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The European Background to the Patent System

In medieval times, the grant of exclusive rights “monopolies” by the sovereign had been a convenient way in which the sovereign could raise money without the need to resort to taxation. Such grants were common in many European countries and were typically made by way of “letters patent”.[1] Some of these, for example in mining regions or in respect production of certain textiles seem to have had a relation to innovations.   Although there seems to have been an earlier law directed specifically at inventions relating to the manufacture of silk, the first general law providing for the grant of exclusive rights for limited periods to the makers of inventions in general as a deliberate act of economic policy was probably in Venice in 1474. It does not seem coincidental that this was during a long war between Venice and the Turks during which Venice lost most of its trading empire in the Eastern Mediterranean and consequently had to refocus its economy on manufacture rather than trade.[2] Indeed, as Venice’s domination of trade with the east weakened, it adopted a number of measures to establish and maintain a preeminence in manufacturing including enacting laws prohibiting emigration of skilled artisans and the export of certain materials, while at the same time encouraging the immigration of skilled workers from other countries, for example by providing incentives such as a tax holiday for two years after arrival in Venice.

Early in the Seventeenth Century, towards the end of Elizabeth’s reign and more particularly during that of her successor James I, the English courts, probably at least to some extent noting developments on the Continent, started to restrict the rights of the sovereign to grant monopolies unless they were for the introduction of a new industry to the country.[3] In 1624 as part of the skirmishing between Parliament and the Crown leading up to the English Civil War, the English Parliament passed the Statute of Monopolies. This had the effect of limiting the powerof the Crown to the grant of monopolies to grants for limited periods (14 years – the duration of two training periods for craft apprentices) and most importantly only for “manners of new manufacture” that were introduced into the realm by the recipient of the monopoly. Such grants were, however, conditioned on their not being “mischievous to the state” (for example by raising prices of commodities) or “generally inconvenient”. In the early days the patent grant itself set out a requirement that the patent owner trained apprentices in use of the patented invention but during the eighteenth century this was replaced by a requirement to file a description of the invention. In 1778, Lord Mansfield, in Liardet v. Johnson[4] held that a description that was inadequate to provide proper instruction to others to make the invention was a ground for holding the patent invalid.

The original English approach was to place emphasis on the advantage to society as a whole of developing new inventions. Section 1 of the French law of 1791 took a somewhat different approach: “All new discoveries are the property of the author; to assure the inventor the property and temporary enjoyment of his discovery, there shall be delivered to him a patent for five, ten or fifteen years”. The emphasis here was on the inventor having property in his discovery – an emphasis on the rights in the invention rather than on the benefits to society. Today this approach is of limited importance in the patent field but it is still significant in the area of copyright – where the Anglo Saxon approach focuses heavily on the bundle of economic rights associated with control over whether others are entitled to use those rights, for example to copy a work , whereas the French approach focuses more heavily on the moral rights of authors – a fact that is emphasized by the fact that the word generally used as the French translation of the word “Copyright” is ” droit d’auteur” (literally Author’s Rights).

The philosophical basis of the U.S patent system is not entirely clear. The Constitution gives Congress the power to promote the progress useful arts by securing for limited times to inventors the exclusive right to their discoveries. An argument can be made that this shows an intent to break with the English “economic incentive” approach deriving from the Statute of Monopolies and that in providing that Congress should “secure” inventors rights in their inventions rather than “grant” them rights to their inventions, the Constitution adopts an implicit recognition of a natural right to the products of one’s own brain as was set out in the French law of 1791 and certainly this would be consistent with the ideas Locke and Rousseau that provided an important framework to American thinking at the time. On the other hand, Thomas Jefferson who had direct involvement in the patent system and drafted the statutory definition of what constitutes a patentable invention which essence remains the same today, took the view that once an idea had been divulged by its originator it was free to all. He noted:

Inventions then cannot, in nature be a subject of property. Society may give an exclusive right to the profits arising from them as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done according to the will and convenience of the society without claim or complaint from anybody.[5]

Two hundred years ago, Adam Smith made the case for the patent system rather than a system of government awards as an inducement for innovation in the following terms

{i}f the legislature should appoint pecuniary rewards for the inventors of new machines etc. they would hardly ever be so precisely proportioned to the merit of the invention as ( the grant of a fourteen year “monopoly”). For here, if the invention be good and such as is profitable to mankind, he will probably make a fortune by it; but if it be of no value he will also reap no benefit.[6]

Modern thinking on the rationale for a patent system effectively sees this as a contract between the inventor and society at large. This was well expressed in a report to the French Chamber of Deputies in the debates preceding adoption of the French Patent Law of 1844 (a law that remained in effect with little change up to the 1960’s):

Every useful discovery is, in to Kant’s words ‘the presentation of a service rendered to Society’. It is, therefore, just that he who has rendered this service should be compensated by Society that received it. This is an equitable result, a veritable contract or exchange that operates between the authors of a new discovery and Society. The former supply the noble products of their intelligence and Society grants to them in return the advantages of an exclusive exploitation of their discovery for a limited period.

From the Nineteenth Century to World War II

While the American approach to patents in the late nineteenth century was aptly expressed by Mark Twain: “a country without a patent office and good patent laws was just a crab and couldn’t travel anyway but sideways or backwards”[7], this view was not necessarily true in Europe where abolition of the patent system was seriously considered at various times in both the United Kingdom[8] and Prussia (Bismarck was at best lukewarm about the merits of the patent system) and the system was actually abolished in the Netherlands from 1869 until 1912 at least in part because it was thought to be contrary to democratic principles.

