Request for Comments on International Efforts To Harmonize Substantive Requirements of Patent Laws, 24566-24569 [E7-8416]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 72, Number 85 (Thursday, May 3, 2007)]
[Notices]
[Pages 24566-24569]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E7-8416]


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DEPARTMENT OF COMMERCE

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.

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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 plharmonization@uspto.gov.
    The comments will be available for public inspection via the 
USPTO's Internet Web site (address: https://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

[[Page 24567]]

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. 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. 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. 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. 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. 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. 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

[[Page 24568]]

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. 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. 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. 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. 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

[[Page 24569]]

are available on the Internet Web site of the USPTO at https://www.uspto.gov/web/offices/dcom/olia/harmonization/.

    Dated: April 26, 2007.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E7-8416 Filed 5-2-07; 8:45 am]
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