WIPO's Standing Committee on the Law of Patents ('SCP') reconvened in Geneva for its 6th session between 5-9 November 2001 to discuss a revised draft Substantive Patent Law Treaty ('SPLT') prepared by the International Bureau. FICPI was represented by Kazuaki TAKAMI, Vice President of the CET, and CET Group 3 members, Joachim BEIER and Julian CRUMP. Seventy-eight states were represented by governmental delegations, and twenty-four intergovernmental and non-governmental delegations were also present. Many issues of substantive patent law were discussed, in some cases hotly, and a full report (EXCO/US02/CET/1311) was made available to FICPI's Executive Committee for its recent meeting in Newport Beach, California.

The question of prior art came up in a number of different guises, and it was clear that there are presently many significant differences between the practices of the SCP's member states, even where the same text is used. These will need to be solved before substantive harmonisation can be realised.

A reasonable possibility of access?

Draft SPLTr.8(1) largely follows the standard adopted by the European Patent Convention that 'information may be made available to the public in written form, by oral communication, by display, through use or in any other form', but draft r.8(2) which provides that 'information shall be deemed to be made available to the public if there is a 'reasonable possibility that it could be accessed by the public' [emphasis added] gave rise to an interesting debate. Some delegations wanted to delete 'reasonable' for the sake of clarity and legal certainty, whilst others wanted to keep it, believing that the mere possibility of access was not enough. This question has of course been discussed for many years in different fora but has been given new significance by the Internet which makes it possible to 'publish' a web page for only a very short time at an obscure URL. There was general agreement that the meaning of 'reasonable' should be clarified, and that it would be appropriate to elaborate on 'reasonable' in the draft practice guidelines and not merely in the notes for the benefit of the SCP.

A global prior art effect for PCT applications?

Draft SPLTa.8(2) relates to the prior art effect of earlier-filed applications and gave rise to some consternation at the session. FICPI's Executive Committee has already expressed concern that this provision might apply to International patent applications under the PCT in all designated states, irrespective of whether an application is pursued into the national/regional phase. Following a resolution (Resolution 2, Goodwood Park 2001) of the Executive Committee at its Goodwood Park meeting in England in September 2001, the FICPI delegation submitted to the SCP that there could be no justification for the automatic prior art effect of International patent applications in the absence of a single patent grant covering all PCT contracting states. It was argued that the effect would be damaging to industry, bearing in mind the common practice of designating all PCT contracting states, because a patentee would be able to invalidate later-filed patents dated prior to publication of the PCT application in over one hundred countries, even if he had no intention of proceeding in those countries, and also bearing in mind that at least one member of the SCP would like to extend the prior art effect of applications to cover inventive step as well as novelty. In the view of FICPI's Executive Committee, the prior art effect of an International application for a given designated state should only apply if the applicant has completed the national requirements under PCTa.22(1) or PCTa.39(1)(a) in that state, as indeed is the current situation in the EPO and many other contacting states.

It was argued by some that the provisions of existing PCTa.11(3) already mean that all International applications have equivalent effect to regular, national applications in all designated states, including their effect as prior art and, in that respect, the draft SPLT was not seeking to change the current law. Indeed, some thought this was the very essence of the PCT and, although contracting states could have made reservations under PCTa.64(4), in practice only one had done so. One delegation also observed that no-one had objected when the prior art effect of European patent applications had been automatically extended to all EPC contracting states.

Perhaps the situation is not as clear-cut as those parties believe though, because PCTa.27(5) arguably provides an exception to the rule in the context of prior art, giving each contracting state the option of specifying that an International application only constitutes prior art if the national phase has been commenced for that state.

The grace period

As might have been expected there was a very lengthy discussion on the subject of the grace period which had not been considered at all at the SCP's previous session. However, it was not at all expected that so many delegations would be in favour of it. Although quite a few delegations expressed reservations, not many were actually opposed to a grace period. Some member states argued that the grace period issue is intrinsically linked to that of first-to-file, but the Chairman correctly noted that many first-to-file countries successfully operate a grace period, the only problem being that not everybody else has it. Indeed the FICPI delegation agreed that the main problem is not the grace period as such, but the lack of harmonisation on the issue worldwide.

Arguing strongly against the general consensus, the UNICE delegation stated that 'European Industry' would not accept an SPLT 'at any price' and believed that the grace period was 'not best practice, but worst practice', 'as bad as possible' and 'intrinsically bad'. The UNICE delegation said it did not want to return to the 'Dark Ages' but wanted progress. However, UNICE's position was supported by only one member state and three other user groups, who thought a grace period would bring an increased risk of litigation to third parties and more legal uncertainty, and another member state observed that UNICE did not even speak for industry as a whole, noting that in Germany, for example, SMEs contribute at least 50% of turnover and patents and deserve the same level of care as big industry. In relation to the need for legal certainty, a grace period would not alter the general need to file a patent application as soon as possible, and there is also legal uncertainty under the present system which provides for delayed publication by up to eighteen months from filing. In fact, in the opinion of the other member state, a person who becomes aware of an invention by dint of a disclosure which would be excused by a grace period could only be better, and not worse, off since he would have early knowledge of his competitor's work.

FICPI and seven other user groups, including AIPPI and AIPLA, spoke in favour of a grace period (see FICPI's statement on the grace period). One delegation pointed out that these days many large companies are multi-national and so it was unrealistic to purport to represent only 'US Industry' or 'European Industry'. There is an obligation on governments to assist those who are small and inexperienced, those who want the system to help them. The delegation from the Max Planck Institute, noting the growing link between industry and academia, thought a grace period would serve the interests of industry and that countries not having a grace period would be economically disadvantaged. In Japan in 1999, 47% of those invoking the grace period were big industry.

In general, such opposition as there was to the grace period came from countries with a first-to-file system. Legal uncertainty was not seen as a real problem, but there was a need however to explore the issue of intervening rights. The Chairman noted that the issue of first-to-file versus first-to-invent would continue to be important but should be deferred for a Diplomatic Conference when the whole picture could be seen.