Judiciary HomepagePublication of patent applications at 18 months coupled with maintenance of patent term capped from filing date are essential integers of any modern patent system see I, page 2.
The Rohrabacher counterproposals have laudable goals that are perhaps better met through several concepts; see II, page 6:
(a) as foreign patent offices publish applications at eighteen months from first filing, any patent applicant here should be permitted to withdraw an application from publication within fifteen months from filing by stating that the invention remains a trade secret (including absence of any parallel foreign filings), assuming diligence in prosecution;
(b) several patent attorney-ombudsman should be stationed throughout the examining corps with their task being to help the small entity inventor, and with line authority to the Solicitor, and not the "bean counter" supervisory line to the Assistant Commissioner;
(c) every effort would be made to give the "small entity" inventor an examination on the merits before the publication of the application, with publication postponed until after a reasonable time for consideration of the examination results; and
(d) major league attorneys should be encouraged to have actual or quasi-pro bono representation of individual inventors by crafting a PTO-arbitrated malpractice system for individual inventors and other small entities, superseding state laws.
H.R. 400 should be updated to deal with the expected Supreme Court opinion in the Warner-Jenkinson case: What the judicial system is taking away from claim scope under the admittedly amorphous "doctrine of equivalents" should be replaced with a strengthened reissue and reexamination system; this is discussed at page 8, with a "discussion draft" at page 11.
Disclosure Statement under House Rule XI, cl. 2(g)(4) and witness address and phone, see page 10; a curriculum vitae of the witness appears at page 20.
Professor Harold C. Wegner
Wednesday, February 26, 1997
9:00 AM
Rayburn House Office Building Room 2237
Thank you for permitting me to testify. I am a Professor of Law and the Director of the Intellectual Property Program at George Washington University. I also am the Director of the Dean Dinwoodey Center for Intellectual Property Studies, a graduate research institute charged with a study of policy issues including patent reform. I am also a member of the national law firm, Foley & Lardner. I testify pro bono; the views I express are entirely my own.
There are many pieces to the patent reform puzzle. I testify today principally to speak to two specific items in the current legislation automatic publication of patent applications and maintenance of the patent term capped from the filing date. These points are covered in the first section of this paper; counterproposals from a discussion draft from Congressman Rohrabacher are considered at II, page 6. I have focused my testimony to key new issues; for a background on additional points dealing with publication and term, an abridged version of my 1994 Congressional testimony is appended at page 13.
I also wish to call to the attention of this Congress the need to amend H.R. 400 to take into account judicial erosion of the patentee's scope of protection in the Warner-Jenkinson case, a point possibly more important than the issues we are otherwise addressing today, and something that could easily be rectified by an amendment to H.R. 400 a "discussion draft" and history of this amendment are found beginning at page 11.
I. NEED FOR PUBLICATION AND A CAPPED PATENT TERM
The policy reasons favoring a twenty year term capped from filing coupled with 18 month publication have been addressed repeatedly and are very well understood:
(1) Submarine Patents
There is first of all the question of "submarine patents" a phenomenon dating back more than a full century to the notorious patent attorney George Selden. Mr. Selden patented the gas-driven automobile, obtaining his patent only after sixteen years and only after the real pioneers of industry had put the cars on the road. Selden's invention was little more than a paper creation, a patent tax on the real innovators who did more than write down their idea on a scrap of paper, putting their creative geniuses into actual production. I refer to my testimony three years ago that explains the Selden phenomenon in greater detail; see page 14.
(2) An Uneven Information Playing Field
American policy should dictate favoring the domestic innovative community with the latest scientific information, and clearly not follow a patent publication policy that gives e.g. Japanese researchers earlier information about Japanese and American technology earlier than our own domestic researchers. This is a prime evil addressed by the publication aspect of H.R. 400: We want American researchers to gain access in English, locally, to the latest technology from the United States, Japan and elsewhere not later than when the technology is published in Japanese in Tokyo. It is unthinkable that we would have a policy where American technology would otherwise be published in Japanese, permitting overseas competition to see what's what in the United States even before the American industrial community.
