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Patent law plays a crucial role in incentivizing innovation and protecting intellectual property rights across the globe. However, significant differences exist between patent systems in various countries, creating challenges for inventors and companies seeking international patent protection. This post examines some key areas in patent law that differ across major jurisdictions.
Patentable Subject Matter
One fundamental area of divergence among different jurisdictions is what qualifies as patentable subject matter. While most countries allow patents on new and non-obvious inventions, the specific exclusions vary. For example, in the United States, abstract ideas, laws of nature, and natural phenomena are not patentable.[1] The European Patent Convention similarly excludes discoveries, scientific theories, mathematical methods, and computer programs "as such" from patentability.[2]
Some jurisdictions take a more restrictive approach. India's patent law explicitly prohibits patents on methods of agriculture or horticulture.[3] China bars patents on scientific discoveries and rules and methods for mental activities.[4] These differences can significantly impact patent strategy, especially for software and biotechnology firms, requiring careful consideration of jurisdictional requirements when seeking international protection.
Novelty and Prior Art
The standards for novelty and what constitutes prior art also differ across patent regimes. The United States switched from a "first-to-invent" to a "first-inventor-to-file" system in 2013, aligning more closely with other countries.[5] However, the U.S. still maintains a one-year grace period allowing inventors to disclose their invention before filing a patent application.[6]
In contrast, most other jurisdictions have an "absolute novelty" requirement. Any public disclosure of the invention before the filing date, even by the inventor, can destroy novelty and prevent a patent from being granted.[7]Inventors must be cautious about early disclosures that could jeopardize patent rights in certain countries.
Inventive Step/Non-Obviousness
While most patent systems require an inventive step or non-obviousness, the specific legal tests vary. U.S. courts apply factors outlined in Graham v. John Deere Co. to determine if an invention would have been obvious to a person having ordinary skill in the art.[8] The European Patent Office uses a "problem-and-solution approach" that differs fundamentally in methodology.[9] Under this approach, the EPO first determines the closest prior art, then identifies the technical problem solved by the invention, and finally assesses whether the solution would have been obvious to a skilled person. This structured methodology often leads to different outcomes than the more flexible U.S. approach.
Japan's patent law states that an invention lacks an inventive step if a person ordinarily skilled in the art could have easily made the invention based on prior art.[10] While the standard appears similar to the U.S. approach, Japanese patent examiners typically apply a more rigorous analysis of combining prior art references, potentially making it more challenging to establish inventiveness in Japan. These differing standards can lead to inconsistent outcomes for the same invention across jurisdictions.
Patent Term
The standard patent term is 20 years from the filing date in most countries, as harmonized by the TRIPS Agreement.[11] However, some jurisdictions offer patent term extensions or adjustments in certain situations. The United States provides patent term adjustment to compensate for delays in patent prosecution at the USPTO, which can extend beyond the standard 20-year term.[12]
While the U.S. system provides broader adjustment opportunities, the EU, Japan, and other countries focus their extensions specifically on pharmaceutical products through supplementary protection certificates. These certificates help compensate for time lost during regulatory approval processes, though the specific requirements and maximum extension periods vary by jurisdiction.[13]
Enforcement and Remedies
Patent enforcement procedures and available remedies also differ significantly across legal systems. In the United States, patent disputes are primarily resolved through federal court litigation, with parties having the right to jury trials in infringement cases. This right stems from longstanding precedent interpreting patent infringement as a traditional legal remedy under common law, though administrative proceedings before the Patent Trial and Appeal Board also play an important role in determining patent validity.[14]
Injunctive relief is generally available to prevailing patentees in the U.S., subject to the eBay factors.[15] In contrast, many European jurisdictions are more hesitant to grant injunctions, especially for standard-essential patents. Germany has traditionally been more willing to issue injunctions, making it an attractive venue for patent litigation.[16]
Some countries like China have established specialized IP courts to handle patent cases more efficiently. China has also increased statutory damages for patent infringement in recent years to strengthen enforcement.[17] These procedural and remedial differences impact forum selection for multinational patent disputes.
Utility Models
Many countries offer utility model protection as a parallel or alternative system to regular patents. Utility models, also called "short-term patents" or "innovation patents," typically have a shorter term (between six to ten years) and lower inventive step requirement compared to standard patents.[18]
Germany, China, Japan, and many other countries provide utility model protection, while the U.S. and UK do not have an equivalent system.[19] Utility models can be strategically valuable, especially for incremental innovations with shorter commercial lifespans.
Conclusion
While efforts at international patent harmonization have made progress, significant differences remain across jurisdictions in both substantive and procedural patent law. Companies must carefully consider these distinctions when developing global IP strategies. Filing and enforcing patents remains a complex endeavor requiring country-specific expertise.
As innovation becomes increasingly global, pressure for greater harmonization is likely to continue. However, national interests and policy priorities will likely preserve some level of divergence in patent systems for the foreseeable future. Practitioners must stay attuned to these differences to effectively protect and leverage patent rights across borders.
Alyssa Ruhlen is a Staff Editor at CICLR.
[1] See 35 U.S.C. § 101 (2018).
[2] Convention on the Grant of European Patents art. 52, Oct. 5, 1973, 1065 U.N.T.S. 199.
[3] The Patents Act, No. 39 of 1970, INDIA CODE § 3(h) (1970).
[4] Patent Law of the People's Republic of China (promulgated by the Standing Comm. Nat'l People's Cong., Mar. 12, 1984, effective Apr. 1, 1985) art. 25.
[5] Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (codified as amended in scattered sections of 35 U.S.C.).
[6] 35 U.S.C. § 102(b)(1) (2018).
[7] See, e.g., European Patent Convention art. 54, Oct. 5, 1973, 1065 U.N.T.S. 199.
[8] Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
[9] See Guidelines for Examination in the European Patent Office, Part G – Chapter VII-2, Eur. Pat. Off. https://www.epo.org/en/legal/guidelines-epc/2024/g_vii.html [https://perma.cc/WRA7-K8CR].
[10] Patent Act, Law No. 121 of 1959, art. 29(2) (Japan).
[11] Marrakesh Agreement Establishing the World Trade Organization, Annex 1C – Agreement on Trade-Related Aspects of Intellectual Property Rights art. 33, Apr. 15, 1994, 1869 U.N.T.S. 299.
[12] 35 U.S.C. § 154(b) (2018).
[13] See, e.g., Regulation 469/2009, 2009 O.J. (L 152) 1 (EC).
[14] U.S. CONST. amend. VII.
[15] eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).
[16] See Huawei Techs. Co. v. ZTE Corp., Case C-170/13, EU:C:2015:477 (July 16, 2015).
[17] Patent Law of the People's Republic of China art. 71 (2020).
[18] See WIPO, Utility models, https://www.wipo.int/web/patents/topics/utility_models [https://perma.cc/E32R-GWM2] (last visited Nov. 13, 2024).
[19] Id.
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