Nevertheless, it was during this period that the international patent system started to come into being. Patents, as rights granted by the state, are inevitably territorial in nature. This presents significant practical problems for an inventor who wishes to seek protection outside his or her home country. In most countries the intellectual property systems (although they were not known by that name) developed during the nineteenth century in a fairly nationalistic way. United States patent law development included periods when foreigners could only obtain patents if they were resident in the United States and intended to become citizens and others where foreigners were charged much more for the right to secure patent than were American citizens.

The problems of avoiding national discrimination were recognized by the mid-century when provisions recognizing the need for fair treatment of what would now be called the intellectual property of citizens of other nations started to be incorporated into commercial treaties. One of the first of these was the Treaty of Commerce between Russia and Great Britain of 1859.[9]

The United States was not alone in discriminating against foreigners and matters came to a head in connection with the Vienna International Exposition of 1873. At the time the patent law of Austria – Hungary had a provision similar to that of the United States Act of 1832 requiring working of an invention within a country with one year in order to maintain validity of any patent issued for it. Foreign inventors were reluctant to exhibit at the exposition for fear that by exhibiting their inventions and being unable to work them within the Austrian- Hungarian Empire within the prescribed one year period they would in effect be giving their inventions away. Scientific American on December 23 1871 commented on the situation as follows: “It was almost equivalent to prohibition to require that the locomotive engines of Great Britain, the telegraph instruments of the United States, and the printed muslins of France shall be manufactured on Austrian soil within a year from securing the patent.” The article went on to note that the Austrian law meant that “the value of Austrian patents issued to Americans and other foreigners can be easily escheated to the benefit of the Austrian public.” Following representations by the American Minister in Vienna, the Austrian authorities passed a special law to try to protect foreign inventions from loss of rights by exhibiting at the Exposition and convened an international congress in Vienna to discuss ways of improving international protection for inventions. A number of resolutions were passed including one to the effect that “natural rights” of the inventor should be protected by the laws of all “civilized nations” but no legally enforceable treaty was agreed to.

A similar congress accompanied the Paris International Exposition of 1878. This occurred in the wake of the creation of a number of international organizations during the 1870’s including the Universal Postal Union, the International Red Cross and the International Bureau of Weights and Measures. At the time there were high hopes that a treaty could be drafted creating a world wide patent system. But it was not to be. Following further conferences in Paris in 1880 and 1883 the best that could be achieved was a convention prescribing how member states could treat nationals of other states and laying down certain minimum provisions as to various aspects of what is now known as intellectual property law, including patents, designs (which in most of the world are regarded as a separate species of intellectual property law) and trademarks.[10] From the patent point of view, its most important features were provisions barring discrimination against foreigners (national treatment), providing that as long as one acted within a specified period (initially six months, now one year) one would not lose the right to a patent in other countries that were members of the convention simply because of a disclosure of it after one had made an initial filing in one of the member countries of the convention (the priority right) and providing that tackle on ships that wee temporarily within the jurisdiction of a country where such tackle was patented would not constitute infringement of such a patent. .

International development of the Patent System throughout the first half of the Twentieth Century was largely confined to revisions of the Paris Convention, for the most part with a view to making it easier for inventors who had filed an application in one country that was a member of the Convention to claim priority rom that application for applications filed in other countries that were members of the convention. Consistent with this, there was also little change in substantive patent law in most countries[11], one exception being the United Kingdom which abolished patents for chemical products in 1919[12] but reintroduced protection for such products in 1949. Indeed at that time chemical products, medical inventions and living organisms were regarded as being outside the scope of patent protection in many countries. In the period of colonial empires, patents granted in the home country often extended to that country’s overseas possessions.[13] One exception to this was the British Empire[14] where colonies has their own patent ordinances although in many, but not all, cases, these provided that protection could be obtained only by registering a granted British patent in the colony – a practice that still continues today in a few colonies and former colonies..

During this period there was substantial diversity between national patent systems. Perhaps the only thing common to all systems was that to be patentable, something had to be new. Even with this the definition of “new” varied from country to country. While most countries granted patents to the first to file an application for the invention others, including the United States, Canada, the Philippines regarded an invention as being new as long as it had not been published prior to the patent applicants date of invention (subject to certain requirements to prevent such an inventor simply sitting on his or her invention and failing to make it public)[15]. However, even within the “first to file group” there were significant differences. Thus, in the United Kingdom, something simply had to be new within the United Kingdom and the fact that it had been published elsewhere in the world was irrelevant, furthermore, publications to a “learned society” and certain other disclosures were excused as bars to patentability as long as one filed a patent application within six months of that disclosure. In Germany, publications anywhere in the world counted as a bar, but use of the invention would only bar the grant of a patent if that use had been in Germany. Furthermore, any publication that was more than 100 years old was discounted on the basis that if nobody had seen fit to put an invention into practice within the past 100 years or had written about it within the past 100 years, then it was just as much use to society to resurrect the invention now as it would be to have invented it from scratch. In France any prior divulgation by anyone anywhere in the world was sufficient to destroy novelty.

