The Court’s Future Role in the International Harmonization of Patent Laws

by Dennis Crouch

International harmonization has always been seen as a major purpose of the Leahy-Smith America Invents Act.  Every country has its own patent structure as does the European Patent Office.  Ongoing differences between the various countries add substantial transaction costs to the process of obtaining and enforcing patents.  Many US companies would like European patents, but the prospect is often cost prohibitive. 

Although disputed, most would agree that the Leahy-Smith's new filing-date focus moves the US closer an international patentability norm.   Still, a number of important differences remain between US law and the laws in other major patent centers.  As a result, the US law has not been internationally harmonized, but it has been shifted in that direction.

The Leahy-Smith AIA refers directly to harmonization only once and only in an aspirational “sense of Congress” provision that reads as follows:

Sense of Congress – It is the sense of the Congress that converting the United States patent system from ‘first to invent’ to a system of ‘first inventor to file’ will improve the United States patent system and promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries.

This Congressional statement regarding promotion of international harmonization does not include any binding requirements, but will still clearly be considered "law" — having been approved by both houses of Congress and (will be) signed into law by President Obama. See Mississippi Poultry Ass'n, Inc. v. Madigan, 31 F.3d 293 (5th Cir. 1994).

Comparative Analysis of World Patent Laws: Rather than any binding rules, the "sense of Congress" provision provides an indication of congressional intent that may be relevant to statutory construction.  Since the provision is passed by both houses and will be enacted into law, it should be much more influential that other statutory construction canons used to understand congressional intent.  This may be important as the court's struggle with the meaning of new statutory language and structures of Sections 102 and 103 of the Patent Act.  In making its determinations, must the court consider how its decision will impact the relative international harmonization of the laws? The process would seemingly involve a comparative analysis of the various patent laws to see whether the particular rule in question is governed by an international norm and, if so, the court should tend to choose an interpretation of the law that better harmonizes the US law with the international norm.

USA as World Patent Court: In Voda v. Cordis, Judge Gajarsa discussed the court's “lack of institutional competence in [various] foreign patent regimes” including “British, Canadian, European, French, and German patent claims.”  In that case, the court denied Dr. Voda's plea for supplemental jurisdiction so that a U.S. court could adjudge all of his infringement claims against Cordis in a single instance.  The sort of worldwide patent court that Voda wanted is an end goal for many involved in substantive patent harmonization.  When this case arises again, the court will need to reconsider its institutional competence in light of the newly harmonized laws and the Congressional directive in favor of harmonization?

95 thoughts on “The Court’s Future Role in the International Harmonization of Patent Laws

  1. Sense of Congress – It is the sense of the Congress that converting the United States patent system from ‘first to invent’ to a system of ‘first inventor to file’ will improve the United States patent system and promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries.

    Excellent Post! In reference to the quote above, what really brings reality to Congress’s sense is the popularization of the PPH programs around the world. Unfortunately, despite its popularity in the US, we still are far behind other countries in total amount of filings!

  2. This “clearly and unambiguously derivable” test is like a novelty test (as opposed to an obviousness test). So, it is just like the test for 35 USC 112 “written description” already in the app as filed.

    In a First to File jurisdiction, where the validity of a claim is judged by the filing date not the date of the prosecution amendment, you can’t allow A to enter prosecution amendments which, in their “back-dating” to the filing date of the app, allow A to steal a march over B, who filed for exactly the subject matter of the amended claim on a date way earlier than the date on which A amended. This is what Fly means by “improve your position” by amendment. In a FtF jurisdiction, the patent for invention X must go to the first to file for X, the first to “plant the flag” on plot X.

    The harshness of the test for allowability of prosecution amendments is the inevitable corollary of the legal certainty delivered by FtF.

    Is the test for “written description” any more lax?

  3. What has EPO or Japan or other countries done to adopt US standards?

    Have you ever heard of TRIPS? Are you familiar with its contents? Which country was its instigator? Who managed to make its ratification a condition of WTO membership? I’ll leave just you one guess.

    How about the Patent Law Treaty? Where does it come from?

    Was it purely an accident that the PCT was signed in Washington in 1970? An IIB-oldtimer told me that this treaty was widely seen as an US trojan horse, and that the Johnson administration was trying to throw a spanner in the works leading to the Munich Convention. (The Institut International des Brevets was absorbed into the EPO when it began operations in 1978). The history of the PCT still must to be written, but there was a certain plausibility to his arguments. In any case, the PCT procedure is well integrated in the EPO’s framework, the same can’t be said of the USPTO.

    I can thing of nothing.

    Looks like it indeed.

    The US couldn’t achieve all its goals in multilateral agreements, but is working hard to pursue them in bilateral ones, with treaties concluded with about 14 different countries in the last two decades or so, either as a part of a FTA or as a separate agreement. These countries are by no means large industrial powers, besides perhaps Australia, and also include an EPO member state. What can’t be obtained up front, such as grace periods, broad patentable subject-matter, or draconian copyright regulations, is pushed through bit by bit, with “salami tactics”. This approach was the subject of an interesting book (published in French).

