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AIPLA President’s blog: Why can't we all get along?

Jeffrey I. D. Lewis

As I travel around to various international meetings, one thing that has struck me is the desire for harmonization

There seems to be a lot of discussion internationally, primarily spurred by the 2011 Leahy-Smith America Invents Act (AIA). In fact, as I am getting ready to meet with government officials from Israel, Great Britain, France, Holland and Germany, one of the key things we have been asked to prepare is a discussion of AIA and how it fits into the global scope of intellectual property.

Until 2011, America was firmly committed to the "first-to invent" system - that is a system where the first inventor obtained patent protection regardless of how long it took that inventor to file for a patent (within certain limits and so long as the inventor did not make the invention public). AIA changed that. Effective the middle of this month, America is moving to a first-to-file system instead. Essentially, this means that disputes between competing patent applications will be decided based upon filing date and not the invention date. (For those lawyers who are confused, some people say to think about your law school real estate class where the real property professor talked about the difference between a race jurisdiction, a notice jurisdiction and a race-notice jurisdiction.)

Of course, we in the United States did first-to-file with a twist. While the accepted international concept for a grace period protects only against an inventor’s own disclosures, the AIA provides limited protection against third party independent disclosures, as long as the inventor had disclosed the subject matter earlier than the third party. This may create some tension between the U.S. system and other countries, but there are other venues that use other variations on the international grace period, so that all will make for a very interesting international harmonization discussion.

As a result, no doubt, of AIA, two interesting harmonization-related events have occurred. First is the Tergensee discussions involving Denmark, France, Germany, Japan, the United Kingdom, the United States, and the European Patent Office on various harmonization topics. At their last meeting, this group focused discussions on four specific areas: publication of applications 18 months after the priority date, prior user rights for patents granted after someone has been using an invention, inventor grace period prior to application filing, and how to handle conflicting applications (should they be considered prior art against each other, and specifically for PCT applications whether the priority or national filing date should apply to resolve the conflict). Although there are numerous other issues that must be resolved for harmonization, these four are major hurdles. Notably, in a February 1, 2012 Federal Register notice the USPTO asked for comments on these questions in order to prepare its positions.

The second interesting point deals with the subject of a "global dossier," a procedural mechanism by which an applicat

ion’s bibliographic information can be standardized and shared country-to-country. The goal is to reduce user costs and increase efficiencies both within patent offices and between counsel. While this sounds conceptually easy, it is difficult to implement because there are so many issues associated with how information is stored and the computer protocols by which they are organized. Ideally, it seems to me, global dossier information would not reside in any one office but would be shared internationally in a real time or semi-real time basis, although this then raises concerns about how corrections and supplementations are implemented.

This is a very exciting time to practice in the patent field. What a wonderful experience to be on the front lines as these discussions are going on, and I am amazed at how much I am learning on this issue (having years ago moved from the prosecution to the litigation side of the practice). As you can imagine AIPLA has representatives at most of the international discussions on these topics, and they are regular discussion items within the Association and at international meetings. Stay tuned, as this is seen to get more interesting!

Thanks for reading.



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