It is thus untenable that most foreign patent offices publish applications automatically eighteen months from first filing, while Americans are deprived of these valuable invention disclosures until grant. In the simple context of either an American, Japanese or any inventor filing in both Japan and the United States, a Japanese language text of the invention is published in Tokyo eighteen months from first filing. A Japanese seeking to stay up to date on the state of the art can obtain a Japanese language text on both American and Japanese innovation. Yet, an American individual or small business is kept in the dark, unable to obtain a prompt English translation of the Japanese text. Even the larger American concerns are behind the eight ball, as they must rely upon an expensive watch service that culls the Japanese language texts: The delay and cost in obtaining English translations are untenable.
(3) Uncertain Risks for American Development
All other factors being equal, a multinational is encouraged to develop its invention and create production facilities in Europe and Asia than risk a submarine patent or other long-secret application arising years later as a patent, threatening to shut down a domestic factory.
Thus, all patent applications are kept in the open in Europe and most other countries after 18 months. But, since the American patent application files remain secret "forever", industry is left hanging for many years, uncertain that a patent may eventually be granted.
(4) Vogel Trailers, A Much Larger Problem
For more than twenty-five years since the notorious Vogel case, it has been possible to file a "Vogel trailer", to obtain broader protection in a secret continuation after the grant of a first, narrow patent.
In the actual Vogel case, In re Vogel, 422 F.2d 438 (CCPA 1970), a first patent was granted to a method of treating "pork". The public thus came to know that the patent protection gained was only for "pork" treating lamb, beef or other meat was outside the patent protection. Before grant of the "pork" patent, a continuation was filed for the treatment of "meat". Before this case, it had been assumed that if one patented a method of treating "pork", this would bar a second patent to the same invention. I.e., "pork" is the same invention as "meat". But, no! A predecessor to the Federal Circuit held that "pork" is not "meat"; there are two inventions: Two patents may be granted after all.
In case after case, narrow patents "pork" are granted, but third parties are worried that a second, broader patent "meat" is yet to come.
Roughly twenty percent of all applications filed in recent years have been of the continuation or related type.
Third parties have no access to the true continuation, so they have no way of knowing the scope of protection sought in such a continuation. (Just last year, for the first time, the PTO will allow access to information about the existence of a trailer, but not access to the file, unless the continuation is filed under a "file wrapper" procedure.) Publication is vital to stop this practice that is quite widespread, dwarfing true "submarine" patents by a ratio of at least 100:1.
(4) "Patent Worksharing"
"Patent worksharing" is gradually being introduced around the world: Instead of having several patent offices conduct independent examinations of parallel patent applications to the same invention, with patent worksharing, the work of the first examining office is "piggybacked" by other offices: Instead of making a fresh, complete examination in second and subsequent countries, the benefits of the first examination results are used in the other countries. The patent applicant who has received a thorough examination in one country will then tailor his claims in the other offices, generally citing the examination results (including prior art) to the other offices. This makes it far, far easier for the examiners in the second and subsequent countries to do their tasks.
As Americans seek patent protection in China, Brazil and other developing countries under the current World Trade Organization (WTO) regime, they are trying to spread the benefits of their inventions on a broader territorial base, while reaping the rewards of increased sales and profits for American inventors and industry. Yet, it is increasingly more difficult to obtain rapid grants of patents in these countries, thanks to the success of increased filings and the expense of running a local patent office. All of the developing countries are taking advantage of "piggybacking".
America is the victim of piggybacking, because America examines first, so that virtually all other parallel examinations are piggybacked off the U.S. examination.
(a) Publication and Capped Term as the Key
The reason that the U.S. has examined first and thus reaps no benefits of piggybacking is that the United States must examine promptly, without delay of any kind, because historically the term of the patent would be unreasonably extended and inventions would be suppressed for a prolonged period. The antidote is a combination of capping the term at twenty years from filing date (so that the length of prosecution does not prolong the patent term) and publication at 18 months (so that "submarining" is not possible).
(b) Billions in Cost Savings
To the extent that the United States has both a term capped from the filing date and publication, then the United States could have a system of mutual piggybacking, where some of the cases would go first in Europe or elsewhere, and the United States examiner could then take advantage of the European examination.
