USPTO to Hold Roundtable on Patent Law Harmonization

By Donald Zuhn --

In a notice published in the Federal Register last week (79 Fed. Reg. 56070), the U.S. Patent and Trademark Office announced that it would be holding a roundtable to obtain public input on several issues related to the international harmonization of substantive patent law.  In particular, the Office is interested in stakeholder feedback regarding the definition and scope of prior art, the grace period, and standards for assessing novelty and obviousness/inventive step.

In the notice regarding the roundtable, the Office indicates that it has continued to focus on work sharing, which allows one patent office to leverage work done by another patent office on a corresponding application in order to improve quality and reduce duplicative search and examination efforts.  The notice suggests that harmonization can enhance the effectiveness of work sharing by better aligning the patentability standards of the two offices.  According to the Office, the areas of substantive patent law which are most relevant for work sharing purposes are those related to the search and application of prior art.  As a result, the Office is most interested in securing public feedback regarding the definition and scope of prior art and standards for assessing novelty and obviousness/inventive step.  The Office is also interested in obtaining public input regarding the grace period.

While an agenda for the roundtable has yet to be released, the Office indicated that the event will consist of two panel discussions.  The first discussion will address key patent examination-related issues such as the definition of prior art, prior art effect of published applications, prior art not affecting patentability (grace period), and conditions for patentability -- novelty and obviousness/inventive step.  In the second discussion, the Office will focus on how to best advance substantive patent law harmonization.  Those interested in serving as a panelist should submit their name, contact information (telephone number and email address), the name of the organization(s) the person represents, if any, relevant biographical information as it pertains to the topic(s) to be discussed during the session(s), and a few brief comments on the topic(s) to [email protected] before October 24, 2014.  Panelists will be selected approximately two weeks in advance of the roundtable.

The roundtable will take place from 8:30 am to 12:00 pm on November 19, 2014 in the Madison Building on the USPTO's Alexandria campus. An agenda and webcast information for the roundtable will be made available a week prior to the event on the Office's Events webpage.  Those interested in registering for the event can do so here.  Attendees may also register at the door.

Comments

[Dan Feigelson]

The grace period - both in its heyday, and what's left of it after the AIA - is a statutory provision. The PTO doesn't write the statute. Is the PTO eventually planning to make recommendations to Congress about the grace period, or to otherwise use these roundtables to provide Congress with information and views from the field? If not, why is the PTO holding discussions on something that is not within its purview?

[Skeptical]

Good questions Dan.

Let me add another: under what authority is the Office acting in such a role? Remember, that "acting" director Lee does NOT have the full authority that Kappos had, and any actions that sound in policy should be suspect as the role that allows such actions STILL has not been properly vetted by Congress.

I tend to view the disregard for the proper functioning by the Executive branch in low regard.