An Analysis of the Major Prior Art Distinctions Among Patent Systems: Insights Into a Balanced, Harmonized Patent System

Transcription

1 An Analysis of the Major Prior Art Distinctions Among Patent Systems: Insights Into a Balanced, Harmonized Patent System ROBERT A. ARMITAGE ELI LILLY AND COMPANY Patent Law Harmonization: Is There a Way Forward? Roundtable of NGOs November 10-11, 2003 London, England The concept of prior art in every patent system is based on the notion that subject matter has been disclosed, once the disclosure is deemed to have legal effect, prevents the patenting of an invention unless the invention can be adequately distinguished from the subject matter disclosed or deemed to have been disclosed. The fundamental idea replicated in every patent system is that disclosures, once deemed prior art to an invention, destroy patentability. Inventors are never entitled to take from the public subject matter that deemed already known or merely obvious from what is deemed to be known. The concept is utterly simple. It evidences compelling logic. However, in practice, patent systems have established profound differences regarding what, when, where and how subject matter is deemed to have been disclosed. Among the many conceptual ways in which patent systems make distinctions among disclosures for the purpose of defining prior art and its impact are the following: Source Who made the disclosure or to whom should the disclosure be attributed and against whom may it be used as prior art? Affiliation What relationship exists, if any, between the person making the disclosure and the inventor and to what extent, if any, should that relationship impact its effect as prior art? Accessibility To what extent is the disclosure reasonably and effectively accessible to persons skilled in the art, and when and under what circumstances and how should accessibility impact the effect as prior art? Geographic Where was the disclosure made relative to where the patent is being sought? Timing When was the disclosure made relative to when the invention was made or the patent for the invention sought? Relatedness How much, if any, does the disclosure differ from what is being patented? -1-

2 This analysis begins with a brief review of each of these distinctions and their operation in a patent system: Source Distinction: Genesis for an Inventor s Grace Period The source distinction, when it is observed, can be thought as the patent law equivalent of the right of an accused criminal defendant against self-incrimination. The source distinction differentiates in the legal effect between disclosures that are made by or on behalf of the inventor (or, in the case of joint inventions, one or more of a set of joint inventors) and disclosures made by other persons. Disclosure By Disclosure on Inventor s Disclosure Inventor s Behalf Unrelated Persons The reason for a patent system to recognize such a source distinction is to afford a grace period. For the specified duration of the grace period, an inventor s own disclosure, a disclosure by one of a group of joint inventors, or a disclosure otherwise deemed to have been made on behalf of an inventor is non-prejudicial to an Where a source distinction is made, it must be time-limited the inventor cannot disclose an invention and have an indefinite, even infinite period in which to seek a patent. Thus, a patent must be sought before the end of the specified period of grace. After the end of the grace period (i.e., for patent applications filed or with priority dates thereafter), no source distinction is recognized and all disclosures are equally prejudicial, regardless of source. For patent systems making a source distinction, the grace period normally extends for one-year, aligning the grace period with the duration of the convention year under the Paris Convention. The most problematic aspect of making a source distinction is, of course, the need to identify the source of a disclosure as being by or on behalf of an inventor the inventor s own work being disclosed. Where the disclosure is made directly by a named inventor or one of the group of joint inventors the source may be self-evident. However, many disclosures are not so readily characterized as to their source. A attempt by the inventor to later seek a patent. The non-prejudicial impact relates to all aspects of a patentability determination, i.e., both determinations of novelty and nonobviousness. -2-