In a more advanced piggybacking system, a formal worksharing agreement would be created with Europe and Japan so that one Examiner would do the work of three. This is explained in my 1994 testimony, appended at page 13. This would result in literally billions in savings over the coming years to both government and taxpayer alike.
(c) Billions in Savings for Patent Applicants
One of the legitimate concerns of small businesses and individual inventors and universities is the high cost of foreign patent protection. Many feel priced out of the market. With patent worksharing, costs could be dramatically lowered to open the door to foreign patenting to a new class of inventors. This would have the very pro-American impact of letting Americans gain patent protection in Europe and Japan. Defensive patenting to block offshore manufacture would be one result. Joint ventures in foreign markets would create valuable capital to spur domestic growth.
While the savings would open doors for a new class of inventors, the overall impact would be felt by established enterprises as well. Imagine filing only one patent application for global protection, the dream at the end of the patent worksharing rainbow. Individual companies would be able to save millions of dollars in foreign attorney fees, translation expenses and personnel costs.
II. COUNTERPROPOSAL TO BLOCK PUBLICATION
It has recently been proposed that no U.S. application should be published until after a foreign patent office has published a counterpart.
In some ways, this parallels proposals that I had made over ten years ago. In my proposal, I had suggested that an applicant would have a right to continued secrecy if it were alleged by the applicant that there is no foreign counterpart and the invention remains a trade secret. In the end, I have come to the conclusion that it is better if we guarantee the patent applicant the opportunity for early examination.
The current proposal to delay U.S. publication until after foreign publication is entirely unsatisfactory as it provides no benefit and a considerable disadvantage to the American research community. Consider the situation where there are parallel filings in Japan and the United States, and as a result of the recent proposal, the Japanese application is published six months earlier than the U.S. application. This would give the Japanese industrial community a six month lead time on the latest innovations, providing Japanese language texts in Tokyo six months before the U.S. Patent and Trademark Office would publish the U.S. counterpart disclosure.
A Better Solution to Help Small Entities
To reach the same objectives of this counterproposal without the detriments, the following is proposed, some of which is contained already in H.R. 400. Automatic publication would take place, but there would be four complementary reforms:
(a) as foreign patent offices publish applications at eighteen months from first filing, any patent applicant here should be permitted to withdraw an application from publication within fifteen months from filing by stating that the invention remains a trade secret (including absence of any parallel foreign filings), assuming diligence in prosecution;
(b) several patent attorney-ombudsman should be stationed throughout the examining corps with their task being to help the small entity inventor, and with line authority to the Solicitor, and not the "bean counter" supervisory line to the Assistant Commissioner;
(c) every effort would be made to give the "small entity" inventor an examination on the merits before the publication of the application, with publication postponed until after a reasonable time for consideration of the examination results; and
(d) major league attorneys should be encouraged to have actual or quasi-pro bono representation of individual inventors by crafting a PTO-arbitrated malpractice system for individual inventors and other small entities, superseding state laws.
III. UNCERTAIN PATENT SCOPE UNDER WARNER-JENKINSON
The current legislation does not address a principal problem of the current state of the patent case law, namely, how strictly will an inventor be held to the literal wording of his patent claim vis a vis the rights of third parties?
A "doctrine of equivalents" dating back to the early nineteenth century has created a penumbra of protection around the legal scope, which heretofore forgave many errors in patent drafting a particular problem for the individual inventor. All of this is on the verge of major change in the coming weeks or months. I predict that this matter will achieve major attention by the pronouncement of the Supreme Court in the Warner-Jenkinson appeal from the en banc Federal Circuit opinion in Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512 (Fed. Cir. 1995) (en banc).
Who will win? It won't matter much in terms of a need for legislation, as a lose-lose scenario for patent holders will be created. An affirmance would codify a far stricter and unforgiving standard of patent draftsmanship that has superseded much of the case salaw created by the original Federal Circuit more than a decade ago. Yet, a reversal would go even further and make the life of the individual inventor even more difficult.
Subject to giving the Supreme Court its day to explain patent claiming policy in Warner Jenkinson, I propose that Congress reconsider the statutory alternative of a "reissue", something that would mitigate the need for the doctrine of equivalents. The legislative answer is two-fold:
First, let's let the patentee correct the scope of claims through statutory "reexamination" under 35 USC 302, to broaden claims in this modern procedure instead of under the more anachronistic reissue procedure.
