Baltic Region Seminar on Intellectual Property Protection and Enforcement

Riga, Latvia
October 25, 2000

Introduction

Good morning. Thank you very much. It's nice to see so many old friends from WIPO meetings here. I want to commend Mr. Aumeisters, Director of the Latvian Patent Office, and Mr. Naujokas, Director of the State Patent Bureau of Lithuania and the Coalition for Intellectual Property Rights, for assembling such a fine program.

This is my fist visit to Riga, and it is a pleasure for me to be here representing the U.S. Patent and Trademark Office (USPTO). I am especially pleased to be here, as a little more than 100 years ago, in 1897, my great-grandmother boarded a ship in Liepaja to begin her journey to the United States. If not for that journey, I may have grown up here instead of being a visitor.

Overview

As you all know, we are meeting at a time of extraordinary development and opportunity in the field of intellectual property. The need for stronger intellectual property protection and enforcement among trading partners is more important than ever. And that makes the focus of this conference particularly timely and significant. Indeed, the presence here of all of you shows the increasing importance of collaboration as we enter a new age defined by information.

Today, unlike ever before, ideas and innovation are transforming societies and economies around the world. Information-based industries – such as biotechnology, telecommunications, and microelectronics – are changing the landscape of intellectual property law and the contours of the global economy. And, as information technology continues to unite our interests, our commercial, educational, political and cultural ties are becoming ever stronger.

While that interdependence might seem problematic to some, the USPTO welcomes these developments. We do because the more we work together and the more we share our experiences, the closer we all come to guaranteeing opportunities and prosperity for the citizens of the world.

Coming from the United States, I have seen first hand what collaboration and strong intellectual property (IP) rights mean for global and domestic prosperity. In the U.S., IP-related industries have been chiefly responsible for the longest economic expansion in our history – ever. Even though our nation is relatively young compared to most of those represented here today, we think that's a remarkable achievement.

Of course, this economic boom also translates into a large increase in our workload at the USPTO. So far this year, our trademark filings are up nearly 30%, in part because of the explosion of Internet domain names. Patents filings are up about 13%, and that's on top of a 25% gain in the previous two years.

Added to the sheer volume of filings, the complexity of these applications is increasing as well.

At the start of the last century, one-third of all patent applications filed at our Office concerned bicycle technology. Today, we routinely examine patent applications in areas such as genomics, bioinformatics, and combinatorial chemistry. And earlier this year we received an electronic biotech patent application with a sequence-listing equivalent in size to 400,000 pages of paper.

So, as many of you know first-hand, it's an exciting time to be part of the IP arena. It's a time of both great opportunity and great challenge. I'd like to focus my remarks this morning on these opportunities.

Global View

The USPTO, as the U.S. government's principal intellectual property office, is working on a number of different fronts to facilitate global protection for all creators. We are committed to forging partnerships to ensure that national and regional IP policies work in tandem to protect creators – so that every inventor, artist, and writer feels confident in the global marketplace.

We seek to harmonize IP law in order to make patent, trademark, and copyright protection stronger, more affordable, and more accessible. This, in turn, supports innovation and provides even more incentives for the innovation that is driving the global economy.

In the area of patents, the United States strongly supports patenting of all technologies. We believe that history has shown that patent protection for all types of new technologies is critical for the development and commercialization of new ideas. In fact, we have been issuing patents on methods of doing business since the inception of our patent system. And we have a long tradition of issuing quality patents to chemical inventions, including those derived from the human body. As many of you know, these are two areas that have received quite a bit of attention in the media lately.

TRIPs

One focus of the office that I'm a member of at the USPTO, the Office of Legislative and International Affairs, is working with developing economies to bring their domestic laws into compliance with the TRIPs (Trade-Related Aspects of Intellectual Property) Agreement. TRIPs is a fundamental component of world intellectual property protection, because it weaves patent, trademark, and copyright norms into the international trading system. More specifically, Article 27.1 of the Agreement requires that patents be available in all fields of technology.

Article 65 of the TRIPs Agreement required that all World Trade Organization (WTO) developing country Members be in full compliance by January 1, 2000. Least developed country Members have until January 1, 2006, to be in full compliance.