3 disclosure can be made on behalf of an inventor, based upon the work of the inventor, but nowhere name the inventor or identify the relationship with or to the inventor. For example, a technical publication by a company might not on its face identify the relevant part of the disclosure as being the work of the inventor. Also, a disclosure of an inventor s work can take place by a person who has misappropriated the subject matter and then made it public without the inventor s knowledge or consent. In each of these circumstances, a determination must be made as to whether the disclosure has at least for grace period purposes been made on behalf of the inventor. Putting these practical issues aside, there would appear to be no conceptual reason for any patent system not to have a grace period, indeed not to have a one-year period for this purpose. An inventor s own work is what gives rise to the right to patent and giving the public an earlier look at the invention or any subject matter alleged to render the invention merely obvious should be favored not condemned. Provided the grace period is tightly limited in duration, such as the one-year period used for priority under the Paris Convention, there would be little fear that the brief delay in seeking a patent would work any prejudice to the public. Affiliation Distinction: Extension of the Grace Period From Inventors and Joint Inventors to Entities An affiliation distinction is in many respects similar to a source distinction. The desirability of recognizing an affiliation distinction generally arises in a patent system, if at all, only if a source distinction is also recognized and a grace Disclosure By period is part of the patent law. An affiliation distinction requires a look beyond the inventor or the group of joint inventors to a larger group of affiliated parties. The most common broader group is composed of the fellow employees of a single legal entity, such as a business. In more general terms, the Disclosure By Disclosure on Inventor s Disclosure Inventor s Behalf Affiliated Persons Unrelated Persons affiliation group can represent all persons who have assigned or are obligated to assign the subject mater that they discover and invent to a common owner. In the United States, an affiliation distinction does exist in the patent law. It was created in The affiliation distinction makes disclosures of certain affiliated persons -3-

4 ineligible as prior art. However, the prior art effect for such disclosures is not entirely removed. Rather, qualifying affiliated disclosures are strictly limited to question of novelty for the later-claimed invention. When an affiliation distinction exists, as it does in the United States, it operates like an expanded grace period. It effectively looks at inventors working in a common enterprise and deems certain types of disclosures by one person within the common enterprise as being made on behalf of an inventor working within the common enterprise. However, there are differences often significant between the scope of disclosures disqualified as prior art under a grace period targeted to the inventor s own disclosures and the disqualification of certain disclosures because they are made by someone affiliated with the inventor. As an example, in the United States a printed publication of an affiliated person, unlike an inventor s own publications, is not disqualified as prior art. Under U.S. law where the subject matter of a disclosure and an invention are, at the tie the invention was made, owned by the same person or subject to an obligation of assignment to the same person, disclosures in the form of (1) prior-filed published applications and issued U.S. patents, (2) prior inventions, and (3) prior subject matter otherwise derived from an inventor are disqualified as prior art except in a novelty-only context. Under U.S. patent law, the timing of the common ownership determination like other issues of patentability is grounded on the invention date for the subject matter for which the patent is sought, not the date the patent itself was sought. While the novelty-only affiliation distinction in the United States has been the subject of refinement since its creation through the Patent Law Amendments Act of 1984), the American Inventors Protection Act of 1999 expanded the affiliation distinction. This expansion is a testament to the success of the distinction in accomplishing its policy objectives of enhancing the ability of research teams to obtain valid patents. Pending legislation in the United States is seeking to again broaden the nature of the affiliations that qualify for the exclusion from nonobviousness-creating prior art. These new types of affiliation relationships that would qualify under the pending legislation would include affiliations under agreements defining research activities. The newly proposed expansion of affiliation relationships that qualify for prior art exclusions further suggest their power in complementing the grace period with another patentability-saving mechanism. Whether expanding the types of affiliations relationships beyond common ownership will be completed and prove workable remains to be seen. The recent U.S. history with affiliation relationships does suggest that any patent system contemplating a U.S.-style grace period should give careful and complete consideration to adopting provisions for affiliation-related prior art exclusions. At a -4-

