PATENT LAW HARMONIZATION

There are several aspects of U.S. Patent law that are very different from the patent law of other countries'. For instance, in the U.S. a patent is awarded to one who is first to invent the subject matter. In almost all other countries the patent is awarded to the first inventor to file a patent application, regardless of whether he/she invented it first. In the U.S., public disclosure of the invention does not sacrifice U.S. patent protection as long as a U.S. patent application is filed within one year of such disclosure. Public disclosure of the invention before filing any patent application means the loss of patent rights in countries other than the U.S. Under U.S. law, an invention can be kept secret until the patent issues. Under Japanese and European patent laws, a patent application is automatically published 18 months after the earliest filing date of the application. US Patent applicants are required to set forth in their applications the "best mode" known to them to carry out the inventions. The rest of the world does not have a similar requirement. Subject matter that is eligible for patent protection in the U.S. also differs widely around the world, as with the definition of novelty and prior art.

Patent law harmonization is an effort to make individual national patent laws around the world more uniform. Harmonization creates certainty of patent rights. It makes it easier to obtain international protection for inventions and reduces duplication of efforts among patent offices. It cuts down on forum shopping in multi country litigation enforcement efforts. Harmonization could lead to a global patent system whereby you can file in a single country, do your prosecution there and have that afforded full faith and credit around the world.

Efforts to harmonize international patent laws began with the Paris Convention of 1883, which allowed one to file an application in his home country first and then file corresponding applications within one year in any other signatory country, while retaining the priority date of the previous application. The efforts continued with the Patent Cooperation Treaty (PCT) of 1970, which enabled one patent to be filed and examined throughout the PCT countries. The General Agreement on Tariffs and Trade Treaty (GATT) also harmonized international patent law. It increased U.S. patent protection term from 17 to 20 years thus bringing it in line with rest of the world. The Patent Law Treaty (PLT) of 2000 further harmonizes and streamlines formal procedures for patent applications. Ongoing efforts on the Substantive Patent Law Treaty (SPLT) are aimed at harmonization of substantive patent law.

In drafting SPLT, initial focus was on the definition of prior art, novelty, inventive step/non-obviousness, industrial applicability/utility, the drafting and interpretation of claims and the requirement of sufficient disclosure of the invention. Current discussions are in progress on first-to-file versus first-to-invent systems, 18-month publication of applications, unity of invention, the linking of claims, the number of claims, patentable subject matter, post-grant opposition system, etc.

Adopting SPLT would involve fundamental changes to current U.S. patent laws. For instance, the U.S. Constitution states that Congress shall pass laws securing to inventors, for a limited time, the exclusive rights to their discoveries. If the U.S. moves to a first-to-file system, it can be argued that the true inventor might not be able to obtain a patent if he is late to file, which may violate the constitutional provision. Adopting SPLT might involve repudiation of more than 200 years of patent law jurisprudence.

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