Deputy Under Secretary of Commerce for IP and USPTO Deputy Director Michelle K. Lee
Roundtable on Harmonization of Substantive Patent Law
USPTO Headquarters, Alexandria, Virginia
November 19, 2014
Remarks as prepared for delivery
Good morning, everyone, and thank you for joining us at the United States Patent and Trademark Office. I want to start by echoing Commissioner Focarino’s sentiments. I appreciate you taking the time out of your busy schedules to travel here and share your views on an area of great importance to me and this office, and that is substantive patent law harmonization. I’d also like to extend a warm welcome to our colleagues from Canada, Europe, Japan, and Korea who are here with us today, as well as all those following the discussion via webcast.
One of the most significant changes we’ve seen in intellectual property in recent years is the tremendous increase in the visibility and importance of patents and patent-related issues. What used to be a topic reserved for highly technical or specialized scientific and legal circles now takes center stage in legal, policy, and trade discussions around the world.
In many ways, this is not surprising. As you are no doubt aware, recent reports from the United States and Europe reveal that IP-intensive industries are key drivers in our 21st century global marketplace, driving economic growth and the creation of jobs. Key economic indicators continue to point toward ever-greater reliance on patent protection in the cross-border expansion of businesses and innovation.
Yet despite the importance of patents to global economic growth and innovation, the international patent system remains fractured. Innovators must navigate an obstacle course of different substantive laws in each jurisdiction to obtain patent protection for the same invention. This creates significant uncertainty and increases costs, both upstream in terms of research and development investment, and downstream in its impact on consumers and the public.
Inventors—and patent offices—also face unnecessarily steep administrative costs. Although the USPTO and offices around the world have in recent years invested significantly in work sharing—where one office reuses work done by another office to improve its examination of a corresponding application—the lack of harmonized laws related to key examination issues remains a barrier.
To these ends—enhancing certainty, reducing costs, and streamlining the international patent system to improve work sharing—we are focusing our discussion today on some of the key issues involved in the decision whether to grant a patent:
- the definition and scope of prior art;
- the grace period;
- and standards for assessing novelty and obviousness.
While there are other issues that could be considered, our focus on these prior art-related issues follows from studies we have conducted among the Trilateral Offices and IP5. The results of those studies suggest that most decisions on patentability, and the bulk of the search and examination workload, turns on assessing the scope and content of the prior art and its application for novelty and inventive step purposes.
Our focus is also a pragmatic one. These issues are ones for which there already appears to be a high degree of international convergence, particularly after passage of the Leahy-Smith America Invents Act and our switch to first-inventor-to-file. To be sure, there are still significant hurdles to overcome, even on these prior art issues, but we believe the picture is at least much clearer than with other topics.
So I look forward to a thoughtful exchange of views on these issues this morning. Your input will be instrumental in helping us determine the best path forward for the United States and for the global patent system. Thank you once again for your participation.