United States Patent and Trademark Office OG Notices: 29 May 2007

DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Docket No. [PTO-C-2007-0018]

Request for Comments on International Efforts to
Harmonize Substantive Requirements of Patent Laws

AGENCY: United States Patent and Trademark Office, Department of Commerce

ACTION: Notice of Request for Public Comments

SUMMARY: The United States Patent and Trademark Office (USPTO) is seeking
comments to obtain the views of the public on international efforts to
harmonize substantive requirements of patent laws, and any potential
subsequent changes to United States law and practice. Comments may be
offered on any aspect of these efforts.

DATES: Comments will be accepted on a continuous basis until June 22, 2007.
See discussion of "Text" in the SUPPLEMENTARY INFORMATION below.

ADDRESSES: Persons wishing to offer written comments by mail should address
those comments to the United States Patent and Trademark Office, Office of
International Relations, Madison West Building, Tenth Floor, 600 Dulany
Street, Alexandria, VA 22313, marked to the attention of Mr. Jon P.
Santamauro. Comments may also be submitted to Mr. Santamauro by facsimile
transmission to (571) 273-0085 or by electronic mail through the Internet
at vog.otpsu|noitazinomrahlp#vog.otpsu|noitazinomrahlp.

The comments will be available for public inspection via the USPTO's
Internet Web site (address: http://www.uspto.gov). Because comments will be
made available for public inspection, information that is not desired to be
made public, such as an address or phone number, should not be included in
the comments.

FOR FURTHER INFORMATION CONTACT: Mr. Jon P. Santamauro by telephone at
(571) 272-9300, by fax at (571) 273-0085 or by mail marked to his attention
and addressed to United States Patent and Trademark Office, Office of
International Relations, 600 Dulany Street, Madison West Building, Tenth
Floor, Alexandria, VA 22313.

SUPPLEMENTARY INFORMATION:

1. Background

The United States has been involved in efforts to harmonize the
substantive patent laws in the different countries of the world for many
years. Recent efforts have been made to streamline this process by limiting
the number of topics for consideration in this exercise with the aim of
achieving a meaningful near-term agreement. These efforts were initiated in
proposals before the Standing Committee on the Law of Patents (SCP),
meeting under the auspices of the World Intellectual Property Organization
(WIPO), but more recently consensus has not been reached on a particular
work plan in that body. Since early 2005, a group of countries, sometimes
referred to as the "Alexandria Process" or the "Group B+," has been meeting
informally to advance discussions on patent law harmonization in WIPO in
the categories of: (1) definition of prior art, (2) grace period, (3)
novelty, and (4) inventive step or non-obviousness. Each of these items
relates to applicability of "prior art." These four categories are commonly
referred to as the "limited package." These are core elements in patent
examination in countries around the world. The "B+" countries include the
United States, Canada, Japan, Australia, New Zealand, Norway, the Members
of the European Union and the Members of the European Patent Convention. It
has been recognized that the items under discussion provide the best chance
for achieving a meaningful near-term agreement on patent law harmonization.

Upon conclusion, an agreement on these elements would provide a
harmonized system on global applicability of these prior art-related
principles. This would allow for more uniform treatment of patent
applications and patent grants, improve patent quality and reduce costs for
patent owners in obtaining and preserving their rights for inventions in
many countries of the world. Meetings of "Group B+" and consultations
relating to the WIPO SCP are expected to be convened in 2007. The USPTO is
interested in obtaining comprehensive comments regarding these efforts.

2. Issues for Public Comment

The purpose of this notice is to identify and briefly outline important
issues that have arisen and are likely to arise during meetings of the
"Group B+" and WIPO SCP on patent law harmonization. A brief summary of
some of these issues is provided below. Any comments provided with regard
to the particular items identified below should be numbered in
correspondence with the numbering of these items as shown. Comments on any
aspects of these topics are welcome. This would include comments relating
to what practices described may constitute "best practices" in an
internationally harmonized system, as well as any other matter relating to
the topics identified. The listing of topics is not meant to be exhaustive.
Comments offered on other topics relating to efforts on patent law
harmonization or to the four "limited-package" categories of defining prior
art, grace period, novelty or inventive step, that have not been
specifically recited below should be provided under the heading "Other
Comments."

