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SPECIAL SUMMARY REPORT

THE GREAT DEBATE

FIRST-TO-INVENT vs. FIRST-TO-FILE

and the

INTERNATIONAL HARMONIZATION TREATY





TABLE OF CONTENTS

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Important
Instructions
for: Duplication,
Distribution, Use of
Information


Introduction

I.
Credits


II.
Foreword


III.
WSJ Article


IV.
Synopsis-Europe
Legislation


V.
Synopsis-U.S.
Legislation


VI.
Key Questions
#1 / #2 / #3 / #4
#5 / #6 / #7 / #8
#9 / #10 / #11 / #12 #13 / #14 / #15

VII.
Arguments & Rebuttals
At-A-Glance


VIII.
Closing Comments &
Recommendations


IX.
Notes



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  • V. SYNOPSIS: UNITED STATES LEGISLATION

    1) THE ADVISORY COMMISSION ON PATENT LAW REFORM:

    In the United States, the U.S. Secretary of Commerce, Mr. Mosbacher, created an "Advisory Commission on Patent Law Reform" (referred to as "Advisory Commission") in 1991 and appointed U.S. Patent Commissioner Manbeck as the Chairperson (in addition to U.S. Patent Commissioner, Mr. Manbeck is also the Assistant Secretary of Commerce to Mr. Mosbacher).

    The first Advisory Commission meeting was held on March 26, 1991 and identified several issues, including the change to a "First-to-File" system, to address in a report that is to be submitted to the Secretary of Commerce by August 1992. (Even through this was the first official meeting in the U.S., international interests have been meeting for up to six years strategizing how to push the First-to-File change through Congress.)

    Among the 16 commission members selected to review and recommend changes to the U.S. patent system are representatives from Proctor and Gamble, General Electric Company, IBM Corporation, Motorola, Inc., Pillsbury, Madison & Sutro, The Dow Chemical Company, Dresser Industries, Inc., Washington University, Rensselaer Polytechnic Institute, Wisconsin Alumni Research Foundation, Wyatt, Gerber, Burke & Badie, Pfizer, Inc., Graham & James, and Finnegan, Henderson, Farabow, Garrett & Dunner. The "public member" is a former vice president of AT&T who was in charge of their patent department.

    A notice to the public was published in the May 21, 1991 issue of the Patent Gazette in a section entitled "Request for Comments to the PTO (Patent and Trademark Office) for the Advisory Commission on Law Reform.

    This notice stated, "to assure that the recommendations of the Commission represent a true consensus of the American public and the patent user community, the Commission hereby invites public comments upon the issues set forth below...to ensure full consideration, the submissions should be received by July 15, 1991."

    Although this notice satisfied the legal requirements of notification to the public, it gave the invention community just 1 1/2 months to reply, and it was published in a journal which announces just-issued patents, mainly subscribed to by patent attorneys.

    The Advisory Commission recently held its third meeting on January 16-17, 1992, in which reports were presented by each of four "working groups" assigned to research the different issues. Dr. Roland Schmitt, chairman of the working group responsible for researching the "First-to-File" issue, "noted the importance of this issue in the World Intellectual Property Organization (WIPO) international patent law harmonization negotiations - where the U.S. proposal during the 1991 Diplomatic Conference, which would permit the U.S. to retain the "First-to-Invent" system was met by a backtracking of other countries from positions they had previously taken." (1) He stated that after extensive debate, his working group was strongly in favor of a "First-to-File" system, provided the new system included certain elements to optimize its benefits for all users: an opportunity (for U.S. inventors) to file a provisional application, a grace period, and a limited prior user right." (2)

    The Advisory Commission members agreed that a recommendation to change the U.S. system to a "First-to-File" system would be recommended only as part of a harmonization package, and would not be implemented otherwise.

    The next Advisory Commission meeting is scheduled for: April 27, 1992.

    2) THE HOUSE OF REPRESENTATIVES AND SENATE SUB-COMMITTEES:

    Due to the efforts of concerned members of the invention community who have been contacting the chairpersons of the House of Representatives and the Senate Sub-committees in regards to the proposed change to a "First-to-File" system, a bill was introduced on April 9, 1992 by the Honorable William J. Hughes of New Jersey, chairman of the Subcommittee on Intellectual Property and Judicial Administration in the House of Representatives.

    Senator DeConcini of Arizona, the chairman of the Senate Subcommittee on Patents, Trademarks, and Copyrights, will be introducing similar legislation in the Senate.

    Joint hearings will be held to discuss the merits of the bills that are being introduced regarding the Harmonization Treaty and of the specific provisions of the Patent System Harmonization Act.

    The first joint hearing of the House and Senate is scheduled for: April 30, 1992.

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