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‘World patents pending’ is one of the most widely abused phrases. Opportunists
attract investors with it and large companies use it to scare off private
inventors. What remarkably few people appreciate is that there is no such
thing as a world patent and that anyone can file a patent application and
then legitimately describe it as ‘pending’.

Although a scheme to grant world patents is still a long way off, some
countries cooperate to make life easier for innovators who want to protect
their inventions in various parts of the world. Two of the most successful
international agreements have been in force since 1978. Until then, innovators
had to file a patent application in every country in which they wanted protection.
With translation charges, official fees and legal overheads, the cost of
securing protection world wide could run into hundreds of thousands of pounds.

Under the Patent Cooperation Treaty, however, a single patent application
can cover up to 45 countries. The World Intellectual Property Organisation,
which runs the PCT from its base in Geneva, does not grant patents, it simply
searches through existing literature, assesses the validity of a claim and
publishes its findings. These are honoured by the treaty’s signatories.
The treaty saves innovators the cost of filing many applications and gives
them time to decide whether it is worth the expense of seeking patents in
individual countries.

The European Patent Convention goes one step further than the cooperation
treaty, although the convention’s jurisdiction is not as wide. A single
application, if successful, leads directly to the granting of a patent that
is recognised in as many of the 14 countries that signed the convention
(Austria, Belgium, Denmark, France, Germany, Greece, Italy, Liechtenstein,
Luxembourg, the Netherlands, Spain, Sweden, Switzerland and the UK) as the
applicant designates.

Such internationalisation of patents is welcomed by Paul Braendli, president
of the European Patent Office (EPO), which grants patents under the terms
of the convention. He notes, however, that it has left national patent offices
desperately seeking a new role. ‘National protection will eventually lose
all its importance,’ he says. ‘In some countries it will happen very quickly.
The Netherlands had a very sophisticated patent system but now wants to
abandon examination. The Dutch patent office will simply register a patent
and then leave it up to competitors to oppose.’

Braendli suggests that national patent offices should tap their expertise
and become a commercial source of patent information. ‘Industry needs people
who are skilled, not just in filing patents, but interpreting them’ National
offices must adapt to survive, he says. ‘The EPO will produce all the data
needed on patents, and supply it to the national patent offices, which can
then disseminate it. This is a new activity and the NPOs must take this
challenge and not stubbornly stick to traditional patent granting activities.’

In this respect, Britain faces a special problem. The British Library,
not the Patent Office, runs what is popularly known as the ‘Patent Office
Library’. The Science Reference and Information Service is housed in Southampton
Buildings in London, which was once occupied by the Patent Office. In other
countries, the libraries are run by the National patent offices. To make
matters even more awkward in Britain, the Patent Office is moving to Wales.

‘The British system must be centralised,’ says Braendli. ‘There must
be a network. The British Library has the documents, but the Patent Office
has the examining staff. It is up to the British Library and Patent Office
to work out a formula on how to offer state-of-the-art searches. It is not
just a question of going into a database and coming up with a list of patents
that are perhaps relevant.’

If the EPO has its way, national patent offices linked by the convention
have a nasty suprise in store. In October, outlining a scheme entitled Horizon
2000, Braendli reminded the 14 participating countries that the EPO, although
obliged to be self-financing, has so far been making an extraordinary gift
to them. After the EPO has granted a patent, annual renewal fees are payable
through national offices. But only half of this money reaches the EPO; the
other half stays with the national office. Last year Britain ‘earned’ nearly
4 million Pounds in this way, while this year Germany will get 20 million
marks (7 million). By the year 2000, calculates Braendli, at least 420 million
marks will be going to the national offices (around 80 million marks to
Britain alone) for virtually no work. Under his scheme, Braendli proposes
that national patent offices should now invest at least some of this money
in a patents information network.

Braendli also pleaded for a solidarity fund to make patent information
available in countries that do not yet have income from international renewals,
such as Spain, Greece, Denmark, Portugal, Finland and the Eastern bloc.
‘If there is to be European integration,’ he says, ‘then industry in these
countries needs protection. And if Western companies are to form joint ventures
and make new technology available, then there must be legal protection available’.
He suggested that 1.5 million marks a year should be earmarked for training.
The EPO’s Administrative Council, which runs the convention and consists
of representatives of the national patent offices of the 14 signatory states,
is reluctant to endorse the idea, however.

