C & ENspecial report
Common Patei
for the Common European experts work diligently to develop a unified EEC patent system—to stimulate trade, cut out duplication of effort, and simplify patent procedures
Readers examine portions of the world's patent literature in one of the reading rooms at the French Patent Office
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Market A single patent that covers more than one country, a long-discussed concept, may finally become a reality. The six countries of the European Common Market (West Germany, France, Italy, the Netherlands, Belgium, and Luxembourg) are pushing ahead toward a unified patent law that might eventually lead to the so-called "European" patent. At the same time, the Scandinavian countries (Denmark, Norway, and Sweden) and Finland are attempting to develop laws that would allow a patent in one of the four countries to be recognized in each of the other countries. Today, every country in the world with a patent system has its own special procedures for filing a patent application. Thus, an inventor must file a different patent application in every country in which he desires patent protection. This multiple filing is, of course, expensive. Moreover, differences in patentability standards and in application procedures in various countries often result in complications and confusion. Unified patent laws would help enormously to lessen the costs and reduce the complexities faced by inventors seeking patent protection in more than one country. The Common Market countries are now attempting to develop such a unified patent system. If and when it comes into being, patent protection could be obtained in all six Common Market countries by filing a single application. In the future, other coun-
Advocates of the Common Market patent law believe the proposed system would greatly promote European industry and trade. Above, drugs are loaded onto a Dutch ship. Below, steel is made in Luxembourg
tries may join the Common Market patent system or may establish their own multinational patent systems. Growth of Technical
Literature
In addition to minimizing the complexities of obtaining patent protection in more than one country, multinational patent systems would help reduce the problems caused by the rapid growth and increasing complexity of modern technology. Because of the rapid expansion of science, countries with an examination patent system, such as the U.S., find that the amount of technical literature that must be examined in processing a new patent application is growing at a consider-
able rate. As an indication of this, the number of abstracts published in Chemical Abstracts from 1953 to 1962 increased at an average annual rate of 9.35%. Not only is the amount of technical literature growing but also the number of patent applications. Again using the U.S. as an example, 84,620 U.S. applications for inventions were filed in the fiscal year ending June 30, 1963. This compares with 60,107 applications for inventions filed in fiscal 1952. The number of patent applications and the amount of technical literature are continuing to increase. These factors, together with the large turnover of examiners in the U.S. Patent Office (about 20% yearly), have led to a huge backlog of applications. In fact, this backlog (now about 210,000 cases) has reached the point where most patents take more than three years to be issued after their date of filing. A multinational patent system, such as that proposed by the Common Market, would help relieve this situation, which exists not only in the U.S. but also in many foreign countries. It would eliminate the wasteful duplication of searching effort that is now required when each country issues its own national patents under its own individual examination system. The problems typical of the U.S. Patent Office are even more acute in countries that have a limited number JUNE
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of qualified technical personnel to staff their patent offices. If these countries receive a large number of patent applications, it is almost impossible for them to have an examination procedure in their patent systems. In many small countries, therefore, patents are granted by a registration system. In this system, the proper filing of a patent application, together with the payment of a specified fee, automatically leads to the granting of a published patent. The job of deciding the scope and validity of the patent is left to the courts. However, if a large number of published patents are issued, a huge backlog of court cases might result. Hence, many patentees would have to wait years before they were sure of the patent rights to their inventions. A common patent system would go far toward alleviating such problems. Unfinished Business In view of the importance of international patent protection, the efforts of the Common Market countries to develop a common patent system are matters of deep interest to industrialists and patent experts throughout the western world. Much needs to be done, however, before the Common Market patent becomes a working reality. Originally, some observers thought the proposed patent system would be adopted by the spring of 1964. Obviously, this was an ambitious prediction, considering the many difficulties, both of a practical and political nature, involved in formulating the new law. Observers now believe that the new patent system will not be officially approved for another four or five years. Efforts to develop a Common Market patent are mainly an outgrowth of the Treaty of Rome (1957), which established the European Economic Community (EEC) or Common Market. The Treaty of Rome calls for the free flow of goods throughout the Common Market. Since individual monopolies in the form of patents in each of the Common Market countries represent barriers to the manufacture and free flow of goods, separate national patent systems within the Common Market are considered to be contrary to the aims of the Treaty of Rome. Preliminary drafting of the proposed Common Market patent law was carried out in a series of six meetings 88
