USPTO and the IP5

As high level drama proceeds between our trading partners, the heads of the IP5 (US, China, Japan, EPO, and South Korea) recently met in New Orleans.  Together, these five offices “handle approximately 80 percent of the world’s patent applications.” The focus of the meeting was further harmonization, reducing costs, and reducing the burden on inventors filing in multiple jurisdictions.

More information on the IP5 cooperation can be found at www.fiveipoffices.org

25 thoughts on “USPTO and the IP5

  1. 6

    You point out, anon, that you are NOT saying that you do not “get” the ROW Approach.

    Well, yes, I appreciate that. In anon’s mind, there is nothing he doesn’t “get”.

    It’s just that, going by what you write, you really don’t “get” the ROW Approach. Is that because you are unable to get it, or choose not to get it? I cannot tell.

    Once you have succeeded though, in opening your mind and reaching a real appreciation of it, you will see that your criticisms of it, unique to yourself, are illusory and unfounded. You’re on your own, anon, in your efforts to keep alive a dialogue that is no longer serving any useful purpose for other readers.

    1. 6.1

      Going by what I write – to the contrary of your rather bald assertion – I do “get” it.

      And instead of addressing the points of which I write, you have descended several times now into off-aimed ad hominem.

      Clearly, I am not the one between the two of us that needs to open their mind.

      As to having a meaningful dialogue between us, I have been on my own as the one fighting for such for ages now. By the way, meaningful is not as constrained as you wish it to be (such being only those things that reinforce your extremely myopic tiny “block” of which you traverse again and again and again in your vaunted “40 plus” years. So any time that YOU want to open your mind and address (in a meaningful manner) the points that I have presented to you (instead of merely swallowing the EPO-Uber-alles rhetoric), the points are here for you.

      It just now be what, six years or so that the meme of leading your horse to water and watching it die of thirst was bandied about?

      Since you insist on not changing and keeping your mind closed, that stack of horse carcasses next to the well of insight that I provide continues to grow in mountainous proportions.

  2. 5

    You assert that you “get” the ROW Approach. I say that, judging from what you write about it, judging by your questions, you don’t.

    1. 5.1

      As noted, your assertion is off.

      And it is you that needs to open your mind and grasp what I write.

      You can start by letting go of the obvious: that any post that dares to cast shade on your beloved EPO-Uber-alles paradigms must be wrong.

  3. 4

    Let’s not lose sight of the basics here. As anon is fond of telling us, things should be made as simple as we can make them, so long as we do not over-simplify.

    In any functional First to File patents regime, we need an obviousness provision to stop patents on obvious variants of what has already been made available to the public. And to keep it objective, we need the concept of the skilled person, who knows everything that has already been made available to “the public”, regardless of language, but isn’t inventive.

    In addition to that, we need a provision to stop double patenting. That’s what Art 54(3) of the EPC does. So, it looks at what had already been filed at the EPO. Not other Patent Offices. Just the EPO. As an Applicant at the EPO, you have to be novel over the earlier enabled disclosure content of all earler EPO filings. It’s that simple. This is not rocket science. To the contrary. It is far too simple to suit the interests of some patent litigators, it seems.

    Other ways to stop double patenting in a First to File environment are possible. They were exhaustively considered when the EPC was written in 1973, but found wanting.

    40 years of practice under Art 54(3) EPC have failed to dent its elegant simplicity.

    But, as ever, some well-funded investors have a vested interest in destroying elegant simplicity. Put simply, they don’t like it at all. More money can be made out of uncertainty than when everything is clear. For a lot of people, obfuscation suits their business purposes better.

    The motives of any party who disputes the fairness, simplicity and effectiveness of the EPC way to regulate the respective rights obtainable out of multiple contemporaneous Patent Office filings in a First to File jurisdiction should therefore be sceptically scrutinised.

    So too should any blog comments, inspired by “Not Invented Here” type prejudice, from people with little or no experience of how Art 54(3) EPC delivers in practice, as well as (of course) any comments from people with axe to grind.

    I hope my comments here will attract the highest Levels of sceptical scrutiny. One can but hope.

    1. 4.1

      I think that you over emphasize “available to the public” and under emphasize the purpose of that phrase: reflects the state of the art.