5 minimum, the longstanding success of recognizing common ownership of the subject matter disclosed and the subject matter sought to be patented appears a wholly workable mechanism for avoiding self-collision that can take place if two patents are sought be the same patent owner on closely related inventions. Accessibility Distinction The accessibility distinction goes to the very heart of the most fundamental issue in patent law: the relationship between what is actually disclosed to the public and what is deemed to have been disclosed under the patent law as prior art. Accessibility issues reveal a troubling dichotomy between real and actual disclosures, those that are reasonably and effectively accessible to person of skill in the art, and constructive or deemed disclosures, those that at the time deemed made cannot and do not effectively inform persons of ordinary skill. In short, they are disclosures in name only since even after reasonable efforts to ascertain the existence and their content, persons skilled in heart cannot access them. Accessibility distinctions largely arise in two forms. One form is can be described as latent disclosures. These are a form of non-accessible disclosures when deemed to have been made, but are disclosures that necessarily become accessible by the time their legal effect ripens. At the time the latency lifts, the subject matter of the latent disclosures is known. The other form of inaccessibility is represented by persistent inaccessibility, the so-called secret prior art. Persistently inaccessible disclosures are those deemed to be prior art at a given time notwithstanding that it is unclear or uncertain when accessibility in fact will occur. Persistent inaccessibility exists if there is never a means for the prior art to be accessed by a person skilled in the art in any defined timeframe. Both the United States and Europe have different forms of secret prior art. In Europe, the classic form of secret prior art is the inaccessible divulgation of an invention. For example, a Immediately Accessible Deferred Accessibility WHEN? Secret Prior Art Highly Unpredictable Patent System Single, Inaccessible, Non-Confidential Divulgation Highly Transparent Patent System HOW? Reasonably And Effectively Accessible single non-confidential disclosure can represent prior art even if persons skilled in the art have no capability of reasonably or effectively accessing that disclosure. In the United States, a prior invention of another not abandoned, suppressed or concealed similarly creates prior art that cannot -5-

6 be reasonably or effectively accessed. A strong policy argument can be made for latent inaccessibility, e.g., the published patent application (or issued patent) that is deemed a disclosure as of the date the patent application was filed, provided the latency period is brief and is permits patent examination of all the prior art in real time after the patent application has been filed. However, nothing in the patent law can readily support persistently inaccessible disclosures on any policy ground. Persistently inaccessible disclosures can create profound uncertainty and unpredictability in any effort to assess the scope and content of the prior art. They can be unavailable in real time for use by patent examiners in the patent examination process. Finally, they create the potential for surprise when enforcement of the patent rights takes place. Geographic Distinction Several countries have limited certain types of disclosures that are deemed to be prior art to what is known within the geographic borders in which the patent law has its reach. Others do not. These differences give rise to geographic distinctions among disclosures. They are an ancient feature of many patent laws, notwithstanding the eradication in modern times.. Australia, for example, once barred the use of printed publications in nonobviousness determinations where it could not be established that the publication was actually known to an Australian in Australia before the patent was sought. New Zealand will only next year move from a system of local novelty to a global system for recognizing disclosures as prior art. In the United States, prior art based on knowledge or use of the invention requires that knowledge or use in the United States. Most if not all other major patent countries of the world use a global reach to the definition of disclosures constituting prior art. In Europe, for example, it is not only a single, non-confidential divulgation that gives rise to a deemed disclosure, but the disclosure can be made between two Inuit fisherman on an ice flow in the Canadian Arctic and nonetheless defeat the validity of a patent sought the next day in Paris. The geographic distinctions obvious frustrate efforts at a harmonized determination Global Standard In-Country Prior Art Only Unnecessary Restriction Creates Impossible Uncertainty Immediately Accessible Disclosures Latent Accessible Disclosures Secret Prior Art -6-

