The Patent Backlog Cannot Be Solved With Harmonization
|Written by Ron Katznelson, Ph.D.
President, Bi-Level Technologies
Posted: September 15, 2009 @ 8:30 am
EDITORIAL NOTE: What follows was submitted by Ron Katznelson as a comment to Why a Global Patent System is a Bad Idea, which took issue with the articulate position of Microsoft’s Deputy General Counsel Horacio Gutierrez that a global patent system is necessary. It is republished here as an article with the permission of Dr. Katznelson.
What seems to be ignored by many of the good comments here is Mr. Gutierrez’s reasons for suggesting “harmonization”. After providing an account of the pendency and backlog difficulties that national patent offices face, Mr. Gutierrez jumps to unsupported conclusions. He states: “Global patent harmonization is not just wishful thinking about an ideal patent system. Rather, it is a necessity if national patent authorities are to overcome the substantial difficulties they face.” “A harmonized, global patent system would resolve many of the criticisms leveled at national patent systems over unmanageable backlogs and interminable pendency periods.” Mr. Gutierrez makes the assertions as if his mere proclamation makes it so.
He provides absolutely no explanation of the root cause for the backlogs or an explanation of how “harmonization” would address this root cause. Make no mistake: the big picture is clear as to the cause for the application backlog – and its not the lack of “harmonization.” It is the spectacular failure of SOME national patenting offices to grow their resources proportionately based on the economic factors that give rise to the growth of patent application filings. I have yet to see a single economic study by national patent authorities that attempts a substantive scientific method for projections of application intensity by examining the historical trends in product life-cycle shortening and the resultant exponential growth in the pace of new product introductions. The closely related trend of the exponential growth in knowledge and discoveries, as expressed in the number of technical and scientific journal publications, is similarly ignored by forecasters at patenting authorities. The annual number of scientific and technical publications doubles about every decade. It appears that these growth trends are well understood by many but not by patenting authorities. If one digs deeper into how they come up with their forecasts, one finds no sound basis for their assumptions, only rationalization as to how applicants “abuse” the system by filing “excessive” number of applications. To be sure, not all national offices suffer from this failed planning and examination resource allocation shortfall policies. For example, the Korean patent office has dramatically reduced its pendency by simply appropriating adequate resources without any “harmonization”. Suggesting that the backlog problem can be solved by “Harmonization” is at best misguided, or a disingenuous “red herring.”
Mr. Gutierrez suggests that “work-sharing” can help reduce backlog but implies that “work-sharing” can only be effective under “Harmonization”. Whatever little benefits provided, no one has explained how the impediments to work-sharing would be overcome by “Harmonization”. Upon real examination of the purported “work-sharing” benefits, it is clear that the most talked about “Harmonization” feature, the “First-To-File” system, may only provide one-sided benefits to foreign patent offices but not to the USPTO. This is because the prior art period covered by foreign searching authorities will not expand while that at the USPTO will expand by excluding the one-year grace period under Section 102. Moreover, there is already much one-way “work-sharing” going on now, where foreign patent offices benefit from USPTO searches of applications that are taken up later in foreign offices due to deferred examination practices. “Harmonization for the sake of “work-sharing” is clearly another “red herring.”
Mr. Gutierrez also makes the following sweeping proposal that is completely divorced from the different legal system we have in America for dealing with patents:
In today’s world of universal connectivity, global business and collaborative innovation, it is time for a world patent that is derived from a single patent application, examined and prosecuted by a single examining authority and litigated before a single judicial body.
Why does Mr. Gutierrez limit himself to patents in today’s world of global connectivity and business? Why not “harmonize” laws for other property rights, trade secrets, contracts, torts, etc.? Aren’t these important aspects of proper operation of global connectivity and business? Granting and adjudicating patent property rights in a single international legal system is as illusory as the prospect of the rest of the world accepting our legal system and jurisprudence. Alternatively, how many Americans would like to submit to legal philosophies embodied in foreign laws? Our laws and rules are admittedly more complex. However, would Americans cede to rules of evidence and civil procedures that are dominated by administrative convenience rather than judicial equity? It is a mere myth to assume that the patent “Harmonization” proposed by Mr. Gutierrez can be realistically limited to patents. Doing so means ignoring the inseparable workings of our patent law and the American legal system and his call is no less than a call for abolishing the American legal system in favor of some illusory global legal system.
Finally, Mr. Gutierrez and those advocating “harmonization” neglect to specify which state we ought to “harmonize” with. It is a mere myth to suggest that, outside the U.S., the legal patent systems are internationally harmonized. For example, European patent law, in and of itself, lacks harmony among contracting states. Almost all attributes of a European patent in a contracting state, i.e. ownership, validity, and infringement, are determined independently under distinct respective national laws. Under Article 138 of the European Patent Convention such determinations are remitted largely to different contracting state laws and the respective state courts. Yet, these matters are at the heart of the proposed subjects for “harmonization”. For example, it is not rare to find that a patent found valid in a British court is found invalid in a German court. It is ironic that Americans are asked to align such aspects of U.S. patent law, which are fully harmonized across 50 states, with those which are harmonized across none.