US, Japan Patent Laws Move Closer, Easing Filing Challenges

THE United States and Japan have taken an important step toward putting their inventors on equal footing. A new agreement, which the two countries signed Tuesday, will reduce differences between their patent laws and could, eventually, make it much easier for individuals and companies to protect their inventions throughout the industrialized world.

``It is a big deal,'' says Pamela Samuelson, a law professor at the University of Pittsburgh law school. ``It's good to see these two countries both taking steps that will serve the public but will bring them closer together.''

In Japan, the measures are aimed at speeding up that country's unusually slow patent process. For example, Japan has agreed to put in place by January 1996 an accelerated examination procedure so inventors will know within three years whether they are going to get a patent. That is roughly half the five to seven years that American inventors now face when they try to protect their inventions in Japan, says Ruth Ford, spokeswoman for the US Patent and Trademark Office.

One reason the process is so slow is that Japan allows third parties to oppose a competitor's patent before it is granted. That means a Japanese company can look over the shoulder of a patent examiner and keep bringing up reasons why the patent should not be granted.

US companies have long argued that this procedure delays the process. According to the new agreement, Japan will stop this practice by April 1 of next year and instead allow competitors a three-month period to oppose a patent after it is granted.

Compulsory licenses

Starting July 1, 1995, Japan also has agreed to stop awarding what are called dependent patent compulsory licenses. Though rarely used today, in the past these measures have forced US inventors to license their technology to a Japanese competitor for a set amount of compensation.

The US has agreed to make important changes too. Individuals or companies who think a competitor's patent is invalid will be allowed a bigger role in explaining their reasons to the patent office. Today, such challengers have limited contact with the patent office and, thus, often file their challenges in the courts instead, where they have more say.

End to `submarine patents'

The other important change is that the US patent office will begin publishing pending applications after 18 months - something the European patent office and Japan already do. The US measure, which takes effect Jan. 1, 1996, is aimed at preventing a longtime problem, known as ``submarine patents.'' These are patent applications that the inventor drags out for years, waiting for an opportune time to spring them on an unsuspecting industry and demand royalties. By publishing the hitherto secret patent application, the US hopes to curb the problem.

``The 18-month [measure] is a double-edged sword,'' warns Peter Trzyna, a patent attorney at the Chicago firm of Keck, Mahin & Cate. The measure will keep industries from being blindsided by submarine patents. But ``it may lead to people saying: `I don't want to take a chance [on having my invention published and not getting the patent]. I'll keep it a secret.' ''

Other patent experts cheer such moves.

``It would be a good thing to have a more unified patent law'' in the US, Japan, and Europe, says Lee Hollaar, a registered patent agent and computer science professor at the University of Utah. ``If you could file an application in one patent office and have it apply in all three, it would simplify patenting.''

One big sticking point is that the US awards patents to the first person to invent something. Most of the rest of the world awards them to the first person to file at the patent office. The difference between the two systems is exaggerated, patent experts agree, since in almost every case, the inventor and the first filer are one and the same. Still, many US inventors and universities oppose the first-to-file system. They say it gives big corporations an advantage, since they have more resources to file patents in a timely manner. Thus, harmonizing patent laws worldwide could prove difficult.

``There's been more opposition to harmonization in the US than people expected,'' Professor Samuelson says. But ``I think it's inevitable'' that harmonization will come.