The laws of each country are based on the principle of territoriality, and basically the laws of that country apply only to that country. This is the basis of each country’s legal system, and all legal systems are based on this premise. Each country’s civil law regulates the lives of its people, each country’s constitution protects the human rights of its citizens, and prescribes and maintains its governing structures. International IPO patent examination cooperation is advancing – this is vitally important and welcome within the realm of territoriality.
On the other hand, intellectual property law has strong international implications, and many aspects go beyond the territorial principle. For example, patent law adopts the principle of “absolute novelty” concept, where inventions have to be novel in the world in view of its patentability, so, it is necessary to judge patentability based on global information regarding novelty and inventive step.
In other words, examinations of PTOs on whether or not to grant a patent in a certain country must take into account the situation in other countries. Strictly speaking, this goes beyond territorialism.
Originally, patent law of each country was the industrial law of the country, intended to develop the applicable industry of the country, so it was based on strong nationalism.
However, patent law of all countries currently adopts the “absolute novelty” concept because of the nature of invention. This situation is the same in Design Law, and even Trademark Law prohibits registration of the same or similar trademarks in one’s own country with respect to internationally famous marks.
As such, the first problem to be cleared in order to thoroughly implement the principle of “absolute novelty” in examinations of each country’s patent office is the limitation of examinations due to language barriers of examiners. Furthermore, as a technical problem, there is the issue of creating a database of publicly known foreign documents that will serve as examination materials.
Looking back over the past few decades of my own practice as a patent attorney, I find that almost 20 years ago, foreign documents were rarely cited as evidence of refusal in patent examination by the JPO. However, due to advances in machine translation technology, the JPO often cites not only English-language patent documents but also Chinese-and German language patent documents in examinations. Foreign language document treatment varies by country, but the JPO seems to be very confident in machine translation technology.
Conversely, I have no recollection of a Korean patent document being cited as a rejection reference. The same is true regarding patent documents in other European and Asian countries.
Also, concerning the creation of patent document databases, the examination databases of each country’s patent office are being standardized and shared. Especially, the JPO, the USPTO, and the EPO are actively sharing examination information, including the sharing of patent documents to a considerable level.
The issue of “sharing the information on each corresponding application” is often set as an agenda item at the Trilateral Patent Office Meetings and the Five Major Patent Office Meetings.
In fact, WIPO’s PATENT SCOPE and EPO’s ESPACENET have the most comprehensive collection of patent information, including patent documents from various countries. These databases are very useful in our daily work.
However, even with the progress in the internationalization of examinations, there are naturally limits to the examination capabilities of each country’s patent office, and it is impossible in daily examinations to fully consider whether or not a patent is truly new to the world.
Therefore, it can be said that the concept of “absolute novelty” is more comprehensively being incorporated into the patent system, the invalidation trials system, and invalidation claims in infringement litigation.
Kimura’s recent Japan IP News pieces are available here.
International IPO patent examination cooperation is advancing – this is vitally important and welcome within the realm of territoriality.