(1) Priority of Invention. The United States currently adheres to what
is usually called the "first-to-invent system" with respect to priority
contests between independent inventors who are claiming rights to the same
invention. In the context of current U.S. patent law, this entails the
establishment of (1) conception of the invention and (2) reduction to
practice of the invention by a particular date. Under certain
circumstances, the U.S. system permits the party that has reduced the
invention to practice later than another to prove that it was the
first-to-invent, and thereby entitled to the patent, by establishing a
prior date of conception of the invention. The remainder of the world uses
what is referred to as a "first-inventor-to-file" (or more widely referred
to as "first-to-file") rule in determining the right to a patent. Generally
speaking, this practice determines contests between two parties that have
independently invented the same invention, and awards the patent to the
inventor that files his or her application first in time with the patent
authorities in the relevant national or regional patent system. While this
topic itself is not one of the four categories of the limited package noted
above, this issue would need to be resolved to achieve an agreement on
those issues, and has been raised in that context.

(2) Prior Art Effective Date of Published U.S. Patent Applications.
United States patent law provides that published patent applications and
grants are considered prior art with respect to a second patent application
provided the application is earlier filed in the United States and is
published or granted as required by 35 U.S.C. Sec. 102(e). In other words,
the prior art effective date of a published application or granted patent
is its date of filing in the United States. The Paris Convention provides
that applicants may file first in their country of origin and then have a
twelve-month period in which to file in foreign markets without harming
their ability to obtain protection in those foreign markets. According to
U.S. patent law, applications from foreign applicants who rely on the Paris
Convention priority date obtain a patent-defeating prior art effect only
from the date of filing in the United States. See In re Hilmer, 359 F.2d
859 (CCPA 1966) and 35 U.S.C. Sec. 102(e). In other patent systems in the
world, applicants (including U.S. origin applicants) obtain prior art
effect from the date of their first filing under the Paris Convention,
usually 12 months prior to the filing in the country where protection is
sought. However, current United States patent law does provide that
international application publications under the Patent Cooperation Treaty
are available as prior art as of their international filing date, if the
international application was filed on or after November 29, 2000,
designated the United States, and published in English under the rules of
that Treaty. See 35 U.S.C. Sec. 102(e).

(3) Scope of Prior Art Effect of Published Patent Applications. As noted
above, United States patent law provides that published patent applications
and grants are considered prior art for the purposes of both novelty and
non-obviousness provided the application is earlier filed and is published
or granted as required by 35 U.S.C. Sec. 102(e). Hazeltine Research v.
Brenner, 382 U.S. 252, 147 USPQ 429 (1965). This practice helps to prevent
grant of overlapping patent rights and to prevent third parties from being
threatened by multiple patent infringement lawsuits for substantially the
same acts. Other patent systems apply this type of prior art only with
respect to novelty, due to concerns of the effect of what may be considered
"secret" prior art against a second-in-time inventor who was not aware that
any prior art was in existence when its second-in-time patent application
was filed. This prior art is considered "secret" in these jurisdictions
because this type of prior art has a patent-defeating effect as of its
filing date which is prior to its publication. Such a novelty-only system,
however, may allow for the granting of multiple patents directed to obvious
variations of the same invention.