      With that over emphasis, you slide the notion of the legal person into the domain of actual persons. The very same underlying rationale for creating the legal fiction in the first place (as opposed to ANY real person) underlies both the (fully admitted and aware of the different) novelty and obviousness aspects of law.

      You – without batting an eye (or opening one), fully accept the legal fiction for novelty, but then want to have a muddled view for obviousness.

      And then on top of that you want to blame the “other side” for pointing out the inconsistency…?

      You then assail the motives of anyone criticizing “the simplicity,” when that same “simplicity” is itself TOO simple.

      I like that you reference my quotes attributable to Einstein, but you then ignore the part about “and no simpler.”

      Maybe instead you might focus on the arguments presented instead.

      The fact of the matter is that a policy choice of conflating just what the legal notion of a NON-real person means with real persons has been desired (and committed).

      Let’s be clear as well: I accept and respect that policy decision, even as it is no longer being consistent with that same notion of the legal person.

      As to the “not invented here” prejudice, that comment comes out 180 from the position that you want, as you clamor FOR not using that which was “not invented here,” while the US has opened its legal person to recognize that the state of the art does not have borders.

      Again, another policy choice – but again, you want to spin this as if your desired state is the one of consistent reason (when the very opposite is true).

      1. 4.1.1

        You are manufacturing difficulty where none exists.

        As I explained, we need the concept of the objective skilled addressee for objectivity, and to define a lens through which any written document is assessed.

        We need the notion of “availability to the public” to decide obviousness objectively.

        Entirely separately, we need a mechanism to adjudicate between rival filers who are all non-obvious over the totality of what has been made available to the public, and therefore (in a First to File jurisdiction) all have the legitimate expectation of a full and duly issued patent for their efforts. But they can’t all have a patent for the same thing, can they?

        The simple rule of the EPC is that you get to issue, despite all those rivals with their own contemporaneous filings, but only to the extent that you are still novel over their earlier filings.

        It doesn’t get any simpler than that.

        And 40 years of successful running shows it is not too simple to achieve its objective of adjudicating double patenting fairly and justly.

        1. 4.1.1.1

          You are manufacturing difficulty where none exists.

          Not at all.

          I am adding clarity as to when – and how – the legal fiction that is the notion of Person Having Ordinary Skill In The Art is being used consistently.

          I “get” the rationalizing that is going on in other sovereigns.
          I “get” the spin that accompanies that rationalizing.

          As to novelty and obviousness, such are NOT “Entirely separately” as you claim. There is ZERO justification for trying to say that PHOSITA for one (novelty) is an ENTIRELY different PHOSITA than for the other (obviousness).

          This confuses and conflates the differences in what those two different concepts aim to provide with the policy choice of how to go about those differences. When you have to muddle what PHOSITA means in order to arrive at your “simplicity,” at least have the decency to admit that the choice to muddle has been made.

          To pretend that one is still talking about the legal fiction person when one is actually instead talking about some real person is simply disingenuous.

          THAT is not “simplicity.” The choice to treat obviousness in view of real people instead of the legal notion IS a simple choice, and does make application of obviousness simpler.

          No one is arguing otherwise.

          I also “get” that the policy decision by the EPC makes things simple. But it is you that get’s the Einstein quote incorrectly applied as this “make simple” goes beyond the point of “but not more.” – leastwise in terms of consistency and actual meaning of the terms being bandied about.

          And instead of accepting the clarity that I bring, you instead feel compelled to make unfounded accusations (which DO NOT apply to me) and to double down on the attempts to NOT use the term consistently.

          Further – the notion that “we’ve been doing for 40 years” does NOT mean that “fairly and justly” have been achieved. It just means that the policy choice has been accepted for that length of time. As I have repeatedly told you, I ALSO accept that such a policy choice is up to the sovereign involved.

          Our sovereign has chosen differently – and maintains a different choice, even after the AIA (with additional corrections by me now no longer in the limbo of unnotified editor moderation).

          To your quip then of “But they can’t all have a patent for the same thing, can they?” the answer is a rather bland, “Of Course not, no one is saying any such thing.” Of course, as I also explained, we here in the U.S. consistently use the term PHOSITA and also fully apply that term to the concept of obviousness. To turn your question back then, OUR sovereign (in the consistent use of PHOSTIA) have also stated that “They both cannot have patents if the second patent is merely obvious over the first.” with the natural and consistent (simply consistent, even) application of what it means to be a PHOSITA.

