Toshiko Takenaka, The Best Patent Practice or Mere Compromise? A Review of the Current Draft of the Substantive Patent Law Treaty and a Proposal for a "First-to-Invent" Exception for Domestic Applicants, 11 Tex. Intell. Prop. L.J. 259 (2003), https://digitalcommons.law.uw.edu/faculty-articles/350
Texas Intellectual Property Law Journal
first to file, first to invent, harmonization of patent law, Substantive Patent Law Treaty
Part I of this paper I review the past efforts of patent harmonization. In Part II, I review the current draft of the Substantive Patent Law Treaty (SPLT) and compare its major articles with Title 35 of the United States Code, the European Patent Convention (EPC), and Japanese Patent Law (JPL). In Part III, I analyze the changes expected by the integration of the SPLT into U.S. patent practice and examine if such changes would result in the best patent practice. I propose that the best practice takes into account underlying patent policies in such instances in which the changes merely reflect a compromise with the European/Japanese practice. In particular, in Part III, I also argue that such changes brought about by the SPLT are marginal because the current U.S. system is, in reality, a first-to-file system with limited exceptions for first-to-invent priority. Implementation of the SPLT in the United States only requires removing that exception and introducing a simple, userfriendly system that is particularly beneficial to applicants with limited resources. However, all the legitimate benefits of and compelling policy reasons for a first-to-file system still may not convince die-hard first-to-invent advocates. Therefore, in Part IV, I propose maintaining an exception for use of the existing system and creation of a quasi-second tier system for patent protection. Such a system will give these first-to-invent advocates a chance to experience the acclaimed benefits of the first-to-file system while keeping first-to-invent options open until they are ready to completely convert to the first-to-file regime.