WHAT HAVE AIA GOTTEN INTO?

Part 3: The Disharmony of Harmonization

This is the third in a series of blog posts examining the current state of the United States patent system, which is statutorily framed by the America Invents Act ("AIA")[1].  The AIA was signed into law on September 16, 2011.  Since that time, the AIA and its phased-in-over-time provisions have had a dramatic impact – in my view, much of it negative – on the United States patent system.

At Toikka Law Group, we pay close attention to such developments, so that we can offer our clients the best legal protection at the lowest cost.

Thus far, I've discussed first principles, including the Constitutional origin of the granting of patents by the United States federal government.  I followed that with a discussion of the enactment of, the framework of, and over time the amendment of the Patent Act of 1952.  In this post I will discuss my thoughts about one of the motivations for changing US patent law, specifically "patent harmonization," a process that might be analogized to standardization of parts across multiple manufacturers of similar products.

An Old Fashioned Love Song[2]

Patent harmonization is not a new concept.  In fact, the first such "modern" international effort at a treaty involving patent harmonization was the 1883 Paris Convention for the Protection of Industrial Property[3] ("Paris Convention"), which the United States entered in 1887.  The Paris Convention set down two important requirements for member states with respect to patents, which operate generally as follows:

  • National treatment: a signatory country must extend the same patent protection to applicants from any other signatory country that it grants to citizens of its own country; and
  • Priority: The priority date established by an application for patent in any signatory country serves as the priority date for any applications made within 12 months in any other signatory country.

One other requirement of the Paris Convention is that rejection of a patent application by one signatory country may not be used as justification to reject that patent application in another signatory country.  Conversely, the granting of a patent by one signatory country does not obligate any other country to grant patent protection to the same invention.

The latter requirement has long frustrated patent applicants – and to a certain extent their patent lawyers – by denying them the efficiency that might be gained if a patent application could be examined by multiple countries using the same examination requirements.  Given the nature of national sovereignty, it is highly unlikely that such a multi-jurisdictional examination system will ever be fully implemented.  That longstanding frustration fueled the drafting of the next major international treaty regarding patents.

Patent Cooperation Treaty

The Patent Cooperation Treaty ("PCT"), signed on June 19, 1970, entered into force in 1978.  Currently 152 nations are parties to the PCT, making it one of the most widely held treaties ever.[4]  The PCT establishes a common application procedure that includes (1) an International Search Report ("ISR") identifying relevant pre-existing patents and publications ("prior art"), and (2) a written opinion regarding patentability over the prior art identified in the ISR.  However, the granting of a patent is still the province of each individual country.  Furthermore, a PCT applicant must apply separately for a patent in each PCT member country where he wishes to receive patent protection.

When the PCT went into force in 1978, the US patent system included substantial differences from many other PCT members' patent systems worldwide:

  • First to Invent: In the US, a patent may only be granted to the true inventor.[5]  Many other patent systems will grant a patent to the first applicant to file for a patent, regardless if that applicant is the inventor.
  • Applications Prosecuted in Secret: Most PCT members' patent systems publicly disclosed patent applications within a certain time period after application – typically 18 months – regardless of whether the patent issued in that time.  By contrast, in the US patent system, patent applications were kept secret until the patent was granted, which could cover several years, and in some cases, decades.

In the next installment of this blog, I'll address the steps taken to address those substantial differences between the US patent system and those of other PCT member countries.

© 2018 Russell O. Paige, all rights reserved.

 

[1] Pub. L. No. 112-29: http://www.govtrack.us/congress/bills/112/hr1249/text.

[2] Three Dog Night, on Harmony (Dunhill Records 1971) ("Just an old fashioned love song, comin' down in three part harmony.")

[3] See generally Summary of the Paris Convention for the Protection of Industrial Property (1883), http://www.wipo.int/treaties/en/ip/paris/summary_paris.html.

[4] http://www.wipo.int/pct/en/pct_contracting_states.html

[5] http://www.toikkalawgroup.com/blog/what-have-aia-gotten-into ("The practical effect of this grant of an exclusive [Constitutional] right to inventors is that US patent protection may only be granted to a true inventor.")