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in 1961 and 1962. The work was done by a special drafting committee (known as the working party), which has been headed since its inception by Dr. Kurt Haertel, who is president of the German Patent Office in Munich, West Germany. The working party is composed of representatives from each of the Common Market countries. The Commission of the European Economic Community and the Commission of the European Atomic Energy Community (Euratom) are also represented by delegates on the committee. Differing Views Considerable differences of opinion about the basic concept of the draft have been apparent, says Dr. Franz Froschmaier, director for competition of the EEC Commission, who is also secretary of the working party. The original draft was prepared not only with the aim of protecting industrial property but also of advancing some of the ideas expressed in the Treaty of Rome. Thus, this draft was designed to serve a specific group of countries that were economically integrated and that might some day also be politically integrated. Many interested parties, however, favor a broader patent system covering as many countries as possible. They prefer to eliminate all provisions that serve only the exclusive interests of the Common Market. The following basic questions are still unanswered: • Should the drafting committee, as a primary purpose, work toward a Common Market patent system or, on the contrary, an international patent system to be shared by as many countries as possible? • Should the nationals of countries not in the Common Market be allowed to obtain a Common Market patent? Questions such as these must be answered before a final draft of the convention can be prepared. If these two questions could be clearly answered, all of the related technical details could be easily worked out, Dr. Froschmaier says. Actually, these questions are mainly political. A country's feelings of nationalism and individualism greatly influence its government's views on such questions. Thus, more time than was originally anticipated will probably be required before a final draft agreeable to all of the Common Market governments is completed. In addition to the final
draft convention, the working party must also prepare a final text of regulations. The necessary conventions may be submitted to the EEC governments for preliminary approval sometime in 1965 and possibly for final signature in 1966. The EEC governments will then have to submit the texts to their own parliaments for ratification. This should take about two or three years. Hence, the proposed system could go into actual effect sometime in 1968 or 1969. The basic idea of a multinational patent is not new. At various times in the past, proposals have been made to issue patents common to two or more countries. These ideas, however, never gained acceptance. Suggestions for simplifying international patent protection have mainly been of two general types. The first has been the proposal to set up common patents having automatic and full territorial effect over a number of countries. The "European" patent would be of this type. The second type of proposal has been to harmonize individual national patent laws so that a patent in one country could be extended to cover the other countries in the agreement, at the option of the patentee. With this approach, individual national patent laws would be maintained. The Scandinavian patent proposal is of this type. Harmonization Over the years, countries with examination patent systems and those with registration systems have developed differing attitudes toward the interpretation, validity, and infringement of patents. Harmonization of these differing systems within any group of countries would doubtless be difficult, if not almost impossible. However, when the Common Market was formed, leaders in some of Europe's major industries—led, or at least urged on, by West German and Dutch interests—became impatient with the basic problems and complexities involved in trying to establish uniform standards and procedures within the existing national patent laws in the Common Market countries. The greatest agitation came from the steel and nonferrous metals industries, the electrical industry, and the chemical industry. Since some members of top management in these industries felt that some form of political or legal
Number of Chemical Abstracts WâM^MMl
ί Source: Chemical Abstracts Service
Volume of Technical Literature Today, the amount of technical literature in the form of papers and pat ents is growing rapidly and will continue to expand. In the past 10 years, the number of U.S. patents issued per year has risen 24%. The increase has been even more spectacidar in the case of the chemical literature, which has more than doubled (counting both chemical papers and patents) between Because of the mounting volume of technical literature that must be searched in determining the novelty of new patent applications, examina tion of these applications is becoming more and more difficult. At the same time, countries ivith examination patent systems, such as the OS., have become further overburdened by the increasing numbers of patent applications. One solution to these problems lies in using a registration stjstem for granting patents. This system, which does not involve examina tion procedures, is used by many small countries today. One way to maintain an examination patent system while lessening the burdens of searching more and more technical publications may be to use' a multinational patent system, such as that proposed by countries of the Common Market. With multinational patents, countries can pool their patent personnel by doing cooperative searching. Thus, duplication of
progress, would be maintained.
