Academic journal article The George Washington International Law Review

International Patent Harmonization: Creating a Binding Prior Art Search within the Patent Cooperation Treaty

Academic journal article The George Washington International Law Review

International Patent Harmonization: Creating a Binding Prior Art Search within the Patent Cooperation Treaty

Article excerpt


Imagine you are an individual inventor who has just discovered the next major advancement in cell phone tower technology. You know your invention is going to improve the service of every cell phone company in the world. You are about to become very rich, so long as your invention is protected. To make sure you maximize your future profits, you must obtain patent protection in every country where your new product will be used. Although at first this may seem like a daunting task, as there are many countries in the world, you might be in luck.

You discover the Patent Cooperation Treaty (PCT).1 The PCT is a multilateral treaty that facilitates the filing of patents across the world and is administered by the World Intellectual Property Organization (WIPO).2 The PCT system is essentially a two-phase process consisting of an international phase and a national phase.3 During the international phase, an application is filed in a PCT "Receiving Office."4 The application is then subjected to an international prior art search by an "International Authority" chosen by the patent applicant.5 Next, in the national phase, applicants can pursue their PCT patent in the national patent offices of all coun- tries where they desire protection.6 To apply for a patent in the national phase, applicants must complete a few simple steps.7 Applicants must file a request to the PCT to use the application in the national phase, file any required translations of their application, and then pay the required national fees.8 Once applicants have submitted their applications to the various national patent offices, the substantive laws of each individual nation exclusively apply.9

Sounds simple right? Well, it does not work so easily in practice. What you thought would be a quick and efficient way to patent your new cell phone tower technology worldwide turns out to be inefficient. The reality is that:

[r]elatively few international patent applications proceed directly to the national stage; most result in parallel proceedings on the national and international stages. Moreover, no major examining office accepts the work of any other national office without performing its own national examination. As a result, an international patent application may be subject to search and examination four or even five times, depending on how it is processed and what level of deference is given to the international search report.10

What seemed like an easy process has turned into a bureaucratic mess. In practice, almost all national patent offices conduct a prior art search of a PCT application at the national phase, just as they would for a domestic, non-PCT, application.11 The individual national patent offices give little to no deference to the prior international search conducted within the PCT framework.12 This ultimately means you, the cell phone tower technology inventor, will incur additional costs in terms of both time and money. This unneeded redundancy requires attention.

Technical innovation and intellectual property are becoming increasingly important and relevant to today's international econ- omy.13 This is especially true in the area of patent law, a subset of intellectual property. The purpose of a patent system is to enhance society by encouraging innovation.14 When a patent system becomes overrun with excessive costs and inefficiencies, it starts to create barriers to innovation.15

In 2009, under the Bush Administration, the United States proposed a series of reforms to resolve redundancies in the practical application of the PCT process.16 Both developing countries and major intellectual property exporting countries opposed these reforms,17 however, because they tampered too much with the current PCT structure.18 When the Obama Administration came into office, the United States stopped pursuing the reforms.19

The current PCT model needs to be revised to eliminate unnecessarily costly operations and address the inefficient20 practice of creating redundant prior art searches that have already been performed by other patent offices. …

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