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The thorny issue of developing a single, worldwide standard for issuing patents is back, but U.S. officials are still trying to gauge whether they’ll face the crush of opposition that has killed similar proposals in the past. For more than 30 years, the United States has been attempting to negotiate uniform patent requirements — a process better known among patent officials as “harmonization.” But independent inventors — who have the ear of some members of Congress — have stymied those efforts. The United States grants a patent to the first person to invent a technology, a process independent inventors feel favors them. The rest of the world, however, grants a patent to the first person to file a patent application. The issue essentially has been dead in the United States since the last effort to pass uniform patent rules failed in 1993. But at the request of a committee of the World Intellectual Property Organization, the United States may resume negotiations over harmonizing international patent laws. “We said we’re willing to discuss this,” said Lois Boland, senior counsel in the U.S. Patent and Trademark Office. “But we have to assess the current levels of concern [in the private sector].” To that end, the PTO is seeking public comments on draft treaty articles. In a March 19 Federal Register notice, the agency outlines specific issues in which U.S. law differs from that of other countries. Comments are due by April 30. Historically, the biggest sticking point has been the disparity over the first-to-file versus first-to-invent issue. But there are other controversial issues. Most countries publish patent applications 18 months after filing, but the United States does so only for patents filed both in the United States and another country. University researchers are also concerned that harmonization would eliminate the 12-month grace period the United States allows for filing after the public disclosure of new technology. This is “at least the third if not the fourth time” the United States has geared up to test the waters with respect to these issues, said former PTO Commissioner Bruce Lehman. Lehman, who was a leading advocate for harmonization, said revisions now being discussed were first proposed in 1965 by the Johnson Administration. A major push for harmonization occurred in the mid-1980s through 1993. But the United States withdrew from the discussions because of public opposition — primarily over the first-to-file issue. And it’s still not certain that the climate has changed all that much. Lehman said harmonization will only occur if the United States changes to a first-to-file system. “I don’t think that’s in the cards near-term,” he said. Boland, however, said the PTO’s Office of Independent Inventors has heard from inventors that some of their previous worries “may not be as big of a concern anymore.” Lehman, who now heads the International Intellectual Property Institute, a Washington, D.C.-based educational nonprofit group, said there is “a need to have some kind of global patent.” He said more countries — such as China and South Korea — are developing sophisticated patent systems and without common rules, patents will be issued in some countries and not others. Jonathan Band, a partner in Morrison & Foerster’s Washington, D.C., office, agrees. “Most patent lawyers in their heart of hearts, especially those who represent large companies, would favor harmonization,” Band said. “A simple, clear, unambiguous” system diminishes litigation costs and confusion.

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