The Court's Future Role in the International Harmonization of Patent Laws

by Dennis Crouch

International harmonization has always been seen as a major purpose of the Leahy-Smith America Invents Act. Every country has its own patent structure as does the European Patent Office. Ongoing differences between the various countries add substantial transaction costs to the process of obtaining and enforcing patents. Many US companies would like European patents, but the prospect is often cost prohibitive.

Although disputed, most would agree that the Leahy-Smith's new filing-date focus moves the US closer an international patentability norm. Still, a number of important differences remain between US law and the laws in other major patent centers. As a result, the US law has not been internationally harmonized, but it has been shifted in that direction.

The Leahy-Smith AIA refers directly to harmonization only once and only in an aspirational “sense of Congress” provision that reads as follows:

Sense of Congress - It is the sense of the Congress that converting the United States patent system from ‘first to invent’ to a system of ‘first inventor to file’ will improve the United States patent system and promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries.

This Congressional statement regarding promotion of international harmonization does not include any binding requirements, but will still clearly be considered "law" -- having been approved by both houses of Congress and (will be) signed into law by President Obama. See Mississippi Poultry Ass'n, Inc. v. Madigan, 31 F.3d 293 (5th Cir. 1994).

Comparative Analysis of World Patent Laws: Rather than any binding rules, the "sense of Congress" provision provides an indication of congressional intent that may be relevant to statutory construction. Since the provision is passed by both houses and will be enacted into law, it should be much more influential that other statutory construction canons used to understand congressional intent. This may be important as the court's struggle with the meaning of new statutory language and structures of Sections 102 and 103 of the Patent Act. In making its determinations, must the court consider how its decision will impact the relative international harmonization of the laws? The process would seemingly involve a comparative analysis of the various patent laws to see whether the particular rule in question is governed by an international norm and, if so, the court should tend to choose an interpretation of the law that better harmonizes the US law with the international norm.

USA as World Patent Court: In Voda v. Cordis, Judge Gajarsa discussed the court's “lack of institutional competence in [various] foreign patent regimes” including “British, Canadian, European, French, and German patent claims.” In that case, the court denied Dr. Voda's plea for supplemental jurisdiction so that a U.S. court could adjudge all of his infringement claims against Cordis in a single instance. The sort of worldwide patent court that Voda wanted is an end goal for many involved in substantive patent harmonization. When this case arises again, the court will need to reconsider its institutional competence in light of the newly harmonized laws and the Congressional directive in favor of harmonization?

Posted on Sep 13, 2011

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