USPTO Round Table on Harmonization - Responses, Nancy J. Linck

USPTO Round Table on Harmonization

Responses to Questions

Nancy J. Linck
Sr. Vice President, General Counsel & Secretary

December 19, 2003

1. What can be done at the domestic level to assist small businesses in obtaining foreign patents or otherwise better protecting their intellectual property? Is there a need for legislation in this area? What current programs are considered successful?

Harmonization is key to addressing the many challenges standing in the way of obtaining adequate foreign protection. Unilaterally, the U.S. can harmonize its patent laws with the laws of other developed countries to promote international harmonization. More specifically, the U.S. should go to a first to file system. While some are deluded that a first to invent system favors independent inventors and small businesses, that is just not the case. And other countries will not support harmonization until the U.S. adopts a first to file system. In addition, the U.S. needs to get rid of its present restriction practice and adopt a unity of invention standard. Other changes that would move us toward harmonization include elimination of best mode and allowing an assignee to file a patent application. Legislation would be required for most, if not all of these changes.

The only current program that is successful is the PCT. One problem with using the PCT to enter the U.S. is the impact that has on obtaining patent term adjustments. Such adjustments are very important to pharmaceutical and biotechnological companies. A solution might be to adjust the 3 year period to something less when an applicant enters through the PCT. PTO statistics should be used to establish how much faster applications are allowed, once they enter the national stage, compared to ones originally filed in the U.S. That differential would provide a basis for the adjustment. In addition, when examining PCT applications, the PTO should apply unity of invention as the EPO does instead of applying a restrictive view of single inventive concept. While Guilford Pharmaceuticals uses the PCT whenever possible, we prefer to go through the EPO because of the way the PTO applies unity of invention.

The PCT could be improved by getting non-PCT countries to join the PCT.

2. What are the major obstacles faced by small businesses when attempting to obtain patents in foreign countries . and what order of priority would you assign to addressing such obstacles?

The biggest obstacle is cost. When entering the national stage, a small business is typically facing translation costs of several hundred thousand dollars for a relatively small number of countries. It also costs a significant amount of money to prosecute applications overseas, particularly given the different substantive standards that are applied. Another major obstacle is the scope of protection available. Oftentimes, foreign countries demand the claims be so limited as to exclude meaningful protection. Yet another obstacle is the difficulty of enforcing patents in many countries. Formalities are not a significant contributor to the problem.

3. Are any existing programs successfully helping small businesses to obtain patents in multiple countries? In particular, is the PCT sufficiently used by small businesses when seeking patent protection overseas? How should the PCT be improved?

See my answer to question 1 above.

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

First and foremost, the U.S. should find a way to get foreign countries to minimize translation costs. The U.S. should also play an active role in preventing violation of GATT-TRIPS and should oppose any treaty that undermines patent rights in developing countries, such as the draft that recently emerged from Geneva. Further, to the extent it is able to do so, the U.S. should promote harmonization in Europe, such as through the proposed European patent, to be honored throughout Europe, and one European patent court to enforce such a patent.

Additionally, the new PTO Strategic Plan should concentrate on its work-sharing proposals. Implementation of such proposals could help control costs and lead to harmonization with the participating countries.