Technical Cooperation and the International Coordination of Patentability of Biotechnological Inventions
| Date | 01 March 2002 |
| DOI | http://doi.org/10.1111/1467-6478.00214 |
| Published date | 01 March 2002 |
JOURNAL OF LAW AND SOCIETY
VOLUME 29, NUMBER 1, MARCH 2002
ISSN: 0263-323X, pp. 137–62
Technical Cooperation and the International Coordination
of Patentability of Biotechnological Inventions
Louise Davies*
Within the formal international framework, the coordination and
harmonization
1
of substantive patentability is currently of a limited
nature, confined to the level of general principles, in contrast to the
greater degree of procedural coordination. This involves increased costs
and a lack of legal certainty for those seeking patents in multiple
jurisdictions, mainly transnational corporations in some research-based
industries such as pharmaceuticals. The problems encountered in
achieving even a basic level of international consensus have encouraged
informal cooperation through what could be conceptualized as `global
patent networks`. Furthermore, the interrelationship between
procedural and substantive patent law issues has led the Trilateral
Patent Offices, an informal, transgovernmental regulatory network of
technical specialists, to undertake projects relating to the harmonization
of procedural and substantive patent law issues primarily in contentious
areas of patentability such as biotechnology.
2
This raises the possibility
of developing convergent interpretations of the patentability rules,
although with implications for accountability and legitimacy.
137
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*Lancaster University Law School, Lancaster University, Lancaster LA1
4YN, England
I would like to acknowledge the helpful comments of Professor Sol Picciotto, Lancaster
University Law School, and the assistance of the European Patent Office in the
preparation of this paper. The sponsorship of the ESRC in this research is also gratefully
acknowledged.
1 In this article the terms ‘coordination’ and ‘harmonization’ will follow the
definitions of S.H. Jacobs, Regulatory Cooperation for an Interdependent World:
Issues for Government (1994) 32. ‘Coordination’ is therefore ‘. . . the gradual
narrowing of relevant differences between regulatory systems, often based on
voluntary international codes of practice . . .’ and ‘harmonization’ ‘. . . the
standardisation of regulation in identical form’.
2 For the purposes of this paper, the term ‘biotechnological inventions’ refers to
nucleic acid molecule-related inventions.
I. INTERNATIONAL COORDINATION OF PATENTABILITY
1. The formal framework and beyond
Negotiators currently attempting to harmonize substantive patent law within
the formal international framework
3
must overcome similar problems to
those faced by their predecessors. Profound tensions caused by north-south
differences in the ideological basis of patent law
4
and the reluctance of
national governments to cede what they perceive to be a portion of national
sovereignty to create a global, harmonized regime
5
simmer beneath the
outwardly tranquil exterior of international negotiations. Each negotiating
party realizes that only by harmonizing substantive patent law will they be
able to reduce the workload and costs of each of their national/regional
patent offices whilst simultaneously reducing the costs of global patent
protection and providing greater legal certainty for applicants. However,
attempts to reach agreement within the formal international framework may
end in failure, or at best, in a semi-satisfactory compromise, following a
protracted period of negotiation.
As it stands, the formal framework for the international coordination of
patentability affords a high level of procedural coordination
6
but provides only
138
3 The World Intellectual Property Organization’s (WIPO) Standing Committee on the
Law of Patents (SCP) is currently discussing a new Substantive Patent Law Treaty
(SPLT).
4 S.K. Sell, Power and Ideas: North-South Politics of Intellectual Property and Anti-
Trust (1998) ch. 4.
5 A.D. Sabatelli and J.C. Rasser, ‘Impediments to Global Patent Harmonisation’
(1995) 22 Northern Kentucky Law Rev. 579–620.
6 Procedural and substantive patent law issues were dealt with separately (by the
Council of Europe) after World War II through the Formalities Convention (1953)
and the Strasbourg Convention (1963). Their key provisions were incorporated into
the Patent Co-operation Treaty (PCT) and European Patent Convention (EPC)
respectively (W. Paterson, The European Patent System (1992) 15–20). The PCT
provides a single process for filing multiple international applications and grants
national rather than international patents. Its substantive provisions are not binding
upon its member states, see, for example, Articles 27(5) and 33(5). (S. Uemura,
‘Programs and Activities for the Reduction of Patent Costs’, symposium paper
presented at 1999 Summit Conference on Intellectual Property, University of
Washington
WIPO’s Patent Law Treaty (PLT) concluded in June 2000 harmonizes the
procedural requirements for filing national and regional international applications
and included provisions for electronic filing. With the exception of the filing date
provisions, it establishes maximum standards which patent offices need apply and
retains consistency with both the Paris Convention and the PCT. (See AIPLA
Conference paper by P. Baechtold, ‘Summary of the Patent Law Treaty and Plans for
the Fu tur e’ 15 February 2001 < http://www .c: \wi ndows\p rofile s\rsagara\
desktop\staff\mike kirk\webcontent\paris symposium\baechtold.doc> last acces-
sed 6 June 2001). At the time of this paper, the PLT has still not entered into
force.
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