Second, let's eliminate third party intervening rights where the third party commercializes after the reissue or reexamination is filed (as opposed to today's rule keying such rights to the grant of the reissue or issuance of the reexamination certificate).
The proposal to shift the intervening rights trigger to the filing date has been discussed in academic circles for more than five years. It's a no brainer that should be welcomed by patentees better able to fix their scope of protection and industry that is better served by a literal broadening of patents than today's amorphous scope of protection under the doctrine of equivalents. For the convenience of this Subcommittee, I have provided with this testimony a draft of the necessary legislation, the Post-Grant Patent Procedures Act of 1997, that follows immediately below.
Individual inventors need redress from Warner-Jenkinson far more than the major corporations who are better able to prospectively craft claims than an emerging organization.
I thank the Chairman and his distinguished colleagues for the opportunity to appear before you today. Disclosure Statement under House Rule XI, cl. 2(g)(4)
A curriculum vitae of the witness appears at page 20.
The address and phone number of the witness are:
George Washington University Law School
2000 H Street N.W.
Washington, D.C. 20052
and
Foley & Lardner
Suite 500
3000 K Street N.W.
Washington, D.C. 20007
telephone: 202-672-5571
The witness appears pro bono on his own behalf and not on behalf of George Washington
University or any of its organizations or any client, i.e., there is no question of any grant to report. DISCUSSION DRAFT
"POST-GRANT PATENT PROCEDURES ACT OF 1997"
IN THE HOUSE
H.R._________
A BILL
To amend title 35, United States Code, with respect to patents, and
for other purposes.
Be it enacted by the Senate and House of Representatives of the United States of America in
Congress assembled,
Sec. 101. Short title.
Sec. 102. Effect of Reissue and Reexamination; Scope of Reexamination.
Sec. 103. Effective date.
SEC. 101. SHORT TITLE.
This title may be cited as the "Post-Grant Patent Procedures Act of 1997."
SEC. 102. EFFECT OF REISSUE AND REEXAMINATION; SCOPE OF REEXAMINATION.
(a) Rewrite section 252 of title 35, United States Code, by changing "grant" (all four occurrences)
to "filing".
(b) Section 305 of title 35, United States Code, amend the third sentence to read as follows: "No
proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a
reexamination proceeding under this chapter commenced more than two years after grant of the original
patent".
SEC. 103. EFFECTIVE DATE.
This title and the amendments made by this title shall take effect on the date that is 6 months after the
date of the enactment of this Act and shall apply to all reexamination requests filed on or after such date.
Summary: Post-Grant Patent Procedures Act of 1997
This legislation makes two proposals: More importantly, the date for triggering "intervening
rights" is keyed to the filing date of a reissue as proposed to the grant date of the reissue. Less
important is the equalization of reexamination and reissue procedures to permit use of a reexamination
for a broadening of original claims.
Background
It has long been suggested that reissue should serve as an alternative to the doctrine of
equivalents. Martin J. Adelman & Gary L. Francione, The Doctrine of Equivalents in Patent Law:
Questions that Pennwalt did not Answer, 137 U.PA.L.REV. 673 (1989). Without keying intervening
rights to the filing date, however, reissue is hardly suitable for many situations. A trial balloon was lifted
five years ago to suggest use of the filing date as the key to intervening rights:
Although it has been suggested that the reissue provision in the Patent Act
provides an alternative to the doctrine of equivalents, the present statute does not provide
a satisfactory answer in the very situations for which the doctrine of equivalents was
created. The two-year statutory limitation on reissue patents would preclude patentees
from obtaining relief in situations where the copyist waits until two years after the patent
is granted. Even if infringement occurs within the first two years after the patent is
granted, intervening rights may be awarded to the accused infringer for actions taken
between the time the reissue application is filed and the reissue is granted. This would be
less of a problem if intervening rights were pegged to the filing date of the reissue, but
where the reissue proceedings may take two or more years, use of the grant date to
determine intervening rights prejudices the rights of the patentee. Therefore, the reissue
provision does not adequately compensate for the defects in the application of the
doctrine of equivalents.