          Please do not pretend that this is beyond your level of understanding (conversely, if you insist on pretending so, then at least have the decency to NOT proselytize as if you did have that understanding).

          1. 4.1.1.1.1

            As another American once observed:

            “It’s better to keep your mouth shut and appear stupid than open it and remove all doubt”

            Now I know you’re not like that. Rather, as I have suspected on many previous occasions, you just like to keep the conversation running.

            Since the EPC invented it in 1973, all the world (except the USA) understands and uses the Art 54(3) EPC “whole contents” approach to adjudicate between rival contemporaneous filers under FtF in a way that’s fair to every one of those filers. Fairness is important, to maintain respect for the law. If you are still unable or unwilling to recognise the legal simplicity, rigor and elegance of the “whole contents” approach, that’s your free personal choice. Who else is bothered? Nobody, it seems.

            1. 4.1.1.1.1.1

              “everybody does it” is meaningless to the points that I have presented.

              Maybe YOU should heed your own advice as to that opening to remove all doubt thing…

              As I have said several time snow, I “get” the approach. You seem unable (or unwilling) to pay heed.

        2. 4.1.1.2

          To put it another way:

          The concept of obviousness applies even when there are no rival filers.

          To read your comment here, it appears that you think that obviousness ONLY applies when there are rival filers.

          Is your sovereign’s choice of “inventive step” limited to ONLY rival filers? If there are no rival filers, may one obtain a patent on obvious material?

          Is not the notion (the full and consistent notion) of PHOSITA more than that?

          It certainly is here.

          1. 4.1.1.2.1

            It’s not my choice. rather, it’s the choice of every jurisdiction except the USA. You are like the guy speeding down the Autobahn complaining to his wife on his cell phone that all the other drivers are driving in the wrong direction. What you need here, I would say, is a mind “willing to understand”, that maybe all those other drivers are seeing something that you are not.

            1. 4.1.1.2.1.1

              LOL – your comeback is a fallacy, given as sovereigns may in fact enact one-way or two way street laws. AGAIN – you are not paying attention here. I am NOT saying that I do not “get” the choice made by other sovereigns. Here, you descend into attempted ad hominem on a stray point of “not MY choice” – well no duh. Maybe instead of the diversion, you attempt to address the point presented…

  4. 3

    third try… (meant as an additional reply to MaxDrei @ 1)

    Worth noting (as it pertains to a nuanced understanding of the America Invents Act), on page 2 of the sub-linked full article, the Aussie writers say of the retained (but fata11y weakened) grace period that:

    Publication of the invention by the independent inventor during the grace period will also not interfere with the ability of the inventor who published earlier to obtain a patent for that invention.

    This is technically NOT true. There will be interference and NO ONE will be able to obtain a patent if that publication/second filing combo contain obvious variants as opposed to exact items that would be claimed by the first-to-publish-but-second-to-file.

    This is because the “protection” afforded to publications are only of the “novelty” variety and are not protections afforded of the obviousness type. So while the prior publication defeats the first-to-actually-file, the first-to-actually-file WILL defeat the first-to-publish person in the condition I note. Especially given the Aussie caveat that the actual first to file was not a person that derived the work from the publication.

    There is a further substantial error of view of US law at page 16:

    Treating earlier unpublished applications as “prior art” is a fiction. Since the United States abandoned its first to invent system, there is no longer any such thing as “secret” prior art.

    First, ALL of treatment for the NON-real person of PHOSITA is a fiction, so the first sentence appears to want to treat disparagingly something that is effused throughout ALL of whatever PHOSITA is involved with.

    Secondly, while the Office may have chosen to abrogate its duty of examination in this critical area, there really is STILL such a thing as “secret” prior art.

    And necessarily so, given the US version of PHOSITA. The author appears to be saying something that is not true and that is merely a wish of that author (in order to try to ply a point that his eyeglasses should be used).

    This statement (also on page 16) needs clarification:

    The inventive step, or obviousness, test is based on a desire to prevent the patenting of things which would be obvious to those in the field at the relevant date due to their knowledge of their art.

    “in the field” appears to subtly switch PHOSITA to be a real person, rather than the NON-real fictional legal person.