In most countries, however, the idea took hold fairly early that in addition to being new, however this was defined, it was also also necessary that the invention had some degree of additional inventivity, a concept initially developed by the courts[16]. Ultimately these concepts were codified.: in the United Kingdom in 1932[17], in the United States in1952[18], in Japan in 1960[19], in France in 1968[20] and in Germany in 1976.[21] In Germany, case law also established fairly early that to be patentable, the inventor must have exercised some inventive activity and that the invention must show a technical advance over the prior art.[22]

In other areas, however, differences abounded. Many countries permitted someone who had already secured a patent for an invention to patent obvious variants of it by way of patents of addition, provided only that the patent of addition expired with the patent on the basic invention.[23]

Nor was there agreement on the subject matter for which patent protection could be granted. While both the United States and the United Kingdom had broad definitions of patentable subject matter[24], other countries had more structured and limited definitions.[25]

There was not even agreement as to whether being the actual deviser of the invention oneself was a prerequisite for patentability or whether one could secure a patent simply by being the first to introduce the invention into a country. For example, the United Kingdom granted patents on so-called communication applications where the applicant could be the party to whom an application had been communicated from abroad. Other countries granted patents of importation where a patent could be based on the grant of a patent in some other country.[26]

In Belgium, France[27] and Italy, patents were granted automatically on filing and it was left to the courts subsequently to determine whether they were valid or not. In the United Kingdom, examination was carried out, but the Patent Office was not given the right to refuse a patent in ex parte proceedings on the ground of obviousness. In the United States, Japan and Germany, the Patent Office was given the power to refuse the grant of a patent on the ground of obviousness. Furthermore, one had to demonstrate to the German Examiners that the invention constituted a technical advance in the art, that is to say, that it was better than what had gone before. The toughest examination under the old procedure, however, was in the Netherlands where the Patent Office was fairly firmly convinced that everything was obvious.

The differences were not confined to methods of obtaining patents and the standards by which they were to be judged. There were and are also significant differences in how patents were to be interpreted by the courts. Thus in Germany, something would be held to be an infringement if it used what the court determined to be the same inventive concept as what was claimed: the so-called principle of “central claiming”. This led to claims being drafted in such a way as to try to pint out the inventive step that had been taken. In the United States and the United Kingdom on the other hand, the predominant theory was that patents wee a property right and so, like a deed for a piece of land, the claims should define precisely what was within the claimed territory: the so-called principle of “peripheral” claiming. The harshness of this when someone clearly used the same inventive idea but fell outside the scope of the claims was ameliorated in the United States by the development of the doctrine of equivalents and to a much lesser extent in the United Kingdom by the idea that there might be infringement of a claim by something not literally falling within it if it took the “pith and marrow” of the claimed invention. In some countries, such as France and Italy, there were no claims at all and the courts had to determine whether there was infringement based on their own understanding of the invention described in the patent document.

Developments From 1945 to 1980

After World War II there were increasing pressures for change. The initial impetus came from congestion in patent offices of some countries and the increasing costs of securing patent protection as this became needed in more countries as they became independent and more industrialized. The first phase which was largely completed by the end of the 1970’s comprised three elements: 1) attempts by national patent offices to reduce their work loads; 2) regional cooperation in patent granting and 3) the establishment of an international mechanism to aid the granting of patents.

Reducing the Work Load

So far as the first element is concerned, traditionally the contents of a patent application were not made public until the patent had been examined. At that point, in some countries, such as the United States and Canada the patent was granted. In others, such as Japan and most European countries where examination was carried out, the application was published before grant to give the public a limited period in which to oppose the grant of the patent if it was aware of grounds on which the patent should not been granted that had not been found during the patent office examination. As noted above, in the old days one of the toughest countries in which to secure a patent was the Netherlands. By the mid 1960’s the Dutch Patent Office was falling very far behind in its examination of patent applications. The authorities noted that many patents when granted were being allowed to lapse long before their maximum possible duration and so concluded that much of the examining effort was being wasted on applications which in the end had no commercial significance. It was therefore decided that applications would only be examined if the applicant or a third party specifically requested examination, but that if examination was not requested within seven years of filing, the application would become abandoned. Industry, however, was not happy with the idea that other people’s applications could remain secret for a period of seven years plus the time taken for examination. This could result in delays of up to ten years before one knew whether a patent might issue to someone else on something in which one might wish to invest substantial sums of money, which wold become wasted once a third party’s patent had issued. Consequently, the Dutch law also provided that all patent applications would be made available for public inspection eighteen months from their claimed priority date. Since then many other countries have adopted a so-called “deferred examination system”[28] and publication of applications eighteen moths after their priority has become the norm today.

The Development of Regional Patent Offices

The second development in the 60’s and 70’s was the creation of regional patent offices which would examine applications on behalf of a number of countries. The most significant of these is the European Patent Convention, membership of which is open to all European countries irrespective of whether they are members of the European Union. This created the European Patent Office with its headquarters in Munich to carry out examination of patent applications that could give rise to patents in all member states of the convention.[29] Once an application has been found grantable by the European Patent Office, however, it morphs into individual sets of patent rights for each of the countries for which the necessary formalities are carried out and the fees paid. A significant by-product of the adoption of the European Patent Convention was the need for harmonization of the basis on which patents should be granted and in particular the definition of patentable subject matter and novelty. So far as the former is concerned, the European Patent Convention built on work that had been carried out in the 1960’s (the Strasbourg Convention[30]) which rather than providing a flexible definition as had been the case in many countries hitherto, set out to define what was not patentable. It was unfortunately out of date almost before it was completed and failed to take account of the needs of the biotechnology and computer industries. Attempts to remedy these defects have met with mixed success.[31] So far as novelty is concerned, the old French standard of universal novelty was adopted. In any case national laws continue to apply after the grant of a patent and even on issues such as whether an invention should be regarded as lacking inventive step (i.e. is obvious), differences between European countries remain.

