IP office harmonisation is possible in the next decade
- There will be steps towards harmonisation, driven by the IP5 and WIPO
- Harmonisation of patent procedures will make portfolio management more efficient
- IP counsel will have to decide to what extent to engage in harmonisation initiatives
One part of the IP ecosystem that could have a big impact on in-house departments, but which is often overlooked, are the IP offices – in particular, the so-called ‘IP5’ (those in China, Europe, Japan, Korea and the United States) as well as WIPO. They are leading the way in promoting digitisation of tasks such as searching, translation and classification. But they are also – via the IP5 – promoting harmonisation.
It seems like a distant goal given the problems in harmonising even relatively straightforward issues such as grace periods and privilege, but some people who follow the negotiations believe that the next decade could see big progress. “Hopefully there will be harmonisation between the IP5,” contends one former in-house counsel, while a current head of patents remarks: “Continued harmonisation of IP law among major patent offices is a really significant influence on improving quality and reducing the workload in managing a global portfolio. IP5 has a 10-year horizon – it’s possible that patent laws from big countries will be harmonised in that time. If so, that will have a tremendous impact on reducing the work of portfolio management.”
One question for in-house counsel is to what extent they want to engage in that process. The benefits are clear, but attending meetings and submitting papers on high-level issues are time consuming and not always effective. As we discuss in our report on trademark departments, the higher profile of intellectual property and increasing public engagement in IP-related issues may demand that IP counsel play a bigger role in policy and regulatory issues, alongside the specialists within their companies. Is that something that patent counsel want to do, or are equipped to do?
IP5 and harmonisation
Cooperation between the five biggest IP offices has intensified in the past few years, as well as between the IP5 and industry. The IP5 has working groups on:
- global dossier and patent information; and
- work sharing and quality.
It is also exploring harmonisation of practices and procedures. Taking its lead from a list of topics prepared by industry, it has published reports on:
- unity of invention;
- citation of prior art; and
- written description/sufficiency of disclosure.
In August 2018 the IP5 published the report of the first case studies on written description/sufficiency of disclosure. Work on all these areas is continuing.