By Donald Zuhn --
Last week, the United States Patent and Trademark Office (USPTO) published a Notice
in the Federal Registrar requesting public comment on international patent law harmonization efforts. In particular, the USPTO is seeking comments on the following ten topics:
(1) The "first-to-invent" rule used for determining the right to a patent in the U.S. versus the "first-to-file" rule used for determining the right to a patent in the rest of the world;
(2) The difference in prior art effective date between published or granted applications filed in the U.S. and those filed by foreign applicants in their country of origin under the Paris Convention (see In re Hilmer, 359 F.2d 859 (C.C.P.A. 1966));
(3) The difference in the scope of "secret" prior art in the U.S. (considered prior art for purposes of novelty and nonobviousness) versus the rest of the world (considered prior art for purposes of novelty only);
(4) Elimination or modification of the one year "grace period" provided under U.S. patent law and adoption of the "absolute novelty" standard used outside the U.S.;
(5) Elimination of geographical restrictions that limit the definition of prior art under U.S. patent law (see, e.g., 35 U.S.C. § 102(a) and (b));
(6) Elimination of the public use and on sale bars of 35 U.S.C. § 102(b);
(7) Elimination of the experimental use exception provided under U.S. patent law;
(8) Modification of the prior user rights defense (see 35 U.S.C. § 273);
(9) Whether to allow "direct" filing of patent applications by assignees in the U.S.;
(10) Elimination of requests not to publish under U.S. patent law.
For a more detailed discussion of each of the above topics (and recent efforts to harmonize worldwide patent law), readers are encouraged to review the USPTO Notice.
Comments can be submitted by mail to the United States Patent and Trademark Office, Office of International Relations, Madison West Building, Tenth Floor, 600 Dulany Street, Alexandria, VA 22313, Attn: Jon P. Santamauro; by facsimile to Mr. Santamauro at 571-273-0085; or by e-mail to [email protected]. Comments must be submitted by June 22, 2007.
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