An Opportunity for Harmonization Charles Eloshway Patent Attorney

An Opportunity for Harmonization Charles Eloshway Patent Attorney Office of Policy and External Affairs United States Patent and Trademark Office 1

IP: Turning Ideas into Jobs m. The Obama Administration Has Put Priority on Innovation and Technology ÄStrategy for American Innovation, Sept 2009 ðIP as a driver of economic growth and job creation ÄStart Up America m. Economic and Social Imperative ðEconomic recovery and growth ðNeed to Spread Technology Across Borders • Open Markets • Bring Life-Saving Technology to those in need 2

The Economic and Social Imperative m Economic recovery and sustained growth requires innovation on many levels Ä Technological innovation to spur economic growth and jobs Ä Systemic innovation to do things in a new and different way, consistent with 21 st century realities m Need to Spread Technology Across Borders Ä The new economy is knowledge-based and global Ä IPRs are key ðOpen new markets ðPromote development and delivery of new technologies, including life-saving products for those in need 3

The Need to Modernize Outdated Patent Laws m Many patent laws are stuck in the last century Ä They are out of touch with the way modern businesses think and act Ä The international patent system, ironically, is a laggard among commercial legal regimes m Global markets require global patent protection Ä Laws and procedures still differ substantially from country to country, creating obstacles of obtaining international patent protection m Harmonization is critical to obtaining global patent rights effectively and efficiently 4

A Brief History of Harmonization: PCT and PLT 1991 m Patent Cooperation Treaty (1970) Ä Streamline international patent filings Ä User-friendly 30 -month period for making filing decisions Ä Problems—no effective harmonization; unachieved work sharing potential m PLT – Hague Diplomatic Conference (1991) Ä Built on WIPO Committee of Experts process, initiated in the mid-80’s Ä Failed on first-to-file issue 5

A Brief History: TRIPs, Procedural PLT and SPLT m TRIPs Ä Harmonized certain minimum standards for patents Ä Many areas left to national/regional law m Procedural Patent Law Treaty (PLT 2000) Ä Set maximum formalities standards Ä Specifically excluded substantive matters m Substantive Patent Law Harmonization (SPLT) Ä Substantive discussions were revived at WIPO in 2001 Ä No agreement on appropriate scope of norm-setting 6

A Brief History: Group B+ m Stalemate at WIPO led to establishment of “Group B+” Ä Initiated by the USPTO in 2005 Ä Includes WIPO Group B and some non-Group B entities (e. g. , EPO, EC) Some agreement on text, but progress stalled in 2006, mainly due to disagreement on grace period and 18 -month publication m Some studies and other work since 2006 m 7

The Leahy-Smith America Invents Act, P. L. 112 -29 m m Most significant change in patent law since 1836 Provisions discussed over the course of five Congresses while: Ä Active discussion in the courts and in industry circles on needed changes to existing US patent law Ä Significant backlog at the USPTO, funding uncertainty 8

America Invents Act Goals of Patent Reform Legislation: m m m Encourage innovation and job creation Support USPTO's efforts to improve patent quality and reduce backlog Establish secure funding mechanism Provide greater certainty for patent rights Provide less costly, time-limited administrative alternatives to litigation 9

AIA and Harmonization m Congress recognized the significance of a transition to first -to-file and stated in section 3(p) of the America Invents Act: m “It is the sense of the Congress that converting the United States patent system from ‘first to invent’ to a system of ‘first inventor to file’ will improve the United States patent system and promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries. ” 11/24/2020 10

USPTO Initiative in 2011 m In an effort to re-energize interest in substantive patent harmonization, the USPTO hosted the “Asia-Pacific Patent Cooperation Forum for the 21 st Century”, March 7 -8, 2011, in Alexandria, VA Ä 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 21 st century. ” USPTO Director David Kappos, Opening Remarks 11

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. ” 12

The Time for Harmonization is Now m USPTO is acting on a vision of an IP world in which national and regional patent systems are harmonized in pursuit of creating an optimal environment for technological innovation and diffusion. m The Fragmented International System ðIncreases Costs and Decreases Certainty ðForestalls Innovation and Economic Growth 13

Outdated Misconceptions m Harmonization is not a “four letter word” Ä Harmonization is about adopting best practices that make good sense for all offices and users Ä This is not a zero-sum game ðIt is not about negotiating trade-offs of aspects of existing patent systems ðIt is not about pitting developed versus developing countries m It is about creating a better system that improves access to technology, lowers costs, & streamlines procedures for all 14

Harmonization Issues m The usual suspects Ä First-inventor-to-file Ä Grace period ðRelationship (or not) to 18 -month publication Ä Definition of prior art ðThe Hilmer doctrine ðSecret Prior art used for Novelty only, or also for Nonobviousness Ä Definition of novelty Ä Definition of non-obviousness/inventive step Ä Disclosure requirements, including best mode 15

Impact of AIA on Harmonization m The AIA effectively harmonizes US law with that of major trading partners with respect to: First to File Ä Hilmer Ä Significant aspects of how prior art and novelty are defined (elimination of geographic restrictions, filing date-based) Ä Best Mode Ä m m 11/24/2020 Maintains existing alignment with respect to nonobviousness/inventive step Significant remaining issues: Grace Period and Prior Art Effect of Secret Prior Art 16

Grace Period m AIA provides for a 1 year grace period from the earliest effective filing date for disclosures by inventor or a party who obtained the information from the inventor m Innovation-friendly enhancements: Non-derived disclosure by another will not be prior art if the inventor disclosed earlier and filed within the grace period Ä Earlier filing by another will not be prior art if the inventor disclosed earlier and filed within the grace period Ä 11/24/2020 17

Grace Period Key issue for harmonization: Lack of a harmonized, 1 -year grace period causes innovators to lose rights in key markets m The grace period is user- and business-friendly and accounts for 21 st Century business and academic practices m Ä Helps SME sector pursue funding quickly without losing access to patent rights Ä Enables protection, commercialization and prompt disclosure of university research Ä Aligns with fast pace of modern business cycles and competition 18

Prior Art Effect of Secret Prior Art US approach under AIA remains novelty + nonobviousness/inventive step m Other jurisdictions use novelty-only m Issues m Ä Fairness to third party applicants Ä Fairness to first inventor to file Ä What about “patent thickets”? 19

In the Meantime: Work sharing m Fruitful discussions are taking place in the context of the Trilateral Office (USPTO, JPO, EPO) discussions, and IP 5 (Trilateral, plus Rep. of Korea and People’s Republic of China) Ä Common Citation Document; Ten Foundation Projects m Bilateral negotiations have led to a successful “Patent Prosecution Highway” (PPH) network Ä Accelerated examination in a second office, based on successful examination in the first office Ä Expanded to “PCT-PPH” 20

Harmonization and Work sharing m Harmonization and work sharing are complementary Ä Top-down alignment of applicable law Ä Bottom-up convergence at the practice and administrative level m Harmonization promotes optimal work sharing Ä In theory, the more aligned the substantive law, the more reusable the work m Work sharing can inform harmonization efforts 21

What is Next? m Harmonization Ä Tegernsee Group (US, UK, France, Germany, Denmark, Japan and EPO) Ä B+ Ä Objective: Identify issues for harmonization and define process for achieving it m Work sharing Ä Enhance and refine the PPH Ä Explore other cooperative relationships Ä Improve functioning of PCT 22

Thank You! Charles Eloshway Patent Attorney Office of Policy and External Affairs United States Patent and Trademark Office