Global economics are driving harmonization. The 1990s saw a modest 27 percent jump in the number of inventions seeking patents worldwide. During the same period, however, an explosion of country-by-country filings multiplied the total number of applications on those same inventions nearly fivefold, according to the World Intellectual Property Organization, the umbrella association overseeing the harmonization negotiations. “It’s a measure of globalization,” says Francis Gurry, assistant director general of the organization. About 90 percent of the seven million-plus patent applications filed worldwide each year are filings in more than one country for the same invention, he says. Reducing that number will require forging not only a better global filing system but also a common examination process. The trick, he says, will be getting the big three-the U.S. Patent and Trademark Office, the European Patent Office, and the Japanese Patent Office-“to achieve agreement on the fundamentals of patent law.”
The U.S. patent system, however, sharply conflicts with other systems. Whereas all other countries grant a patent to the party who is first to file an application, the United States maintains an elaborate legal process for sorting out the precedence of rival inventors-regardless of their filing dates. A 1989 effort to develop a single, worldwide patent system convinced Canada to switch to first-to-file, but treaty negotiations broke down when the United States refused to compromise on this point, mainly because of intense resistance from independent inventors who say it gives the upper hand to big corporations with the resources to file quickly and prolifically. The European “first-to-file system is simple, but sometimes it isn’t fair,” admits Barbara Cookson, a partner at Nabarro Nathanson, a London-based law firm. “The U.S. system aims to be fair but at a tremendous cost.” That’s because patent interference suits that aim to resolve competing claims between parties can involve trotting out strings of witnesses and evidence such as notarized lab books and prototypes. Proving who actually invented first can take years and cost millions of dollars.
The debate is charged with emotion. The ability to sort out rival claims is “the only piece of armor” a small business has when it’s up against a big corporation that files patents early and often, says Don Costar, founder of the Nevada Inventors Association. According to many U.S. inventors, the first patent law signed by President George Washington in 1790 is clear on the point. Costar believes the principle is embedded even in the Constitution. The drafters “wrote the laws directly opposite to what was happening in England,” he says. “They saw that the inventor may be lying in the ditch with his throat cut, while the guy who filed it with the king got all the benefits and riches.”
Many large corporations, on the other hand, are willing to make the switch. “As a worldwide company, we favor harmonization,” says Fred Boehm, IBM’s assistant general counsel. “It would eliminate the interference problem in the U.S., and we’ve been involved in a number of those cases.” He’d like to see the United States trade away first-to-invent in return for other countries’ adopting America’s one-year grace period before filing. The grace period allows U.S. inventors to publish papers and speak publicly about their creations without undermining their patent rights. In much of the rest of the world, such activities kill eligibility. Inventors outside the United States “have to operate in total secrecy,” says Hayes-Rines.
This historic move is considered likely by those involved in the process. “The first-to-invent issue is pass,” says Q. Todd Dickinson, director of the U.S. Patent and Trademark Office under President Clinton. Dickinson now represents the American Bar Association in patent harmonization talks held every six months by the World Intellectual Property Organization in Geneva. Despite the fact that the bar association itself is divided on the issue, “I think we can sell first-to-file” to the American public, Dickinson says. “A working assumption in Geneva is that the U.S. will have to come around on this issue at the end of the day.” Independent inventors, he says, now have fewer excuses for not filing right away. The Internet provides abundant resources, including the ability to file online, and a one-year provisional application for patent filings, which was introduced in 1995, provides a simple way to lock in a filing date for as little as $80 while the inventor works on a full application.