AIPLA Recommendations for Achieving Additional Patent Law Harmonization
As you are well aware, American businesses, small and large, as well as American inventors must, with some exceptions, file separately in each jurisdiction in which they wish to protect their inventions. Each patent application must be searched and examined in each jurisdiction, with the accompanying attorney costs for translating, filing and prosecuting each application according to the national laws of each country. While the one significant exception is the European Patent Office where an applicant can obtain national patents in or extend protection to as many as 30 European countries on the basis of a single filing with the EPO, this process is independent of any prior search and examination conducted in the USPTO. In addition, translation of any resulting patents having effect in any non-English speaking nations is still required. What would truly benefit small businesses, however, would be globally harmonized patent laws that would permit them to draft one application (specification and claims) that would be similarly treated throughout the world.
It is for this reason that AIPLA has long supported "deep" substantive patent law harmonization, particularly of the rules for preparing and processing applications and determining what inventions are patentable. By "deep," we mean harmonization not only of the laws and regulations, but also of the detailed examination practices. Our goal is to achieve a degree of harmonization that would allow the USPTO to give significant full-faith-and-credit to the results coming from other patent examining offices.
It is our desire that a sufficiently deep degree of patent law harmonization could be achieved so that the USPTO could achieve real time savings on both search and examination of U.S. patent applications coming from abroad. This could lead to both lowering the official fees charged by the USPTO and to using some of the time savings to enhance patent quality. Particularly important for one of the goals of this Round Table, such a degree of harmonization would permit the EPO, JPO, and other examining offices to achieve similar savings so that the official fees and attorney fees for filing in these offices could reflect commensurate savings in connection with patent applications filed abroad.
AIPLA recognizes that the United States will need to make a number of changes if such a harmonization treaty is to be achieved. Our traditional system of awarding priority to the first inventor will have to give way to the system of the first inventor to file. Likewise, our territorial restrictions on public use and sale as patent defeating acts will have to be eliminated. These changes are logical in the context of a globally harmonized system for the grant of patents. On the other hand, we also can point to a number of questionable practices in the patent systems of other countries that we would expect would be modeled in such a harmonized system to practices more along the lines of those followed in the United States.
In furtherance of this goal, we have been active participants in the discussions in the Standing Committee on Patents (SCP) of the World Intellectual Property Organization to develop a Substantive Patent Law Treaty (SPLT) and have supported the efforts of the USPTO in this exercise. Unfortunately, in our view, this effort appears in danger of collapse. At the SCP meeting just concluded, there seemed to be a lack of willingness on the part of many participants to actually negotiate and seek substantive harmonization on the basis of what are "best practices." Given the make-up of the countries involved, it would appear that a number of concepts in the European Patent Convention, which are both foreign to US jurisprudence and not in our view a best practice, may find their way into any final treaty text. These include "novelty only prior art effect for unpublished pending applications," National Stage entry required for a pending PCT application to have effect in a designated state, the possible exclusion of prosecution history estoppel to aid in interpreting claims, "industrial applicability" as opposed to "utility," and the requirement to specify the 'technical" field of an invention - to mention a few.
Further complicating the situation, there are proposals from certain developing countries which would sanction members of the SPLT taking any action they deemed necessary to preserve essential security interests, protect public health, or promote public interest in sectors of vital importance to their socio-economic, scientific and technological development.
Notwithstanding these hurdles, AIPLA believes that the United States should continue to actively participate in the SCP meetings on the development of a SPLT. While we do not wish to presume superior knowledge with respect to the means for successfully pursuing the goal of an acceptable SPLT, we would encourage the USPTO to aggressively initiate bilateral contacts with its major trading partners to seek common ground. The United States still represents the largest market under a single patent regime and this fact should be used to our advantage.
At the same time, the USPTO should reach out to those developing countries that are proposing the sweeping loopholes in the rules for when a patent can be denied or declared unenforceable and find constructive ways to assist them in achieving their goals of protecting public health, genetic resources and folklore and traditional knowledge. The TRIPs Council is working on the former issue and U.S. Government agencies have entered into contractual arrangements with developing countries that address the latter. Also, WIPO has a very active Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore which is active in the genetic resource/traditional knowledge arena.
The on-going discussions in the SCP should not be abandoned, certainly not until additional efforts have been made to build support for a patent law harmonization treaty acceptable to the United States. While one hears suggestions that the United States should leave the discussions in the SCP in favor of opening talks with the EPO and JPO in search of at least achieving harmonization with our major trading partners, this could be a false goal. It must be remembered that the resistance to collaboration on a "best practices" harmonized system stems in large part from some of the countries being wed to the European Patent Convention. In addition, it is not at all clear that the European countries, Japan, and the other significant industrialized countries would be prepared to engage in such talks.
In conclusion, we thank the USPTO for holding this forum to allow users to express their views on the desirability of establishing globally harmonized patent laws. As indicated above, we urge the USPTO to stay the course in its efforts to negotiate in WIPO a treaty reflecting best practices - as it has been - and to resist the inclusion of destructive amendments such as those put forward by certain developing countries.