    That may BE the choice of other sovereigns, but that is NOT the choice (even after the AIA) of the US sovereign.

    What this boils down to (plain and simple) is a CHOICE as to whether or not to fully employ the legal fiction of PHOSITA. It only muddies the water when a policy choice gets the use of the legal terms in an inconsistent manner, as happens when PHOSITA is NOT used for obviousness, and aspects of real life people are used (but still referenced in the common vernacular as PHOSITA, or the too-subtly different “in the field”).

    Lastly, it should be evident that a stronger patent exists that a first patent blocks BOTH under novelty and obviousness of a near-time, but clearly later filed item.

    It is a weaker patent that permits items within its penumbra to be allowed to be provided.

    Such is no longer a full exclusivity.

    Again, if other sovereigns want to make that choice, I fully respect it. I just want to make sure that these self-same other sovereigns realize that our sovereign has chosen differently (and has placed such importance upon this difference that there is a clear reflection in our Constitution [tied to the notion of exclusivity]).

  5. 2

    New Orleans, eh? Those luck IP5 bureaucrats. Laissez les bons temps roulez, et les brevets suivent.

  6. 1

    Gentle reader, I commend to you an excellent Paper:

    link to davies.com.au

    out of Australia, on one aspect of the quest for more international harmonisation.

    1. 1.1

      Thanks MaxDrei – an excellent link (and sublink – worth exploring the link in the linked article)

      That being said, the underlying story is biased as all get out. But at least the bias is easily identifiable and thus not difficult to discount.

      1. 1.1.1

        Bias easily identifiable? Not by me. Go on, give me a clue.

        1. 1.1.1.1

          LOL – you seriously cannot see the bias?

          I mean, seriously?

          Hint: note who exactly is saying what. It is the group there to advocate for a given position saying that “Our” position naturally is the best position.

          Or did you have your EPO-Uber-Alles blinders on…?

          1. 1.1.1.1.1

            Who is saying what? An English common law patent attorney, partner in a firm in Australia, is saying that Art 54(3) of the EPC is the best solution to the “secret prior art” issue. Last time I checked, Australia is not in Europe.

            The EPC is a compromise between English common law and German civil law patent thinking. English thinking delivered the patent law of the British Empire. German patent law, more than a century ago, delivered the patent law of China, Japan and Korea. Now all these jurisdictions are pretty much on the same patent law page. Only the USA holds out against harmonization. As with everything else, it expects the ROW eventually to come around to the US view.

            1. 1.1.1.1.1.1

              It’s not about which country – it’s about what committee that person was on.

              Try again.

              1. 1.1.1.1.1.1.1

                Committee? You mean WIPO’s “Group B+”? Here, from the WIPO website is its membership:

                “In 2014, a Sub-Group B+ was set up to assist the Chair, consisting of representatives from Canada, Denmark, Germany, Hungary, Japan, South Korea, Spain, the UK, the USA and the EPO.”

                What “bias” anon. I don’t see China in there. Is then Group B+ biased against China?

                I do see the USA in there. Is Group B+ nevertheless “biased” against the USA? Is it your assertion that any Group of more than two sovereign States, one of which is the USA, is inherently and hopelessly “biased” against the USA? Is that what’s wrong with NAFTA?

                1. S i g h

                  It is NOT a “country” bias, MaxDrei.

                  You are aware that there is bias outside of a “country” bias, eh?

                  The bias is a group bias.
                  The group has its way.
                  That way is perfunctory deemed “the best way.”
                  The recommendation is a rather bland “my eyeglasses work for me, here, they should work for you too.”

                  The U.S. led the world in innovation (until recently) – this was well reflected in our patent system.

                  The notion of One World Order (and a uniform patent system to match) is ALSO a point merely ASSumed in the bias of the article.

                  You cry about the U.S. wanting others to match us, but that is a bit of a strawman. I do not care if the rest of the world matches us. Quite in fact, I would prefer that the rest of the world does NOT match us, and let us go back to the prior Gold standard that matched the world leading innovation engine.

                2. Sorry anon. Yours at 10:18 hr is beyond my comprehension.
                  I’m at a loss what I can usefully write in reply.

                3. Your comprehension is that limited?

                  Over 40 years round and round a really tiny little block must make you very dizzy.

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