26th September, 2018
The Group B+ was established in 2005 by a number of industrialised countries and patent offices. Its objective is to promote and facilitate progress on key issues under consideration at the World Intellectual Property Organization (WIPO). Currently, its primary focus is the international harmonisation of substantive patent law.
The B+ Sub-Group on Patent Harmonization was set up by the Group B+ in 2014 to address certain patent harmonisation issues, with a focus on a grace period, prior user rights, and conflicting applications. This sub-group includes Australia, Canada, Denmark, EPO, Germany, Hungary, Japan, Korea, Spain, Switzerland, the UK and the US. Since about 5 years ago, the B+ plenary meetings and some of the Sub-Group meetings are also attended by some user groups as observers, the Industry Trilateral (IT3) including AIPLA, IPO from the US, BusinessEurope (BE) and the Japan Intellectual Property Association (JIPA) as well as AIPPI and FICPI.
On 26 September 2018, there was a B+ Sub-Group meeting in Geneva. The meeting was a closed meeting, with a few exceptions. The Industry Trilateral (IT3) was invited for a session to provide an update of its efforts to provide a patent law harmonisation package, whereas FICPI was invited to present its patent harmonisation position. AIPPI also attended that session as an observer.
So far, FICPI is the only organisation that has worked out a full package, including the three B+ issues currently being under discussion.
FICPI, represented by Jérôme Collin and Jan Modin, advocated that a patent law harmonisation package should (i) be relatively simple and easy to understand, (ii) be based on well-established principles of patent law, and (iii) strike a proper balance between the interests of applicants, third parties and the general public, as well as between large companies and small entities, including individual inventors. This was outlined in the FICPI Presentation at the meeting.
According to FICPI, the harmonisation package should include a grace period (GP) of 12 months after applicant’s own pre-filing disclosure (PFD), which would provide an appropriate safety net. Applicants should be encouraged to voluntarily file a statement of a PFD. After filing such a statement there should be a presumption that the PFD is exempted from prior art when assessing novelty and inventive step for the particular patent application. To improve transparency, FICPI also recommends publication of bibliographic information, along with any voluntary statement of a PFD, within six months of the filing date for all patent applications.
Prior user rights (PUR) are considered to be essential to the safety net approach. PUR, requiring commercial use or significant preparations, may be acquired during the GP, even if it is based on knowledge derived from the applicant before the filing date. This would provide applicants with a strong incentive to file an application as soon as possible after a PFD.
For conflicting applications, the “whole of contents novelty” (WCN) approach is well understood world-wide and is also simple and predictable. It balances the interests of a first and a second filer and does not require any anti-self-collision provisions, nor any terminal disclaimers. The WCN approach will automatically avoid double patenting, since novelty is required even for the same applicant. Thus, international applications (PCT), which cannot give rise to patents in jurisdictions where a national phase has not been entered, should not be treated under WCN, if they have not entered the national or regional phase.
Previously, in June 2018, the Executive Committee of FICPI passed a resolution on conflicting applications urging and encouraging Group B+ and Authorities to adopt the “whole of contents” novelty approach as a model system for international harmonisation of the treatment of conflicting applications. The resolution is based on an in-depth study of the B+ harmonisation topics discussed in a position paper which was also adopted by the FICPI Executive Committee.