One of our priorities in the United States is to help these developing and transitional economies bring their domestic laws into compliance with the Agreement. We've reviewed numerous draft laws to determine their consistency with TRIPs provisions. We provide practical advice, based on our own experiences, to help countries avoid problems we've had ourselves or have observed. We also provide direct training for governmental officials on everything from patent examination to inter partes judicial proceedings.

Implementing effective global enforcement is absolutely imperative. And this is in area where we still have a ways to go. To this end, my colleagues and I have traveled around the world to provide technical assistance to government officials on enforcement of intellectual property rights. We have conducted programs in recent months in Senegal, Thailand and Washington, D.C., to help make TRIPs implementation a reality, and we continue to offer more courses.

And, closer to home, the U.S. is very pleased with the progress the Baltic States have made in IP protection. With Lithuania's imminent accession to the WTO, we urge you to continue moving forward in areas that need attention. This is particularly true with respect to enforcement – implementing the laws on the books.

Global Patents

With strong substantive and enforcement legislation provide for by TRIPs as a foundation, the next challenge – or opportunity – is to get to the point where the rights of inventors will be universally recognized, without having to seek patent protection in individual countries. As global trade expands and economies become more interdependent, uniform and strong patent protection on a global scale is becoming extremely important.

For most developed countries, a significant portion of exported products rely on IP protection. Nonetheless, we still have antiquated patent systems, both nationally and regionally, that are too cumbersome and expensive.

Fortunately, a number of developments are underway that will eventually lead to the creation of a so-called “global patent” system.

For example, the availability of electronic databases and the Internet are vital in achieving a global patent. Electronic capture, searching, filing and retrieval of patent information have numerous benefits. Today's digital age provides nearly unlimited access to a wide variety of data, while also reducing the flow of paper and the storage space necessary to house paper documentation.

As a result of these advancements in information technology, the way information is handled by various IP offices will change dramatically as patent information is processed and communicated electronically. For example, at the USPTO, we are moving the patent application and trademark registration process from a paper-based system to one that is fully automated. Thus far, in fact, we have received over 60,000 trademark applications electronically.

In addition to these initiatives, we also are working with our Trilateral colleagues in the European Patent Office (EPO) and the Japanese Patent Office (JPO) to improve the efficiency and quality of the patent examination process. Our offices are developing the infrastructure and standards needed for electronic communications, including authentication, digital signatures, and encryption. We are helping to develop common standards for Internet-based Patent Cooperation Treaty filing systems. And we are utilizing the Trilateral Network to exchange search strategies, priority documents, and other data.

Along with the progress associated with information technologies, we also are working to give full faith and credit to searches – and eventually examinations – conducted by major patent offices. This will eliminate duplication of effort, decrease patent offices' workload, and reduce costs to the applicant. In other words, it's a “win-win” situation.

Since 1992, the Trilateral Offices have participated in concurrent search programs on applications in certain technical fields. The results of these programs show that the quality of search improves when examiners of the three Offices were able to confer ahead of time with each other about search strategies and fields of search.

Currently, the JPO is compiling the results from the most recent 1999 Concurrent Search Program. The results will be presented at the Trilateral Meeting in Awaji, Japan later this month. In the meantime, the Trilateral Offices are also developing procedures for a new 2000 pilot concurrent search program. We hope to have an agreement with the JPO and EPO on these procedures during the Awaji meeting so that we can begin work on the program shortly thereafter. Depending on the results of the 2000 Concurrent Search program, the Trilateral Offices will then consider what steps should be taken to give full faith and credit to each other's searches.

Of course, while working to bridge electronic and territorial barriers, achieving global patent protection also necessitates that we build upon de facto harmonization activities, such as the revision of domestic laws and international systems. In that regard, progress in harmonizing procedural matters is being made in areas such as the Patent Law Treaty and the Patent Cooperation Treaty.

• Patent Law Treaty

  Last spring, the WIPO Diplomatic Conference in Geneva concluded with the signing of the Patent Law Treaty (PLT) by 43 WIPO member states, including the United States. The Treaty will enter into force in approximately three years upon ratification by ten member countries.

