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While international patent law harmonization could provide greater efficiency in granting and enforcing patent rights around the world, key patent law harmonization initiatives have been bogged down for political reasons and through lack of motivation by major countries to change their laws to conform with the United States. In Europe, progress has been made to overcome the language obstacles so that a stronger and more cost-effective European patent regime can be established; however, the effort to create a European patent court system has stalled. As current and new proposals for international patent law harmonization continue to be put forward and debated, it is a good time to review how harmonization has evolved, what some of the key barriers are, and what, if any, solutions might make harmonization a reality. Twenty years ago, there was a general expectation that international patent law harmonization would be achieved through the World Intellectual Property Organization (WIPO). However, when the United States found it impractical, at the time, to give up the first-to-invent system, momentum for substantive patent law harmonization in that forum was lost. Nonetheless, some progress was made elsewhere. The Trade Related Intellectual Property provisions, which were adopted in the Uruguay Round of trade negotiations, effective on Jan. 1, 1995, established useful, minimum patent system standards as a prerequisite for membership in the World Trade Organization. The Substantive Patent Law Treaty talks in WIPO’s Standing Committee on the Law of Patents have not been successful. A major obstacle was the demand by a group of developing countries that the negotiations include the protection of genetic resources and traditional knowledge. The more developed countries considered this overcomplicated, incompatible with the basic principles of patent laws and a diversion. The largest developed countries, known as Group B, invited other developed countries to meet with them as Group B+, in an effort to develop a harmonization plan acceptable to the enlarged group. In the summer of 2006, the chairwoman of Group B+ (from Denmark) initiated consultations and made her own proposal for consensus. At the working group level, dominated by patent office officials, there appeared to be general agreement on that unreleased proposal, as a basis for moving forward. But when the discussions moved up to meetings of higher-level, more political participants, it became clear that many differences of opinion remained. A basic assumption of patent law harmonization negotiations has been that the United States would adopt a first-to-file system if it obtained concessions on other harmonization issues. However, as other patent systems have harmonized on models similar to the European Patent Convention (EPC), there is resistance to additional changes to accommodate the United States. The June 6 testimony of U.S. Patent and Trademark Office Director Jon Dudas before the Senate Judiciary Committee suggests that if the United States unilaterally adopts a first-to-file system in its current initiatives to amend U.S. patent law, it may lose its strongest lever for obtaining concessions on other international patent law harmonization issues. High on the U.S. negotiators’ wish list is a one-year grace period for the inventors’ own work. Other countries have various, differing reservations about adopting a grace period of any type, of more than six months or without requiring a declaration at the time of filing to identify the applicant’s prior disclosure. Germany and the United Kingdom have been particularly vocal in opposing the U.S. position on grace-period issues. The patent revision bill recently passed by the House of Representatives, H.R. 1908, would make adoption of first-to-file in the United States take effect only after acceptance of the U.S.-proposed grace period in Japan and Europe. Another major harmonization issue is the prior art effect of earlier patent applications. Currently, there are different approaches in different jurisdictions. First, the United States stands alone in giving a prior-filed application prior art effect only from the U.S. filing date, under the so-called Hilmer doctrine. All other nations recognize the foreign priority date as the prior art date. Second, in the United States, prior art status is given to U.S. applications for both novelty and obviousness purposes, while in Europe a prior-filed application is only available to determine novelty of a later-filed application on the basis of what was inherently or explicitly disclosed. The law in Australia, Canada and Japan is somewhere in between the U.S. and European extremes, taking account of what would have been obvious from a single reference to a person of ordinary skill in the art. National laws also differ in the prior art effect of Patent Cooperation Treaty applications, with only the United States having a language requirement affecting the prior art date. Proponents of the various approaches to this issue each consider the other approaches to be unfair or unreasonable in permitting patenting of the obvious. One possibility being considered would be to maintain the status quo; however, that would not be harmonization and would be an obstacle to the patent offices’ objective of sharing each other’s work product. Europe makes some progress The initial European patent law harmonization, which established the European Patent Office (EPO) and standardized patent laws, was accomplished in the latter part of the 20th century primarily through treaties among individual European countries. Although the European Union has taken over the function of harmonizing the national laws in many respects, the patent law competence remains national, and the EPO remains a separate entity from the European Union. The Community Patent Convention was signed in 1975 by the then nine member states of the European Economic Community. It provided for a community patent to be granted for all of the European Union. It also would have created a Community Patent Court to adjudicate community patent disputes. But that convention was never fully ratified and has not come into force, primarily because it required that community patents be translated into the languages of all of the participating nations. In the late 1990s, the European Commission, which is the administrative-executive branch of the E.U. government, became particularly interested in patent law harmonization and its possible effects on the European economy. The community patent idea was revived by the commission in 1997, resulting in a proposed Community Patent Regulation in 2000. Although political agreement in principle was reached in 