Other regional treaties are, the African Intellectual Property Organization (known from its initials in French as OAPI), African Regional Intellectual Property Organization (ARIPO), the Eurasian Patent Convention and the Gulf Cooperation Council

OAPI was originally created to take over responsibility for intellectual property matters in countries that had formerly been part of the French Union but to which French patents ceased to apply when the countries became independent.. Unlike the European system, it provides for a unitary right which is effective throughout all of its member countries[32] without additional formalities. The organization has its headquarters in Yaoundé in Cameroon.

ARIPO operates a common patent office in Harare, Zimbabwe which examines patent applications on behalf of its member countries.[33] Unlike the European system, however, the ARIPO system allows member countries a period of six months after examination is complete to determine that an application does not comply with its own laws, for example having regard to protection for pharmaceutical products. Like the European system, however, national rights remain after grant and applicants can select the countries for which they wish protection.

The Eurasian Patent Convention was set up following the dissolution of the Soviet Union to provide a common means for applying for intellectual property protection in many of the former Soviet republics.[34] In many aspects, the convention was modeled on the European Patent Convention so that a Eurasian patent application is examined by the Eurasian Patent Office in Moscow and can give rise to rights that can be effective in each of the member countries. Unlike the European Patent Convention, however, there is no need to translate the granted patent into any other language (the initial filing must be in Russian) and no national formalities need be complied with for the patent to be effective in all member states. After grant the patent owner does, however, have the right to indicate that it is no longer interested in protection in one or more of the countries initially covered and to cease paying for maintenance of the patent in such country.

The Gulf Cooperation Council[35] has set up its Patent Office in Riyadh, Saudi Arabia. Unlike the other regional patent offices, however, the GCC office does not at present carry out its own substantive examination on patentability. This is normally contracted out to the patent office of a European country such as Austria. Once granted, a GCC patent is effective throughout the whole GCC region without further formalities.

In a similar vein, but not proceeding quite so far, the Andean Community[36] adopted a common patent law[37] without setting up a common patent office. The ultimate tribunal for interpreting the interpreting the law is, however, the Justice Tribunal of the Andean Community that sits in Quito, Ecuador.

Improved International Cooperation

The third major step forward in the 60’s and 70’s was the adoption of the Patent Cooperation Treaty in 1968. The treaty came into effect on June 1, 1978, the same day that the European Patent Office opened its doors.   This treaty is discussed in detail in the materials relating to international patent treaties. Its primary purpose was to simplify and reduce the cost of international patent filing by allowing the filing of a single application which could undergo a search and if requested by the applicant a preliminary examination by one of the major patent offices before the applicant had to incur the cost of filing an application in each of the countries in which it was interested. This then enabled the applicant to have a better idea of whether a patent was likely to be granted before incurring such coasts and also a period longer than that permitted under the Paris Convention to evaluate the commercial value of the invention being patented to see whether the costs of extensive international patent were justified.

Developments Since 1980

The developments in the 1960’s and 70’s and the later adaptations of them such as the Eurasian Patent Convention and the GCC Patent Office were all largely of a procedural nature. However, increasing global trade led to a need to address more substantive issues in international patent law and towards the end of the twentieth century pressure again built for the ideal that had been proposed but not achieved in the 1870’s: to create a global patent system. The first step towards this was the TRIPs agreement. The second was intended to be a Patent Law Treaty that would harmonize aspects of substantive patent law.


Original thinking on the topic of increasing uniformity in patent law around the world was to use the traditional vehicle of the Paris Convention. Unfortunately a meeting convened for this purpose in Nairobi in 1981 was unable to achieve any useful result, having become enmeshed in the question of whether the Convention should be amended to permit exclusive compulsory licensing of patents in cases where the invention was not being worked in the country. This led to a search for an alternative vehicle for modernizing international patent law. This was found in the Uruguay Round negotiations for revision of the General Agreement on Tariffs and Trade. The result was the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS for short). This agreement is discussed in detail in the materials in patent law treaties. Among its features were the requirement that all members provide a minimum term for patent protection and, subject to a transition period for developing countries, that they do not discriminate between different areas of technology having regard to the availaibility of patent protection.

Patent Law Treaty

This, however still left open a number of differences between countries, perhaps most importantly what constituted prior art and the definition of novelty. A draft treaty addressing these issues was prepared in the early 1990s and a diplomatic conference convened in the Hague June 1991. The draft would have required the United States to change its system to one based on a first to file approach to novelty. While the administration that had been in office up to January 1991 had been willing to accept this as a possibility if appropriate concessions on other issues could be obtained from Europe in return, the new Clinton administration was not willing to do this. In the end a limited treaty addressing formal aspects of patent granting procedures and patent maintenance was adopted as the Patent Law Treaty.[38]

The aborted draft for a substantive law treaty did, however, have some significance in that its proposed provision on novelty provided that an inventor’s own publication of an invention within a year prior to filing a patent application would not be prejudicial to the validity of any patent application of patent for that invention. This feature has as a result been incorporated into a number of patent laws, including those of Mexico, Canada, the Andean Community, Australia and South Korea.