7 of prior art globally. However, were they to serve an important purpose for a patent system, such a purpose could conceivably trump the benefits that might be derived from a global prior art system. At least in 21 st century terms, however, local prior art appears a concept whose time and policy rationale have long past. As a starting point, geographic distinctions can be best appreciated and understood in the context of the accessibility distinctions. A case in point is the United States. It has long tolerated secret prior art in the form of prior inventions of others not abandoned, suppressed or concealed. However, this type of persistently inaccessible prior art produces so much uncertainty and so much complexity and is open to so much chicanery -- that the U.S. patent system has long barred non-u.s. proofs of prior inventions. Even after the TRIPs agreements made the then-existing U.S. law illegal for barring foreign inventors the right to use foreign dates of invention to procure patents, the United States responded by reaffirming that this geographic distinction would be maintained to the extent TRIPs permitted. European secret prior art is, however, unrepentant. The single, non-confidential divulgation that creates immediate prior art is still today given a worldwide reach. Thus, European patents always remain at risk as long as two or more people gather together anywhere on the planet, ice flows included. For reasonably and effectively accessible prior art, virtually the opposite point can be made. In the information age, in the age of jet transport, in the age of instantaneous global communication, how can one determine that an accessible disclosure is or was geographically constrained? Unlike persons skilled in the art of 50 years ago, geographic borders, language differences, and like constraints have made the concept of Made in the U.S.A. prior art just to take one example a rather quaint notion. Thus, patent systems suffer from two problematic aspects chaining universally communicated prior art to meaningless geographic boundaries and/or constraints and elevating isolated communications that are irretrievable elsewhere on the globe through any reasonable efforts to the status of full prior art. Timing Distinction One of the knottiest issues related to global patent harmonization discussions has been the timing distinction as it relates to prior art. Two fundamentally different approaches to the timing issue exist. Under U.S. patent law, prior art is fundamentally determined by assessing whether the disclosure date is prior to the invention date for whatever is being claimed. The only derogation from this concept is that at the end of the period where U.S. law makes a source distinction the end of the one-year period after the disclosure date the invention date can no loner be used to disqualify the disclosure as prior art. -7-

8 Under most other patent systems in the world, prior art is fundamentally determined by assessing whether the disclosure date is prior to the priority date of the patent application claiming the invention. When this timing criterion is used, inventions dates are entirely irrelevant to any issue of patentability. Disclosures Are Prior Art Under Both Systems Conception Date Complex U.S. Prior Art Principles Apply Invention Date Falls Between These Dates Prior Art in Europe Reduction To Practice Date One-Year Bar Date Constructive Reduction To Practice Date Patent Application Is Filed Disclosing Invention Disclosures Are Not Prior Art Under Either System The experience of the United States with its invention date-based timing system has been sufficiently unsatisfactory that no other country in the world now uses this system. Over the course of the last century, the last remaining uses of the invention date system in Japan, Canada, and the Philippines have ended. The United States has de facto abandoned use of this system in recent years as it has ended the prohibition on use of foreign invention date proofs to determine relative timing and the availability of patent interferences to settle the timing issue for many types of inventions. Relatedness Distinction: The relatedness distinction is premised on the notion that subject matter sufficiently closely related to the prior art will lack patentability. It encompasses two separate principles: novelty versus non-obviousness. Both principles have aspects of relatedness that include concepts of exact and non-exact identity. Nonobviousness extends to an exact identity ( Anticipation is the epitome of nonobviousness, ), but is more commonly regarded as a non-exact identity standard (different, but lacking sufficient distinction). Novelty similarly has two different relatedness concepts: one an exact identity and a non-exact identity. The non-exact identity is the genusspecies relationship, but only operates one way (species anticipates any Obvious Non-obvious Genus II Genus Non-obvious Disclosure Obvious Obvious Non-obvious -8-

9 genus including it, but not necessarily vice versa). Because both novelty and non-obviousness principles both use exact and nonexact concepts of relatedness, a novelty-only assessment of patentability over a prior art disclosure bars both exact and non-exact relationships between an invention claimed in a patent and the prior art. A nonobviousness-only assessment of patentability is, therefore, identical to a novelty-only assessment of patentability except that the nonobviousness-only assessment applies the non-exact identity standard to non-genus-species relationships. The complexity of the relatedness distinction applied to novelty-only versus non-obviousness assessments can be seen from the diagram at the right. When a Disclosure has been made, the every genus encompassing the disclosure lacks novelty (see Genus and Genus II), even though much of the subject matter in any genus claim may well be non-obvious and can nonetheless be patentable under regardless of whether a novelty-only principle or the non-obviousness principle. The Absolutist Patent System The absolutist patent system has the virtue of the utmost in simplicity and objectivity in selecting among the features that distinguish most patent systems. Its fundamental characteristics are the following: Source: nothing distinguishes a disclosure from one source from a disclosure from any other source. Even an inventor s own disclosure, once made, is prior art for the purposes of assessing patentability. Affiliation: nothing distinguishes one disclosure from another based upon any affiliation between the identity of the person making the prior disclosure and the inventor. Accessibility: nothing precludes a single, non-confidential divulgation, once established, from constituting a disclosure. Similarly, immediate accessibility is not required for prior patent disclosures, e.g., at the 18-month publication point. Geographic: any disclosure anywhere around the globe can be treated as prior art. Timing: nothing prior to the priority date under the Paris Convention (or the filing date, if no priority right exists) can be disqualified as a disclosure. Prior activity of the inventor (e.g., conception, diligence, reduction to practice is completely irrelevant). Relatedness: nothing distinguishes novelty from non-obviousness determinations. Any disclosure useful for one purpose is useful for the other. -9-