Wegner, Equitable Equivalents: Weighing the Equities to Determine Patent Infringement in
Biotechnology and Other Emerging Technologies, 18 RUTGERS COMPUTER AND TECH. L. JOUR.
1, 34-35 (1992) (footnotes omitted). This matter was a point of discussion at various seminars at George
Washington University Law School and was carried forward in a study at George Washington by Allan
M. Soobert, Analyzing Infringement by Equivalents: A Proposal to Focus the Scope of International
Patent Protection, 22 RUTGERS COMPUTER & TECH. L.J. 189, 232, n. 169 (1996). See also N.
Thane Bauz, Reanimating U.S. Patent Reexamination: Recommendations for Change Based Upon a
Comparative Study of German Law, 27 CREIGHTON L. REV. 945, 955 (1994)(commenting on the risk
of intervening rights for the parallel case of a reexamination proceeding).
Altera, Expanding the Reissue Procedure: A Better Way To Do Business, 1 J. Intell. Prop. L. 185
(1993), cited with approval by Adelman, En Banc on Claim Construction and Equivalents in PATENT
LITIGATION, 681, 710, n. 151 (PLI/Pat 681 1994), has now fleshed out the proposal for a filing date
trigger for intervening rights coupled with an unlimited term for filing a reissue.
Professor Adelman, an original voice in the modern era seeking the use of reissue in lieu of the
doctrine of equivalents, has expressed his current thinking in a paper, En Banc on Claim Construction
and Equivalents in PATENT LITIGATION, 681, 704-705 (396 PLI/Pat 681 (1994)), where he states that
"[t]he better approach [vis a vis equivalents] is to leave the correction of errors to reissue where the
protection of the equitable doctrine of intervening rights is available to protect those who relied on the
language of the original claims."
United States Senate
Committee on the Judiciary
Subcommittee on Patents, Copyrights and Trademarks
Senator Dennis DeConcini, Chairman
Oversight Hearing on the Patent and Trademark Office including
testimony on the
"Patent Term and Publication Reform Act of 1994" S. 1854
Testimony by Harold C. Wegner
Professor of Law and Director, Intellectual Property Law Program
George Washington University National Law Center
Director, Dean Dinwoodey Center for Intellectual Property Studies
George Washington University
Wednesday, March 9, 1994
10:00 AM
Dirksen Senate Office Building Room 226
* * * I am pleased to share my personal views on the Patent Term and Publication Reform Act of 1994,
S. 1854, that could:
even the patent publication playing field to permit American inventors to gain English
language versions of key Japanese, European and American technology by automatic
publication at 18 months just as Japanese inventors for more than twenty years have
obtained Japanese language versions of American, Japanese and other inventions from
their home patent office;
* * *
provide "sunshine patent prosecution", permitting industry to know the exact status of
competitors' patent claims, to permit designing around pending applications and to move
into areas surrendered by patent applicants during prosecution (as opposed to today's
secrecy-until-grant system);
eliminate "submarine patenting" that heretofore has been a patent tax on innovation
without public policy benefit;
permit routine accelerated examination in biotechnology and other key areas of
technology through reallocation of resources;
permit early filing dates for inventors as part of a provisional priority filing system - one
already available in Japan and elsewhere, but not so far in the United States; and
permit patent examination "piggybacking", a free-riding off the parallel European Patent
Office examination at enormous taxpayer savings.
Enactment into law of the Patent Term and Publication Reform Act of 1994 would represent the
single most important procedural patent reform in more than fifty years. The impact on the U.S. Patent
and Trademark Office ("PTO") would include opening the pathway toward a "Patent Worksharing
Treaty" and ultimately taxpayer savings on the order of a billion dollars over the next decade; even greater
benefits would be available to industry.
* * *
The Twenty Year Patent Term: Dealing With George Selden
Just a Century Too Late
Who was George Selden and why is he important to the creation of a patent term capped at twenty
years from the filing date? George Selden, a turn of the century Rochester patent attorney, is perhaps the
most infamous patent pirate, the one who pioneered what is today known as the 11 submarine patent".