Total Number of U.S. Patents issued* Thousands
federation of European countries might not be far off in the future, they wanted to have a unified patent sys tem already in operation if and when federation should come. According to Dr. Klaus Pfanner, chief of the law division of the Ger man Patent Office, the West German government has supported a unified patent law to promote the develop ment of the Common Market and to solve the problems of its overburdened national patent office. However, many observers believe that the orig inal initiative was taken by industry leaders in various Common Market countries who urged their governments in 1959 to get the ball rolling on some sort of unified European patent sys tem. Use of the already established machinery of the Common Market, they felt, would be the ideal way to get things started. Separate
Treaty
As Leonard J. Robbins of the pat ent firm of Langner, Parry, Card & Langner in New York City points out in the fall 1961 issue of Patent, Trade mark, and Copyright Journal of Re search and Education, many legal observers believe that the Rome Treaty does not provide a mandate for creating an entirely new supranational industrial property right. Conse quently, the E E C Commission de cided at the outset that a separate treaty or convention outside the Rome Treaty would be necessary to create a unified patent law. According to some observers, the rules that govern restrictive business practices in Article 85 of the Rome Treaty do not apply to the legitimate uses of national patents. The Rome Treaty, they say, grants no authority for suppressing national patents. In fact, they point out, Article 36 of the treaty sustains national sovereignty over patents. This article says: The provisions of Articles 30 to 34 inclusive shall not be an ob stacle to prohibitions or restrictions in respect to importation, exporta tion, or transit which are justified on grounds of public morality, pub lic life or health, the preservation of plant life, the protection of na tional treasures of artistic, histori cal, or archeological value, or the protection of industrial and com mercial property. [Italics added.]
Fiscal Year Ending June 30 * includes patents for inventions, plants, and designs, as well as reissued patents.
Source. U.S. Patent Office
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These Men Jrlave Played Key Soles In Common Market Patent Efforts
Hans von der Groeben
Chairman of meeting of EEC undersecretaries of state that approved the proposal to draft a unified patent law for the Common Market
Dr. Kurt Haertel
Chairman of the committee set up to draft a unified EEC patent law
law would eventually supersede and replace existing national patent laws if and when political federation of Europe is achieved. Thus, at some distant date, the proposed convention for European patents would become the single patent law of the new superstate. Many Europeans are convinced that a European patent convention is necessary for fulfilling the aims of the Rome Treaty—specifically, the goal of free competition uninhibited by governments, the EEC Commission, or private agreements. Many articles of the Rome Treaty deal with the harmonization of national laws. In fact, Article 100 states that harmonization is necessary whenever the diversity of national laws adversely affects the functioning of the Common Market. Thus, a desire to fulfill the aims of the Common Market and to simplify and unify the patent practices of the Six led the E E C Commission to set to work developing a so-called European patent. The EEC Commission decided that the best solution for putting a unified Common Market patent law into effect would be to allow it to exist simultaneously with the existing national patent laws during a transition period. This would be more practical than attempting to harmonize the existing national patent laws with their many differences in legal technique and tradition, the commission says. If the new unified law works satisfactorily, national patent laws may eventually be eliminated, leaving only the unified law to govern patent protection throughout the Common Market. The patent draft convention is the only one published so far. A draft convention for trademarks is almost finished and will be published this year. Eventually, designs will also be dealt with since these likewise fall within the area of industrial property. A working party to write a design convention has been formed. Proposed
Dr. Franz Froschmaier
Secretary of the drafting 90
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Procedure
The European patent convention proposes to establish a common administration consisting of a European Patent Office and a European Patent Court. Although the final draft will doubtless contain some changes in details, the broad outlines of the patent procedure will probably remain unchanged.