    Here’s what an American scholar writes on your precious FTI novelty statute (from the second edition):

    Deceptively straightforward at first reading, when applied the seven subparagraphs (a) through (g) of 35 U.S.C. §102 may seem a rather bewildering Pandora’s Box of arcane conventions and obscure terms of art. Many patent law students find that mastering §102 is the most conceptually challenging and time-consuming part of a basic patent law course.
    [...]
    Next, understand that virtually every word in §102 is loaded with meaning. The statute cannot be interpreted in a vacuum; it must be understood in connection with the many judicial decisions and rules of practice that have applied the language of the statute to a multitude of factual situations.

    Is this what you want the world to adopt? The world went another way.

    In the first book I mentioned I found this other passage, in the original English, submitted in 2004 to the USPTO by the Biotechnology Industry Organisation:

    By taking the lead in offering to jettison this feature [FTI] of US patent law, the US will enhace its ability to convince other countries, primarily European nationas and Japan, to make similar changes in their systems that represent improvements that are of importance to the US (e.g., a globalized grace period)

    Is AIA really a defeat? FTI is not the ONLY issue surrounding patents.

    For the influence part, I would finally conclude that no system really exists in isolation, and every system borrows something of the other.

    On an historical note, I would also add that the Germans sent many people sit in the US Patent Office during the Exhibition of 1876 to pick up how the Americans worked, and developed their own system on what they saw. The law also owed a lot to the French statute, but improved on it.

  4. The EPC does allow multiple independent claims, read the text of Rule 43(2), but under the conditions edicted which defines the requirement of conciseness of Art. 84 EPC. What you need to do, if the examiner doesn’t get it, is to argue why they meet the cases foreseen under the rule, if the claims are otherwise novel and inventive.

    The problem is that very often the independent claims at filing plainly lack novelty, or are a quivering mass of obviousness. [The vast majority of EPC search reports comprise "X" references.]

    So the applicant is back at trying to delimit the invention from the prior art, and this does not usually lend itself to multiple rambling expressions of the same concept. Beating around the bush won’t do it, you must be able to state the problem you’re solving, and define the necessary and sufficient elements to implement the solution. (cf. Art. 83 and Rule 42).

    I will note that the US too restricts how you can formulate claims, see 37 CFR 1.75. I believe that you can’t claim in the US a gizmo according to claims 7 to 9 or 11 and 13. The EPO often gets such unclear claims, before you even going into the shenanigans destined to circumvent those dumb excess claim fees.

    I think both the EP and US prohibitions make sense, and the ideal situation would be to have them both in both areas. How would you like that?

    For haec verba support in the spec for any amendment, you got it wrong too. The standard for Art. 123(2) is “clearly and unambiguously derivable from the application as filed”, which doesn’t prohibit per se creative writing. Now put yourself in the examiner’s shoes. If your amendment means exactly the same thing as in the original disclosure, why must you use different words? To improve your position? That’s exactly what you can’t do. If I had a nickel each time I heard or read a representative crying over this requirement, I think I could nearly buy myself a nice cup of cappucino.

    I would usually analyse the disputed expression and compare it with the closest source in the original disclosure, and argue how the new wording permits unforeseen interpretations, by giving concrete examples. Usually worked.

  5. Daxmn, now I have symptathy for pols. I guess I meant “incentives” or shift around existing benifits to encourage engineering and science and not, say, transgender studies, not that there is anything wrong with transgender studies…

  6. Thanks Fly. You’ve rendered me speechless.

    Wut? I finally had the last word with a patent representative? No more requests? Let me at long last take a decision. I hope it won’t be appealed.

    (Sorry for that, I’m still in rehab. ;-) )

    I worked with both types of papers, and so often entered scaling factors on the copier machine that my fingers are faster than my brain. Scaling from A4 to Letter: 94%. Letter to A4: 97%. The result isn’t too bad. I noticed that scholarly publications like the IEEE’s use a page format which is apparently a compromise between A4 and letter, something like 210mm wide x 8.5″ high, so that you needn’t do any scaling when copying.

  7. I think Ned might be referring to San Marino and the Vatican. That’s three states for the price of one, a bit like the multiple representation of the Soviet Union before the United Nations. (Stalin got the extra seats because he argued that NZ, CA, AU shouldn’t have their own seats).

    SM is indeed a “sovereign” state. I would wager that the EPC implicitly applies to VA through the Lateran treaty, but the Holy See isn’t represented in the AC. (Thank g*d!)

    Stretching your imagination a bit, you could perhaps include the Grimaldi Rock a.k.a. Monaco in that lot. Or chalk it up to France.

    Voting rights in the EPOrg are either one country, one vote (Art. 34), or proportional to their financial importance, with a weighting varying in a ratio of 1:5 (Art. 36).

