Entrepreneurs don't usually pay much attention to international patent treaties. But maybe they should. The United States is currently considering historic changes to its patent system as part of a proposed international patent treaty. The good news: the aim is to make patent systems around the world more compatible. (The effort is called "patent harmonization.") The bad news: the proposed changes could hurt many small companies and independent inventors.
Here's the problem: Most of the rest of the world uses a system called "first-to-file," in which the inventor who files first gets patent rights. The United States has historically used a system called "first-to-invent," with patent rights awarded to the first inventor. That system is more complicated, but it lessens the advantages that big companies with in-house patent lawyers have. With first-to-file, inventors would probably need to file more than once to protect their ideas -- first when they have an idea, and then as they get closer to commercialization. In the process, inventors might encounter more paperwork and fees and reveal their idea before it is fully developed.
Because the changes would harm small inventors, the United States "would be losing a tremendous advantage," according to Donald Banner, a former U.S. patent commissioner. Pressure to change the system, he says, comes from our foreign competitors and large U.S. companies. Then again, "both sides have eminently good arguments," notes Michael Odza, publisher of "Technology Access Report." Companies doing business all over the world would probably benefit from having the systems be more alike. And, argues first-to-file proponent William Keefauver, U.S. patent harmonization would include provisions to safeguard the small inventor, like an inexpensive system for provisional patents.
Right now the official U.S. position is up in the air. Clinton's new patent commissioner scheduled hearings on the subject for early October. Based on those hearings, the U.S. Patent Office hopes to wrap up its review of patent harmonization by year's end. "Unless the United States is prepared to move to first-to-file, there will be no treaty," says Michael Kirk, the patent office's assistant commissioner for external affairs. What's still unanswered is whether that would be good or bad news.
Even though its hearings were scheduled for October 7 and 8, the U.S. Patent Office will probably accept comments on patent harmonization for a month or so thereafter. If you're interested, send comments to the Commissioner of Patents & Trademarks, U.S. Patent & Trademark Office, Box 4, Washington, DC 20231.* * *