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Patent harmonization: Why should we be like everyone else?

Thomas Jefferson began the United States' policy of providing strong patent protection to inventors. Jefferson's influence is found in the U.S. Constitution's "invention clause" that allows promoting "the Progress of Science ... by securing for limited Times to ... Inventors the exclusive Right to their ... Discoveries."

This basic pronouncement began the U.S. tradition of providing patent protection that protects the inventor and the invention. The United States has evolved a unique set of patent laws that embody this tradition. U.S. patent laws guarantee that protection, but in the process, complicate some aspects of our patent law in a way that is unique among all world systems.

Patent harmonization -- making our patent system consistent with other countries' systems -- is often discussed by patent experts. However, if ever realized, patent harmonization would likely remove many of these inventor protections. Do we want such a fundamental paradigm shift in U.S. patent culture? What will it really get us?

Scott Harris

United States patent law has a goal of protecting the inventor and the invention -- no matter how much that protection will complicate the patent system. Compare this with countries such as Germany (and Japan and China, whose patent systems are based on the basic German law), whose patent law rules protect and streamline the patent system. The German inventor who obeys the system flawlessly is protected. If not, that inventor suffers by losing some or all rights to the invention. The system reigns supreme.

Many of the differences between U.S. and foreign laws track closely this basic philosophy difference.

First to invent versus first to file

The U.S. awards a patent to the first inventor, as long as they are diligent in filing the patent application. The first inventor obtains exclusive rights in the United States, whether or not that inventor was the first to invoke the "process" for securing the patent. The inventor reigns supreme. The system may be complex at times, but the inventor remains protected.

The European system says that's crazy -- look what that does to your process. No inventor can ever be sure that their filing date is really the first-filed application, and, therefore, they can never be sure of the sanctity of their filing date. The Europeans say that certainty should be more important than protection of the first inventor. The Europeans also say that the process should control -- so whichever inventor races first to the patent office should win. Rush to the patent office becomes more important than rush to invent.

Our constitutional mandate is clear: Provide exclusive rights to the inventors. The European system provides exclusive rights to the first person to reach the patent office with a patent application. Do you protect the inventor or do you protect the system? Harmonization would favor the latter.

Grace period

The United States also has a unique one-year grace period, during which an inventor's own work cannot be used to defeat the inventor's right to get a patent. The U.S. protects that inventor during the grace period against any disclosure of their invention.

The contrary European rule requires absolute novelty. With some exceptions, a European inventor can defeat their right to patent when they or anyone else reveals information about their own invention, even a day before filing. Even an accidental disclosure by a lab assistant or marketing executive can defeat patentability in Europe. A minor mistake may cost the inventor their rights.

Standard of patentability

The standard of patentability in the United States awards a patent to any invention that is novel and non-obvious.

U.S. obviousness is found where there is teaching, suggestion or motivation in any printed publication or patent ("prior art") anywhere in the world, that leads to the invention. That requires analyzing whether the prior art fairly teaches, suggests or motivates one having ordinary skill in the art to produce the invention.

Europe uses an inventive step standard that requires determining the closest prior art, and determining if the new invention is a sufficient advance or "step forward." The Japanese test goes even further, and analyzes whether it would be "easy" for someone to devise the invention once they understand the differences between the new invention and the prior art. Both of these tests, relate to the prior art, not to the new invention.

Who applies for the patent?

Another uniqueness of U.S. law comes from our rule that the inventor always applies for the patent. The patent owner can only apply for the patent without the inventor under extreme circumstances such as death, refusal of the inventor to cooperate or inability to find the inventor.

Outside the United States, the patent owner is the applicant for patent, and the inventor's involvement in the patent process is not a requirement.

So, why would the United States want to eliminate these basic inventor rights? The U.S. Patent Office seems to believe that patent harmonization might be able to reduce its workload. The Patent Office has an ever-increasing patent application patent examination backlog: 440,000 patent applications were filed in 2006, and 332,000 examinations were carried out. The United States hopes to find ways to get other patent offices to do examination work. If all patent laws were the same, it could produce examination reciprocity and reduce the U.S. Patent Office's workload.

And perhaps this is best reason for harmonization: Once you have an invention, wouldn't it be nice if you could have the exact same patent, with the exact same scope, in each of a number of the different jurisdictions? This would simplify examination and reduce costs. That aspect of harmonization could be good for inventors. However, this is a speculative advantage at best -- since no one has yet agreed to examination reciprocity.

U.S. adoption of foreign laws would represent a paradigm shift that provides less protections and more pitfalls for U.S. inventors. A "harmonized" patent system could require inventors to be much more careful about following the letter of the law -- or risk defeating or limiting their own patent rights. It could create a new standard of patentability. While the notion of a global patent system may have some valid appeal, we should be wary about giving up the U.S. patent culture unless and until we can gain some concrete advantages in return.


Harris is a principal in the San Diego office of Fish & Richardson PC. His practice emphasizes patent prosecution and counseling, and he has extensive experience in patent strategy.

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