2003, the regulation proposal negotiations collapsed over details, particularly those relating to translations, in 2004. In early 2006, Internal Markets Commissioner Charlie McCreevy conceded that a community patent would not be practical in the immediate future. However, patent-related proposals in two major areas are now under consideration in Europe. The most likely to succeed is the optional London Protocol, which is intended to overcome the language obstacle in participating countries. The other, more controversial area is the possible establishment of a European patent court system. As a practical matter, translation of a patent granted by the EPO into every European nation’s language is unnecessary and not cost-justified. Patent professionals and courts rely on published patent applications for their prior art effect, and rarely refer to granted patents, except when asserted in litigation. In the London Protocol to the EPC, the participating nations agree to waive translation of complete European patents into their national languages until litigation involving the patent occurred. The protocol was signed by 10 EPC member nations in 2000. After initial doubt about the protocol, because it would be tied to the separate EPC and would not apply throughout the European Union, the European Commission discovered the strong support of European industry for the protocol in 2006 and gave the proposal its support. Substantially all major prerequisites for the London Protocol to come into force finally have been satisfied. Although the French National Assembly refused to ratify the protocol in March 2006, both the French Assembly and Senate had endorsed ratification by May. The primary legal obstacle that remained in France was overcome in late 2006 when the French Constitutional Court decided that participation in the London Protocol would not be contrary to the French Constitution. However, a concession on the language issue appears to have been unacceptable during the presidency of Jacques Chirac. Newly elected President Nicolas Sarkozy endorsed the protocol. The French Assembly approved it this past September, and approval by the Senate decisively followed in mid-October. The protocol now appears likely to come into force in 2008. European patent litigation As result of the success of the EPC and failure of the Community Patent Convention there is now the curious situation of patents granted by the EPO being identical in all designated countries, yet subject to separate infringement and validity litigation under different procedures in each designated country. A proposed European Patent Litigation Agreement (EPLA) is widely supported by national judges having patent jurisdiction in Europe, European industry and the EPO. It would be an optional protocol to the EPC, providing for an integrated judicial system, uniform rules of procedure and a common appeals court for European patents in participating countries. After the European Commission recognized that its community patent proposal could not move forward, there were high hopes that a diplomatic conference to adopt the EPLA might occur as soon as late 2007 and that the new court would begin operation as soon as 2008. In February 2006, the EPO � acting as Secretariat of a Working Party on Litigation � issued a highly favorable assessment of the impact of the EPLA on litigation of European patents. McCreevy announced his support in September 2006, first in a speech to European finance ministers and then in a speech before the European Parliament. He promised proposals for a European-wide patent system by the end of the year. However, substantial opposition to the EPLA arose in the E.U. forums. The Foundation for a Free Information Infrastructure has been particularly vocal, apparently afraid that software patents would become more likely (the organization claims to have been largely responsible for the rejection of the E.U. software patent directive in July 2005). At least partly as a result of private sector pressures, an October 2006 resolution of the European Parliament, which had started out to be an endorsement of the EPLA, resulted in what has been described as “an almost meaningless compromise text,” which expressed concerns over the patent-granting practices of the EPO and lack of democratic control over the patent system. In November 2006, an assembly of judges reached unanimous consensus on a proposal for European Patent Court rules and procedures, and called upon the European Commission to support the patent court without trying to take it over. However, in the same month, at a meeting of European industry ministers, France said it wanted the EPLA taken out of the control of the EPO and the proposed patent court placed in the existing European court system. Belgium, however, reportedly argued that the EPLA should be voluntary and that countries should not be forced into it by a E.U. decree. Following that meeting, McCreevy warned that the entire plan could stall, saying, “Anything remotely concerning this patent area is fraught with minefields at every turn in the road.” In December 2006, McCreevy announced that the commission’s proposals would be delayed, saying, “It’s clear that more time is needed to look at all options.” In June 2007, the German government convened a two-day conference of patent owners, lawyers, judges and officials in an effort to resolve the impasse between nations favoring the EPLA and those preferring creation of a European community patent court. Unfortunately, the debate remained stalled when the conference ended. Trilateral developments About 60% of the world’s patents are issued by the European, Japanese and U.S. patent offices, which refer to themselves as the “Trilateral” offices. These offices meet annually, both at the top level and in technical working groups, to improve their cooperation and explore possibilities for workload sharing. Japan has taken a leading role in encouraging steps toward full recognition of examination results in other major cooperating patent offices. This probably explains, in part, Japan’s flexibility and willingness to compromise on substantive patent law harmonization issues. A broad compromise on substantive patent law harmonization is still not on the horizon. The pressure of growing workloads and disposition times is a major incentive for harmonization in the larger patent offices. Until there is broad harmonization in at least the largest offices, full recognition of the work product of other patent offices must remain a logical, but distant, objective. John B. Pegram is senior counsel to the New York office of Fish & Richardson, a major intellectual property law firm. He can be reached at [email protected].

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