Citation(2012) 24 SAcLJ 669
Date01 December 2012
Published date01 December 2012

A New Paradigm for International Harmonisation?

The Leahy-Smith America Invents Act makes significant changes in US patent law. Among other things, it moves the US closer to a first-to-file system. As such, the Act adopts a new mechanism for international harmonisation: through convergence rather than top-down imposition of international obligations. This system has much to recommend it. It preserves sovereign authority and democratic values, and gives states an opportunity to experiment with responses to new technologies and organisational changes in the patent industries. After describing the Leahy-Smith America Invents Act and the advantages of convergence, the article discusses institutional developments that can facilitate this mode of harmonisation.

1 Since at least the late 19th century, developed countries have sought to negotiate a comprehensive international instrument to harmonise national patent laws. First in Paris, later in Geneva and then Uruguay, and now in varying locations from Melbourne to Dallas, these attempts have largely faltered or failed. In the last year, however, a legislative initiative in the US – the Leahy-Smith America Invents Act1 (“AIA”) – and proposals in the European Union (“EU”) for the creation of unitary patent protection and a unified patent court2 suggest that the time has come to consider a new paradigm: harmonisation through the

convergence of national and regional legislation, administrative action and judicial interpretation.

2 Reflective of the “new world order” governance structure described by Anne-Marie Slaughter,3 and mirroring the strategy adopted by competition (antitrust) authorities through the establishment of the International Competition Network (“ICN”),4 bottom-up harmonisation has many advantages over the top-down methodology of treaty-making. Convergence can achieve the efficiency objectives that patent offices and patent holders have long sought, yet preserve legitimacy and democratic values, because it allows countries to exercise sovereign authority to advance local interests when domestic concerns outweigh the benefits of global standardisation. Just as important, harmonisation through convergence operates by demonstration – by experience revealing the advantages of a particular approach – rather than obligation by using market leverage and geopolitical power to mandate specific results. With convergence, a state can, as Justice Louis Brandeis famously proposed in an analogous context, “serve as a laboratory, and try novel social and economic experiments without risk to the rest”.5 With appropriate institutional support, other nations can then be encouraged to adopt those approaches that prove effective.

3 This article begins with a short history of the attempts to create a unified global patent regime. It then explains why harmonisation is so important in the patent sphere and why scepticism about a top-down approach is warranted. The article goes on to describe the harmonising features of the AIA and shows how these provisions can be augmented through administrative and judicial interpretation attentive to global concerns. The article concludes with an analysis of the institutional support necessary to make the convergence approach work and suggests why it is superior to ongoing efforts to achieve deep harmonisation through international lawmaking.

I. A short history of multilateral harmonisation efforts

4 As is well known, the move to create an international patent system began in the 19th century, with the adoption of the Paris Convention for the Protection of Industrial Property (“Paris Convention”) in 1883.6 Part of an effort (along with the Berne

Convention for the Protection of Literary and Artistic Works7 (“Berne Convention”)) to deal globally with all of the principal intellectual property (“IP”) regimes, the Paris Convention made two key contributions to international patent law. First, the Paris Convention guaranteed that each Paris Union member would accord to nationals of other Paris Union countries the same treatment it provided to its own citizens.8 Second, the Paris Convention facilitated serial protection by assigning to all successive patent applications priority based on the date on which the first application was filed (so long as later applications were filed within a year).9 The negotiators expected that future negotiations would expand upon these provisions, and negotiations did indeed continue. Formally, in 1893, the United International Bureaux for the Protection of Intellectual Property (“BIRPI”) was founded to administer global copyright, trade mark and patent matters and host further deliberations. In 1967, BIRPI's functions were transferred to the World Intellectual Property Organization (“WIPO”), a specialised agency of the UN, located in Geneva.10

5 In 1970, WIPO oversaw another major global effort: the adoption of the Patent Cooperation Treaty11 (“PCT”). However, like the Paris Convention, that instrument was largely procedural: it established a central system for applying for, and preliminarily examining, patent applications. The PCT thereby reduced the burden of dealing with patent applications, but because substantive harmonisation remained elusive, it could not eliminate the need for repetitive prosecutions and duplicative costs.