A submarine patent is one that is granted only many years after filing, first sitting dormant as a secret,
pending patent application. The "submarine" may be little more than a paper conception of a new area
of technology; the "inventor", the submarine pilot, maintains the secrecy and pendency of the patent
application for many years, waiting for an industry to first develop. Then the submarine surfaces, perhaps
ten or twenty or more years after filing. The public has not benefitted from this secret disclosure. All of
a sudden, the patent is in the open, and then the seventeen year patent term commences.
George Selden had the bright idea of a gasoline driven vehicle, little more than a rudimentary
concept. He filed his patent application in 1879, long before the commercial car industry developed.
Sixteen years later - in 1895 - Selden's patent submarine surfaced: The patent was granted to start a patent
monopoly to run until 1912, some thirty-three years after his original 1879 filing. By this time, cars were
running through the streets of Manhattan. Selden created a patent licensing group to exploit his patent and
to attempt to dominate the automobile industry through the early part of this century. in the end, thirty-two
years after filing with just one year left on the patent, the Second Circuit in New York invoked its equity
powers to bar a broad interpretation to Selden's patent, saving Henry Ford from patent infringement.
Clearly, there are some opponents to the twenty year term. Patent pirate successors to George
Selden surely will oppose the twenty year term. Precisely, this is a reason for such a term. Some in the
regulated chemical and biotechnology industries are likely to oppose the bill because today there is a de
facto extension of many years that is obtained by virtue of lengthy patent interferences that delay the grant
of patents. To the extent that a loophole is created for patent extension based upon patent interferences,
alone, then such a loophole would discourage early settlement of patent interferences. This is a bad idea.
(if an industry is short-changed because of regulatory delays, the better approach is to have
industry-specific patent extension legislation that balances the interests of the original patent holder with
the rights of competitors to enter the marketplace as soon as possible after expiration of the patent term.)
From an international competitiveness point of view, the submarine patent strategy works only
domestically, because a foreign patent application is capped at a term twenty years from filing, and the
surprise of secrecy is lost due to 18 month automatic publication. The only way to practice submarine
patent piracy today is to prey exclusively on the American market, to the competitive disadvantage of our
nation's manufacturing industries.
The twenty year term will also stimulate American competitiveness in the global marketplace.
If American patent terms last "forever", then at the end of twenty years there is free competition in Japan,
Europe and everywhere else except the United States. With Japanese and European patents having
expired, competition in a hot, just off- patent product flourishes abroad. American manufacturers cannot
enter the marketplace until submarine patents expire. By then, a post- expiration manufacturing industry
is already established in Japan or Europe or elsewhere, with American industry blocked by the continued
presence of the patent. It may be too late to establish American competition when the U.S. patent expires.
How anti-competitive.
Congress recognized the debilitating effects of patents that survive only in America when their
foreign counterparts have expired: 124 years ago in his landmark opinion in Mushet's Case,
Commissioner Fisher reaffirmed the strong public policy against late-expiring U.S. patents. Mr. Fisher
noted that at the time English steel manufacturers exported 100,000 tons of steel railroad iron to America,
ten times the 10,000 ton domestic manufacture. To permit a U.S. patent, alone, to be maintained to
dominate this manufacture, the situation would be compounded: "If, now, when [the English patents have
expired and] are free to all English manufactures, the American manufacturer must pay a royalty for
[making steel], he is immediately placed at a disadvantage as compared with his foreign competitor."
Commissioner Fisher's message from nearly 125 years ago is much more potent today, when global
overnight shipping is a reality and as we further evolve into a commercial global village. We must cap
U.S. patent terms at the international norm of twenty years from filing, or else we will force industries
offshore in patent free zones at the expiration of foreign patents; if the U.S. patent expires five or more
years later than the foreign counterparts, thriving industries will have been established offshore to serve
global markets, including our own. How anti-competitive.
How anti-American.
* * *
The Eighteen Month Publication
[I]mportant for American competitiveness is the 18 month publication introduced in the Patent Term and
Publication Reform Act of 1994. I am pleased to see your strong leadership for this proposal that is in the
unilateral interest of American industry. Today, major inventions are filed at least in triplicate, a
European, Japanese and an American patent application. Each application is necessary, as a U.S. patent
alone would donate the American's invention to Europeans and Japanese to use everywhere outside the
United States. It should be a vital national interest that we have patents granted to American nationals
on a global basis. This provides a patent beachhead for the domination of world markets for the better
American mousetrap of tomorrow.
