By GREGORY ZELLER //
United States negotiators returning from the Land of the Rising Sun are reporting progress on international “patent harmonization” efforts.
A seven-member delegation of the American Intellectual Property Law Association recently completed a trip to Japan, where delegates participated in intensive discussions with the Trilateral Patent Office – a three-headed body encompassing the U.S. Patent and Trademark Office, the Japan Patent Office and the European Patent Office.
The talks focused mostly on “global patent harmonization,” according to Raymond Farrell, senior partner and cofounder of Melville-based law firm Carter, DeLuca, Farrell & Schmidt LLP, who cited an “attempt to reach consensus on a broad package of substantive patent legal matters” extending across international borders.
The three-day agenda included the annual Trilateral Patent Office Heads meeting, featuring updates from the TPO’s three member organizations, the World Intellectual Property Organization and the IP5 – a forum of the five largest IP offices in the world, including the TPO members, the Korean Intellectual Property Office and the State Intellectual Property Office of the People’s Republic of China.
Also contributing were representatives of continent-wide business-growth advocate BusinessEurope, the Japan Intellectual Property Association (if you click, better know your kanji from your katakana, or better yet, try here) and the AIPLA delegates, including Executive Director Lisa Jorgenson, regulatory affairs Deputy Exec Chen Wang and Farrell, among others.
The impressive gathering of international IP experts kept busy over the three-day conference, according to Farrell, who noted substantive discussions on important topics including grace periods, prior-user rights and conflicting applications – key issues for innovators, inventors and entrepreneurs hoping to add euros and yen to their dollars and cents, and vice versa.
“The talks are focused on both procedural and substantive patent-law harmonization,” Farrell told Innovate LI, with the ultimate goal of “making patent laws more predictable as well as cost- and time-efficient worldwide.”
While synchronizing international IP laws sounds like a daunting task – especially with so many disparate cultures and economic systems at the table – “some of the harmonization areas are easier to implement,” Farrell noted, especially when there is agreement among the different federal patent offices and no changes to domestic patent laws are required.
For example: Delegates discussed increased work-sharing among the international offices, allowing patent examiners in each country to benefit from searches conducted by the other offices on corresponding patent applications.
Efficiencies can also be found along what Farrell called the “patent prosecution highway” via expedited examinations, wherein patent applications approved in one participating country can be sped through the examination process in another.
Discussions in Hakone – a town in Japan’s Kanagawa Prefecture, nestled on the shores of Lake Ashino – also focused on the Global Dossier Initiative, an international business-services suite accessible through a single portal being developed by the IP5.
Participants also discussed harmonizing grace periods, wherein patent hopefuls are given time to file their official patent applications after pre-filing disclosure of their inventions. While the USPTO offers a 12-month window in such cases, “many countries do not have any grace period,” Farrell noted.
“This results in a complete loss of rights for an inventor if they make a pre-filing disclosure,” he said.
Harmonizing such factors in different countries is becoming more important, according to Farrell, as “technology has advanced and there’s a lot more multinational IP work being done” at firms like Carter DeLuca.
“You have all these different requirements in all these different jurisdictions for the same thing,” the attorney said. “Any business would want to have those things harmonized.
“There’s more predictability, higher efficiency and less cost to obtain IP protections in multiple countries.”