6 Substantively, things changed quite dramatically toward the end of the 20th century, when IP was reconceptualised as a trade issue and brought into the Uruguay Round of the negotiations on the General Agreement on Tariffs and Trade (“GATT”). When the World Trade Organization (“WTO”) was created, the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”) became part of the package of mandatory obligations.12 One hundred and fifty-five nations now belong to the WTO, and they all must adhere to the TRIPS Agreement standards for patent protection. These appear to be fairly comprehensive. Initially, some observers went so far as to call

the TRIPS Agreement a patent code and assumed that the WTO Dispute Settlement Body (“DSB”) would fill any remaining gaps in coverage.13 Under the TRIPS Agreement, patents must be available in all fields of technology for new advances, provided they involve an inventive step and are capable of industrial application.14 Patents must subsist for 20 years and create exclusive rights to prevent third parties from making, using, selling, offering to sell and importing the invention within and into the territory of member states.15 The TRIPS Agreement specifies in considerable detail the flexibilities countries enjoy for issuing compulsory licensing or making other exceptions to patent rights, and they are quite narrow.16

7 However, as subsequent actions by WTO member states and adjudication of complaints by the DSB have demonstrated, the TRIPS Agreement, in fact, leaves considerable room for national variation. For example, the TRIPS Agreement does not define the height of the inventive step. Thus, India (home of a powerful generic drug industry) has made it quite high, disallowing patents on most second uses of known compounds17– even though a right to second-use patents is well recognised in developed countries.18 Similarly, the TRIPS Agreement does not define what counts as an industrial application, allowing the US and the EU (indeed, the entire membership of the European Patent Convention (“EPC”)) to disagree on such matters as the protection of business methods and computer programmes.19 Furthermore, because the TRIPS Agreement does not set a priority rule, it allows each country

to determine whether a patent should be awarded to the first creator to file an application or the first party to invent.20

8 With considerable disagreement remaining, this century has witnessed ongoing efforts in WIPO to pursue more thorough – so-called “deep”– harmonisation. That effort, however, split into two components. The Patent Law Treaty (“PLT”), adopted in 2000, further regularised the application process.21 The other part was aimed at substantive harmonisation. However, despite repeated attempts, the Substantive Patent Law Treaty (“SPLT”) never came to fruition.22 Instead, the proponents of harmonisation have adopted a strategy that Laurence Helfer has called “regime shifting”:23 the movement of negotiations to frameworks with differing power distributions; in this case, to bilateral agreements, such as the EU economic partnership agreements and the US free trade agreements, and to plurilateral arrangements, including the Anti-Counterfeiting Trade Agreement (“ACTA”) and the Trans-Pacific Partnership Agreement24 (“TPP”). Negotiations concerning these instruments attempt to achieve more intensive harmony, but they have also proved more intensively controversial. ACTA, for example, is under severe attack in Europe,25 and the TPP is inspiring demonstrations in the cities where negotiators meet (most recently, Dallas, Texas; San Diego, California; and Melbourne, Australia).26 Negotiations of these agreements take place almost entirely

in secret, and in each case, harmonisation has been strictly a matter of escalating to more rigorous standards of protection, rather than finding the least common denominator.
II. The benefits of harmonisation

9 It is not hard to understand why the urge to harmonise has persisted for so long and has continued despite repeated failures. A harmonised system – particularly, a system harmonised to high levels of protection – would arguably maximise incentives to innovate because it would clarify rights and permit rightholders to set the price of their knowledge products in world markets.27 It would thus eliminate the externalities said to be imposed when the citizens of one country freely copy works developed (at considerable expense) elsewhere.28 A single, global level of protection would also direct inventive efforts to the locations where they are best accomplished, thereby capturing...

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