NEWS   
Press Releases > USPTO Round Table on Harmonization - Responses, Nancy J. Linck

USPTO Round Table on Harmonization

USPTO Roundtable on International Patent Harmonization
Thursday, December 19, 2002
Washington, D.C.


ORAL STATEMENT

OF

ALBERT TRAMPOSCH

Counsel, Burns Doane Swecker & Mathis, Alexandria, VA

Registered Patent Attorney, USPTO Reg. No. 32,069

Co-Director, Intellectual Property Law Program
George Mason University School of Law, Arlington, VA

Former Director, Industrial Property Law Division
World Intellectual Property Organization (WIPO), Geneva, Switzerland
(in charge of procedures leading to the Patent Law Treaty of June 2000
and revival of discussions on substantive patent harmonization
including first draft of Substantive Patent Law Treaty now under discussion)

I would like to thank the Director of the USPTO for giving us this opportunity to help individual inventors and small businesses enter into the global marketplace with their innovations. The comments that I make reflect my own opinion only, and do not reflect the position of any entity with which I am, or have been, affiliated.

In my written comment submitted to the USPTO under the Federal Register notice, I have made two recommendations.


RECOMMENDATION 1

There are only two established systems that I am aware of to aid small inventors obtain patent protection in multiple countries world-wide.

The first system is over one hundred year old. It is free, meaning no cost, no fees. It requires little or no formalities: no additional application, no regulations or procedures, and no bureaucracy.

The second system is thirty-two years old. It requires a separate application and substantial fees. There are hundreds of pages of rules, regulations and 'user guides', and a large bureaucracy.

The first system is the right of international priority under the Paris Convention. The second system is the Patent Cooperation Treaty (PCT). Each system operates to an identical purpose: delaying the time when a patent applicant must pay national fees and begin procedures in foreign countries. The priority right provides twelve months. The PCT provides thirty months.

My first recommendation for modifying the international patent protection is to combine these two systems into a formalities-free 30?month international priority period.

Why would a 30-month priority period be preferable to the PCT? Everyone knows that the PCT is costly (it costs users hundreds of millions of dollars a year), and that the PCT is complex (the voluminous PCT regulations exist in addition to already complex national laws and regulations). But I would add that, after only 32 years, the PCT is out of date.

The PCT was established at a time when direct world-wide cooperation in the area of patents was not feasible. Communication with foreign offices was often difficult and unreliable. International relations were fragmented because of the division of the world into a number of 'blocs.' And international publication of priority documents was nonexistent and impractical.

The PCT overcame these difficulties by establishing an international bureaucracy that could undertake direct communications with national offices, and could provide international publication and distribution services. That bureaucracy, WIPO, was neutral, and could maintain communications and relations with all countries of the world.

All of these considerations are now things of the past. The PCT was designed to address these considerations, and has done so successfully. However, as the considerations have become outdated, the PCT itself has also become outdated.

Today we have immediate world-wide electronic communication, instant access to information, truly global commerce, and easy and reliable relations among national offices. It is a world that is ready to "return to the future": a simple and direct priority system for facilitating international filings.

A lengthening of the international priority period is not without precedent. In the original Paris Convention as adopted in 1883, the priority period for patents was 6 months. By the 1920's, it became clear that six months was insufficient to achieve a major purpose of the priority right: to delay foreign filings until after a first official action was received from the office of the home country. A revision conference extended the period to 12 months.

Decades later, an additional extension was desired. In the 1960's, during the PCT negotiations, it was found expedient to encumber that extension with bureaucracy, fees, formalities, and requirements for international publication and notice to third parties.

Now it is possible without the encumbering formalities and costs.

How can a 30-month priority period be adopted? The first step would be a series of bilateral agreements to establish reciprocal priority periods of 30 months (this would conform to the TRIPS Agreement as long as priority is available for all applications filed in those offices). This series of bilateral agreements could evolve into a broader agreement among like-minded countries, which when proved to work could form the basis for a more global agreement.

