Abstract
AbstractPatent laws and regulations in many countries have utilized the flexibility available under the WTO TRIPS Agreement to apply nationally appropriate standards to define the patentability criteria of novelty, inventive step and industrial applicability, in order to ensure the grant of high-quality patents for genuine inventions. Robust search and examination are crucial for the application of this flexibility to ensure the grant of patents for genuine inventions, e.g., for secondary pharmaceutical patent applications which could lead to patent evergreening and adversely impact access to medicines by restraining generic competition. However, limited examination resources of patent offices have been stretched by the tremendous surge in the number of patent applications to be processed, leading to delays and backlogs. This has led patent offices to prioritize efficient and speedy processing of patent applications with their limited resources by using the search and examination work of other patent offices, sometimes to the extent of granting a patent on the basis of a corresponding grant by another patent office. This chapter discusses how work sharing has been driven by the major patent offices as part of a global patent harmonization agenda, both within the WIPO Patent Cooperation Treaty and through technical assistance and cooperation with other patent offices, and suggests how patent offices in developing countries could best harness the advantages of work sharing, particularly in a South-South cooperation framework, while safeguarding the ability to apply in practice the patentability requirements under their national laws through a robust search and examination of patent claims.
Highlights
Patent examination is one of the most critical tools available to a country to ensure that patents are granted for genuine inventions that satisfy the patentability requirements under the law of a country
In the context of pharmaceutical patent applications, if such reliance leads to the application of lower patentability requirements that liberally allow the grant of secondary patent claims, it can have a detrimental impact on access to medicines
The comprehensive reforms envisaged were regional consolidation of international search and examination authorities; eliminating the distinction between national and international applications to avoid duplication of processing the application in the international and national phases; making positive examination results from certain Patent Cooperation Treaty (PCT) international search and examination authorities binding on Contracting States; and, allowing for further deferment of national phase entry of an international application at the option of the applicant). 47WIPO (International Patent Cooperation Union (PCT Union) Assembly) (2000b). 48See, World Intellectual Property Organization (WIPO) (2001)
Summary
Patent examination is one of the most critical tools available to a country to ensure that patents are granted for genuine inventions that satisfy the patentability requirements under the law of a country. Almost over the past four decades, patent offices all over the world have entered into collaborative relationships with each other that has effectively led to the creation of a global web of collaboration networks between patent offices. These networks have evolved in parallel to the pursuit of normative initiatives to harmonize substantive and procedural aspects of patent law in multilateral forums such as the World Intellectual Property Organization (WIPO) or in bilateral or regional trade agreements. This chapter examines how the various kinds of cooperative work sharing arrangements that have evolved between patent offices can impact the ability of a patent office to conduct robust search and examination in accordance with their applicable national law and policy, and the opportunities and challenges that arise from the cooperation between patent offices
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