But complications in realizing the switch to first-to-file lurk. Lois Boland, the chief U.S. negotiator on patent harmonization, says that for now, the American strategy calls for leaving the potentially disruptive issue of first-to-invent off the table in Geneva, so as not to rile the passions of independent inventors in the United States. Meanwhile, the current director of the patent office, James E. Rogan, is coy on the matter. As recently as last October in a speech to the Heritage Foundation, Rogan declared that he sees no need for the United States to switch. Currently, the U.S. patent office is floating a compromise term-first inventor to file-in order to dispel the notion that it would be common for a noninventor to rip off an idea and beat the real inventor to the patent office.
Other issues now on the table may be even more difficult to handle. Foremost among them is the definition of “patentable subject matter,” in other words, reaching universal agreement on what may be patented, a topic of vigorous debate. “The U.S. says that everything under the sun is patentable,” says the World Intellectual Property Organization’s Gurry. Almost every other country, he adds, disagrees. Among the most contentious subjects are business method patents. The United States typically, and somewhat notoriously, allows patents for business practices such as Amazon.com’s single-click Internet shopping, which allows its customers to save their shipping and payment information so they can buy books and other items simply by clicking once on an icon.
The United States is also the most generous in granting patents for software and genetic discoveries and treatments. Much of the rest of the world holds “a different view,” according to Boland, favoring what’s known as a technical-effect requirement to weed out ideas that have no technological component.
At the same time, a rift has opened between industrial and developing countries over patents on medicinal plants and other biological resources. Latin American and African nations favor rules requiring that foreign companies seek consent to remove such resources or be forbidden from receiving patents on them. Such rules would replace today’s patchwork of regulations, none of which prevent such patents. Supporters of that idea also back a requirement for citing the country of origin in any patent application. “There is absolutely no agreement on this,” says Gurry.
With so much open debate, officials involved in the negotiations don’t expect a document aimed at deep harmonization to be ready before the fall of 2004. Any global patent treaty would have to be ratified by Congress, and with no specific proposal on the table, it’s premature to guess whether ratification is likely.
In the meantime, the costs and confusion caused by differences in national patent systems continue to escalate. Boehm says IBM currently spends upwards of $200 million per year on its intellectual-property protection efforts, and redundant country-by-country patent applications comprise a large part of that expense. Independent inventors seldom file global applications at all, says Costar. “When they find out the cost, they drop the idea.” As for Entec’s engine, Clyde Bryant says his company is negotiating with DaimlerChrysler and a number of other manufacturers over licenses for his technology. Although the price was steep, he says he is relieved to have worldwide protection: the talks with the German auto giant are taking place not in Detroit, but in Stuttgart.