(4) Grace Period. Through operation of the prior art definitions of 35
U.S.C. Sec. 102, United States patent law provides a "grace period" of one
year prior to the date of application in the United States. Disclosures by
the inventor during the "grace period" do not have a patent-defeating
effect. During this period, only disclosures "by another" have patent
defeating effect. See 35 U.S.C. Sec. 102. The "grace period" is considered
by many to be necessary to allow inventors to disclose their invention
without the penalty of extinguishing any patent rights for that invention.
This is generally raised in the context of those applicants that either
have strong incentives to publish early in their fields or, as in the case
of independent inventors or small entities, those applicants that are not
well versed in the patent system and may inadvertently extinguish their
rights through publication. Some other systems, including that in the
European Patent Convention (EPC), have an "absolute novelty" requirement
such that any disclosures, including those by an inventor himself, made
prior to the date a patent application is filed, are considered prior art.
Proponents of the "absolute novelty" standard generally view this standard
as providing increased legal certainty in that any publication will
constitute prior art against a later filed patent application, regardless
of the author.

An issue raised in this context is the appropriate length of the "grace
period" if introduced globally. Consistent with existing practice, the
United States has argued for a twelve-month grace period to ensure optimal
utility for applicants, and that the grace period should arise solely by
operation of law. Some countries have raised the issue of providing for
procedural mechanisms, such as a requirement for the patent applicant to
make a declaration of intent to invoke the "grace period," that would
require a patent applicant to list any disclosure that the applicant has
made in the past twelve months in order to be considered to fall within the
grace period. However, others have argued that such a procedural mechanism,
which currently does not exist in United States practice, would vitiate the
benefits of such a grace period and harm those parties most likely to
benefit from such a grace period, e.g., small entities or other applicants
less familiar with the patent system.

There are discussions ongoing as well as to the scope of any such grace
period. Some have advocated for a broader grace period that would include
any information disclosed by or on behalf of an inventor. Others have
advocated the view that published patent applications should be excluded
from the grace period on the grounds that applying a grace period to patent
applications published at eighteen months would unduly extend, by an
additional twelve months, the amount of time for applicants to file
multiple patent applications on the same invention. Further, it is argued
that the equities are not the same in this situation as the application has
already knowingly applied for patent protection on the same or related
subject matter.

(5) Geographical Limitations in the Definition of Prior Art. Recent
discussions at the international level have indicated a willingness on the
part of states to eliminate any geographical restrictions that limit the
definition of prior art. Currently, United States prior art requirements
limit certain types of non-written disclosures to acts within the United
States, see 35 U.S.C. Secs. 102(a) and 102(b). Some have argued that these
restrictions discriminate against countries, in particular certain
developing countries where there are traditions of non-written disclosures
that should be patent defeating if adequately established. It has also been
argued that concerns about the reliability of oral or other non-written
disclosures can be more adequately addressed through evidentiary provisions
rather than through the substantive patent law.

(6) "Loss of Right" Provisions. Current U.S. patent law, 35 U.S.C. Sec.
102(b), bars the grant of a patent when the invention was "in public use or
on sale" more than one year prior to filing in the United States. The "on
sale" provision may bar patenting in this instance, even where the
invention has not been disclosed to the public, if it remains "on sale."
Secret commercial use by the inventor is also covered by the bar in order
to prevent the preservation of patent rights when, although an invention
has remained secret, there has been successful commercial exploitation of
the invention by its inventor beyond one year before filing. See, e.g.,
Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts, 153 F.2d 516
(CCPA 1946). These provisions are generally considered to promote early
disclosure of inventions through patents and to prevent unjustified
extensions of the term of exclusive protection by requiring early filing of
patent applications in these circumstances. Most other patent systems do
not have such provisions. Advocates of eliminating such requirements argue
that such requirements are not objective in nature and therefore add
uncertainty and complexity to the patent system.

