LECTURE: World Patent System Circa 20XX, A.D.

Yale Journal of Law and Technology Volume 1 Issue 1 Yale Journal of Law and Technology Article 3 1999 LECTURE: World Patent System Circa 20XX, A.D. Gerald J. Mossinghoff Follow this and additional works at: https://digitalcommons.law.yale.edu/yjolt Part of the Computer Law Commons, Intellectual Property Law Commons, and the Science and Technology Law Commons Recommended Citation Gerald J. Mossinghoff, LECTURE: World Patent System Circa 20XX, A.D., 1 Yale J.L. & Tech (1999). Available at: https://digitalcommons.law.yale.edu/yjolt/vol1/iss1/3 This Article is brought to you for free and open access by Yale Law School Legal Scholarship Repository. It has been accepted for inclusion in Yale Journal of Law and Technology by an authorized editor of Yale Law School Legal Scholarship Repository. For more information, please contact . Mossinghoff: World Patent System Circa 20XX, A.D. LECTURE: World Patent System Circa 20XX, A.D.+ The Honorable Gerald J. Mossinghoff* I. INTRODUCTION With respect to intellectual property, I have good news and bad news. The good news is that it is probably the most active and growing area of law that exists today. People are keenly aware of the importance of intellectual property: to use a phrase from a high-level Japanese commission, this is the “knowledge era.”1 An article in the Harvard Business Review pointed out that for generations, the wealthiest person in the world was associated with oil.2 Now the wealthiest person in the world is a knowledge worker, and you’ve seen him on television, at depositions, and in other places. It’s just a sign of the times. So the good news is that people really appreciate intellectual property in all its forms, including patents, trademarks, trade secrets, and copyrights, which protect not only literary and artistic works, but also computer software. Trademarks, of course, ensure orderly commercial development and consumer protection. When you walk into a mall or a supermarket, you really do depend on trademarks to protect yourself and to assure that you will get quality in what you buy. In the area of trade secrets, there recently has been a major development in federal law -- the Economic Espionage Act3 -- that, for the first time, imposes very heavy criminal penalties for trade secret theft in the United States. In all of its forms, intellectual property is respected and at the cutting edge of human progress. The bad news, as far as the patent system goes, is that the current system is becoming increasingly dysfunctional. I don’t mean that as a criticism of the U.S. Patent and Trademark Office, for we have the most highly-skilled, dedicated patent examiners in the world. Moreover, the patent bar has never been better able to serve its clients. There is, however, an inherent flaw in the current system. It is totally nationalistic: you have to get a U.S. patent, then you have to get a separate Canadian patent, then a separate Mexican patent, and so on. There is no such thing as a North American patent, so there is a large amount of redundancy which, in my opinion, must and will be eliminated as we move forward. A year ago, I was asked to give a briefing on what I envisioned the world patent system to be in the future.4 I have chosen to call that system the World Patent System Circa 20XX, A.D. My thoughts + Edited transcript of remarks delivered to the Yale Law and Technology Society, Nov. 9, 1998. * B.S.E.E. St. Louis University (1957). J.D. George Washington University Law School (1961). Senior Counsel, Oblon, Spivak, McClelland, Maier & Neustadt. A former Assistant Secretary of Commerce and Commissioner of Patents and Trademarks, Mr. Mossinghoff teaches Intellectual Property Law at the George Washington University Law School and at the George Mason University School of Law. 1 Toward the Era of Intellectual Creation, Challenges for Breakthrough, Report of the Commission on Intellectual Property Rights in the Twenty-First Century to the Commissioner of the Japanese Patent Office (Apr. 7, 1997). 2 Lester C. Thoreau, Needed: A New System of Intellectual Property Rights, HARV. BUS. REV. 95, 96 (1997). 3 18 U.S.C.A. §§ 1831-1839 (West Supp. 1997). 4 This vision of a World Patent System Circa 20XX, A.D. was presented to the Giles Sutherland Rich American Inn of Court at the Court of Appeals for the Federal Circuit (May 20, 1997). It was also presented to the Japanese Institute of Intellectual Property in Tokyo, Japan on June 20, 1997 and published by that organization in 30 Forum 24 (1997). Published by Yale Law School Legal Scholarship Repository, 1999 1 Yale Journal of Law and Technology, Vol. 1 [1999], Iss. 1, Art. 3 have been published in Idea5 and in the Journal of the Patent and Trademark Office Society.6 With the help of a very dedicated and clever student of mine at the George Washington University Law School, I have broken down the World Patent System article into four major subjects: (1) patent treaties, (2) regional patent systems that exist today, (3) the essential characteristics of a world patent system, and (4) leadership toward that world patent system. II. PATENT TREATIES A. Fundamental Patent Treaties The grandparent of all patent treaties is the Paris Convention,7 which was negotiated in 1880 and signed in 1884. The United States acceded to it in 1889, and it is still the operative overall umbrella agreement among nations, with virtually every nation in the world belonging to the Paris Convention. The first element of the Convention is that it guarantees national treatment in intellectual property rights. This means that when you go into a foreign patent office that is a member of the Paris Convention, you are entitled to the same rights as a natural citizen of that country. The second element of the Convention is priority. Once you file a patent application in any Paris Convention country, you have twelve months in which to file in another country, and you can go back and claim the original filing date. Typically, you would file in your own country and then have a twelve-month period to file abroad. The Patent Cooperation Treaty (PCT),8 which was negotiated in the late 60s to early 70s under U.S. leadership, lengthened that period to thirty months. This gives you thirty months to evaluate your invention; you do not have to incur the expense of filing abroad until you get a chance to test the success of your invention. This is very important, particularly with pharmaceuticals. Suppose you have a very promising chemical with great pharmacological interest. You file a patent application in one country for the chemical, but the chemical later does not pass early human clinical trials. Thirty months later, you would have a good idea of whether you want to proceed with patenting this chemical. The PCT protects your priority in patenting the chemical while allowing you sufficient time to ascertain whether you want to incur the expense of obtaining patents in other countries. B. Intelle (...truncated)