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******************* © Le-Nhung McLeland
At the arrival of spring, these are the highlights of the
patent scene around Washington.
Deep harmonization: elusive?
The buzz word in patent policy talk these days is "deep
harmonization" of patent laws worldwide. This goal
has been eluding negotiators for some time. A few
years back, when no agreement could be reached on
issues of substantive patent law, the international
committee working under the auspices of the World
Intellectual Property Organization (WIPO), a United
Nations agency in Geneva, sent forth the PLT (Patent
Law Treaty) which was signed in 2000 by a number of
countries, including the United States. The PLT
harmonizes the formalities for processing
patent
applications worldwide. The treaty, which has been
ratified by eight countries in the WIPO system, will take
effect when ratified by 10 countries. To date, the U.S.
Congress has not ratified the treaty.
The uniform formalities prescribed by the PLT
will apply to domestic patent applications in the
signatory countries, as well as international applications
filed in the Patent Cooperation Treaty (PCT) system,
also administered by WIPO.
With the PLT in place, the WIPO Standing Committee
on Patents (SCP) has been working on the next
stage, i.e., substantive harmonization of the patent
laws. After going through a number of iterations, the
committee's draft, known as SPLT
(Substantive Patent Law Treaty), has
apparently lost
momentum for consideration, even though it skirts
controversial issues by deferring them for future
discussion. The most important deferred issue is
whether the SPLT would mandate a "first-to-file"
patent system, as opposed to the "first-to-invent"
system followed only in the United States.
In the meantime, members of the U.S. Congress
continue to hear complaints about the high cost of
obtaining and maintaining patent protection worldwide
from U.S. businesses, in particular small firms.
Legislation proposed by Senator John Kerry (D-MA)
authorizes the U.S. government to finance a portion
of the costs for small businesses to seek patent
protection in foreign countries. Action on the legislation
was deferred until a study conducted by the
General Accounting Office (GAO), an agency of the
U.S. Congress, was completed.
Following a recommendation in the GAO study, the
U.S. Patent and Trademark Office (PTO) held
a "roundtable" hearing in December 2002 to solicit
comments on the impact of substantive patent law
harmonization on small businesses in the United States.
Some views were aired in this forum in more colorful
words than are usually heard among patent
professionals. Representives from businesses and
patent professionals bemoaned the high costs of
worldwide patenting, and thought that "deep
harmonization" of patent laws would reduce costs by
minimizing the amount of substantive work performed
by a foreign patent office and by the applicants'
representatives before that foreign patent office.
Speaking of the patent system, one witness said, " ...
basically, we have got a 19th century system as we're
going into the 21st century economy." Some
proponents of patent law harmonization have given up
on the negotiations conducted under the umbrella of
WIPO in the Standing Committee on Patents as being
hopelessly bogged down in geopolitical jockeying. They
advocate the more expedient route of seeking bilateral
agreements between the major patent granting
organizations in the world, with the possible result that
total global harmonization may eventually follow.
Others think that harmonization should be sought in the
framework of the existing PCT system, instead of
laboring on an elusive SPLT. One witness warned
against ignoring the concerns and demands of the less-
developed economies by forging ahead with bilateral
agreements among the major patent granting
countries. Surprisingly, many patent professionals at
the hearing agreed that the United States should give
up its first-to-invent system to be in line with the rest
of the world, provided that other countries allow a
grace period during which an inventor can disclose an
invention without forfeiting any rights to a patent as a
result of the disclosure. The one-year grace period
available under U.S. patent laws is in sharp contrast to
the laws of other countries, which provide in general no
grace period.
Read transcripts of PTO hearing
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PTO revises 5-year plan |
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The PTO released in February 2003 a revised strategic
plan that does not include some of the controversial
provisions found in last year's version. The revised plan
calls for a smaller increase in PTO fees. It withdraws
the previous proposal to delay examination of an
application until the applicant requests examination,
which is the standard procedure in most other patent
systems in the world, including the European and the
Japanese patent offices. The new proposal calls
instead
for the payment of a search fee and an examination fee
at the time of the initial filing of a patent application,
with partial refund of the search fee and examination
fee if the application is abandoned.
View PTO plan (pdf) »
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Proposed PTO fee increase |
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A new schedule of PTO fees, approved by the
Administration as part of the five-year strategic plan,
was sent to the U.S. Congress for approval. The new
fees will have the greatest impact on patent
applications with more than three independent claims
and/or a claim count greater than 20, because the
surcharge for excess claims will be significantly larger
than now. Historically, U.S. patent applications
originating from Europe or Japan tended to have a high
claim count because the standard practice before the
European and the Japanese patent offices is to have
each dependent claim depend on every one of the
other claims in the application. Such practice runs afoul
of U.S. rules, which prohibit a dependent claim from
depending on a multiple number of claims IF any of
those latter claims are already multiple dependent.
Most importantly, the European and Japanese claim
practice results in a high claim count, since in the
United States a claim that depends on x number of
claims also counts as x number of claims for
the purpose of calculating the filing fee for the patent
application. Under the new proposed fee structure, the
presence of just a few multiple claims could result in a
surcharge fee in the thousands of dollars. (See
www.mclelandpatent.com/tips.html on how to
count claims.)
An apparent aim of the proposed fee structure is to
discourage patent applicants and their attorneys from
requesting an oral hearing before the Board of Patent
Appeals and Interferences when an applicant appeals a
decision of a patent examiner to the Board. The fee
for the oral hearing will jump from $280 to $1,000.
Since the oral hearing is optional, the proposed
increase undoubtedly will result in more cases being
decided by the Board solely on the basis of the written
appeal briefs submitted to the Board, and without the
benefit of an oral hearing. The fee hike will help to clear
the backlog of cases awaiting the scheduling of an oral
hearing.
View PTO comparison of proposed fees »
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PCT applications up 9.7% |
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Last year, 114,048 international patent applications
were filed in the PCT system, an increase of 9.7% over
2001. Applications originating from three countries
accounted for more than half of the total filings:
United States (39.1%), Germany (13.4%), and Japan
(11.9%). The PCT system has experienced phenomenal
growth since the first international applications were
filed in 1985. The total number of applications doubled
from 1992 to 1997, and doubled again from 1997 to
2002.
Read February 2003 PCT Newsletter (pdf) »
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Patent examining at home! |
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Under a new PTO program, about 700 senior examiners
are eligible to work from home one day a week, subject
to meeting certain performance criteria. This is a major
breakthrough because, until now, patent examiners
were prohibited from taking application files away from
PTO premises.
View PTO notice »
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Simpler amendment format |
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The PTO is encouraging patent attorneys to submit
amendments to an application in a simpler format than
was previously required by the PTO. The new format is
only suggested at this time, but will be mandatory later
this year when rules are promulgated officially.
See PTO model for amendment »
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ACS Patent Primer |
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"What Every Chemist Should Know About Patents", 3rd
edition, is now available in print from the American
Chemical Society.
See ACS announcement »
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On the lighter side |
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DEEP HARMONIZATION: neither PCT nor PLT, but the
EQN way!
Credit and much appreciation are hereby given to this
delightful site.
Click on each horse in the link. »
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