do you search Chinese? It would enable a
search to be done in other languages,” Gurry said.

He said he sees no major stumbling block to the proposal being approved
later this month. If approved, it would go into effect on 1 January
2009. “I think it should be OK but I can’t say it’s done,” he said.

SHARE Proposal Discussed

Gurry also told Intellectual Property Watch of a proposal being
discussed by developed countries this week called SHARE, which stands
for Strategic Handling of Applications for Rapid Examination. It is
intended to give greater credit or weight to international search
reports conducted to alleviate some of the workload of national patent
offices.

Currently, after an international search report is prepared, the
application proceeds to the national phase, where each PCT member state
considers whether to grant the patent. Each state has the option to do
its own new search, or use the international one. The proposal would
“try to give more credit to the international search,” he said.

According to the USPTO – which notes that about 47 percent of its
“utility, plant, reissue” applications are filed by residents of
foreign countries - patent applications filed in the office of first
filing (OFF) in one country first will not be looked at by another
country until search and examination results are available from the
OFF.

“There is an incentive there already in that they don’t need to do the
work again,” Gurry said. But “nobody’s going to accept it just as it is
- they will do top up searches…. The objective is to investigate how
they can take the international search into account to a greater
extent.” The proposal will be studied and will not be made formal for
“some time,” he said.

Proposals for Patent Management

During his Monday address, Gurry said these are just some proposals
being considered to keep up with the demand for new patents and to
streamline the process by which they are approved or denied. Other
ideas include outsourcing and patent law harmonisation.

But “none, I think it’s fair to say, has yet provided the golden
solution to the problem of patent management,” Gurry said. But with
individuals producing over one million new inventions each year that
require patents, “there is no inactivity in trying to address this
problem.”

Gurry said some patent backlog problems faced by several countries are
because of overwhelming demand, but others more because of a lack of
infrastructure to deal with the requests. The problem affects 10 to 20
offices around the world, and the only effective way to deal with it is
through international cooperation like those measures outlined in the
PCT, he said.

One idea to consider is a single international procedure from time of
filing up to, but not including, granting or refusal of a patent, Gurry
said.

With the technological advances made in the past 10 to 15 years,
networking can provide a good working solution, he said. That would
include a single international search for prior art conducted by
several patent officers after a patent application was filed. An
applicant would have the ability to designate an authority in each of
several language zones for the search.
“I think it would have the advantage of actually practically achieving
harmonisation,” Gurry said.

On other topics, Gurry said current challenges to IP are technology,
economics and ethics. For example, he said, a recent Organization for
Economic Cooperation and Development study said the economic impact of
piracy of physical goods was $200 billion in 2005, “a sum which is more
than the individual GDPs of some 150 countries around the world.”

WIPO to Address Internal Problems “Soon”

Gurry also addressed several organisational challenges WIPO is facing.
Saying he hopes many “transient” problems will be fixed “soon,” there
are other institutional challenges that are more long-term in nature.

“WIPO, I think, is a unique organisation in that it has two very
distinct and different roles,” he said. Those roles are: as a service
provider to an international economy, given that 92 percent of its
revenue is generated from fees and services rendered, including its
arbitration centre, which has handled over 11,000 domain name disputes;
and as a classical intergovernmental organisation involved in
treaty-making and with development assistance.

“The time has come for an explicit recognition for both of those roles
and that different demands are placed on the organisation for each of
those roles,” Gurry said.

Enterprises are interested in global markets, he said, and “it is
appropriate that we address the developmental concerns of developing
countries and their IP infrastructure.” But WIPO cannot do the latter
without funding and a fee base, Gurry said. “They are mutually
compatible roles of the organisation.”

Liza Porteus may be reached at info@ip-watch.ch.

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---------------------------------
Thiru Balasubramaniam
Geneva Representative
Knowledge Ecology International (KEI)
voice +41.22.791.6727
fax +41.22.723.2988
mobile +41 76 508 0997
thiru@keionline.org