Another way in which life has become easier is by continuing improvements and enhancements of the Patent Cooperation Treaty. First by simplifying the steps that one had to take to file the application and to delay national phase entry until thirty months from priority, second by permitting some of the work previously done at the point of national phase entry, for example filing of various documents, to be done at the time of original filing of the PCT application and thirdly in improving the quality of the search report, and from January 1, 2009, providing for a supplemental search report carried out by a second searching authority..

At about the same time, there seems to have been a world-wide concern about the lack of patenting activity by small and medium sized enterprises and a surge of enthusiasm for providing “second tier protection” by way of utility models or “petty patents” to provide for cheap ways in which short term protection could be afforded to those who could not afford to pay for patent full patent protection and a proper examination of their applications. Today, however, this wave of enthusiasm seems to be waning as the realization that the existence of large numbers of unexamined rights covering minor improvements can have a negative impact on the development of new technology.

Following the adoption of the Patent Law Treaty, attention again turned to improved harmonization of substantive patent law issues. And proposals were made for a Substantive Patent Law Treaty (SPLT) However, these proposals did not proceed as far or as fast as was hoped and have to some extent been replaced by more limited objectives such as patent law provisions of free trade agreements and the establishment of enhanced cooperation between individual patent offices. Coincident with these efforts there have been increasing concerns in some countries about their needs to be able to address health care issues when patents on relevant drugs are held by foreigners and about what is perceived to be appropriation by foreign countries of their genetic resources and traditional knowledge, all of which creates additional problems in creation of a world-wide system.

Following two failed attempts to move forward with a Substantive Patent law Treaty in 2006, Brigid Quinn, deputy director at the office of public affairs of the U.S. Patent and Trademark Office commented “The U.S. is disappointed that there was no agreement to move forward with substantive patent law harmonization on prior art issues in WIPO,”and. “We think that such an approach would benefit all countries by allowing them to rely more on examination work performed in other countries under common examination standards,” she added. “The U.S. intends to pursue harmonization of prior art issues within the group of developed countries, and will evaluate in the future whether an agreement may be possible in WIPO at some point.” [39]

Free Trade Agreements

In fact the United States had already embarked on a series of agreements with individual countries that contained substantial provisions relating to patent law. The first significant step was the North American Free Trade Agreement, but this has been followed by agreements with Chile, Singapore, Australia, Morocco, Bahrein, Dominican Republic, Costa Rica, El Salvador, Oman, Guatemala, Honduras, Nicaragua, Peru, Colombia, South Korea and Panama.[40] All of the agreements contain a number of patent provisions:

  1. Most of the agreements, those with Chile and Morocco being exceptions, contain TRIPs-type provisions relating to what constitutes patentable subject matter, although as noted below, some of the agreements require the use of patent rather than TRIPs’ other option of plant variety protection for plants.
  2. Provide that patents may only be revoked on the same grounds as the applications for them could have been refused or for inequitable conduct.
  3. A requirement in all agreements, except that with Chile and Peru[41], to provide for patent term extension to compensate for delays in marketing of pharmaceuticals as a result of the need to secure regulatory approval.
  4. All agreements permit limited exceptions from the exclusivity provided by a patent “ provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of legitimate interests of third parties.”
  5. Where activities within the scope of a patent claim are permitted to allow a third party intending to market a pharmaceutical product after a patent has expired to produce data to enable it to obtain marketing approval for such post-expiration marketing, any product produced shall be used solely for this purpose and shall not be exported for any purposes other than for obtaining such approval.
  1. All contain a requirement to provide for patent term extension to compensate for unreasonable delays in the grant of a patent.[42]
  2. All agreements, except that with Singapore, provide for a one year grace period for determining novelty when the publication in question derives from the applicant.
  1. All agreements, except those with Singapore and Chile, require that patents include a written description that enables the invention to be carried out without undue experimentation and is sufficient to show the inventor had possession of the claimed invention at the filing date.

The agreements with Australia, Morocco, Oman and the Central American countries also require that the “credible specific, substantial” utility test of US law be used as the test for whether an invention has industrial applicability.

Improved Cooperation Between Individual Patent Offices

In addition to the inclusion of provisions relating to substantive patent law included in free trade agreements, the Unites States, the European Patent Office and the Japanese Patent Office have been cooperating on several projects for many years. These have been aimed largely at procedural improvements.[43] Cooperation with the European Patent Office includes a program for electronic exchange of priority documents to reduce the work-load in each office. In 2008, cooperation was also extended to the Chinese and Korean patent Offices in the “IP-5″ Group. The IP-5 Group is currently working on a number of projects aimed at improving the quality of patent examination world-wide.

These include:

Common documentation (EPO led)

Common hybrid classification (EPO led)

Common access to search and examination results (JPO led)

Common application format (JPO led)

Mutual machine translation (KIPO led)

Common training policy (KIPO led)

Common examination practice rules and quality management (SIPO led)

Common statistical parameter system for examination (SIPO led)

Common search and examination support tools (USPTO led)

Sharing and documenting search strategies (USPTO led)

During 2006, a new form of cooperation appeared in the form of a patent prosecution highway between the United States Patent and Trademark Office and the Japanese Patent Office. The patent prosecution highway enables applicants who have secured allowance of applications in one of these patent offices to obtain expedited prosecution of an application containing equivalent claims in the other. The United States now has highways with Australia, Austria, Canada, Denmark, European Patent Office, Finland, Germany, Hungary, Israel, Japan, Korea, Mexico, Russia, Singapore, Spain, the United Kingdom and the Nordic Patent Institute.[44] Initially, this route was confined to non-PCT applications, but now the PCT work products from the Australian, Austrian, European, Finnish, Japanese, Korean, Russian and Spanish patent offices acting as International Search Authorities may form the basis of PPH requests.

