Patentability differences
What sorts of patent law standards need to be harmonized among different countries? First, the subject matter that is eligible for patent protection differs widely around the world. In the United States, for example, business method patents, such as Amazon.com’s one-click patent for ordering online, are protectable. Business method patents are not widely protected in the rest of the world. And unlike the United States, some countries do not allow any patent protection for pharmaceutical inventions.

A second law standard that could use more global harmonization is the law of utility (in the United States) or industrial applicability (in Europe and Japan). Under these requirements, which now do have some similarity around the world, an invention must be “useful” for more than mere amusement or as an object for further research. However, the sorts of inventions that meet these requirements differ. For example, the protections of partial gene sequences (express sequence tags) differ between the United States and the rest of the world.

Third, another patent law requirement that differs among countries is novelty. An invention is eligible for patent protection unless it has been invented before. In other words, you cannot get a patent for an invention that someone previously invented.

However, the laws differ among countries in regard to evidence (called prior art) that can be used to demonstrate what inventions have been invented before. These standards for prior art affect the novelty requirement. The United States has a stricter standard of what constitutes prior art than most other countries. For example, suppose I invented something in Detroit, and on the same day I went to Windsor, ON, to celebrate with a good dinner with my friends. While at dinner, I saw someone at another table who apparently invented the same thing and was showing it off to his dinner companions. Their public demonstration is enough to eliminate and extinguish my patent rights in most of the world. However, it would not be valid in the United States. I could call my patent lawyer and file a patent application within one year in the United States.

Fourth, the “obviousness” (in the United States) or “inventive step” requirement (in Europe and Japan) bars the patenting of obvious modifications of previous inventions. In the United States, this requirement is based on an 1816 Supreme Court case that decided that a ceramic doorknob with the same design as a previously patented wooden doorknob was an obvious modification (simply substituting different materials), and the newer doorknob patent was struck down.

A fifth difference is the type of patent claims that patent offices allow. Americans, Japanese, and Europeans have different styles of claims, and claims are the most important part of a patent. Having to draft the invention and describe the invention in different “frames of reference” around the world has an impact on the type of protection available in the respective countries and, thus, on how those claims can be enforced against alleged infringers.

The United States
The U.S. patent laws have several differences that set our patent system apart from other countries’ patent systems. For example, we stand alone with a “best mode” requirement in our laws. Patent applicants are required to set forth in their applications the “best way” known to them to carry out the inventions. The rest of the world does not have a similar requirement.

We also have a one-year “grace” period for filing inventions. In other words, inventors can use the application in public, and even sell it commercially, for one year without filing a patent application, without losing patent rights. Most other countries do not have a similar provision. However, in a recent speech at the ACS national meeting in Washington, DC, Q. Todd Dickinson, director of the U.S. Patent and Trademark Office, reported indications that the rest of the world may be coming around to adopt a similar provision.

Perhaps most important, we are a country with a “first-to-invent” system. Our system awards the patent to the person(s) who invented the invention first, not to the one who filed the patent application first. However, almost all other countries follow a “first-to-file” system, in which the inventors who file the application first are awarded the patent. Several years ago, then-Secretary of Commerce Ron Brown defiantly told the rest of the world that the United States would never switch to a “first-to-file” system. It remains to be seen whether this will change.

Harmonization efforts
Despite these differences, significant patent law harmonization has already taken place. In general, there are more similarities than differences. First, the Paris Convention was first signed in 1884 and now has been signed by every industrialized nation except Taiwan. This treaty allows an inventor in a signatory country to file an application in his or her home country first and then file corresponding applications within one year in any other signatory country. The filing date for the second applications is the date the patent was first filed in the original country. This is an important advantage for prior art purposes. Furthermore, the treaty states that each applicant from another signatory country is to be treated just like resident citizens of the foreign country with respect to the patent prosecution process.

Second, the Patent Cooperation Treaty (PCT) was signed in 1970 and now has about 100 signatory countries. The goal of the treaty is to handle some of the common aspects of patent prosecution, particularly the procedural aspects and the prior art searching of inventions, enabling one patent to be filed and examined throughout the PCT countries. Accordingly, redundancy of efforts among different patent offices around the world can be diminished or eliminated. The result may be more uniform action and lower costs.

A third harmonization effort has been ongoing negotiations as part of the World Trade Organization’s Trade Related Intellectual Property Rights (TRIPS) agreement. The TRIPS negotiations embody harmonization efforts made in previous General Agreements on Tariffs and Trade (GATT) patent agreements and the North American Free Trade Agreement (NAFTA). One significant harmonization point was the United States’ acceptance that the date of invention of a foreign product or process would be considered as the file date if the foreign inventor applied for a U.S. patent.

A remnant of the TRIPS negotiations has been the Patent Law Treaty negotiations, which concluded in June. The purpose of the negotiations was to discuss harmonizing the filing procedure and filing contents of applications. The United States has taken a “reservation” to the treaty, and it is unclear what impact the treaty would have if Congress put it into legislation.

Fourth, Congress passed the American Inventors Protection Act of 1999. It contained several provisions that brought some aspects of U.S. patent law in parallel with the patent laws of other countries. One key provision is that, starting on November 29, 2000, applications will be published 18 months after their filing. There are some voluntary opt-out provisions that allow inventors to prevent publication. There are also “provisional rights” after publication, primarily monetary damages for infringement. In addition, for the first time in our history, “prior user” rights are available to alleged infringers, as long as a company was using the subject matter of a later-filed patent claim more than one year before that application’s filing date in the United States. Some limitations to these rights may apply, as Congress was unclear as to the extent of this law.

Finally, some harmonization has been achieved in different parts of the world by the creation of regional patent offices. The European Patent Office (EPO), created by the European Union (EU) to handle patents for member states, handles the vast majority of the patent prosecution duties that the patent offices in the various signatory countries would have to. If a patent is granted by the EPO, then that patent must be taken to each individual country and “validated”. Because the same standards of patentability are applied regionwide, it is still possible to file different applications in each of the European countries.

Currently, there is major movement toward an EU patent. Such a patent would be capable of being enforced throughout the EU without validation. An ambitious time- table for implementation, about two years, is being sought. A centralized patent court system, with specialized courts and a centralized appeals court, is also being sought.

Other nations have come together for regional patents, such as many of the former Soviet republics as well as the creation of two regional patent systems in Africa.

Harmonizing advantages
Harmonization’s major benefit is that it cuts legal fees, particularly for pharmaceutical inventions, whose applications are typically filed in several countries. Second, harmonization cuts down on “forum shopping” in multicountry litigation enforcement efforts. Third, harmonization creates certainty of patent rights. Businesses need to know what actions in different countries are going to be covered by a given patent. Fourth, harmonization creates value. The more certainty you bring to the scope of a patent worldwide, the more value you create.

Harmonization is a slow process. Over time, however, all of the baby steps toward harmonization described in this article have cumulatively been bringing the laws of different countries closer together. Some day, perhaps our laws will be similar enough for one patent to suffice worldwide.

Michael D. Kaminski is a partner at Foley & Lardner, an adjunct professor at American University and George Mason University, and 1999 chair of the ACS Division of Chemistry and The Law. Comments and questions for the author can be addressed to the Editorial Office by e-mail at mdd@acs.org, by fax at 202-776-8166 or by post at 1155 16th Street, NW; Washington, DC 20036.