10 In the absolutist patent system, the patent law can be simply reduced to the following terms: Any divulgation of subject matter before the filing date (or priority date, if applicable) anywhere represents prior art to an invention claimed in a patent or patent application, including the disclosure in any prior-filed application for patent subsequently published as a application or as a patent. Individual prior art disclosures that describe identically the subject matter sought to be patented, including any single embodiment therein, destroy the novelty of the invention. A single prior art disclosure or, where sufficient motivation or rationale or suggestion is present to make a combination, two or more prior art references shall destroy the non-obviousness of the invention if the invention taken as a whole would have been obvious to persons of ordinary skill in the art based upon the differences between the invention and the prior art. No country in the world adheres to such an absolutist patent system, notwithstanding its superficial simplicity. However simple it might appear, it creates issues of self-collision that actually discourage all disclosure unless and until the invention can be patented without any iteration. Giving anyone even a slight hint about the invention can be fatal to an effective patenting strategy. The Characteristics of a Balanced Patent System The principles of a balanced patent system attempt to vindicate the public interest in precluding subject matter in the public domain from being patented. However, they balance that imperative with the notion that the patent right is the inventor s right, the inventor s disclosures should not be made immediately prejudicial, similar accommodation should be made to facilitate patenting by corporate entities, and the public domain should be ultimately defined by what persons skilled in the art can reasonably and effectively access. The balanced patent system would incorporate the following: Source Distinction Preventing an Inventor s Own Disclosure From Prejudicing the Right to Patent An Invention Once an inventor has made an invention, the inventor has the power to publicly disclose the invention. Indeed, good public policy ought to afford the inventor an -10-

11 incentive to disclose the invention. One incentive for disclosure is the ability for certain inventions to be patented afford the inventor exclusivity rights if and only if the inventor is willing to publicly disclose the invention. Accelerating the disclosure of an invention accelerates the point at which persons skilled in the art can extend and improve the invention. Just as an incentive should exist for disclosure, an incentive should exist for accelerating disclosure for sound reasons of public policy. A grace period for an inventor provides precisely the second type of incentive. Most importantly, for an inventor bringing into being a series of creative and innovative discoveries, it permits that inventor to begin the process of disclosing them immediately, with a reduced likelihood that the inventor s own early disclosures will be used to prevent the inventor s later incremental improvements and perfections. Further a grace period prevents an inventor who through accident or inadvertence has allowed an invention to be disclosed to prevent the later patenting by the inventor. Thus, a reasonable grace period protects both the inventor s disclosures and those disclosures made on behalf of the inventor whether authorized or not. A grace period too short is little better than none at all, while a grace period too long will unduly delay the application for patent and, thereafter, the certainty as to the scope of rights that takes place when the patent is issued. For these reasons, the duration of the grace period should be just right. Globally, the grace period has extended to as long as two years and has been constrained to as short as six months. In 1839, the U.S. Congress decreed that an invention must be in public use or on sale for two years before the disclosure would bar patenting of the invention. This two-year grace period lasted in U.S. patent law for 100 years, before a one-year grace period was enacted in Thus, the just right time for a grace period should be less than two years and more than six months. Aligning the grace period with the duration of the priority period under the Paris Convention would appear to be that just right duration. Reasonably and Effectively Accessible Touchstone For a Disclosure to be Regarded as Prior Art A prior disclosure is not a disclosure when nobody can get the benefit of the supposed disclosure. In looking for a balanced patent system, a rose is a rose is a rose, but a disclosure is not always a disclosure is not always a disclosure. In looking for a balance between non-disclosures as patent-barring disclosures and recognizing only universal knowledge among skilled artisans as evidence of a disclosure, where is the middle ground? The answer would appear to lie in two criteria: -11-

