Harmonization Needed? The Future of Disclosure Requirements in Patent Law

Abstract

The authors present and discuss requirements related to the duty of prior art disclosure under patent law, consequences of violation of the disclosure duty under aspects of the law of damages, criminal law, as well as constitutional law, and  provide an analysis of harmonization options from a practical point of view.Also the WIPO Treaty on Genetic Resources and associated Traditional Knowledge and its consequences for disclosure requirements is briefly outlined.

For international harmonization the authors opt for limited disclosure requirements  requiring the applicant only to disclose prior art which facilitates the understanding of the technical context and the advantages of the invention from the applicant's point of view at the time of filing. This shall reduce the burden on applicants and particularly on smaller entities such that they can focus their resources on innovation projects instead of spending it to comply with unnecessarily strict formal obligations.

The authors suggest  to foster collaboration between patent offices to ensure consistent examinations across the globe, e.g., using a single source accessible by all examiners of various jurisdictions.

In summary, the authors take the view that strict obligations to disclose any possibly relevant prior art by the applicant are against the German and European patent system in which it is the duty of the patent offices to perform search and examination.

Consequences of non-compliance with strict disclosure requirements, such as a patent becoming unenforceable with respect to all claims contained in a patent is unlikely to meet the constitutional principles of European states, in particular Germany. The patentee’s conduct may instead be taken into account in discretionary decisions such as about costs of opposition proceedings that are otherwise not shifted to the losing patentee, when balancing the parties’ interests in proceedings for provisional measures, and when deciding about staying infringement cases in bifurcated systems. In addition to this there may be the potential liability for damages which would be sufficient to incentivize the patentee to fulfill its obligation to truthfulness as part of its disclosure requirements without unnecessarily shifting  the burden on applicants and patent offices.

JEL Classification: K11, K14, K42, K10