In November 2009, the U.S., European and Japanese Patent Offices announced that from January 29, 2010, they would expand the use of PPH’s to permit “ re-use of positive results from PCT work products” the results of that examination to the patent office of the other country as if it were an international search report or international preliminary report on patentability issued under PCT.[45] This program has since been expanded to include PCT work products created by the Korean Patent Office.

In July 2011 the PPH MOTTAINAI [46] Pilot Project was launched between the Japanese, US, British, Canadian, Australian, Finnish, Russian and Spanish patent Offices. Under this pilot scheme, it will no longer be necessary for the office of first filing to complete its examination before a PPH request can be made in another jurisdiction, it will be possible to make this request on the basis of the examination carried out be by the office which completes examination first.

From January 6, 2014, a new pilot Global Patent Prosecution Highway (GPPH) arrangement will come into effect. Under the pilot, it will be possible for a request for accelerated processing to be made at any participating office based on work products, including a PCT written opinion from either the International Searching Authority or the International Preliminary Examination Authority, or an international preliminary report on patentability (IPRP) (Chapter II), from any one of the other participating offices, provided that at least one claim has been found to be patentable by the office of earlier examination, and that any other applicable eligibility criteria are met. The pilot will use a single set of qualifying requirements and aims to simplify and improve the existing PPH network to make it more accessible to users. Office participating in the pilot are the Canadian, Danish, Russian, British, Australian, Japanese, Korean, Finnish, Portuguese, Nordic, Norwegian, Spanish, and United States patent offices.

Use of the highways initially proved a little disappointing to the patent offices involved. Possibly this was because of the need to commence prosecution at the country at the receiving end of the highway with claims that may already have been limited during prosecution in the country of first filing and perceived differences in the approach to patentability in different countries leading to fears that claims granted by use of the highway may be narrower than might be secured by ordinary examination. There does now seem to be increasing use of the highways in the computer and telecommunications industries.[47] If the highways do in fact speed up prosecution, however, these fears may be overcome, at least in cases where no limitation of the original claims was required in the country of origin.

A colorful chart showing countries having PPH relationships with each other can be found at:

In the spring of 2010, the UK, Canadian and Australian patent offices (the Vancouver group) agreed to use the work of other patent offices within the group as part of their own examination without the need for applicants to make any request for this as is the case under the patent prosecution highways. The group has been working with WIPO on a pilot Centralised Access to Search and Examination (CASE ) project to permit examiner’s in one country to have secure access to the work product of examiners in other countries. Applicants may draw attention to the allowance of claims in one member of the group to seek expedited treatment in other members of it.   In the summer of 2011 the Australian and New Zealand Patent Offices announced plans for enhanced work sharing with the intention of creating a single application process for both countries during 2013 and a single examination process by 2014.

Not all improvements have been the result of bilateral agreements, however. After a period in the doldrums, WIPO has provided useful tools to assist patent applicants. In particular its document exchange program facilitating the supply of electronic copies of priority documents has reduced the burden on applicants in supply of such documents.[48]

In the summer of 2012, the IP-5 group announced commencement of work on a “Global dossier” on which they would cooperate with WIPO to facilitate preplanned cross-filings; one-portal management of cross-filed applications; elimination of the need to file duplicate documents in multiple offices (e.g., priority documents, prior art citations, and so on); and cost savings through the use of modern machine translation tools. Among IP offices, it provides tremendous worksharing leverage not only through information exchange, but also examiner collaboration—activities adding to patent quality worldwide.

In South America, Argentina, Brazil, Chile, Colombia, Equator, Paraguay, Peru, Surinam and Uruguay are cooperating in the ProSur group to facilitate technological information access to the users and offer to examiners n different National IP Offices an operational environment with modern IT tools, in order to boost the cooperation among the participants.


Despite the pessimism that exists about ever achieving the goal of a global patent fist suggested over 130 years ago, the last half century has in fact seen many real steps forward in making patent laws more similar and therefore more hospitable to international trade than could have been imagined in 1950. The problems now being encountered are not new. Every country has a different perspective depending on its state of economic development, the United States was not shy to discriminate against foreigners in the early stages of its industrialization and Germany and Japan did not permit patent protection for chemicals until the final third of the twentieth century. Nevertheless over time a consensus has developed on many issues which are now effectively “harmonized” in most countries. Indeed there is a case to be made for saying that permitting individual countries some flexibility for experiment in face permits the best ultimate norm to be adopted for such harmonization.


