WIPO's Standing Committee on the Law of Patents circulated a new draft Substantive Patent Law Treaty (see EXCO/GB01/CET/1313 and draft Regulations (see EXCO/GB01/CET/1314) in February this year in advance of their 5th session in Geneva on 14-19 May 2001. Following the Executive Committee ("EXCO") meeting in Sevilla in February, FICPI was given a short period of time to make written submissions to the SCP on the draft Treaty.

Group 3 CET immediately prepared a questionnaire for EXCO delegates and certain international members requesting information on three important issues. The questionnaire was circulated by the Secretary-General and by the time the CET executive met in Portsea, Australia, at the end of March 2001, responses had been received from 23 countries or regions. The responses were very useful to Group 3 in preparing submissions to the SCP on points where FICPI did not already have an established view by way of past Resolutions and position papers.

A position paper on the draft was prepared by Group 3 members, Joachim Beier and Julian Crump, and was submitted to the SCP on a provisional basis (pending EXCO approval). The main points made by FICPI were as follows (references to articles and rules refer to the draft Treaty and Regulations):

1. Greater substantive harmonisation of the patent laws of Member States is a desirable objective.
   
   
2. The language of the treaty should be framed so as to inform and guide deeper harmonisation at the level of the courts.
   
   
3. The prior Art. effect of earlier, unpublished applications should only apply in the same jurisdiction and, particularly, should not be global [Art. 9].
   
   
4. FICPI supports a grace period of twelve (12) months, which FICPI considers to be an essential part. of the treaty [Art. 10].
   
   
5. The scope of exclusive rights afforded by a patent should be substantively commensurate with the information disclosed by the specification [Art. 13, alternative B].
   
   
6. The two negative instructions that claims should not be taken literally or treated as mere guidelines have not proven to be particularly helpful in determining the extent of protection conferred by a claim or encouraging harmonisation. Greater convergence of jurisprudence could be achieved if positive guidance were given as to where the true position between those two extremes should be found. For example, it could be stated that the terms of a claim should be given a practical construction, as they would be by a person skilled in the relevant Art. [Art. 14(1) and Rule 11(1)].
   
   
7. In order to achieve fair protection for a patentee, the claims of a patent must be construed to encompass elements which are technically and obviously the equivalents of elements specified in the claims that have been devised since the patent was filed. However, FICPI takes the view that the mechanics of an equivalents doctrine are properly a matter for the courts [Art. 14(2) and Rule 11(2)].
   
   
8. It should not be possible to extend a claim to cover possibilities that, from reading the specification, were obviously intended by the patentee to be excluded from the claim; Art. 14(2) could be amended to incorporate this proviso.
   
   
9. FICPI supports the principle of "file-wrapper estoppel", but strongly believes that it should have a narrow effect and should not have global effect. It should be left entirely for the courts, as its inclusion in the treaty would hinder the ability of the courts to dispose of any given case as they saw fit [Rule 11(3)].
   
   
10. The terms "capable of industrial application" and "useful" are not synonymous in patent law and do not even overlap according to the jurisprudence of many Member States. By "useful" many Member States mean that the entire subject-matter enclosed by a claim should be capable of achieving a particular result. This is dealt with by Art. 13 [Alternative B] but might be reinforced by requiring the subject-matter of a claim to have utility across substantially the entire width of the claim and requiring the description to indicate the utility of the claimed subject-matter [Art. 16].
    
    
11. The "Problem and Solution" system should be required to be used as the normal, default method of presenting and examining an application [Art. 18].
    
    
12. The draft treaty does not include provisions for prior users' rights as they were included in the basic proposal for the 1991 diplomatic conference.
    
    
13. The draft also does not include any provisions concerning the grounds on which a patent or application may be opposed or revoked. FICPI notes the desirability of allowing third parties the opportunity to challenge the validity of a patent on any of the substantive grounds on which a patent application should be examined.
    
    
14. The treaty should include provisions to ensure that there is equal treatment and mutual recognition of the right of privilege between Member States. FICPI proposed suitable wording.

FICPI was represented in Geneva at the 5th session of the SCP by Jan Modin, Group 3 Chair, and Joachim Beier and their report was submitted to the EXCO in Goodwood Park (see EXCO/GB01/CET/1309). Having listened to the representations of delegations to the 5th session, the International Bureau are now working on a revised draft Treaty which will be circulated in advance of the next 6th session of the SCP between 5 - 9 Nov. 2001 when FICPI will again be represented.

If any FICPI members have any comments on the draft Treaty or Regulations they are invited to send them to Julian Crump, Reporter Group 3 by email julian.crump@fjcleveland.co.uk or facsimile +44 (0)20 7831 0749.