    Notable absents in the member list are Andorra, Gibraltar, and the Channel Islands. Quite a few patents are parked in the latter territories. Could that be for tax reasons?… LI and MC (and CH) are also overrepresented in filing statistics, one wonders why.

  8. Flippy wrote:

    I’m sorry, I didnt mention “new benefits”

    Before that, Flippy had written:

    4) Create education benefits for engineering/science students

    Flip-floppy?

  9. I’m sorry, I didnt mention “new benefits” Everything I mentioned would be a cut. Lower Taxes and Cut Spending.

    PERIOD.

  10. I would just like to confirm, that if ROW were to switch from A4 to letter size, loads of work would be generated.

    Come on ROW. What’s stopping you? How anti-American can you get?

  11. Seriously, I would prefer letter size paper (8.5″ x 11″) to A4. Why? One less size of paper to deal with.

    Nobody expects letters to be printed on A4 paper. Why is that? Because A4 paper sxcks axx.

    One size paper for all, and that size is letter size.

    Also, the CBO calculates that switching to letter size paper would create 14,321 American jobs.

  12. The usual sizes for paper in North America are “Letter” or “A” (size: 8.5″x11″), and “Legal” (8.5″x14″). The latter type, as the name implies, is essentially only ever seen in legal, notarial, and patent, work. I suppose its imposing appearance is designed to provoke shock and awe in the other party. :-)

    I wasn’t familiar with the term “foolscap (folio)” applied to 8.5×13 paper, and I’ve never seen it. For me that term denotes stock used for doodling or sketching, which according to Wikipedia is 17×13.5″. I’m too young, perhaps.

    A4 paper is relatively hard to come by in North America. When a outlet carries it, it would have only one single kind and format, eg. 5000 sheet box of a certain brand. But you can choose between at least a dozen sorts of common Letter-format paper.

    Specialy A4 papers (eg: photo with glossy finish), two- or four-hole punches, or European-style “Leitz-Ordner”, are essentially unheard of. (And just try finding a three-hole punch and binder in a Munich office supplies store). I wonder how the UN head office works…

    Modern fax machines scale received pages down to the available paper stock, you should check that. Legal paper reduced to 83% looks silly but is still legible without a magnifier, even though the document’s surface is only 68% of the original. Only problem is when sheets gets swallowed together in the feeder.

    I find it logical that the PCT standardized to the most common paper size, A4, even though the logic of the system is rather indifferent to me. A4 is essentially standard on the entire planet earth minus a couple of countries. Patent Offices around the world exchange thousands of documents daily in all directions.

  13. Simple, you write:

    “…I quote more than one person and thus my comment is addressed to more than one person.”

    You know, being the way I am, I’m having a bit of trouble with your “thus”. Far too logical for me, I suppose you would say.

    But never mind. You will agree, I dare say, that our intercourse is already getting rather boring for the spectators.

  14. you should notice that I quoted more than one person and thus my comment structure would apply the comments after the multiple posts as belonging to more than one person.

    New sockpuppet, same hard wanking.

    I can hardly wait for the re-boot.

  15. Seriously Maxdrei?

    You are equating a non-answer with a given answer that is quite simply wrong?

    Where did you get your logic skills? Do they have a refund policy?

    As for the 6:44 post, you should notice that I quoted more than one person and thus my comment structure would apply the comments after the multiple posts as belonging to more than one person.

    What is it with these people just tripping over themselves to prove my point for me?

  16. Seriously MaxDrei?

    You are trying to equate a non-answer with an answer that is clearly wrong?

    Where do you get your logic skills? I hope for your sake they give refunds.

    As for the 6:44 item, it is your inadequate reading abilities as you should see that I quote more than one person and thus my comment is addressed to more than one person.

    The fact that I have to point this out to you also proves my point.

    Hurry back to the logic store and demand your refund.

  17. 1) Lower taxes for everyone to truly stimulate the economy

    I’m shocked — SHOCKED! — that Flippy is not only a patent txxbxxger but an ordinary anti-tax txxbxgger as well.

  18. Mal is there any way that you can fix my Screen?
    On another note, I remember being told Your always crying. Shut up or I’ll give YOU something to Cry about. hahahahahahahaaaaa. Opps I’m not crying must be the Gasoline is no longer in my water.
    I was swimming in Oil so to speak.

  19. On that logic, Simple, you are my proven inferior.

    You will recall (I’m sure) that I called you out, upstairs, over your own inadequate reading abilities at 06:44 this morning. I have yet to see an answer. That’s enough to “prove” my point, right?

  20. Tag fix.

    Just in case people are wondering how to fix broke tags reliably, you simply need to enter a comment with three “close format” HTML tags in a row. Works ever time (you may need to refresh screen first to see change on your own computer).

  21. Actually, the whine I am talking about is coming from you.

    American Cowboy may also be whining. That’s not the point of our discussion.

    you could improve your reading skills.

    Stick both your feet in your mouth, as it is your reading skills that need improvement. But thank you for proving that I am your better.