Under the proposed European patent convention, a deferred examination procedure would be used. This means that a full examination of a patent application for patentability would not be made immediately, as in the U.S., but only after several preliminary procedures had been carried out. An expected advantage of this deferred system is that commercially useless or unsuccessful patents would be abandoned during the interim period, thus relieving the patent office of the heavy burden of examination and possible opposition procedures for every patent application. The examination system of the proposed European patent convention is quite similar to the deferred examination provisions of the new patent law that went into effect in the Netherlands on Jan. 1, 1964. Thus, the proposed European patent convention is not an isolated experiment. The proposed convention and the new Dutch statute are more akin to each other than the convention is to any other single national patent law. In fact, the new Dutch system will probably be watched by interested parties as somewhat of a "pilot plant" operation preceding the suggested European law. Under the proposed patent convention, the European Patent Office will first give an application for a European patent a cursory examination for matters of form. If the application is in order, a novelty search will be made, presumably by the International Patent Institute at the Hague, an organization established in 1949 by Belgium, the Netherlands, Luxembourg, and France as a central agency for determining the novelty of patents. A provisional European patent will then be published about 18 months after the filing date of the application, together with the novelty report. The novelty report will contain a listing of the prior patents and publications thought to be pertinent to the application. The elements of these patents and publications considered important and essential to the patentability of the claimed invention will be pointed out. However, the novelty report will not contain statements as to whether the claimed invention is patentable or not. On the basis of the novelty report, the applicant may, if he wishes, revise the claims of his application prior to the publication of the provisional patent. A fee will be charged to obtain the
published provisional European patent. The provisional patent will automatically expire five years after its date of publication, unless a request for a patentability examination is submitted in the meantime to the European Patent Office. This request may be made by the patentee or by a third person. A request for examination will be published in the European Patent Office's official bulletin. Afterwards, other parties interested in participating in the examination procedure may request permission to take part. The examination of the provisional patent will be made by the European Patent Office, using the novelty report of the International Patent Institute, together with any other pertinent information and references. Since anyone may supply information about the validity of a provisional European patent after its publication, presumably this information will be used in the full examination. If the full examination shows that the provisional patent does not meet the requirements of patentability, the patentee will be given an opportunity to remedy the deficiencies. As in U.S. practice, amendments may be made several times in an attempt to render the application patentable. If it appears from the examination
that the provisional patent should be approved as a final European patent, the patentee, as well as any participating third parties, will be so informed. Within a specified time, the third parties may submit objections which, in turn, will be transmitted to the patentee for comment. If, following this, the provisional patent is confirmed as a final European patent, the patent rights will extend back to the publication date of the provisional patent. The European patent will expire 20 years after the filing date of the application. If the provisional patent is finally declared unpatentable, the patent protection afforded by it would be considered as nonexistent from the beginning. This is the same effect as if the patentee had forfeited the provisional patent or had failed to pay the annual fees. The decision of the European Patent Office will be published in its official bulletin. English, French, and German have been tentatively chosen as the official languages for the European patent. Presumably, the claims of each patent will be published in all three languages. However, the full patent will probably be published in only one language (the language in which it is filed). According to the draft convention,
Despite Many Problems, Progress Toward a "European" Patent System Has Been Relatively Fast IVIarch 1957
Signing of Treaty of Rome establishing the Common Market
July 1960
Report on feasibility of a "European" patent convention prepared by Dr. Kurt Haertel
October 1960
December 1960
Early 1961
Co-ordinating Committee of Common Market approves most of the Haertel report and submits proposals based on the report to the undersecretaries of state of the six Common Market countries Undersecretaries of state of the Common Market countries approve going ahead with the drafting of a European patent convention, and they formulate directives for proceeding Governments of the Common Market approve directives set forth by the undersecretaries
European patents will be granted for new inventions "capable of industrial use" and resulting from "inventive ingenuity" (the draft says "erfinderische Tatigkeit" or "activite inventive"). An invention is said to be capable of industrial use if it can be produced or used in an industrial field (in its broadest sense) or in agriculture. This condition of patentability is similar to the requirement of utility specified in U.S. patent law. Public
