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© 2003, Gallagher & Dawsey Co., LPA
January 2003
On December 19, 2002, the USPTO hosted a round table discussion on
proposals for harmonizing U.S. patent law with the laws of other
countries. As we move increasingly to a world economy, this topic will
become of ever greater concern to U.S. inventors. Harmonization is
being advanced at least in part to deal with the ever increasing
backlog of work in world patent bureaus. An interesting figure
mentioned during the discussion was that the average world patent
examiner had 110 active cases in 1995 - and is expected to have 620 in
2003!
A contentious issue is that of the United States' "first to invent"
priority system versus most of the rest of the world's "first to file"
system. This fundamental difference poses great challenges in deciding
what should be held as prior art.
A pharmaceutical representative noted that the major hurdles to
obtaining meaningful foreign patent rights are: (1) cost, particularly
that due to translations; (2) differences in substantive laws,
including lack of a grace period overseas; (3) lack of a meaningful
scope of protection, particularly in the pharmaceutical area; (4)
difficulty in enforcing patent rights; and (5) inability to obtain
sufficient damages. She noted that there had been some inroads made in
costs, noting that the Patent Cooperation Treaty (PCT) has been an
important benefit to small and large U.S. businesses that need to
protect an invention in multiple countries. PCT enables a patent
applicant to apply for protection in a large number of countries and
defer or avoid substantial expenses that would be incurred in applying
for patents directly through national patent offices. In recent years
the PCT has become better known in the U.S. and much more widely used.
Mr. David Peyton, speaking on behalf of the National Association of
Manufacturers (NAM) made a broad recommendation for true international
patenting, advocating the production of a draft treaty as a prototype
patent statute within all signatory states. The NAM advocates that the
draft treaty contain a clear, comprehensive, and definitive statement
of all substantive requirements for patentability. The draft treaty
should include provisions calling for publications of all patent
applications within a specific time period after filing of the
priority documents and specific provisions related to the treatment of
these publications as prior art. As envisioned by NAM, the draft
treaty should contain provisions whereby decisions of patent offices
within any signatory country will be given full faith and credit in
the patent offices of other signatory countries. In effect, this
entails mutual recognition of the patent examination in the signatory
countries.
More details from this important conference can be found at the News &
Notices site on the PTO website: www.uspto.gov. |
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