The rest of the world publishes at 18 months. Thus, the Japanese scientist or engineer reads about
the hot developments of the day in native Japanese language, including the best from America, Germany
and Japan. Larger American corporations with subsidiaries in Japan and with pocketbooks to pay for
translations get the news a bit later in the. form of English translations that finally reach our shores. The
individual inventor without deep pocketbooks is left in the lurch. After some time, brief and not
completely satisfactory abstract services become available, a late and poor second choice to an immediate
full text English publication at 18 months.
Shifting America to the 18 month publication system will immediately put American innovators
on a par with their counterparts in Japan and Europe. Immediately at 18 months from filing, American
innovators will get English language access to the latest inventions from Japan and all over the world -
if anyone files a U.S. patent application it will be published at 18 months.
Let's move quickly ahead. Let's put American innovators on a par with their Japanese and
European counterparts. Let's level the patent playing field.
The Billion Dollar Taxpayer Dividend
The PTO today is choked with patent applications. It seeks to maintain an average pendency of
18 months for patent applications, but long ago this became an illusory goal for key technologies. The
net pendency of patent applications in most important biotechnology areas is atrocious. The previous
Administration played games to mask the gross backlogs in this area even to the point of quickly
transferring out the aged patent applications to non-biotechnology groups to improve statistics. For
certain key technologies from the time of the first priority filing to the grant of the biotechnology patent
in the key areas is more likely thirty to forty or more months as opposed to the goal of 18 months. The
PTO should first identify the critical industries of great importance to American competitiveness and
marshall its resources to better serve these areas. Greater examination manpower should be promptly
shifted to these areas to improve quality and service to the patent community.
But, there is no free lunch. We cannot look for government handouts or subsidies. Whether the
fault lies with a less than optimum patent lobbying effort over the years or elsewhere, the reality of the
day is that there is no money to be scraped up for helping key technologies. The answer lies in the
combination of 18 month publication and twenty year term. No longer is there any need for routine early
grant of patents to disseminate patent information; the dissemination is automatic, thanks to 18 month
publication. There's no problem with a slower routine examination because there's now a twenty year cap
on patent term from the filing date.
The Assistant Secretary should prioritize industries of interest, and permit slower examination
on a voluntary basis for the non-critical industries.
Ironically, while pendency must be shortened in biotechnology, pendency could easily and
without detriment be permitted to lag in other areas. If patents only form part of an industry-wide pool
that can be sampled at will by the pool members, then there is no incentive for early examination. If
anything, early examination simply and needlessly adds legal fees to the budgets of pool industries.
For example, the automotive industry early in this century prided itself on patent pools where
everyone shared the patent rights of everyone else. The pro-pooling mentality exists today. This is
manifested by the terrible performance of at least one of the top three American auto makers in Japan:
If an American high technology company virtually abandons its patent position in Japan through gross
non-filing of patent applications, this is a total surrender of any patent beachhead to gain a foothold in
the Japanese market. Conversely, the record of the Japanese automotive industry is hardly one of use of
the patent system - other than to burden the U.S. system with hundreds of unnecessary patent applications
per year.
For the automotive industry, it is therefore clear that with a pro-pooling, defensive attitude that
is antithetical to the proper use of the patent system, virtually no examination is important at all. The
automotive industry is only one example where American innovation receives no benefit from the patent
system. (The fault may be not with the system but the industry.) Some industries have long ago been
relegated to overseas competition, with televisions, VCR's, microwave ovens and other examples of Asian
dominance promptly coming to mind. Is there any incentive for the prompt examination of cases in these
fields? Is there any reason why the American manufacturing community should care which foreign
competitor supplies the American consumer with a new microwave oven?
Even in the biotechnology field, early examination is necessary only in a minority of cases. For
example, a hot high tech firm in Phoenix may have, say, ten patent applications on file for a new
Biowidget, and has chosen one product protected by only one of those patent applications for
commercialization. For this one in ten case, earliest examination is necessary. But, the other nine are
better put on hold: The company itself would prefer to do so, to save its resources, to focus its attention
on the one in ten case that is important.