RECOMMENDATION 2

My second recommendation to enable small inventors to obtain patent protection abroad, is to eliminate the costly and time-consuming duplication that results from multiple examinations of the same invention in countless offices around the world. Under this arrangement, the office of one country would recognize the examination results that had already been obtained in the office of another country, and vice versa. I will refer to this as "mutual recognition of examination results."

Certain user groups have stated that it is premature to consider mutual recognition of examination results, since international substantive patent harmonization has not yet been achieved. My fear is that we will gather again in 2022, as we are doing in 2002, and we will still be talking about that day in the future when "international substantive patent harmonization" will finally be achieved. Remember that full harmonization will require modification of treaties, national and regional patent laws, national and regional regulations, examination procedures, case law and attorney practice - a daunting thought by any estimation.

Substantive patent harmonization is already a partial fact. Patent law around the world may be 50% harmonized, it may be 70% harmonized, depending on who you talk to. It may even be 90% harmonized depending on which two countries are being compared.

My recommendation is to begin building on the foundation of that huge percentage of harmonization that exists now, without waiting for the distant future when international substantive patent harmonization will be a reality.

A simple mechanism is all that is necessary to identify the applications to which mutual recognition of examination results can be granted: namely, a checklist that would determine whether non-harmonized principles are likely to be applied during examination. Examples of the items on the checklist could include issues relating to first-to-file v. first-to-invent, the existence of oral prior art, and issues relating to patentable subject matter, among others.

Since the degree of harmonization between the United States and other countries differs, it would be desirable to create different checklists for each bilateral relationship, and to have both countries agree on the contents of that checklist. Applications that pass the 'checklist test' would require only one examination for patenting in both of those countries, subject perhaps to a right of refusal on limited grounds by the non-examining country, and a period for public opposition.

Such a system would benefit small U.S. inventors the most. It would benefit them even if it were found that the U.S. system differed so substantially from most foreign systems that the U.S. could only accept mutual recognition in a few cases, since foreign systems might not differ very much from each other. A U.S. applicant might thus foresee one examination in the U.S., and one additional examination that would suffice for a significant number of foreign countries - still far better than the existing system.

Furthermore, the proposed checklist system would provide a practical framework for further harmonization, in which the goal could be simply to reduce the size of the checklists.


CONCLUSION

These two simple yet highly practical recommendations could be combined, as a first step by countries that are prepared to accept mutual recognition for selected applications and a reciprocal 30-month priority period. Other countries could transition into this new system over time.

Thank you for the opportunity to present these thoughts.


[Responses to Questions follows]


USPTO Roundtable on International Patent Harmonization
Thursday, December 19, 2002
Washington, D.C.


RESPONSES TO QUESTIONS

BY

ALBERT TRAMPOSCH

Counsel, Burns Doane Swecker & Mathis, Alexandria, VA

Registered Patent Attorney, USPTO Reg. No. 32,069

Co-Director, Intellectual Property Law Program
George Mason University School of Law, Arlington, VA

Former Director, Industrial Property Law Division
World Intellectual Property Organization (WIPO), Geneva, Switzerland
(in charge of procedures leading to the Patent Law Treaty of June 2000
and revival of discussions on substantive patent harmonization
including first draft of Substantive Patent Law Treaty now under discussion)

I would like to thank the Director of the USPTO once again for giving us this opportunity to help individual inventors and small businesses enter into the global marketplace with their innovations. Again, I state that the responses to the questions set forth here reflect my own opinion only, and do not reflect the position of any entity with which I am, or have been, affiliated.

QUESTION 1.

What can be done at the domestic level to assist small businesses in obtaining foreign patents or otherwise better protecting their intellectual property?


Awareness, awareness, awareness. Awareness not only of the need for international protection, and the easy ways in which it can be lost (pre-filing date disclosures, etc.), but also of the ways in which international rights can be preserved.

