U.S. Re-Assumes Leadership in Global IP Reform:

AIA spearheads US efforts in reviving global discussions to improve patent administration and processing.

By Q. Todd Dickinson

Todd Dickinson is Executive Director of the American Intellectual Property Law Association, and former Director of the U.S. Patent and Trademark Office.

As someone who’s been involved in intellectual property for over 30 years, there comes a time when you think you’ve seen almost everything there is to see in our field, and frankly I’m very proud to have been personally involved in a number of changes that we have witnessed. This past year and half, however, will almost assuredly go down in many ways as the most significant time in patent law and policy in more than a century.

Considering the passage in the United States of the Leahy-Smith America Invents Act (“AIA”) and the subsequent PTO rules to implement those changes, there is cause for optimism on the international front as well. We have seen a great likelihood of finally having an EU Patent and EU Patent Court, a huge growth in the number of Chinese filings both domestically and internationally, a wave of IP monetization, and critical patent litigation in the U.S., such as Apple v. Samsung. It’s hard not to wonder what else can happen as we find ourselves working at a critical time in a critical area of the law. 

Yet with all that has happened, I’d submit that we’re not done.

There’s still another important task that frankly has been foreshadowed by many of the advances this year: the issue of international patent harmonization. I would also submit that, for the current generation of IP leadership, this is genuinely a legacy issue. The great challenge of international harmonization is the current generation’s Paris Convention, their Patent Cooperation Treaty, their TRIPs. During a five-year period in the mid-nineties, we had six IP treaties, some very important, but with no international IP agreement in the last 20 years, there is now an enormous opportunity.

In many ways, the AIA has given us that chance. One of the historic aspects of the AIA is the change in the United States from a first-to-invent system to a first-inventor-to-file system. In a way, this is a culmination of almost 30 years of discussions in the United States and in international negotiations on so-called “substantive patent harmonization.” 

The core of harmonization has always required a trade-off of several issues, but primarily two: namely, first-to-file and the grace period, i.e., the period after public disclosure of the invention during which an applicant may still file their patent application. Amazingly, these somewhat arcane issues, which are only modestly-distinguishable from past practice, are mostly what stand between much greater international cooperation, reduced redundancy and cost, and significantly greater benefits to large and small inventors.

There is this potential for movement, however. Now that the United States has moved to a first-inventor-to-file system, the center of gravity of the international discussions has shifted, and the onus is on those countries, mainly the European countries and the EPO, that have not yet adopted a meaningful grace period. By contrast, the Koreans and the Japanese in recently adopting a grace period, have found it very effective. To their credit, some Europeans (most notably European Patent Office President Benoit Batistelli) have commented favorably on the switch by these Asian countries. This should be encouraged further.

In the past, international patent harmonization discussions have taken place with great effect at the World Intellectual Property Organization (WIPO) in Geneva. Over the last 10 or 15 years, however, WIPO has largely shifted its focus from a broad strengthening of the international IP system, to investigating how to modify the system to allow developing countries greater low-cost access to patented technology. This has led to an overall paralysis at WIPO in the substantive patent law area. It has shifted the focus to informal but potentially very effective groups of patent offices that are currently discussing many topics, including harmonization. 

On a broader scale, the subgroup of industrialized countries involved in the WIPO discussions have met outside of WIPO to focus especially on substantive patent harmonization. The “B+” group (i.e., the "Group B" industrialized countries from WIPO, plus central and eastern European countries that are members of either the EU or the EPO), which was formed at the initiative of the USPTO, has been meeting for almost 10 years and had very productive discussions, but as yet without full success. 

Perhaps the most hopeful development can be credited to USPTO Director David Kappos and President Batistelli. They convened a limited number of key IP–focused countries meeting under the rubric of the "Tegernsee group" (named after the German town where they first met), and gave them the specific charge to reignite the international harmonization discussions in light of the U.S. reforms under the AIA.

AIPLA has been closely observing these discussions, and we are very hopeful that the international climate is now ready for even more substantial progress, at least outside of the formal United Nations system.

But no matter which path we take, let's move forward. As a matter of substantive law, consensus could probably be reached very quickly as it is, at bottom, a matter of political will. It’s a matter of reaching the common ground we know to exist and acting with the strength of conviction that the system will be vastly improved.

It’s this generation’s next big opportunity: let’s finish the job.