[1]The term “letters patent” means an open letter from the sovereign having general effect, as opposed to private correspondence. A search for “patent” in Lexis state law library finds that most cases in which the term is used still refer to land grants rather than intellectual property.
[2]Venice’s main trading post in the Eastern Mediterranean, the Negropont, fell to the Turks on July 12, 1470.
[3]See in particular the Clothworkers of Ipswich Case (King’s Bench 1615).
[4][1778] 1 WPC 52.
[5]VI Writings of Thomas Jefferson (Washington ed. ) at 180 (1814), quoted in Graham v. John Deere Co 148 USPQ 459 (S. Ct. 1966).
[6]Adam Smith, Lectures on Jurisprudence 83 (Liberty Classics ed 1978)
[7]     “A Connecticut Yankee at King Arthur’s Court” Chapter IX.
[8]See, for example The Economist June 5, 1869. Attacks on the patent system were associated with the free trade movement of the mid-Nineteenth century. This movement began to lose momentum in the 1870’s. It is noticeable that when, following the Meiji Restoration (1864), Japan looked to the West for inspiration, it adopted a patent system, modeled on the German, as early as 1885.
[9]This, however, did not deal with patents but only trademark rights. Most of the early treaties were focused on trademarks rather than patents, although some did cover design rights. For more information on early bilateral treaties see Stephen P. Ladas “Patents . Trademarks and Related Rights: National and International Protection”, Harvard University Press, 1975.
[10]     “Industrial Property” is a term traditionally used in Europe to refer to utility patents, designs and trademarks over the last 30 years or so it has been largely superseded by the term “intellectual property which includes additional topics such as copyright and trade secrets. For a fuller discussion of the history of the Paris Convention see Ladas, “Patents, Trademarks and Related Rights: National and International Protection” , Harvard University Press, 1975.
[11]The French Law of 1844 survived until 1986, with only one significant change after World War II to permit special patents for medicaments. The Imperial German statute of 1877 survived largely unchanged having regard to defining what was patentable until 1978, although the enactment of a law relating to employed inventor’s rights in 1936 had a significant impact.. The U.S. Act of 1952 was largely a restatement and codification of the law as it had existed from the end of the nineteenth century.
[12]This was done on the theory that Germany, which at the time did not grant patents for chemical products, had had an unfair advantage prior to World War I in that German chemical manufacturers could obtain patents in the United Kingdom while British chemical manufacturers were unable to obtain equivalent patents in Germany.
[13]For example until 1962, French patents covered all territories of the French Union except Morocco and Tunis. This fact was a primary reason for the creation of the first international patent granted through a single filing, that of the Organisation Africaine de la Propriété Industrielle which took over responsibility for granting patents in former territories of the French Union in Africa after they achieved independence from France in the early 1960’s. Elsewhere, from 1910 to 1945 Japanese patents extended to Korea and from 1898 to 1947 U.S. patents extended to the Philippines.
[14]The British Patent Act of 1852 restricted the extent of British Patents to the United Kingdom, the Isle of Man and the Channel Islands. That of 1907 dropped the Channel Islands from the scope of protection. However, the 1978 Act added the U.K. continental shelf to the territory covered by a British patent.
[15]This was also the position in Japan up to 1921 when Section 8 of the Japanese Patent Law of that year set out the novelty requirements on a first-to-file basis. The Philippines adopted a version of first to file approach in 1998, Canada in 1989 and the United States will finally adopt a version of it on March 16, 2013.
[16]See, for example Hotchkiss v. Greenwood 52 US 248 (1850) in the United States and Harwood v. Great Northern Railway (1865) 11 H.L.C. 654 in the United Kingdom.
[17]Section 25 of the Patents Act 1907 as amended in 1932 provided a definition of the grounds of invalidity of a patent for the first time. Among these was a provision that a patent was invalid if “the invention is obvious and does not involve any inventive step having regard to what was known or used prior to the date of the patent”.
[18]35 USC 103.
[19]The earlier Japanese laws had simply required an “invention”, although that of 1921 (under which Japan switched from a first-to-invent to a first-to-file regime) required this to be a “new industrial invention”.
[20]In 1968, a requirement for “inventive activity” was added to the prior requirements of novelty and industrial character. Prior to 1968 if the invention was a trivial modification of the prior art, the French courts would typically say that this did not have “patentable novelty”.
[21]Added by the law on International Patent Conventions. Under the German Acts of 1891 and 1936, the requirement was simply “a new invention which allows industrial application.” Interestingly, when codifying the requirement, the German legislature chose different language from that which had hitherto been used by the courts. Thus, whereas the courts had previously referred to the need for “Erfindungshöhe”, the statute requires “erfiderische Tätigkeit”, the same wording as used in the German text of the European patent Convention. Apparently this was done deliberately to make it clear that the new test was not necessarily the same as the old.
[22]In order to provide protection for innovations that did not meet these standards, Germany adopted a utility model law in 1891.   This provided for a three year period of protection (much shorter than that provided by a regular patent – then 15 years from filing in Germany but did not require such a high degree of inventiveness or technical advance. Similar means for protecting “second tier” inventions were also adopted in Japan in 1905, but then did not become fashionable again until the last decade of the twentieth century.
[23]Concerns about the effects of patents of addition started to appear after World War II. In a first phase (such as the Nordic laws of the late 1960’s where the possibility of securing a patent of addition was limited to a situation in which the patent of addition was applied for before publication of the application for the basic patent). Most countries abolished patents of addition in the last quarter of the twentieth century on the ground that such patents had the effect of unfairly extending the protection given by the basic patent into areas that were not patentable to others and made it more difficult to invent around the basic patent. Patents of Addition do, however, still exist in some countries including Australia and India and the U.S. practice of permitting terminal disclaimers in obviousness-type double patenting situations has something in common with the patent of addition approach.