The rest is a matter of money - the prohibitive, even astronomical, cost of foreign patent filings. In a day when products and processes can be easily distributed world-wide with the help of the Internet, the cost and complexity of obtaining patent protection in even a small number of foreign countries remains scandalously high.

Is there a need for legislation in this area?

A number of developing countries (Singapore, for instance) are subsidizing small inventors who want to file in foreign countries, but cannot. Perhaps in the U.S. some agency analogous to the Small Business Administration could provide loans or grants to small inventors specifically for the purpose of filing foreign patent applications.

What current programs are considered successful?

I am not aware of any public programs. Often the only means of obtaining sufficient resources for foreign filings seems to be to find a venture capitalist to invest in the technology, or a company to purchase or license the technology, and have them pay for the foreign filings.

Many inventors lose control of their intellectual property rights in this way, by having to assign or license them in order to afford foreign protection. This is a further argument in favor of a Small Business Administration to help fund foreign filings: to enable the small inventor or company to retain ownership of their rights, and thus to have the opportunity in the first place to market the technology as they wish.

QUESTION 2.

What are the major obstacles faced by small businesses when attempting to obtain patents in foreign countries (i.e., translations, formalities requirements, different substantive requirements from the United States)?


Cost, cost, and cost.

What order of priority would you assign to addressing such obstacles?


First cost, second cost, and third cost.

QUESTION 3.

Are any existing programs successfully helping small businesses to obtain patents in multiple countries?

By far the most successful "program" is the time-proven international priority period (established by the Paris Convention and now also included in the TRIPS Agreement), as described in my opening statement.

In particular, is the Patent Cooperation Treaty (PCT) sufficiently used by small businesses when seeking patent protection overseas?

The main purpose of the PCT is the same as the purpose of the international priority period: delaying the time when a patent applicant must pay national fees and begin procedures in foreign countries. This accomplishes at least three things: First, since it would be a practical impossibility for small entities to file applications in a number of countries on the same day, it is a practical procedure for filing in multiple countries without loss of rights. Second, the priority period allows the applicant, at least in theory, to receive a search report and first official action from the office of the initial filing, to help decide if the expense of filing in foreign offices is worthwhile. Third, it provides time during which the applicant can gather the money to pay for foreign filing (e.g., from investors, sale or licensing of the technology, marketing of the product or process, etc.).

The PCT is used by small enterprises, when they are aware of it, and when they can afford it. However, the cost and complexity of the PCT, plus the fact that one must be aware of it at the right time or lose the benefit of it, seem to put the PCT beyond the ability of many small inventors. The international priority period is much more user-friendly, and much more widely used, than the PCT.

How should the PCT be improved?

As set out in my opening statement, I would suggest utilizing the most important aspect of the PCT, namely the 30-month duration, in combination with the user-friendly international priority procedure; that is, I suggest the adoption of a 30?month international priority period, in place of the PCT.

QUESTION 4.

Should any new initiatives (beyond current patent harmonization efforts) be undertaken internationally?

I would strongly recommend that the U.S. government adopt an alternative forum for pursuing international substantive patent harmonization. Such an alternative forum should primarily involve the countries that are most active in granting patents, including but not limited to the current trilateral partners. These countries tend to be the ones that are most interested in building an international patent system that makes sense for the current state of high technology, not just in terms of the subject matter of the patents, but also in terms of in the sophistication of the procedures for obtaining patents (electronic communications, global scope, etc.)

To be successful, such negotiations should involve representatives of the political arms of governments or regional authorities, and not merely representatives of technical organizations that do not have political accountability to the users that are served by their patent systems.

Finally, the chosen forum should not be a self-interested permanent organization, since the underlying goals of such an entity cannot ever be free of its own financially and politically secure future.

One possible option of an alternative forum could be the engagement of a small team of experienced professionals on a project-basis, to serve as an international secretariat. Such a team could operate on a very modest budget, and would have no conflict of interest, since its work would conclude upon successful completion of the international agreement being negotiated.

Thank you again for the opportunity to present these thoughts.

[End]


|.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY