International Harmonization of Patent Laws

12 February 2013 PharmaPatents Blog

The USPTO and other patent offices around the world are studying the feasibility of the international harmonization of patent laws. As part of this initiative, the USPTO is soliciting stakeholders views on four key issues: (1) the grace period; (2) eighteen month publication; (3) the treatment of conflicting patent applications; and (4) prior user rights. As set forth in a recent Federal Register Notice, stakeholders can provide their views by answering an on-line questionnaire and by participating in a public hearing that will be held at the USPTO’s Alexandria, Virginia campus on March 21, 2013.

International Harmonization

Former USPTO Director Kappos described international harmonization as “the alignment of laws and procedures among intellectual property systems to ensure consistency and clarity of rights for the world’s innovators.” Kappos promoted harmonization as a way to offer “consistent, cost-effective avenues to obtain reliable patent rights in multiple jurisdictions.” He also saw harmonization as a solution to the exponentially growing problem of unexamined patent applications, and the key to true worksharing among patent offices.

The Tegernsee Group

The Federal Register Notice provides background information on the evolution and status of efforts being made towards international patent harmonization. The “Tegernsee Group” refers to the group of patent offices represented at a meeting in Tegernsee, Germany, in July of 2011 (Denmark, France, Germany, Japan, the United Kingdom, the United States and the European Patent Office). The Tegernsee Group has met several times since, and continues to study the feasibility and implications of harmonization, with a current focus on four key issues:

  1. the grace period
  2. eighteen month publication
  3. the treatment of conflicting patent applications and
  4. prior user rights

After their last meeting, the Tegernsee Group decided to solicit stakeholder feedback on these issues.

The Questionnaire

The Tegernsee Group developed a questionnaire to solicit stakeholder feedback, which can be found here. At 26 pages, the PDF version is a bit intimidating, but the questions are straight-forward and probably not too difficult to answer. For example, for each key issue, there are questions regarding how frequently the respondent has been affected by the issue (e.g., relied on the grace period or invoked prior user rights). I can understand how it would be important to know how these issues affect stakeholders in order to devise workable compromises for harmonization.

The USPTO will “close” the questionnaire on February 28, 2013.

The USPTO also will accept other written comments received by February 28, 2013, but strongly encourages stakeholders to complete the questionnaire.

The Public Hearing

The USPTO is holding a public hearing on international harmonization on March 21, 2013, at its Alexandria, Virginia campus, and plans to offer a simultaneous webcast. Stakeholders can apply to present oral testimony in person at the hearing by following the procedures set forth in the Federal Register Notice, which sets an application deadline of February 28, 2013.

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