12 What has been made reasonably accessible to persons of ordinary skill in the art? What is effectively accessible by such persons? The concept of determining what has been made reasonably and effectively accessible is a decidedly 21 st century concept. It can be viewed as an Internet-era counterpart of the 18 th and 19 th century concept of the printed publication. The two concepts one of reasonableness and the second of effectiveness are designed to prevent an unintelligible and otherwise inaccessible disclosure from being patentdefeating prior art: Reasonable Accessibility: A disclosure cannot be considered to be reasonably accessible unless the efforts required to secure access to the disclosure by a person of ordinary skill in the art are not unreasonable or undue. At one extreme, a disclosure in a database or other searchable repository, such as a cataloged disclosure in a library, would be deemed reasonably accessible. At the other extreme, a non-confidential, oral divulgation from one individual to another individual would not be regarded as evidence of reasonable accessibility. Effectively Accessible: A disclosure cannot be considered to be effectively accessible unless a person of ordinary skill in the art would be able to comprehend the disclosure and discern its technical import. At one extreme, a publication in the English language appearing in a professional journal would be regarded as effectively accessible. At the other extreme, a disclosure contained in an encrypted electronic file, even if universally accessible through an ftp: site on the Internet, would not be regarded as being effectively accessible absent the ability to unencrypt using reasonable efforts. Geography The World is Wired! Criteria for prior art are entirely dependent. If the prior art bar is raised to limit disclosures to subject matter made reasonably and effectively accessible to persons of ordinary skill in the art, then there remains no plausible reason why that standard should be confined by any geography. While persons of ordinary skill in the art travel as slow as jet aircraft can transport them, the information they access travels nearly as fast as the speed of light. Indeed, it is difficult to use an objective standard for determining if a disclosure qualifying as prior art exists accessibility to a person of ordinary skill in the art and then you a geographical limitation on the situs of that disclosure. Hence, the wired world in which persons of ordinary skill in the art operate is a global village a reasonably and effectively accessible disclosure made on any street in the village ought, therefore, to qualify as prior art. -12-

13 The First-Inventor-To-File Principle Should Determine the Timing of Disclosures as Prior Art The interests of the inventor indeed, the rights of the inventor ought to have paramount significance in the design of any patent system. For some in the United States, the paramount status of the inventor has been confused with the desirability of maintaining a so-called first-to-invent system. It should, instead, perhaps mean at least two things. First, the person who is first to make the invention and, thereafter, first to seek a patent for the invention should never lose the right to patent that invention. Second, no patent system should ever operate to produce the contrary result being first twice (in inventing and in filing for a patent), but losing the patent to someone who later invented and later filed for a patent should be verboten. The only patent system extant in the world where being both first to make the invention and first to seek a patent for the invention are not by themselves enough to guarantee the first inventor the right to patent is in the United States. In the remainder of the world, the first inventor that gets to the patent office first has that guarantee. In other words, the balanced patent system is not the so-called first to invent system, but a first inventor to file system. The way that guarantee is enforced is to eliminate as prior art the prior inventions of other inventors as possible prior art. The timing when a prior invention is deemed prior art cannot be before it is made reasonably and effectively accessible to persons of ordinary skill in the art. Similarly, the timing for assessing whether a disclosure is prior to an invention for which a patent is sought is set relative to the date the patent for the invention was sought, not when the invention was made. Timing, therefore, becomes everything it defines a first inventor to file patent system where secret prior art cannot defeat a right to patent and secret prior activities undertaken before the filing date of the patent cannot be relied upon to eliminate the secret prior art. It provides the ultimate protection for the inventor. The inventor who invents first can always file first and the inventor who files first can never be denied a patent because a later inventor who files later has better records or other proofs of when the invention was made. Relatedness and Affiliation The Respective Roles of Self-Collision and Novelty- Only Prior Art For Earlier-Filed and Later-Published or Patented Applications A patent system that has no grace period has no choice but to mitigate the damage done by an absolutist role on the effect of a disclosure once made. It needs a novelty-only standard for certain disclosure including the inventor s own prior applications for patent. The lack of a grace period creates self-collision of the worst kind, but the novelty-only remedy is merely palliative, not curative. -13-

