Understanding The History Of “Patent Harmonization”: Part 1

Not only the patent systems, but also the intellectual property systems, and more specifically, the legal systems, differ from country to country. This is natural from the viewpoint of “territorial sovereignty” and “territorial principle”. Therefore, according to the “territorial principle”, if an inventor wants to obtain a patent in a foreign country, it is necessary to carry out the procedure for obtaining a patent in the patent office of that country in accordance with the law of that country.

On the other hand, intellectual property, especially inventions protected by patents, are universal in terms of the basic concept of “new technical ideas.” Therefore, the issue of international protection of inventions is how to properly protect such inventions with global qualities under the local idea of “territorial principle”.

“Internationalism” is the opposite of “territorialism” from a regional view point. Therefore, in the patent and industrial property rights fields, “protection by national legal systems based on “territorial principle” is the current legal system, and the opposite concept is “world unification (industrial property rights) law”. Recently, these terms are often referred to differently, such as “territorial principle” being called “localism”, and “world unification law” can be said to be “globalism”. Therefore, regarding the international protection of intellectual property such as patents, it is always necessary to have both localism and globalism perspectives.

Here, the obstacles to the “international protection of inventions” are the “differences in national legislation” and “language barriers”. Regarding “language barriers”, although today it is said to be the “international era”, “language” is still a very big issue for both the PTOs and the patent applicants globally. Regarding the issue of “language barriers”, I only point it out here though it has deep significance in the field of the international patent protection. Next, I discuss how the patent system has made efforts to overcome the barrier of “differences in the legal systems of each country”.

Each country’s patent law stipulates that “the invention to be protected is new” (novelty) and “advanced over conventional technology” (inventive step or non-easiness). Novelty is, so to speak, the “Absolute basic protection requirement” required for inventions. Inventive step or non-easiness relates to “industrial policy” and the local perspectives on technological progress in a country. Therefore, it is in effect the “Industry policy protection requirements”. This novelty and inventive step or non-easiness are the basic patent requirements that are commonly applied to gaining a patent in any country’s patent system.

Therefore, there are legal requirements for novelty and inventive step or non-easiness in every country.  However, it is overcoming the inventive step or non- easiness where the applicant encounters the most difficulty since each country has a high hurdle for thinking on this step, and the height of the hurdle is different across countries due to local government policy. 

As a result there are many cases in which “in the world, a patent was granted in one country, but not in another country”, with inventive step as the reason for refusal.

However, since inventors and applicants may want to obtain a patent and sell the product not only in a certain country but also in foreign countries, it is naturally necessary to obtain a patent not only in his own country but also in foreign countries. Therefore, the situation that “a patent is granted in one country but not in another country” does not protect the applicant.

There has been a long-standing debate about making the patent systems and practices of each country homogeneous. This is where the WIPO and its predecessor, BIRPI, come in. In WIPO, and among patent practitioners, this movement is called as “Patent Harmonization”. Officially, The Japan Patent Office refers to “Patent Harmonization” as “International Institutional Harmony of Patents.”

This flow of “Patent Harmonization” is reflected in the establishment of various patent-related treaties, and at present is as such: the Paris Convention → Patent Cooperation Treaty → Patent Law Treaty.  In addition, although the jurisdiction is different from WIPO, there is also a “TRIPS Agreement” (The Agreement on Trade-Related Aspects of Intellectual Property Rights) by the WTO that captures intellectual property protection from the aspect of world trade.

Again, patent systems differ from country to country. In the next article, Part 2, we look at the history of patent harmonies globally.

By Takaaki Kimura

Managing Partner and Patent Attorney with over thirty-five years of IP law experience.