  22. Yes. How to get even one American inventor who is not already today tinkering to go tomorrow back down into the basement, to resume the core activity of tinkering. Tax breaks for tinkerers doen’t quite cut the mustard for me. I can see you are obsessed with tax breaks, but were the founders of MS, Apple, Google, Yahoo, Netscape and so on motivated by “tax breaks” any more than, say, the founder of Sony in Japan, SAP in Germany or Dyson or Hounsfield in England. I think not.

  23. Spoken like a true Tea Party disciple, Flippy.

    Lower taxes, tax breaks, new benefits…I think that may cost a little bit more than what you may save from de-funding the NLRB. How are you supposed to square the budget too? I know, I know, economic growth will lead to increased tax revenue, even if the tax rates are lowered. That didn’t work out so well last time, though, and didn’t a certain G.H.W. Bush (Republican) accurately call it “voodoo economics”?

  24. “Stop whining.”

    Actually, the whine came from “American Cowboy”, who complained about the EPO’s refusal to conform to this US practice. For somebody who claims to be my “better”, you could improve your reading skills.

  25. That’s easy:

    1) Lower taxes for everyone to truly stimulate the economy;
    2) DONT sign “patent reform”
    3) Create tax breaks for start-ups
    4) Create education benefits for engineering/science students
    5) De-fund the NRLB

    Have I left anything out?

  26. Flippy suppose you are The President. What would you do, to get all those creative Americans back in their respective basements where they belong, assiduously tinkering away, on the next generation of high technology stuff, thereby to save the nation?

    Or are you being sarcastic?

    Or did you just happen to wake up today feeling particularly sorry for yourself?

  27. Cowboy, you underestimate the American capacity to overcome adversity and to adapt and survive. Every change is a business opportunity, for those with enough intelligence to change with the times.

    If the opposite poles of English common law and German civil law, peripheral claiming and central claiming, can harmonise, then so can the USA come to terms with the (by now largely harmonised) patent law of the ROW. Don’t be scared: for America, this is a huge business oportunity.

    Up to now, it has been UK-trained patent attorneys doing the world-wide drafting and prosecuting for sophisticated American corporations. With the passing of the AIA, this is your big chance to take that work off the British.

  28. In the ROW, where there are countries of men, not law, government decides which businesses do business and which businesses do not. There is no such thing as patent infringement litigation because nobody cares about patents its just an inconvenience brought about by the need to file patents for companies that imported products into the US. If you are an “inventor” in one of these countries, and you work for a big company, which you probably do and you probably have since you left school and probably will until you are completely consumed, you WILL invent things or you lose your job. When you do invent things you WILL assign them to the company and the company will make them and you get the benefit of a continuing paycheck. That’s all. If you are in China, your soul is sucked out by this process and you jump off a building.

    It used to be that if you were in America, you could tinker in your basement, come up with something, patent it, call it a Macintosh, make a sh%tload of money and then retire at 29, or continue as CEO.

    Now, not so much.

  29. Above, CC laments “Nope, we were talking about EPO requirements

    Actually CC, since we were talking about US practitioners, and US practitioners practice in the US, you are mistaken.

    If you are talking merely about the input from US practitioners given to European counsel for Euopean counsel to convert intot he appropriate form, then you are merely complaining about the job we pay you to do.

    Stop whining.

  30. If you want to assume that there must be a flaw because there is more than one independent claim, then you will see only that which you want to see, and simple answwers that are nonetheless true answers will always evade your understanding.

  31. Well folks, Simple Answers and Max Drei have argued different points of view, and CC and Paul Cole have chimed in with additional ones, each based upon their own country’s practice. Since they grew up learning that practice and becoming convinced it is THE RIGHT WAY, none wants to adopt the practice of the other.

    That is why harmonization does not exist, and the unilateral changes to US law toward the goal of harmonization amoung to nothing but capitulation by US negotiators, to the detriment of US inventors.

    The United States got to be the world’s sole superpower for a number of reasons, the invention-stimulating US patent system not being the least of them.

    As we slouch towards Europeanizing ourselves, we yield our global position to others.

  32. On the whole, I nowadays use z not s and color has dropped its letter u. The rest of the world reads Americal english, and you have numerical superiority so we should fit in.

    But we still disagree about the location and purpose of the bathroom.

  33. We are talking about claim construction in the States, mind you.

    Nope, we were talking about EPO requirements, for which the vagaries of post-grant claim construction in the US are neither here nor there.

  34. You talking to me, Simple? Am I the one who is being told to respect his “betters”?

    I ask because you, Simple, appear to be lecturing me about what I write, quoting what I wrote. But look more carefully, Simple, and you will see that the “believe” words quoted are drawn from CC, not me. Agree?

    And I think you’ll find that, in recent US 101 jurisprudence, there is a tension between the literal wording of any one claim and something a little less literal, that corresponds to an inventive concept underlying the claim. Cue Ned.