[24]“Any new and useful art, machine, manufacture or composition of matter and any new and useful improvement on any art, machine, manufacture or composition of matter” in the United States; “any manner of new manufacture” in the United Kingdom, limited as noted above from 1919 to 1949 to exclude chemical products..
[25]For example the French law of 1844 required industrial character and novelty but also that the invention was not contrary to ordre public or morality and the exception to patenting chemical products in Germany (which was also true in Japan the Netherlands and Scandinavia.) Furthermore many countries had limitations on the patenting of pharmaceuticals and foodstuffs.
[26]The underlying theory was that it is just as useful to introduce a new idea from abroad as it is to invent it oneself – a valid argument before current means of communication and travel came into being. Up to 1978, the United Kingdom would grant patents to applicants to whom the invention “had been communicated from abroad” irrespective of whether there was a foreign patent for the invention.   Patents of Importation are still possible in Iran and were only recently abolished in Argentina and a variant of the concept still permits registration of British patents in a number of present and former colonies.
[27]France did introduce a search for prior art in 1968, but the results were purely advisory.
[28]Not all countries have deferment for the same period. For example: in Brazil, China, Japan Russia and Taiwan the term is three years from the filing date of the application; in Canada and South Korea it is five years from filing the application; in Malaysia the term is two years from the filing date, but it is possible to request deferral of this term; in Colombia, Ecuador and Peru it is six months from publication of the application; in Thailand it is five years from the publication of the application; in Saudi Arabia it is within a period specified by the Patent Office when the Patent Office is ready to take up the case for examination.
[29]Most European countries west of Belarus and Ukraine are members. However, it should be noted that the European Patent Office does not have the exclusive right to examine patent applications for these countries; national patent offices remain in existence in all of them.
[30]The Strasbourg Convention of 1963 relating to unification of various points of patent law did not come into effect until long after the European Patent Office had opened its doors. IT stemmed from attempts by the Council of Europe to achieve some uniformity between the patent laws of different European countries (such differences were seen to have negative implications on trade) and also from attempts by the Nordic countries to adopt a common patent law, although these attempts in the end did not achieve much.
[31]There are interminable arguments about the scope of patent protection for computer-implemented inventions, with the issue currently before the EPO’s Enlarged Board of Appeal as Case G3/08 [2009] OJ EPO 142. So far as Biotech is concerned, the European Union stepped in with a directive on Protection of Biotechnology Inventions (Directive 98/44 EC) directing each of its member states to adopt the law it set out. Although the EPO is not bound by the directive, because most of its member states national laws had to be amended to conform, the EPO amended its own rules accordingly. (Now EPC Rules 26, 27, 28 and 29).
[32]The present membership is; Benin, Burkina Faso, Cameroon, Central Africa, Congo, Cote d’Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal, Chad, and Togo
[33]At present Botswana, The Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Namibia, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe utilize of ARIPO’s patent examination procedures.
[34]The present membership is: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyz Republic, Russia, Tajikistan and Turkmenistan. Moldova was a member but denounced its membership with effect from April 26, 2012.
[35]The present membership is: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates (UAE).
[36]Currently Bolivia, Colombia, Ecuador and Peru. Chile is an associate member but has not yet adopted Andean Community legislation. Venezuela withdrew from the Andean Community in April 2006 and in September 2008 announced that it would no longer apply IP legislation adopted by the Andean Community. The effect of this on applications filed prior to repudiation of Andean Community legislation is still not clear.
[37]Decision 486 of the Andean Community.
[38]Practical advantages provided by the treaty include the possibility of retrieval of a lost convention priority date and the ability of those outside the country to pay any maintenance fees required without the need for a local agent. The treaty was implemented in the United States by the Patent Law Treaties Implementation Act, the relevant part of which came into effect on December 18, 2013.
[39]Following the enactment of the America Invents Act, David Kappos, Director of the USPTO has said that he intends to make further efforts to persuade countries that do not have a grace period with respect to novelty-destroying publications to adopt one.
[40]An agreement between the United States and Panama has been signed but is still awaiting implementation.
[41]The agreement with Peru permits but does not require such an extension.
[42]The agreements with Australia, Singapore. Morocco, and Bahrein deem delays to be unreasonable if grant does not occur within the later of four years of filing or two years from requesting examination, those with Chile and the Central American countries, the later of five years from filing or three years from requesting examination. The Singapore agreement, however, also provides for an extension if a patent’s grant has been delayed in a country on whose examination the Singapore patent is based. The Bahrein agreement also provides for an extension if a patent’s grant has been delayed in a country on which the Bahrein patent is based. The agreement with Peru provides that such an extension is only available for “non-pharmaceutical” patents and only if requested by the patent owner.
[43]Discussions on substantive harmonization continue in some areas. For example the Tergensee group (Denmark, France, Germany, Japan, UK, USA, and EPO) are discussing what might be the best approach to harmonization of laws on 18 month Publication, Prior User Rights, Grace Periods and Prior Unpublished Conflicting Applications (Secret Prior Art)
[44]See for more details
[45]Details of the New Route can be found at
[46]46According to the JPO web-site, “MOTTAINAI” is a Japanese term meaning “sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized”. In the United States, the pilot is normally referred to as PPH 2.0.
[47]Statistics on the use of the Highways and the results obtained can be found on the JPO website at:
[48]For details of WIPO’s Digital access Service, see:
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