Examination on demand within a reasonable period of, say, 24 to 30 months, would operate in
the interests of everyone. If the patent applicant could perform his or her own triage to focus on
important cases, then there would be plenty of manpower to examine that one in ten case at the earliest
date. The other cases would be taken up for examination only at 24 or 30 months from first filing.
The win-win situation is clear. It is self-evident that the patent applicant wins by voluntary triage.
The PTO also wins, because the PTO can routinely piggyback its examination off a counterpart European
examination. The savings can be dramatic. For example, today, the patent application in the U.S. is taken
up before the European counterpart. A full examination is undertaken. Later, the more thorough
European search at the Hague takes place. It's much more thorough as Examiners at the Hague are given
diplomatic status, making the job one of highest distinction and salary; the Hague Examiners are fluent
in several languages; and each Examiner is given a much longer time per case to examine than his or her
equally bright but often overwhelmed American counterpart. The Hague search results often lead to a
de novo second examination in the United States keyed to the information from the Hague. What a waste
of resources.
Instead, since the European search takes place at 18 months from filing, keying routine
examination to 24 or 30 months from filing largely eliminates the need for an American search: Rather,
the American examiner is able to piggyback off the completed European search, getting the results right
in the first instance, and saving a tremendous amount of time.
Piggybacking is not universal. Only about sixty percent of American patent applications are
American origin with foreign counterparts or of foreign origin. Only these cases would be subject to
piggybacking.
Nevertheless, large savings are self-evident if, say, 50,000 applications per year could be
piggybacked. We also could place a greater reliance on European search facilities, and reduce the
tremendous expenditure for a separate, parallel, automated U.S. search system.
To achieve the full savings that are possible, however, we must move to the next step of patent
worksharing. In my testimony before your subcommittee two years ago, we discussed the "Patent
Worksharing Treaty" as a harmonization dividend. Patent harmonization is presently on hold. We must
in the end get back on the harmonization track if we are to achieve the real savings for government that
are possible. The government savings are but the tip of the iceberg. A single invention in the
pharmaceutical field can mean a billion dollars in sales for one product alone in just one year. * * * With
patent harmonization, we will better secure foreign rights of comparable worth for American innovators.
Only with patent harmonization and a "Patent Worksharing Treaty" will we achieve the level playing field
to permit American innovators in the high tech industries to achieve the commercial greatness to match
their scientific merit.
* * * Curriculum Vitae of Professor Wegner
George Washington University Law School, Professor of Law; Director, Intellectual Property
Law Program (1991 to date); appointed first to the adjunct faculty, 1989)
Dean Dinwoodey Center for Intellectual Property Studies, Founder/Director (principal graduate
research institute for intellectual property studies at George Washington University) (since
1993)
Center for Intellectual Property Studies, Founder/Director (chartered institute operating, inter alia, the
Dinwoodey Center) (since 1992)
Foley & Lardner, Washington, D.C. (since 1994)
* * *
Northwestern University, Evanston, Illinois (B.A. 1965)
Georgetown University Law Center, Washington, D.C. (J.D. 1969)
United States Department of Commerce, Patent Examiner (1965-1969)
Max-Planck-Institut fr Auslndisches und Internationales Patent-,
Urheber- und Wettbewerbsrecht, Munich, Germany, Mitarbeiter (1974-1976)
Max Planck Gesellschaft, Stipendiat (supporting research at Max-Planck-Institut)
Kyoto University Law Faculty, Kyoto, Stipendiat under Prof. Kitagawa (1977)
Georgetown University Law Center, Adjunct Professor of Law (1983-1989)
U.N. WIPO Committee of Experts on Patent Harmonization, NGO (1985-1989)
Asia Pacific Legal Institute, founding member; Board of Directors (1994- )
American Intell. Prop. Law Ass'n: Member, Amicus Committee; Chair, Oppositions
formerly: Member, Board of Directors; Chair, Foreign & Int'l Law
Chair, Chemical Practice; Vice-Chair, Biotechnology; Chair, Elections
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