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The following article appears in the journal JOM,
49 (5) (1997), p. 66.

JOM is a publication of The Minerals, Metals & Materials Society

Patent Harmonization: Creating Uniform Patent Laws

David V. Radack

You may have seen or heard the phrase "patent harmonization" used when discussing international patent protection. The phrase refers to efforts to make individual national patent laws around the world more uniform. One example of patent harmonization is the recently adopted General Agreement on Tariffs and Trade Treaty (GATT).

One of the major changes brought about by GATT to harmonize U.S. law with other countries' laws concerns the term of a patent. Prior to June 8, 1995 (the effective date of the relevant GATT changes), a U.S. patent had a term of protection lasting 17 years from the date of issuance. Under the GATT changes, an unexpired issued patent or a patent application pending on June 8, 1995, has a term of protection that is the longer of 17 years from the date of issuance of the patent or 20 years from the filing date of the patent application. Any patent application filed on or after June 8, 1995, has a term of protection that begins on the date of the grant of the patent and ends on a date 20 years after the filing date of the patent application. The 20 year term from the date of filing brings the United States into harmony with most (if not all) of the other countries in the world, in this respect.

There are several aspects of U.S. law, however, that are very different from other countries' laws. The major difference between U.S. patent law and almost every other countries' laws is that in the United States, a patent is awarded to the first to invent the subject matter; in other countries, the patent is awarded to the first inventor to file a patent application, regardless of whether that inventor came up with the invention before or after someone who was second to file a patent application. Stated another way, an inventor in the United States who proves that he or she completed his or her invention before another will have priority to obtain a patent regardless of when other respective patent applications were filed. Conversely, under the so-called "first-to-file" patent system that almost every country outside of the United States uses, priority of invention is granted to the first person to file a patent application, without regard to which party completed the invention first.

Changing the U.S. patent law to a first-to-file system would involve a repudiation of more than 200 years of patent law jurisprudence. The U.S. Constitution states that Congress shall pass laws securing to inventors, for a limited time, the exclusive rights to their discoveries. Some have argued that this constitutional provision would prevent switching to a first-to-file system because the true inventor may not obtain a patent if he filed his patent application after another has, in good faith, filed a patent application concerning the same subject matter. Thus, it remains to be seen whether the United States will adopt a first-to-file patent system.

Another major difference between the United States' and many other countries' patent laws is the definition of novelty. Under U.S. law, an inventor is allowed to publish the invention, place it on sale, or otherwise publicly use the invention without sacrificing U.S. patent protection as long as a U.S. patent application is filed within one year of the first of such disclosures, uses, or sales. Under most other countries' patent laws, once an invention has been publicly disclosed anywhere in the world (e.g., by publishing an invention or by showing an invention at a trade show), the invention cannot be patented in those countries (with a few narrow exceptions). Although some treaty arrangements may be helpful in preserving international rights, the bottom line is that public disclosure of the invention in any country before filing any patent application means the loss of patent rights in countries other than the United States.

As with first-to-file, a change to an absolute novelty standard would involve a major change in U.S. law. Some have suggested that the United States would adopt a first-to-file system if other major industrial countries would abandon the absolute novelty standard and adopt a grace period such as in the United States for filing a patent application on a publicly disclosed invention. This may be the only way that patent laws can become truly harmonized.

One aspect of patent laws that may be close to being harmonized is the so-called "18 month publication" of applications. Under Japanese and European patent laws, a patent application is automatically published 18 months after the earliest filing date of the application. Under current U.S. law, a pending patent application is kept secret, and the invention disclosed publicly only upon issuance of the patent. Thus, under U.S. law, an invention can be kept secret until the patent issues, whereas under Japanese and European law, the invention is almost always likely to be disclosed before a patent issues, since in most cases it takes longer than 18 months for a patent to issue in Europe or Japan. One strong opponent of the proposed change to an 18 month publication of all patent applications is the U.S. Patent and Trademark Office, which believes that printing every patent application will substantially raise the cost of administering the patent system. This cost, of course, will be passed on to users of the patent system.

In summary, in order for patent laws to be harmonized, there must be substantial give-and-take between the United States and other countries, such as Japan and Europe. Although progress has been made, several basic and fundamental issues must be reconciled before there is complete harmonization of the world's patent laws.


David V. Radack is a partner with Eckert Seamans Cherin & Mellott in Pittsburgh, Pennsylvania.

For more information, contact A.B. Silverman at Eckert Seamans Cherin & Mellott, 600 Grant Street, 42nd Floor, Pittsburgh, Pennsylvania 15219; (412) 566-6000; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.


Copyright © 1997 by The Minerals, Metals & Materials Society.

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