14 Given a one-year grace period, the inventor s own disclosures cannot be cited as prior art even if the disclosures arise from prior-filed and later-published applications for patent. Thus, with self-collision out of the way, there is no rational basis, much less policy-generated need, for retaining a novelty-only rule for the prior-filed and laterpublished or later-patented application for patent. With the self-collision and novelty-only demons removed from consideration, what remains is the affiliation issue. Should patent applications by others besides the inventor be afforded any form of grace period protection? In a balanced patent system, the answer would appear to be a resounding, yes. Inventors today commonly work in affiliated groups, co-workers and joint venture partners, and other affiliations that reflect a common enterprise. Thus, treating inventions made by anyone in an affiliated group as inventions made by everyone in the affiliated group would appear a necessary way of preserving patentability for inventions that so merit. The simplest rule for assessing affiliation is to ask whether, at the time the relevant disclosure was made, was the disclosure made by the inventor, on behalf of the inventor, or on behalf of someone affiliated with the inventor in a common enterprise. The Patent Law of a Balanced System What would the patent law of a balanced system provide? The following offers a prototype for an understanding under which a balanced patent system could be created: Memorandum of Agreement on Issues of Substantive Patent Law Harmonization The following represents a memorandum of agreement among the undersigned parties to undertake to modify national laws relating to the protection for inventions. Article 1. Definitions. As used in this Agreement: (a) The term invention means invention or discovery. (b) The term inventor means the individual or individuals who themselves invented the subject matter of the invention. (c) The term publicly known or used means made reasonably and effectively accessible to persons of ordinary skill in the art to which an invention pertains. Subject matter shall be reasonably accessible if it can be accessed by persons of ordinary skill in the art without resort to undue efforts to identify and ascertain the subject matter. Subject matter shall be effectively accessible if the subject matter, once made reasonably accessible, can be recognized and appreciated by persons of ordinary skill in the art to which the subject matter pertains. (d) The term disclosure date for a claim in an application for patent means the filing date of application for patent or, if the application is entitled to make a claim for priority based upon one or more prior filed applications for patent, the filing date of the earliest such prior application for which priority is claimed that contains an adequate disclosure of the subject matter of the claim. -14-

15 (e) The term priority date for a patent or an application for patent means the filing date of the application for patent or, if the application contains a claim for priority based upon one or more prior filed applications for patent, the filing date of the earliest such prior application. (f) The terms patent, application for patent, filing date, and claim shall have the same meanings that apply to those terms as set out in the Patent Cooperation Treaty. (g) The term qualifying published patent application shall refer to a patent application that has been published as provided in the Patent Cooperation Treaty and designates at least one country bound by this Agreement or that has been published as provided under the national law of any country bound by this Agreement. (h) The term qualifying granted patent shall refer to a patent granted pursuant to the national law of any country bound by this agreement. (i) The term national law shall refer to the provisions of the substantive law on the patenting of inventions that applies in any country that is bound by the provisions of this Agreement. (j) The term disclosure by the inventor shall include any disclosure made by the inventor, any disclosure made on behalf of the inventor by another (whether or not authorized by the inventor), and other disclosure that is derived from the work of the inventor. Article 2. Right of inventor to patent; subject matter eligible for patenting (a) National law shall provide that the inventor of any process, machine, manufacture, or composition of matter, or any improvement thereof, shall be deemed to have the right to apply for and, subject to requirements for patentability, to obtain a patent for the invention. (b) Notwithstanding subarticle (a), national law may impose additional requirements or limitations on the nature of subject matter eligible for patenting and on usefulness, technical effects, or industrial applicability as conditions for patentability. Article 3. Conditions for patentability; novelty, definition of prior art (a) National law shall provide that an inventor shall not be entitled to a patent for a claimed invention in an application for patent if the invention lacks novelty over the prior art to the inventor. (b) National law shall provide that an invention made by an inventor shall be deemed to be disclosed in the prior art if (1) the invention was publicly known or used, including by virtue of being patented or described in a printed publication (A) before the disclosure date of the inventor, except if a disclosure by the inventor, or (B) more than one year prior to the disclosure date of the inventor, or (2) the invention was described in (A) a qualifying published patent application naming another inventor filed before the disclosure date of the inventor or (B) a qualifying granted patent naming another inventor filed before the disclosure date of the inventor. -15-