  As many of you know, the PLT will provide a way around complex national and regional requirements through uniform filing standards and formal procedures among the member countries. Essentially, the PLT takes the requirement standards from the Patent Cooperation Treaty and transports them into national patent systems. These will then be the maximum formal obligations a PLT country could impose on patent applicants.

  By providing more consistent treatment of applications and prosecution procedures, the PLT will allow applicants to develop worldwide protection with greater confidence and at reduced costs. It will also reduce the risks incurred by the loss of potentially valuable IP rights due to filing errors.

  Right now, the USPTO is preparing the ratification package for the PLT and drafting the necessary implementing legislation to submit to our Congress.

• Patent Cooperation Treaty

  On a parallel track, the United States is working to streamline the processing of international applications under the Patent Cooperation Treaty (PCT).

  Although the PCT has had some success in fulfilling its mission, it's still not living up to its full potential. That's because it's far too complicated and rule-bound. Many inventors and patent applicants refuse to use the PCT system because of its complexity and perceived inefficiency.

  That is why the U.S. has put forward a proposal to make the PCT more “user friendly.” Our proposal is the result of formal and informal discussions with other major patent offices, our Trilateral partners, WIPO officials, and PCT users in the United States.

  In conjunction with the adoption of the PLT, these reforms would allow applicants to prepare a relatively simplified patent application in a single format, preferably in electronic form. This would be accepted by all patent offices, throughout the world, as a national patent application or an international PCT patent application.

  Processing of such an application – whether national, international or both – could be accomplished in a much more seamless fashion, minimizing any distinctions between the two. In addition, the system could move away from its current, non-binding patentability opinions and adopt procedures where substantive rights may eventually be granted through the PCT channel.

  Our proposed changes to the PCT would be accomplished in two stages. In the first stage, we propose that the PCT be amended to simplify certain procedures and to conform the PCT to the PLT. These revisions – which could take place within the next five years – include simplification of filing date requirements, residence and nationality requirements, and demand requirements.

  The second stage of reform includes a much more comprehensive overhaul of the entire PCT system. These measures – a more long-term undertaking – would incorporate the regionalization of current search and examination authorities and elimination of distinctions between national and international applications.

  I am pleased that we're moving forward as we'd hoped on these reforms. In fact, at the recent meeting of the Assemblies of the Member States of WIPO, the Assembly approved a proposal of the Director General that establishes a special body to consider the U.S. proposal. That body will consist of member States, International Searching and Preliminary Examining Authorities, and non-governmental organizations representing PCT users.

  So, as we move forward on the PCT and the PLT and monitor the progress of developing nations in the context of TRIPs, we are moving in the right direction.

  That's not to say that achieving a consensus on the outstanding substantive issues won't be challenging. Clearly, it will. Tough questions – such as sovereignty issues, the United States traditional first-to-invent system, and the need to harmonize standards of patentability – all must be addressed. The lack of a meaningful grace period in much of the developed world is a critical issue, as well. Nonetheless, the journey to a global patent system is on its way.

  To that end, the United States urges that the discussions on patent law harmonization which were abandoned in 1994, be resurrected. Hopefully, that will enable us to conclude and implement a substantive patent law treaty by the end of this decade.

  Our ultimate goal must be the establishment of a system whereby patents would be issued in light of, and considered inventive over, all the prior art in the world. These patents would be obtained quickly and inexpensively through a single application. They would be searched, examined, and issued by a recognized authority or group of authorities with binding effect in all participating states.

  The one-stop shopping scheme would benefit all creators – from small businesses and independent inventors to multi-national corporations. At the same time, its simplicity and efficiency would greatly aid industrial property offices throughout the world as they cope with an ever-increasing workload. In short, the benefits of such a system are far-reaching and long overdue.

  Trademarks

  Fortunately, patents is not the only area where we are making progress in streamlining and strengthening IP protection. We also are making important headway in simplifying trademark registration around the world.

  Last year, the U.S. implemented the Trademark Law Treaty, which harmonizes the procedures of national trademark offices worldwide. We hopeful that in the coming months even more progress will be made with our ratification of the Madrid Protocol.

  Rather than having to file separate applications in different countries in the language or languages of those countries, the Madrid Protocol enables trademark owners to register their marks in any of the 65 Madrid counties by filing a single application in either English or French. Quite simply, it is a major step forward.