The next major step towards one-stop patenting is the Community Patent
Treaty, signed in December 1989 and due to be inaugurated in January 1993
at the latest, predicts Braendli. Under this treaty, a single application
filed at the EPO will, if successful, lead automatically to a patent recognised
in every EC state. (Under the European Patent Convention, successful applicants
must choose in which signatory states they want cover – the more states,
the higher the costs).

A Community patent has been planned since the early 1970s and legislators
had begun to despair of it ever materialising. The sticking point has been
the resistance of some states, such as Ireland and Denmark, to the notion
of supranational patent laws, while other countries, such as Portugal, Spain
and Greece, have insisted that the scheme must apply to every state or none
at all. Its acceptance will further reduce the number of applications filed
at national offices.

The EPO now faces the difficult task of deciding on a pricing structure
that will make the Community Patent Treaty look appealing but still leave
confidence in the European Patent Convention. Whatever happens, the national
schemes will look even less attractive.

Inventors will see the main difference between Community patents and
European patents after the patents have been granted. For a European patent,
the EPO leaves it to national patent offices to handle any opposition by
competitors. For a Community patent, the EPO will retain control and collect
the annual renewal premiums. Under a deal struck in 1973, the EPO will hand
over half the money it collects to national patent offices – a procedure
it already finds irksome. ‘We cannot exclude the fact that the system may
have to be changed in the future,’ says Braendli.

Although he regards the European patent scheme as wildly successful
and profitable, critics argue that the scheme is heavily biased in favour
of society and industry, rather than the inventor. Joseph Straus, professor
of intellectual property law at the Max Planck Institute in Munich, warns
of what happens if a patent application is refused. Because the text will
already have been published, the invention becomes public property. This
can happen even if a patent is refused because the applicant has made a
bureaucratic mistake, like missing a deadline,’ he says. ‘The original idea
of patenting was to strike a bargain between the state and the inventor.
The inventor disclosed full technical details and in return got a limited
monopoly. The provision for publishing pending applications was originally
only a measure to ease the pressure on patent offices. It was meant to ensure
that competitors did not have to wait ten years to find out what was being
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Under the international patent schemes, pending applications are automatically
published 18 months after they are filed. This often comes as a nasty shock
to inventors in the US, where pending applications are secret. Full details
of their inventions can turn up in US public libraries as internatinal patent
applications.

‘The intention behind the European Patent Convention was for the applicant
to get a search report prior to the application being published. If things
looked bad, and the inventor saw he was unlikely to get a patent, he could
abandon the application and block publication. But the EPO now has such
a backlog of work that in 40 per cent of applications, the inventor does
not get a search report ahead of publication.’

Straus says the system is particularly trying for inventors working
in biotechnology. He cites the case of the Onco Mouse, the new breed of
mouse that reseachers at Harvard University genetically engineered to be
susceptible to cancer for medical experiments. The EPO is still trying to
decide whether or not to grant Harvard a patent on the creature (‘A matter
of life and patents’, New ÐÓ°ÉÔ­´´, 12 January).

As well as seeing their applications published for anyone to read after
18 months, inventors of such material must deposit strains and tissues with
the EPO for cryogenic preservation. These are available for inspection.
‘If the patent is subsequently refused, anyone can take some of the sample,
and put it in a fermenter,’ says Straus. ‘It’s a free gift. The patent system
disregards the tangible value of the material. That’s why the biotech industry
is so upset. Some of them may not now even be depositing the best strains
because they know they could lose everything.’

Braendli agrees with Straus that there is a problem. If a patent application
is turned down, ‘that is the end of the story for the applicant. There is
no national court to turn to,’ he says. On the other hand, if a patent application
is accepted, ‘the inventor’s competitors can go to national courts and try
to invalidate the patent’.

Straus and Braendli agree, too, on the poor prospects for a world patent.
‘You can make a jump in law, but that is not sufficient,’ says Straus. ‘I
see little prospect yet of China becoming sufficiently interested in the
exchange of technology to cooperate with a world patenting scheme.’

Braendli is only slightly less pessimistic. ‘The European patent system
was the first step and that took 40 years,’ he says. ‘There is just no mechanism
yet for getting the four dragons, Europe, USA, Japan and China, to work
together.’ He concludes: ‘A world patent scheme would need a world patent
office, with harmonised legislation, searching and examination. I just can’t
see that happening. A single world patent is perhaps something for our grandchildren.’