Delays in Patent Examination and Their Implications under the TRIPS Agreement
MIPLC Master Thesis Series (2010/11)
71 Pages Posted: 29 Oct 2012 Last revised: 6 Mar 2014
This paper examines, from a TRIPS Agreement perspective, the increasing delays that many patent offices suffer at present in the examination of patent applications.
Several factors contribute to these prolonged examinations, including the increasing number of patent applications, the complexity of the technologies involved, the lack of sufficient resources and even the voluntary delays caused by applicants themselves or third parties.
These delays cause severe damages not only to the patent applicants – mainly because the effective period of protection is reduced, but also to competitors, other innovators and the market as a whole, as they discourage future innovation and create legal uncertainty.
There are several provisions in the TRIPS Agreement which might become relevant in the analysis of this issue, including those referring to the minimum standards of patent protection and those referring to the administrative requirements for their acquisition and maintenance. Under several of these provisions, Member States suffering delays might actually be in breach of the TRIPS Agreement.
A number of solutions have been suggested in order to reduce delays, or at least alleviate some of their negative consequences, including the grant of provisional protection, term extensions, minimum patent terms and special accelerated proceedings. Considering that these solutions might still leave a Member State at risk vis-à-vis the TRIPS Agreement, the most effective and less costly alternative appears to lie in the collaboration between the different patent offices. Such solution is not likely to raise legal concerns under the TRIPS Agreement, although further harmonization is probably required in view of the many differences still existing among national laws.
Keywords: MIPLC, Patent Law, TRIPS, delays, examination, patent office, member states, term, collaboration, developing countries, innovation, uncertainty
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