Science Progress Article Addresses Global Patent Protection

    By Donald Zuhn --

Earlier this month, Science Progress, a semi-annual journal published by the Center for American Progress, issued a series of reports on the U.S. patent system.  The series, outlined in an article entitled: "Patent Reform 101," consists of four reports:

• "Tackling the Challenge of Patent Reform: Recommendations for the Obama administration and Congress," by Rick Weiss;
• "Improving the Effectiveness of the U.S. Patent and Trademark Office: Recommendations for Reform," by Gerald Mossinghoff and Stephen Kunin;
• "Patent Trolls Erode the Foundation of the U.S. Patent System," by Daniel McCurdy; and
• "Global Patent Protection: The International Patent System and the New Administration," by Bruce Lehman.

Last week, we discussed the article by Gerald Mossinghoff and Stephen Kunin proposing Patent Office improvements (see "Science Progress Tackles Patent Reform").  Today, we address the report by Bruce Lehman (at left), which provides recommendations to the Obama Administration for dealing with the problems of the international patent system.

Mr. Lehman begins by noting that "[p]atent systems here and in other countries are experiencing a period of crisis, characterized by too many patent applications pending final approval, the declining quality of patent examinations, duplication of work by multiple patent offices, and the increasing costs of patent prosecution."  According to Mr. Lehman, the primary problem facing the international patent system is the increasing global demand for patent rights.  Evidence of this increasing demand can be found in the rapid rise in non-resident filings over the past few years (for example, global non-resident filings increased from 35.7% of all filings in 1995 to 43% of all filings in 2006).  These non-resident filings, in turn, are an indication of a rise in multinational filings directed to essentially the same invention.  As a result of such multinational filings, patent offices frequently perform duplicative work by examining applications that will be examined again by other offices (approximately 27% of applications examined by the USPTO were originally submitted to the EPO or JPO, and therefore, are likely to be examined by the EPO or JPO).

While duplicative work is a problem for the international patent system, it is even more of an issue for the USPTO.  Interestingly enough, it is the USPTO's overall pendency of 32 months (as of 2008), which is frequently criticized for being too lengthy, that makes duplicative work a more significant problem in the U.S.  According to Mr. Lehman, because the overall pendency in the EPO is 45.3 months and the overall pendency in the JPO is effectively 68 months (once deferred examination is taken into consideration), the USPTO is generally one step ahead of its counterparts in Europe and Japan.  As a result, the USPTO "must examine virtually every application from scratch," and is unable to take advantage of the results of foreign examinations to decrease the workload of its examiners.

Aside from differences in pendency, Mr. Lehman argues that with respect to its patent laws, the U.S. is also hampered by its retention of several "non-conforming idiosyncrasies."  Among these idiosyncrasies are our first-to-invent system and one-year grace period.

After outlining the problem in his article, Mr. Lehman then sets forth a number of possible solutions.  His most radical suggestion involves the creation of a multinational patent examining authority:

Ultimately . . . the most effective way of eliminating duplicative examinations from the global patent system -- and to promote uniformity and harmonization -- would be for the United States to work with its foreign partners to create a multinational patent examining authority that could be used as a substitute for the USPTO.

Mr. Lehman explains that under such a system, an applicant seeking U.S. patent protection would have the choice of filing an application with the multinational examining authority or with the USPTO directly -- akin to the choice of filing an application in the European or German patent offices.  As in Europe, where the German patent office and not the EPO would issue a German patent, the USPTO, and not the multinational examining authority, would issue a U.S. patent.  Mr. Lehman notes that such issuance "would take place only after a review that the examination complied with U.S. law," and therefore, "[i]n no way would the sovereignty of the United States be compromised."  Mr. Lehman also notes that were the World Intellectual Property Organization (WIPO) to serve as the home for a new multinational patent office, there would be no need to promulgate a new treaty to create such an office since the Patent Cooperation Treaty (PCT) already allows for its creation.

Of course, the U.S. would still have to address the non-conforming idiosyncrasies of its own patent laws, but as the patent community is well aware, Congress has begun to take steps toward further harmonizing U.S. Patent Law.  Mr. Lehman recommends that:

[T]he incoming Obama administration should give strong consideration to adopting a first-inventor-to-file position in any international negotiations involving substantive patent law harmonization.  Of course, if the Unites States agrees to change its law in this regard it should expect corresponding concessions from other negotiating parties.  As an example, this could include concessions on matters such as the grace period between public disclosure and the filing of a patent application.

As a (perhaps) more attractive alternative to a multinational examining authority, Mr. Lehman suggests that the U.S. attempt to more effectively spread the examination burden among other patent offices, such as the EPO and JPO, by modifying its patent system to take advantage of foreign examination.  As Mr. Lehman notes, however, such a strategy would require the adoption of a deferred examination system in the U.S. to offset the differences in overall pendency.  As we reported yesterday, the USPTO appears to be receptive towards considering a deferred examination system (see "USPTO Schedules Roundtable Discussion on Deferred Examination"), and therefore, Mr. Lehman's less radical proposal for curing the international patent system's ills may have the best chance of being implemented.