  35. US Construction tip: independent claims stand on their own.

    This is the case everywhere. Which is why the EPO tells you: “If you want three different claims examined, file three applications (and pay the fees). In exchange we won’t bother you with “RCEs” and suchlike.”

  36. That’s the case everywhere, I believe. Which is why the EPO tells you: if you want three different independent product/apparatus/method/use claims examined, file three applications (and pay the three fees). Thank you.

  37. Nice Strawman – but how about the careful drafting of three indpendent claims rather than the careless draftign of one single claim.

    I’ll get back to you when there’s a sighting of that mythical beast, the carefully-drafted three-headed claim set…

    Usually, what I’ve encountered are plural independent claims in which, in order to differentiate them, the wording of each claim is flawed in a particular manner, like the “don’t see, don’t hear, don’t speak” monkeys.

  38. PLEASE COULD WE HAVE SI UNITS IN US-ORIGINATING SPECIFICATIONS!

    Now that would have made a mess of the markings on the glass measuring cup case, wouldn’t it? Or is that a mixed metaphor…, or at least a mixed message…

    Perhaps such a conversion could be mandated with a language translation requirement…
    American English to Proper English…

  39. an by careless drafting of three different, possibly contradictory ones.

    Nice Strawman – but how about the careful drafting of three indpendent claims rather than the careless draftign of one single claim.

    US Construction tip: independent claims stand on their own.

    General tip: know your limitations.

  40. The single unitary inventive concept (which you have spent so much claim drafting effort to protect) is (very plausibly) just the little white spot in the middle.

    No. Claims count – all of them, not some “single unitary inventive concept.”

    You’ll excuse me, but I believe

    But “what you believe” was not the question.

    We are talking about claim construction in the States, mind you.

    Next time I give you an easy answer, be respectful and be mindful of your betters.

  41. Paul have you ever had a case where an Opponent checks the 100(c) box and contends that the metric equivalent values add subject matter? I have. It cost the client a lot of money, to see off that attack, in full-blown disputed proceedings.

    We are always being told how much each “issue” costs in litigation. Using SI units in PCT filings is one way to reduce the number of such issues.

    The European patent system costs American Applicants far more than Applicants from elsewhere in the world. The SI conversion business is one example, translation is another, otiose claim sets a third. But the most costly is the belief that it is good drafting practice never to couple technical features to technical effects. If ever Americans cotton on to the way the rest of the world drafts, then the rest of the world had better watch out for the reach and scope of US-drafted patents, when they issue in non-US jurisdictions.

  42. Euro, Mal was JOKING. Did you not realise that very many US lawyers are still wedded to foolscap (great name that, isn’t it) or sometimes other paper sizes with names like “quarto” and “folio” if memory serves. They send their EPO filings to folks like me, on paper of that size, which is indigestible to all our office machines. When they fax foolscap, not all the text comes out on an A4 sheet in the paper tray of our fax machine.

    It is like in England, where people still insist that their beer be served in a pint glass.

  43. Just a technical comment on harmonization.

    PLEASE COULD WE HAVE SI UNITS IN US-ORIGINATING SPECIFICATIONS! This is the scientifically accepted norm, and is a legal requirement for specifications at the EPO. The time wasted in converting degrees F into degrees C and inches to cm over the course of a year is considerable.

    And sometimes you get really mixed units like kg force per square inch.

    These SI unit conversions should be done pre-filing. And the best and least expensive person to do it is the inventor, who should have learned at school not to use Imperial units in scientific publications.

  44. No Ned, it doesn’t. Where did you get that idea from? Was that supposed to be funny? I’m not seeing it.

    You want to see who the 42 are? Visit the EPO website.

    If you felt it not worth designating Italy, and not worth the cost of validating your issued European patent in Italy, that I could understand.

  45. Most US patent attorneys will tell you that nobody can know what the invention is, at the time of filing the patent application. That only emerges after the prior art references from the PTO search report have been digested.

    Then, when the PTO Examiner says he can’t search cos he doesn’t know what the invention is, that same attorney gets all uppity and screams at the Examiner that he should just get on and “Do Your Job”.

    And when he says he doesn’t know what the invention is, he’s got a point. That’s because he can’t search the prior art before he drafts and files, in case he finds something relevant in a published US patent and then, much later, his client gets done for triple damages for wilful infringement.

    Makes sense now, doesn’t it?

  46. Well, A3 is inconvenient and too big for many printers. As for A5, well, I draft patent applications, not pocket books.

  47. Easy: maximum protection of client’s interest.

    You’ll excuse me, but I believe that the client’s interests are better served by careful drafting of a single claim, than by careless drafting of three different, possibly contradictory ones.

    If you have one invention, you should be able to define it broadly, yet clearly enough with a single independent claim, so that the EPO’s R. 43(2) shouldn’t be a problem. Conversely, if you have to find three different wordings to adequately cover the invention, then it is a sign that:
    a) you have more than one invention in your hands, and/or
    b) you haven’t understood what the actual invention is.

