[Federal Register: May 3, 2007 (Volume 72, Number 85)]
[Notices]
[Page 24566-24569]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr03my07-33]
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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: 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
[[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 http://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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