Substantive Patent Law Treaty

Article 11: Patentable Inventions

Patents shall be available for any invention, provided they are new, involve an inventive step (are non-obvious) and are capable of industrial application (are useful), in accordance with the requirements prescribed in this Treaty.

This is a repetition of TRIPs Art 27.1, only without the subphrase "in all fields of technology" and thus even a little bit broader. It sets a minimum standard of what must be patentable, based on abstract wordings open to interpretation from the traditional viewpoint of different countries, especially US and EU. The practise of recent years has shown that this provision is used only to extend the rights of the patent applicant and never those of the public. The concept of "technology" has so far served at least in Europe as one of the possible delimiting criteria. Now WIPO is sending out the signal that even this criterion is obsolete or should be removed. Apparently this corresponds to the opinion of leading European patent law experts represented in WIPO, who have in recent years done everything possible to void the implicit requirement that there be a "technical invention" of its restrictive meaning.

We would propose as a replacement for the WIPO formula, the following constitutional statement:

Patents shall be available for inventions of any type, provided that most of the interested social scientists, technology experts and members of the general public of the world have, after adequate study, largely agreed that granting such patents is beneficial to the progress of science and technology and to the overall welfare of the people of the world.

Based on a current somewhat immature consensus, perhaps the following more specific regulation could be discussed:

Patents shall be available for inventions whose disclosure significantly contributes to the progress of the empirical science of nature, i.e. teachings on how to use controllable physical forces to directly cause a result that can not be logically deduced from prior knowledge about physical causality. Patents "may" be granted for inventions that are new, non-obvious and useful, as far as the monopoly rights to such ideas do not impede basic human freedoms such as the freedom of individual activity (independent from industrial organisations), the freedom of the spoken and written word in any type of language, the freedom of determining terms and forms of contract, as well as the freedom of international trade.

In general, there is no mature consensus on where the patent system is beneficial and where not, and therefore it is inadmissible to hardcode anything very specific beyond the initial constitutional statement into international treaties.

Article 14: Industrial Applicability/Utility

An invention shall be considered industrially applicable (useful) if, according to its nature, it can [be made or used in any kind of industry] [accomplish a practical application in the field of art], as prescribed in the Regulations.

Not long ago "industrial application" was generally understood to mean something like "an application in the automated production of material goods". While in the English language the word "industry" has acquired a very broad sense, including the "software industry", the "sex industry" and the "patent industry", in other languages such as French it is still restricted to its traditional meaning, and this has been upheld in court judgements where software was not deemed to be patentable, because it did not constitute the inventive part of an industrial production process (see the Schlumberger case).

The above proposal apparently pleads in favor of the recent anglo-saxon broad view of "industry", which is equal to voiding this traditional patentability limitation of all its meaning. Moreover the WIPO wording is circular, defining "industrial" by "industry". We again propose to replace this by two clear definitions, one for the upper and one for the lower limit:

An invention shall be considered industrially applicable if it contributes to progress in the art of producing material goods. An invention may be considered industrially applicable if reworking it typically implies substantial investment in equipment and paid staff.

Article 3: Adequate Disclosure in Application as a Whole

1. The disclosure of the invention in the application as a whole shall be adequate, if, as of the dateof filing of the application, it sets forth the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art, as prescribed in the Regulations.
2. In respect of the disclosure, no requirement additional to or different from those provided for in par (1) may be imposed.

Article 4: Description

1. The description part of the application shall have the contents, and be presented in the order, prescribed in the Regulations.
2. In respect of the description, no requirement additional or different from those provided for in paragraph (1) may be imposed.

Article 5: Requirements Concerning Claims

1. The claims shall define the matter forwhich protection is sought, as prescribed in the Regulations.
2. The claims, both individually and in their totality, shall be clear and concise, as prescribed in the Regulations.
3. The claims shall be supported by the descriptions and drawings, as prescribed in the Regulations.
4. Theclaims shall be presented as prescribed in the Regulations.
5. In respect of the claims, no requirement additional to or different from those provided for in paragraphs (1) to (4) may be imposed.

Some countries might want to require more modern forms of description or disallow function claims and other abuses that have spread in the patent system in recent years. These regulations tell them that they may not restrict such abuses, but may have to condone new abuses that evolve within the formal framework, as time passes.

In principle, states should be free to impose additional or different requirements on a patentee, if such requirements are justified not by some complacency or protectionism on the part of the bureaucracy but by the constitutional purpose of the patent system. This could be formulated in the treaty as

In respect of ... no additional or different requirement may be imposed unless there is a broad informed consensus among social scientists, technology experts and the general public that such a requirement serves to promote the progress of science and technology and the welfare of the people of the world. Any such requirement must be decreed by the concerned state's highest legislative authority and published as a formal law.