Is Substantive Patent
Harmonization Back?
A Report from the USPTO
19th Annual Fordham Conference
INTELLECTUAL PROPERTY LAW & POLICY
April 28-29, 2011
Al Tramposch
USPTO Administrator for
Policy and External Affairs
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Office of Policy and External Affairs
Objectives:
Teams:
Provide Domestic
Leadership on IP Policy
& Development of a
National IP Strategy
 Provide Leadership on
International Policies,
Improving Protection
and Enforcement of IP
Rights


Policy
Patents
 Trademarks
 Copyrights
 Trade
 Enforcement

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

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Governmental Affairs
IP Attaches
Chief Economist
Global IP Academy
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IP: Turning Ideas into Jobs
The
Obama Administration Has Put Priority
on Innovation and Technology
Strategy for American Innovation, Sept 2009
IP as a driver of economic growth and job creation.
Start Up America
Economic
and Social Imperative
Global Recession
Need to Spread Technology Across Borders
• Open Markets
• Bring Life-Saving Technology to those in need
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Outdated Misconceptions

Harmonization is not a “four letter word”
 Harmonization is about adopting best practices that
make good sense for all offices and users
 This is not a zero sum game.
It is not about negotiating trade-offs of aspects of
existing patent systems.
It is not about pitting developed versus developing
countries.

It is about creating a better system that improves
access to technology, lowers costs, & streamlines
procedures for all.
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The Need to Modernize
Outdated Patent Laws

Patent laws are stuck in the last century
 They are out of phase with a global technological and
commercial system extending seamlessly across
borders
 Laws and procedures are still hopelessly mismatched
from country to country
 The patent system, ironically, is a laggard among
commercial legal regimes. It will never live up to its
potential until it is harmonized.
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The Economic and Social Imperative

Solving the Global Recession requires innovation on
many levels
 Technological innovation to spur economic growth and
jobs
 Systemic innovation to do things in a new and different
way, that works in the 21st century

Need to Spread Technology Across Borders
• Far from being a barrier, IP is a sine qua non of
international technology transfer
• It can open markets, including technology markets
• It can bring life-saving technology to those in need
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The Time for Harmonization is Now
USPTO is acting on a vision of an IP world in which
the national systems are harmonized in pursuit of
optimal innovation and optimal diffusion of
innovation on a global basis.
 The Fragmented International System

Increases Costs and Decreases Certainty
Forestalls Innovation and Economic Growth
Industry believes harmonization is long overdue
 The US Congress is Ready to Act

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A Brief History: Harmonization Issues

Traditional “Harmonization" Issues
 First-inventor-to-file
 Grace period
 Definition of prior art
 The Hilmer doctrine
 Secret Prior art used for Novelty only, or also for
Nonobviousness
 Definition of novelty
 Definition of non-obviousness/inventive step
 Disclosure requirements, including best mode
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A Brief History: PCT and PLT 1991

Patent Cooperation Treaty (1970)
 Facilitated international applications
 Provided an extended timeline for entering
examination phase
 Standardized certain procedures and processes

PLT – Hague Diplomatic Conference (1991)
 Built on WIPO Committee of Experts process, initiated
in the mid-80’s
 Failed on first-to-file issue
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A Brief History: Procedural PLT and SPLT

Procedural Patent Law Treaty (PLT 2000)
 Intended to fill the gap until substantive harmonization
could be revived
 Included, inter alia, the concept of a single form for
national and PCT applications

Substantive Patent Law Harmonization (SPLT)
 Substantive discussions were revived at WIPO
in 2001
 Stalemated by development issues
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A Brief History: Group B+

Stalemate at WIPO led to establishment of
“Group B+”
 Initiated by the USPTO in 2005, originally called the
“Alexandria Group”
 Included EPO and EU member states, US, Japan,
Canada, Australia, New Zealand
Progress stalled on issues of grace period and 18month publication
 Put on ice in 1997, pending U.S. patent reform
and revival of interest

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In the Meantime: Worksharing

Fruitful discussions are taking place in the context
of the Trilateral Office (USPTO, JPO, EPO)
discussions, and IP5 (Trilateral, plus Rep. of Korea
and People’s Republic of China)
 Common Citation Document; Ten Foundation Projects

Bilateral negotiations have lead to a successful
“Patent Prosecution Highway” (PPH)
 Accelerated examination in a second office, based on
successful examination in the first office
 Expanded to “PCT-PPH”
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USPTO Initiative in 2011

In an effort to re-energize interest in substantive
patent harmonization, the USPTO hosted the
“Asia-Pacific Patent Cooperation Forum for the
21st Century”, March 7-8, 2011, in Alexandria, VA
 Informal discussions among like-minded economies,
including interested developing countries, led by
Heads of Offices
“Our efforts today are about beginning a substantive dialogue to put
patent law harmonization back on track. They’re about collaborating on
what makes the most sense for our shared global currency of innovation in
the 21st century.”
USPTO Director David Kappos, Opening Remarks
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Taking the Discussion Global
Director Kappos is engaging in discussions to
bring the re-energized discussions global,
including European and other jurisdictions that
were not involved in the APPC meetings
 All countries that are interested in making
progress will be included
 The effort will be lead by Heads of Offices, and
supported by technical working group of experts

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Looking to the Future
From the Statement of the Participants
at the APPC Forum:
“The time for substantive harmonization is now. We are
operating in a global economy, business innovation is happening
across borders. The IP system needs to be supportive of this new
reality.”
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