    I can understand the idea of using alternative wordings to avoid overly restrictive claim construction, but I sometimes get the impression that some US practitioners do this as an alternative to understanding what the inventor’s contribution to the prior art actually is, so that often enough all independent claims (and the specification) miss the real invention altogether. And then you get the complaints about not being able to accordingly amend the claims anymore…

    And I have no understanding either for those practitioners who claim a device in three different ways, yet do not think of claiming its use, for instance.

  48. Not so easy, Easy.

    Using different words to say the same thing simply confuses. When the judge does not know what the invention is, protection is prejudiced, not strengthened.

    Using different words to define different things is to direct a single patent application to more than one invention, which cannot be.

    Think of that old experiment in your physics lesson at 11 years old. You have overlapping pools of three primary colors. Only where all three overlap, in the middle, is the light white.

    Now take three of your independent apparatus claims. The single unitary inventive concept (which you have spent so much claim drafting effort to protect) is (very plausibly) just the little white spot in the middle.

    Would you not have been better off, after all, with just one of those three independent claims, rather than all three?

    There must be an “easy” answer. Can I have it please?

  49. I personally don’t understand why US practitioners feel the need to claim the exactly same thing with at least three different wordings. You would do wonders for trans-Atlantic understanding if you could explain it.

    Easy: maximum protection of client’s interest.

  50. First inventor to file system is not a system its a defective method of inventorship determination compared with multiple methods ive concieved. Immediate novelty check on filing is a method of documentation of non previous existance of invention.Invention clusters evidence is a method of odds determination in inventorship disputes. Industrial espionage is a method of invention theft not delt with or protected against in the new defective legislation. First to file immediate awarding is a method of backlog reduction and new jobs creation acceleration
    Swearing behind an invention date was a method of stealing patents one good thing in the legislation. Is anybody good at writeing amendments to legislation

  51. Heck, I’d consider it progress if the EPO would allow more than one independent claim to an invention in an application.

    Actually, the EPO does allow more than one independent claim to an invention in an application. It allows one independent claim per category (product, process, apparatus and use), and can allow even more if the plurality of independent claims relate to a plurality of interrelated products, to different uses to the same problem, or to alternative solutions to the same problem.

    I personally don’t understand why US practitioners feel the need to claim the exactly same thing with at least three different wordings. You would do wonders for trans-Atlantic understanding if you could explain it.

    No, they also need to quit REQUIRING in haec verba support in the spec for any amendment.

    There you have a better point, because some EPO examiners are simply overzealous in their application of Art. 123(2) EPC. Neither the EPC, nor the EPO Guidelines, nor the case law of the EPO Boards of Appeal actually require a “literal” support in the application as originally filed, as some insist. However, the subject-matter of the amendment should be “directly and unambiguously derivable” from the content of the application as originally filed. This is in fact a natural consequence of the FTF system, which would be too easily abused if applicants were allowed to introduce new information after the filing date.

  52. Heck, I’d consider it progress if the EPO would allow more than one independent claim to an invention in an application.

    Actually, the EPO does allow more than one independent claim to an invention in an application. It allows one independent claim per category (product, process, apparatus and use), and can allow even more if the plurality of independent claims relate to a plurality of interrelated products, to different uses to the same problem, or to alternative solutions to the same problem.

    I personally don’t understand why US practitioners feel the need to claim the exactly same thing with at least three different wordings. You would do wonders for trans-Atlantic understanding if you could explain it.

    No, they also need to quit REQUIRING in haec verba support in the spec for any amendment.

    There you have a better point, although some EPO examiners are simply overzealous in their application of Art. 123(2) EPC. Neither the EPC, nor the EPO Guidelines, nor the case law of the EPO Boards of Appeal actually require a “literal” support in the application as originally filed, as some insist. However, the subject-matter of the amendment should be “directly and unambiguously derivable” from the content of the application as originally filed. This is in fact a natural consequence of the FTF system, which would be too easily abused if applicants were allowed to introduce new information after the filing date.

  53. Perhaps it helps if one thinks of novelty and obviousness as serving two quite different (but complementary) purposes.

    The obviousness tool is to prevent parties obstructing the technology road that everybody is free to use, going forward (ob via, Latin for “in the road”).

    The novelty provision is to adjudicate between rival inventors, who all file at the PTO before the overlapping subject matter has become obvious to the PHOSITA. Each of them has filed on non-obvious matter. Shall they all get patents, on everything they file? Better to give each a patent for what they each have that is novel over all earlier filings of the others.

    Thus it is, that earlier filed but later published filings at the same Patent Office are effective cites for novelty attacks, but not for obviousness assertions.

    Trust me, it works, and besides, it has a beneficial side effect, namely, serving as a constant refresher of the need to distinguish between what are novelty attacks based on D1, and what are obviousness attacks built on the combination of D1 plus the common general knowledge of the PHOSITA.