(7) "Experimental Use" Exception to Prior Art. United States patent law
provides that a public use or sale by the inventor may be exempt from the
prior art if that use or sale was experimental. The courts have considered
a use or sale to be experimental if "it represents a bona fide effort to
perfect the invention or to ascertain whether it will answer its intended
purpose…. If any commercial exploitation does occur, it must be merely
incidental to the primary purpose of the experimentation to perfect the
invention." LaBounty Mfg. v. United States Int'l Trade Comm'n, 958 F.2d
1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting Pennwalt Corp.
v. Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)).
Contrary to the grace period, this exemption from the prior art is not time
limited but is considered on a case-by-case basis. Most other systems do
not contain such a limitation on prior art. If prior public uses are made,
these items constitute prior art, subject to a time-limited grace period in
some jurisdictions, regardless of whether the uses are experimental in
nature, unless the use is not sufficiently informing to the public.

(8) Prior User Rights. While the issue is also not one of those
expressly included in the four limited-package categories, this matter has
been raised by numerous delegations in the context of patent law
harmonization discussions. The United States currently has a defense to
infringement with respect to a person, acting in good faith, who had
actually reduced the subject matter of an invention to practice at least
one year before the effective filing date of a patent application for that
invention by another. See 35 U.S.C. Sec. 273. This defense is limited in
many respects, most notably that it can only be asserted if the invention
for which the defense is asserted is a method, defined as a method of doing
or conducting business, and further that it may not be asserted if the
subject matter on which the defense is asserted is derived from the
patentee or persons in privity with the patentee. These types of
infringement defenses are generally referred to as "prior user rights."
Other countries have varying practices, but more generally apply such
defense to both products and processes and to persons that, in good faith,
either use the invention or make effective and serious preparations for
such use prior to the effective filing date for the patent application.
Further, there is a split between jurisdictions that provide prior user
rights. Some apply these rights more broadly to those parties that have
derived their use from information from the patentee, including
publications by the patentee or inventor prior to the filing date of the
later application. Other jurisdictions take a narrower approach that limits
prior user rights to those persons who, in good faith, independently
developed the later patented product or process. Comments on any aspects of
prior user rights, including whether this element should be included with
the current talks on prior-art related matters, are welcome.

(9) Assignee Filing. United States patent law now requires that a patent
application be made, or authorized to be made, by the inventor or
inventors. However, some systems allow for direct filing of patent
applications by assignees. These systems generally require that the
inventor be named in the application and the entitlement to the patent must
derive from the inventor or his successor in title, such as an assignee.

(10) Eighteen-Month Publication of Patent Applications. Most countries
publish all patent applications at eighteen months after the application's
filing date (or priority date) and prior to grant of the patent. This is
sometimes referred to as "pre-grant publication." This publication
requirement is considered by many to be an important transparency mechanism
for the patent system and to prevent the occurrence of so-called
"submarine" patents that may be pending in the patent office for an
extended period of time and then are granted, potentially affecting good
faith actors in the relevant field. It should be noted that if the patent
application is withdrawn or abandoned by an applicant prior to the
eighteen-month date in these jurisdictions, the application is not
published. The United States currently provides eighteen-month publication
for the large majority of patent applications filed in the United States.
However, U.S. patent applications may not be published if an applicant
requests at the time of filing of an application that the application not
be published and the request certifies that the invention disclosed in the
application has not and will not be the subject of a patent application
in another country or under a multilateral international agreement that
requires eighteen-month publication. See 35 U.S.C. Sec. 122(b)(2)(B). Most
other systems do not have this type of "opt-out" option. Advocates of
eliminating this type of "opt-out" procedure generally consider this type
of provision to undermine the transparency and legal certainty provided by
publication.

3. Further Reference

Comments on any issues regarding the topics listed above, other matters
relating to the four "limited-package" categories of (1) definition or
prior art, (2) grace period, (3) novelty, and (4) non-obviousness, or any
other aspects relating to substantive patent law harmonization are welcome.
To facilitate final preparations for the future meetings, comments will be
accepted until June 22, 2007. Interested members of the public are also
reminded that USPTO previously requested public comments on a wider range
of issues relating to patent law harmonization in March 2001. The responses
to that request for comments are available on the Internet web site of the
USPTO at http://www.uspto.gov/web/offices/dcom/olia/harmonization/.

JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office

Some contributions by different organisations has been posted already on the USPTO website.

Entirely coincidentally, the Digital Majority website, reports on talks between Charlie McCreevy, the European Commissioner responsible for the Internal Market, and Carlos Gutierrez, the US Secretary of Commerce, on increasing efforts to beef up efforts to harmonise international patent law, with a view to making “progress towards an efficient and effective global patent system, especially within the so-called Group B+” (the B+ countries generally being found in the developed world).

http://www.wipo.int/edocs/mdocs/scp/en/scp_12/scp_12_3.pdf

TEC is a funny process. The EU Commission basically bows unilaterally in to aggressive US demands in order to demonstrate its ability to act without getting anything substantial in return from the Americans. The agenda is largely set by the TABD, i.e. large industry stakeholders based in the US. At the press conference Verheugen admitted the lack of competence. Apparently Council members were not fully made aware of the deliberations. Also the consumer group token formally attached to the TEC process, the TACD, were not in possession of the road map document. Its counter part TABD, the transatlantic business dialogue, comprising mostly American multinationals and no SMEs, seems to define the agenda for the transatlantic trade talks and openly tells so.

Alfonso Calles Sánchez from the European Commission announced me today the road map document was finally made available on their website.
Here is the original document:

European Commission-US roadmap to support and facilitate international patent law harmonization
During the first Transatlantic Economic Council (TEC) Meeting on 9 November in Washington D.C., Charlie
McCreevy, European Commissioner for Internal Market and Services, and Carlos M. Gutierrez, US Secretary of
Commerce, agreed that by the next meeting of the Council (end of May 2008), the U.S. Government and
European Commission will agree on a roadmap to support and facilitate international
patent law harmonization. The goal is to make progress towards an efficient and effective global patent
system, especially within the so-called Group B+.
1. The European Commission and US will cooperate at a technical level to lay groundwork for higher level EC-US contacts and will coordinate in advance of upcoming meetings with other Group B+ members and stakeholders with a view to facilitating progress in those discussions. Timeframe: May-September 2008
2. The European Commission intend to discuss with EU Member States on the Alexandria process and the activities mentioned in this roadmap in the framework of the B+ Group. Timeframe: May-September 2008
3. The European Commission and US will cooperate in informal B+ WG1 consultations organized by the WG1 Chair on the basis of the timeline/modalities agreed on the margins of 12 March Trilateral meeting in Munich. Timeframe: May-September 2008
4. The European Commission and US will take note of stakeholder views, in particular at meetings tentatively scheduled to be held in Brussels in May 2008 and in Washington in June 2008. Both sides will share the outcome of consultations with each other and other B+ members. Timeframe: May-July 2008
5. The European Commission and US will exchange views on the draft document to be provided by B+ WG1 Chair as requested during 2007 B+ Plenary, and share those views with EU Member States. Timeframe: May-August 2008
6. The European Commission and US will hold a senior level meeting, as appropriate, to coordinate for the Group B+ Plenary, tentatively scheduled for September 2008. Timeframe: September 2008 (before B+ Plenary)

What is the b+ group? In short its industrial nations, a sub group of WIPO member states. And it includes a trouble maker as Brazil. Substantive patent harmonization is currently mostly blocked because the United States is stuck to perform the switch to a first to file regime and certain developing nations try to water the SPLT down with quite a success. The current draft of the SPLT is an empty cover of what it was supposed to achieve. The most simple way to achieve substantive patent harmonization is to expand the signatories of the Munich convention.

The surprising aspect of the road map is the mandate for the Commission to negotiate with the US and the very tight schedule. The Commission would "share those views with EU Member States", quite a hybris in EC legislative matters. As of the consultations they would only give the Transatlantic Business Dialogue any significant means of influence. The European Parliament will not even be consulted.