AIPPI-Q289: Asking for Harmonization of Disclosure Requirements – Analysis and Opinion from a German and European Perspective

Abstract The authors present the key responses of the German group of AIPPI to Study Question 289 and discuss under which circumstances patent applicants should be obliged to disclose prior art, the consequences of violations of an obligation to disclose under aspects of the law of damages, criminal and constitutional law, and analyse harmonization options from a practical point of view. The WIPO Treaty on Genetic Resources and associated Traditional Knowledge and its consequences for disclosure requirements is also briefly outlined. The authors and the German national group of AIPPI propose the harmonization of patent law internationally so that it only requires limited disclosure of 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 would reduce the burden on applicants, and particularly on smaller entities, enabling them to focus their resources on innovation instead of compliance with strict formal obligations. Patent offices should increase their international collaboration and ensure that search results are shared among them. A patent becoming unenforceable with respect to all of its claims as a consequence of strict disclosure requirements is unlikely to meet the constitutional principles of European states, in particular Germany. An applicant’s conduct may instead be considered regarding the liability for damages. This should be sufficient to incentivize the patentee to fulfil their obligation of truthfulness as part of the disclosure requirements, without unnecessarily shifting the burden on applicants and patent offices.