  54. As anyone who prosecutes in the EP knows, published applications that were filed before one’s priority date but which published afterwards can only be used for attacking the novelty of one’s claims (i.e., such publications can not be relied upon by examiners making inventive step rejections).

    Just trying to make that clear. There’s no need to muck it up with the recitation of articles and statutes.

  55. Heck, I’d consider it progress if the EPO would allow more than one independent claim to an invention in an application.

    No, they also need to quit REQUIRING in haec verba support in the spec for any amendment.

  56. Except that 54(3) specifies EP applications, and old 102(e) specified US applications or PCT apps designating the US and filed in English.

  57. But the timing requirements are not the same, are they Max?

    Article 56 Inventive step

    An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.

    Article 54 Novelty

    (2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

    (3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

    54(3) art is equivalent to (old) 35 USC 102(e) art, and is not admissible for obviousness in the EPO under Art 56, but is still admissible under 35 USC 103, even as amended by Leahy-Smith.

  58. There is a high level of substantive disagreement about standards at the deep level. Although the mechanism of PCT might work, I’m not convinced that nations will cede their ability to rely on benchmarking patentability standards independently, or even could converge on the particular tests to be applied. Unquestionably, a single examination would go far toward eliminating the backlog, increase certainty…. but I’m not convinced that nations have sufficiently harmonious standards (or will have them soon) to allow for single examination/ single adjudication.

  59. Mal, yes of course I do.

    The point is that the O-man has been over-promising for a while; and when thing don’t go according to plan, he tends to blame everyone else. I hardly think that anyone really believes the shift to FTF will have any short-term effects on jobs. That is just political BS and everyone knows it.

  60. As well, a change to a first to file system will create or save exactly 250,000 jobs, no more, no less, within some time period, the exact period we are not told, but we hope will that it will be before the next election.

    You and I both hope that the number of new jobs created will be far, far greater than that. At least, I certainly do. I’m sure you do, too, Ned.

  61. As well, a change to a first to file system will create or save exactly 250,000 jobs, no more, no less, within some time period, the exact period we are not told, but we hope will that it will be before the next election.

    And if the number is not exactly 250,000 jobs, we will find a scapegoat. Perhaps the suckers will continue to believe that Bush or a Tsunami or the nuking of Israel by a hostile Pakistan or some puke Iranian Ayatollah caused the diversion from the plan.

    Pass the plan! Pass the plan! …. 15 times more, Pass the Plan!

  62. If my memory of history serves me correctly it was Ben Franklin who scandalised Europe by appearing in his own hair.

    So no way would I expect our US colleagues to start wearing wigs.

  63. Compare:

    So, beware anybody who insists to you that Europe is still a hopeless patchwork of contradictory judgements. They might be out of date.

    and

    A better man than me will have to tell you. There are by now 42 EPC countries.

    W

    T

    F

  64. Article 56 of the EPC defines “inventive” as “not obvious”. The one is the precise antonym of the other. The test of patentability is exactly the same, whatever anybody else might say. The EPO has a statutory duty to grant patents, and those it grants have a presumption of validity which an attacker can defeat by getting as far as a preponderance of evodence at least.

    These things are universal. This is not rocket science.

  65. You’re correct fred, the ROW such as Europe has an “inventive step” requirement which corresponds to our “obviousness” requirement. But Europe also doesn’t have “absolute inventive step” requirement either.

  66. The USA adopted 20 year from filing patent terms, pre-grant publication and now first to file in genuflection to this notion. All of these are in most cases changes that weaken the rights of the patentee.

    And as a result patent of the change to 20 year from filing patent terms and pre-grant publication, US application filings peaked in 1995. That caused the United States economy to tank and the deficit increased such that when George Bush took office we were forced to invade Iraq. Thanks to that reliable source of oil, gas prices have been kept well below $3.00.

    The change to a first to file system will likely cause a nationwide famine within the year and will quite possibly lead to the extinction of many domestic farm animals.

  67. We have been talking about harmonization for decades. The USA adopted 20 year from filing patent terms, pre-grant publication and now first to file in genuflection to this notion. All of these are in most cases changes that weaken the rights of the patentee.

    What has EPO or Japan or other countries done to adopt US standards? I can thing of nothing. This has been a one way street, hurting inventors every yard (no, wait, I mean meter) of the way.

  68. A better man than me will have to tell you. There are by now 42 EPC countries

    Yes, let’s HARM-onize to that…

  69. I just finished writing a brief chapter about this. My personal view is that a world patent/world patent court is not likely to occur under the current institutional regimes. It appears that the EU’s enhanced cooperation toward a Community Patent may provide a more viable model, if world harmonization is indeed our goal.

  70. Ned, for those countries in Europe that accept the hegemony of the Enlarged Board of Appeal of the EPO as the ultimate arbiter of novelty under the EPC, the answer is clear. Until recently however, Germany was supposing itself to be that ultimate arbiter, and had a different view.

