The Patent Backlog Cannot Be Solved With Harmonization

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.


Taken from US Patent No. 3,016,629

From US Patent No. 3,016,629

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.


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Join the Discussion

4 comments so far.

  • [Avatar for Ron Katznelson]
    Ron Katznelson
    September 16, 2009 09:20 pm

    Paul Morgan: “Bottom line: before knee-jerk reactions to the word “harmonization,” one has to examine exactly what is being proposed”.

    Paul, I have nothing against work-sharing and welcome its expansion. However, are you suggesting in any way that my analysis of “harmonization” as having very little to do with facilitating work-sharing was a “knee-jerk reaction to the word harmonization?” What is your analysis after you “examined exactly what is being proposed?” Given your correct observations that essentially all aspects of work-sharing can be implemented under current laws, please indicate what YOU believe to be the substantive benefits to work-sharing gains that cannot be realized without harmonization. Please be specific to gains that benefit the USPTO. Otherwise, please avoid in the future having knee-jerk reactions to reasoned arguments.

  • [Avatar for Gene Quinn]
    Gene Quinn
    September 16, 2009 10:22 am


    Work sharing is one thing, and harmonization is quite another. There have been proposals and discussions lurking for some time, which seem to be gaining momentum, regarding examination sharing responsibilities, or if you get a patent in one country you get it in all (perhaps the most dramatic proposal) or if you get a patent in one country you go to the front of the line elsewhere. The type of global system that Microsoft is proposing would require harmony on patentable subject matter, grace periods, a race to file system rather than a perfection of rights system and many other things. Where this has traditionally gone is other countries demand the US do it their way simply because everyone else is doing it that way. Doing something because everyone else is doing it, as every parent knows, is simply ridiculous logic. I really think we need to keep our eye on this one.

    Over reaction is not necessary, but it is hard to ignore that those in power are in many realms trying to reconfigure America to be more European. The great irony is that we are rushing to be more European in ways that are not always indicative of best practices, and in ways that it would make sense to become more European (i.e., nuclear power and energy independence) we without reason or justification refuse. I am all for doing things better, learning from mistakes, taking what is good in what others are doing and adopting it, but change for the sake of change needs to be guarded against.


  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    September 16, 2009 09:49 am

    The primary “work sharing” idea is simply to share the prior art search results [all of which public information} between major patent offices for those applications which are also filed in other countries in addition to the U.S.. That does not require legislation, and is already in process on a trial basis. If used by U.S. examiners it could improve the speed and quality of U.S. examinations, because foreign, especially EPO, prior art searchs are both faster and more thorough [because they are far more costly]. Prior art searching should not be confused with complete examination, although there are relatively few situations in which what is publication or patent prior art in one country is not also prior art in another, and those can be easily handled. Bottom line: before knee-jerk reactions to the word “harmonization,” one has to examine exactly what is being proposed.

  • [Avatar for EG]
    September 15, 2009 10:27 am


    Nice article. I always enjoy your “fact based” approach to this PTO “backlog” issue.

    Your comment about the lack of harmonization between how the EPO determines validity of an EP patent, and how that EP patent (which is really a “bundle” of patents, one for each of the designated countries) can be evaluated differently in terms of validity in each of the respective countries is very real. In fact, Europe has considered putting in a “Common Market” patent but nothing in that regard has happened yet, or appears likely to happen.

    Another factor that may “lurk below the surface” to subtly impede harmonization is our different judicial philosophies. The US is basically the last bastion of common law. By contrast, the rest of the world, especially Europe, is civil code. That creates a significant difference in how the respective judges approach issues.

    In fact, when I was going to law school, I took a course on admiralty and maritime law (as well as did an independent study on jury trial in admiralty/maritime cases) which was my first exposure to civil code. You could see the tension as judges educated in common law tried to grapple with US admiralty/maritime cases governed by civil code philosophies. I suspect you would find a similar tension if you tried to harmonize US patent law with the rest of the world, especially since the rest of the world has specialized trial courts for patent cases, whereas the US currently does not.