  In addition, unlike the long-range goals of patent law development, in the trademark area the USPTO has been a strong supporter of efforts to set guidelines – and not treaties – on new areas of trademark law.

  Last year at the WIPO Meeting of the Assemblies, the General Assembly approved the adoption of a Joint Recommendation on Well Known Marks. And this year, the General Assembly approved the adoption of a Joint Recommendation on Trademark Licensing. These “soft law” exercises, developed by the WIPO Standing Committee on Trademarks, are creating important guidelines for national legislatures and courts to harmonize the legal practice in these areas. They are also appreciated by practitioners and trademark owners, I'm sure.

  Copyright

  To complete the triumvirate, let me conclude by discussing a few developments on the copyright front. This is obviously an important area for IP in today's digital world.

  Today in the U.S., and indeed in other parts of the world, copyright-based industries are among the largest and fastest growing economic sectors. In the last twenty years, the industry's share of U.S. gross domestic product (GDP) grew more than twice as fast as the rest of our economy. In fact, in 1997, they added about $350 billion to our GDP and provided nearly 4 million jobs.

  That is the good news. That bad news is that the potential for massive international piracy of copyrighted works is becoming increasingly real thanks to the technologies available on the Internet. As a result, information technologies are having an enormous impact on how copyrighted works are created, reproduced and disseminated.

  Fortunately, the international community understood this threat and in 1996 adopted the two WIPO Copyright Treaties – the WIPO Copyright Treaty (WCT) and the WIPO Performers and Phonograms Treaty (WPPT).

  WIPO Copyright Treaties

  Today, nothing is more important to protecting copyrighted works in the digital environment than the WCT and the WPPT. They make several small changes in the international copyright standards established by the Berne Convention and the TRIPs Agreement, including clarifying copyright protection of computer software and databases. Together they protect most of what is protected in the off-line world – such as books, films, music, photographs, and paintings – from unauthorized reproduction, performance, modification, or translation.

  The United States implemented these changes into our own law via the Digital Millennium Copyright Act of 1998. Last year, we deposited the U.S. instruments of ratification for the treaties, and we applaud Latvia for depositing their instruments of accession as well. The Treaties will only enter into force three months after 30 countries have done so. Last I checked, we were a little more than halfway there.

  Audiovisual Performances

  One of the issues left open under the WIPO treaties is audiovisual performers rights. In fact, the protection of the IP interests of audio-visual (AV) performances is a long-standing, unresolved issue in international intellectual property negotiations.

  Traditionally, the position of the United States and most other common law countries has been that no specific treaty provisions were necessary in this area because the protection of the interests of performers is best dealt with by collective bargaining and private contracts. However, the continuing developments in technology – and the continuing success of the collective bargaining process in resolving differences between the unions and the motion picture studios – has led to a change in this position. In addition, developments in European AV Policies have emphasized the need to resolve differences between the U.S. and European system of protection for performers rights.

  The United States is very pleased that the WIPO General Assembly will convene a Diplomatic Conference on the Protection of Audiovisual Performances later this year, from December 7^th to the 20^th. This will hopefully lead to new protections for performers on television, videos, and film – and, in so doing, further the goal of the international harmonization of IP law.

  Conclusion

  As I indicated at the beginning of my remarks, I believe we are in the midst of one of the most significant periods for intellectual property in history. The challenges and opportunities are great.

  The explosion of the Internet and digital technologies is transforming economies. Patent and trademark systems are under increasing pressure to enhance efficiency, reduce costs, and simplify procedures. And copyrighted works face numerous threats from large-scale, international piracy and counterfeiting.

  So, today, 300 days into the 21st century, the pressure is on all nations to ensure that our IP systems are up to the challenges of the future.

  Will our systems be able to adapt quickly to the needs of emerging technologies and to respond more effectively to the needs of current users? Will we be successful in encouraging the adoption of effective I.P. systems in countries currently lacking them? And most importantly, will we be stewards of an environment that rewards and protects human creativity – on which so much of our future depends?

  The stakes are high, but I am confident that working together we can succeed.

  Thank you very much.