    Which EPC countries still choose not to bow the kneee to EBA jurisprudence? A better man than me will have to tell you. There are by now 42 EPC countries.

  71. I agree that we should look to harmonize as best we can, and issues of law that affect the entire world and not just United States. For example Paris Convention priority effects everyone and should be consistently applied.

    In the United States, for example, we require that the prior art enable the invention in order for the prior art to anticipate. However, I read that Australia, for example, no longer requires that the prior art enable for the prior art to anticipate. I wonder what the law is in Europe on this topic?

  72. Fred, ROW tests what was obvious at a specific date X by reference to everything that has already been “made available to the public” by date X; that and nothing else but that.

    By contrast, US law tests what was obvious on date X by reference to stuff already on file at the USPTO by date X that nobody except the filer at the PTO knew, or could have known about, on date X.

    I suspect that ies what EG means by “absolute obviousness”. Right EG?

  73. it should be much more influential that other statutory construction canons used to understand congressional intent

    Cite please.

    (I would post something about activist academics but I do not want to be “inappropriate”)

  74. “International harmonization has always been seen as a major purpose of the Leahy-Smith America Invents Act.”

    Dennis,

    That statement is completely incorrect and utter malarkey. The ROW has “absolute novelty” but we have in the AIA both “absolute novelty” and “absolute obviousness.” Also, the ROW has no “duty of disclosure” obligation or “inequitable conduct” defense, but the AIA did nothing about that, did it? The AIA has always been an effort by the Goliaths (aka certain large multinationsls in the computer/software business) to tilt the playing field against the innovative Davids (aka innovative American small business). Let’s not stoop to trying to hide the AIA (the name of this legislation is bad enough) behind the “harmonization” fig leaf.

  75. The EPO is a hybrid of common law and civil law.

    It is easy to assume that its approach is derived from Germanic legal tradition, but the input from the common law should not be underestimated. The influence of prior case law and its precedental value is significant, as all those who practice before the EPO will be well aware.

    There is nevertheless a paradox. The less precedent-bound system of the EPO has adopted an approach to controversial issues such as patentable subject matter and obviousness that has become substantially settled and has remained so for many years. As Max Drei correctly says, the EPO jurisprudence is largely done and dusted, and the number of EPO Appeal Board cases deemed worthy of publication in OJ EPO is significantly less than was the case in the 1980′s. The highly precedent-bound common-law systems of the US and the UK remain more variable in their approach and for example there is no algorithmic and widely applicable approach to inventive step in either jurisdiction comparable to problem-solution analysis as applied by the EPO.

    One of the underlying reasons is may be cultural characteristics. Peter Ford was an English barrister who joined the EPO at its opening, became a highly respected Appeal Board chairman, and was the first judge of the Patents County Court in the UK. He told me that the Germanic approach when confronted with a recurrent question was to develop a suitable test and then to apply that test consistently and on all possible occasions. He said that the Germans had applied this approach to theology of which he was a deeply interested student (though he did not give me any specific examples). It had also happened in the EPO in relation to patent law. So when technical problem was identified as being an important consideration, the German contribution was to apply it consistently and to a wide range of legal issues, as has happened. In that regard, the combination of an English respect for precedent with a Germanic desire for consistency and uniformity may provide the explanation as to why EPO jurisprudence has settled so relatively rapidly. The Germanic contribution may not be so much in the legal substance of the approaches developed as in the demand that onece those approaches have developed they should be applied widely and consistently.

    Has this been a favorable outcome? As a user, I would in general say: yes. Save in the area of added subject matter under a.123(2) EPC where the approach is arguably unduly restrictive, there appears to be no widespread or general dissatisfaction with the work of the EPO Appeal Boards and the decisions that they hand down, and insofar as there is much user silence the maxim qui tacet consentit apparently applies.

    As between the US, the UK and Europe there are areas of law which remain diverse and in these areas we each have to follow our own course. But in areas such as inventive step where our laws are similar we have much to learn from one another.

  76. This “harmonisation” business can take quite a long time though. But perhaps the USA, with Binding Precedent, can get to clarity and legal certainty quicker than Europe did with its slow Darwinian “survival of the fittest” jurisprudential development.

    Europe harmonised on its supra-national European Patent Convention in 1973. Since then, courts in England, Germany and Holland have been applying the same substantive law. Until recently, the experts and the litigators did nothing but disparage the decisions of the courts in the other two jurisdictions.

    However, in the last five years, there has been so much consolidation that you now find more variation between different judges in the same country than you do between the jurisprudence of those three countries. And look at the EPO White Book. You’ll be hard-pressed to find anything new, these last few years, in EPO jurisprudence on novelty, obviousness, enablement, entitlement to priority, allowability of prosecution amendments and all other provisions of substantive law. That’s all now done and dusted. Most of what’s new in the White Book is mere procedure-polishing.

    So, beware anybody who insists to you that Europe is still a hopeless patchwork of contradictory judgements. They might be out of date.

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