The USPTO Is Off-Key With International Patent Law Harmonization

As a leader in science, technology and innovation, the United States long has played a central role in global intellectual property matters. As the world’s largest economy, the United States has played a central role in trade policy, including its role in setting up the TRIPS agreements that made intellectual property rights a precondition for joining the WTO. The USPTO is continuing this leadership role by hosting a Roundtable on the international harmonization of substantive patent law on November 19, 2014, but it should look at its own practices that keep the U.S. out of harmony with other major national patent offices. 

The USPTO’s Role In International Patent Law

The USPTO’s important role in international patent law and policy derives, in part, from being the patent office of the United States. It also comes from initiatives at the USPTO and other government agencies to promote international harmonization of patent laws and practices. These include membership of the PCT, which provides for international patent applications; implementation of the America Invents Act (AIA), which made strides towards harmonizing substantive patent law; and various USPTO Patent Prosecution Highway and work sharing agreements with other patent offices to facilitate patent examination. The USPTO Roundtable continues this trend.

Harmonies Are Harder When the Star Is Off-Key 

Despite these initiatives, other United States policies and USPTO practices leave the United States off-key as compared to other countries.

Substantive Patent Issues

• Patent Eligibility. The USPTO’s much-criticized March 2014 Patent Subject Matter Eligibility Guidance under Mayo and Myriad is out of harmony with the patent laws and practices of other countries, and may violate the United States’ treaty obligations under TRIPS and other international trade agreements.
• “Secret” prior art. In most jurisdictions, unpublished patent applications can be cited as prior art against a later-filed application if they are “novelty destroying,” but cannot be combined with other prior art to establish obviousness (or lack of “inventive step”). While the AIA was touted as harmonizing substantive prior art laws, the U.S. is the only member of the IP5 that permits such “secret prior art” to be used for obviousness.

USPTO Policies

• Examination of U.S. national stage applications. As much as USPTO leadership promotes “work sharing” across national patent offices, the examination of U.S. national stage applications often follows a different tune than the corresponding PCT application. While many national patent offices use the prior art search and examination conducted by the International Searching Authority (ISA) in the PCT application as a starting point for national examination, U.S. examiners conduct an independent prior art search. As a result, examiners in jurisdictions such as Europe, Canada, Australia, and Japan often cite the same prior art references and raise similar issues, while U.S. examiners may cite different (but not necessarily “better”) prior art and raise different issues.
• Disunity on “unity of invention.” U.S. national stage applications are supposed to be examined under the PCT “Unity of Invention” standard, not the “restriction” standard of 35 USC § 121. However, instead of following the “unity” determination of the PCT examiner (as is done by many other patent offices), U.S. examiners independently determine whether the claims satisfy the PCT “unity” standard, and may misapply its unfamiliar “special technical feature” paradigm. As a result, it is not uncommon for claims that were found to possess unity at the PCT stage to be subject to a multi-way restriction requirement at the U.S. national stage.
• Incomplete sharing of priority documents. When the USPTO provides a certified copy of a U.S. priority application, it does not provide a certified paper copy of large sequence listings with the main body of the specification. This economical practice causes problems when other patent offices question whether the U.S. priority document was complete.
• Burdensome Information Disclosure Statement requirements. While the USPTO participated in the development of the Common Citation Document Application (CCD) database that makes the prior art search results of one IP5 patent office readily available to other patent offices and to the public, it has not leveraged this resource to simplify the Information Disclosure Statement (IDS) process. For example, the USPTO could promote work sharing by having U.S. examiners check the CCD for prior art cited in a corresponding foreign application, instead of relying on (and waiting for) the applicant to cite the prior art in an IDS.

While the agenda for the USPTO’s Roundtable focuses on substantive prior art issues (“[t]he definition and scope of prior art; the grace period; and standards for assessing novelty and obviousness/inventive step”), true international patent law harmonization will not be realized until the USPTO fine tunes its own practices and addresses these and other issues that keep the United States off-key.