16 Article 4. Conditions for patentability; non-obvious subject matter (a) National law shall provide that a patent may not be obtained, even though the invention is not identically disclosed or described in the prior art, if the invention is deemed obvious. The absence of an inventive step may be used in national law to determine obviousness of an invention. Otherwise, obviousness shall be deemed to exist under national law if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the disclosure date for the invention to a person having ordinary skill in the art to which said subject matter pertains. National law shall provide that patentability shall not be negatived by the manner in which the invention was made. (b) National law shall additionally provide that subject matter developed by a person other than the inventor, which qualifies as prior art only under one or both of subarticles (b)(1)(a) or (b)(2) of Article 3 of this Agreement, shall not preclude patentability where the subject matter and the claimed invention, not later than the disclosure date, are (1) owned by the same person, (2) subject to an obligation of assignment to the same person, (3) subject to an obligation of assignment or assigned to one or more parties to an agreement under which the subject matter and the claimed invention were developed. Article 5. Disclosure of the invention in the application for patent (a) National law shall require that the application for patent shall contain an adequate disclosure of any invention that is claimed in the application. National law may provide that an adequate disclosure of an invention is present if the application sets out a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. (b) National law shall not contain any additional requirement for disclosure of any specific mode or modes for carrying out an invention claimed in an application for patent, except as might be needed to afford a written description of the invention or to enable the invention to be carried out. Article 6. Filing of applications for patent by other than the inventor National law shall provide that person to whom the inventor has assigned or agreed in writing to assign the invention may make the application for patent. Further, national law shall provide that a person who otherwise shows sufficient proprietary interest in the matter may make application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. National law shall also provide that a patent on an application filed by other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as is deemed sufficient. Article 7. Identification of the inventor National law shall provide that the inventor shall be named in the application for patent, but national law may not impose other formalities or requirements in connection -16-

17 with the naming of the inventor, including any requirement for an oath or declaration of the inventor. Article 8. Correction of naming of inventor (a) National law shall provide that whenever an individual is incorrectly named in an application for patent or in an issued patent as the inventor, or an individual is incorrectly not named in the application or patent, the national patent office may correct the naming of the inventor. National law shall provide that the correction may be made upon petition by an interested party, with proof of the facts and such other requirements as may be imposed. (b) National law shall provide that incorrect naming of the inventor shall not invalidate any patent if correction can be made as provided in this Article. National law shall provide that any judicial authority before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the national patent office shall issue a certificate accordingly. Article 9. Provisions on loss of right to patent; enforceability of patents (a) National law shall not contain any additional provisions on loss of right to patent for an invention, including provisions relating to the prior invention of another, abandonment of the invention by the inventor, and placement of the invention in public use or on sale by or on behalf of the inventor. Nothing in this Article shall, however, be deemed to prevent an invention from being deemed unpatentable or ineligible for patenting on account of lack of novelty, non-obviousness over the prior art, failure of the patent to contain an adequate disclosure of the claimed invention, or failure to meet an additional requirement or limitation as permitted under Article 2(b). (b) Nothing in this Agreement shall be deemed to address any question of the enforceability or unenforceability of any patent, in whole or in part, once granted, nor any question of the remedies available to the patent owner in the event of an infringement. Article 10. Requirement to publish applications for patent National law shall provide that each national application for patent shall be published to the same extent and at the same time relative to the priority date of the application for patent as would have been the case had the national application for patent been instead filed under the Patent Cooperation Treaty. -17-