Disclosure
The concept that has developed in the U.S. is that the Government grants patents to inventors for the public disclosure of an invention. Such disclosure, by adding to the knowledge of a given art, helps to advance the state of the art. In return, the patent gives the inventor the right to exclude others from making, using, or selling the particular invention covered by his patent claims. There are no provisions requiring an inventor to make practical use of his invention. No annual maintenance fees are charged to keep a patent in force (although a bill to introduce maintenance fees was passed by the House of Representatives in January). On the other hand, most European patent laws provide for annual main-
April 1961 July 1961 September 1961 January 1962 April 1962 June 1962
Preliminary drafting of European patent convention carried out in six two-week sessions
November 1962
Draft convention published
Summer 1963
Views on the draft convention received from interested parties
September 1963 October 1963
Convention is redrafted in the light of official and unofficial comments
? 1964
Undersecretaries will report to the Common Market governments on the remaining unresolved questions
1965
Decisions will be reached by governments on unresolved questions
? Late 1965
Final draft convention will be submitted to the six Common Market governments for preliminary approval
? 1966
Convention will be submitted to the six Common Market governments for final signature
? 1968 or 1969
Convention will be ratified by all six governments
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tenance fees to keep a patent in force. Moreover, penalties (such as compulsory licensing) are imposed for failure to use an invention if the government feels that the public would benefit from its use or exploitation. Because of the expense of maintenance fees and the threat of compulsory licensing, most European patents that are maintained relate to inventions that actually are used commercially. In the U.S., many defensive patents and small-improvement patents are never sold or used commercially. A patent utilization study conducted by the Patent, Trademark, and Copyright Foundation of George Washington University in Washington, D.C., showed that only 55 to 65% of all assigned U.S. patents (usually held by corporations employing the inventors) and only 40 to 50% of all unassigned U.S. patents are produced for sale or are used in making commercial articles at some time during the life of the patent. The EEC draft specifies that a European patent will not be granted if the invention, even if new, does not result from "inventive ingenuity" —that is, the invention must not be obvious even to a person skilled in the art. This is similar to provisions in the U.S. patent law. Of course, deciding what is or is not obvious is often a highly debatable point and can lead to considerable controversy over patentability. Under the proposed European patent law, absolute novelty will be required. This means that an invention will only be considered new if it is not obvious from the "state of the art." The "state of the art" consists of anything accessible to the public before the application filing date —whether a written document (patents or other technical literature), oral description, or a product or process in actual use. In addition, patents based on applications filed prior to the application under consideration, even though they may be published by the European Patent Office or by one of the national patent offices on or after the filing date of the European application, can also be used to prevent the granting of a European patent. In many countries, publication or public use of an invention prior to the filing date of a patent application can prevent the granting of a patent. This, however, is not true in the U.S., where an inventor may 92
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file a patent application any time within a year of actual public use or publication of his invention. Thus, a European patent issued on an invention known or used publicly in the U.S. before a European patent application was filed (such as in a study to evaluate possible markets) may well be considered invalid under the proposed concept of absolute novelty. Prior public use in another country is cause for the invalidation of a patent in Italy and France, among the Common Market countries, but this regulation only comes up in a court proceeding and not during examination.
The proposed European law tends to broaden the prevailing concept of patentable subject matter. For example, at present, pharmaceuticals and the processes for making them cannot be patented in Italy. In Germany and the Netherlands today, only the processes for making chemicals and pharmaceuticals can be patented. The products themselves cannot be patented. Thus, any company can make the same product if it uses a different process. Under the proposed European patent law, chemical products and pharmaceuticals will be regarded as patentable subject matter, as in the U.S. Only new varieties of plants and animals, the essentially biological processes for producing plants and animals, and inventions contrary to good morals will be excluded. Inventions contrary to public order will also not be patentable. Under the proposed European law, the scope of the patent protection will be determined by the content of the claims, as in U.S. patents. The description of the invention (specification) and drawings (if any) will also be used to interpret the scope of the claims. The date that the invention was conceived or reduced to practice will play no part in the procedure. Only the filing date of the application will be used to determine novelty and patentability. This principle will be followed even when two or more parties file patent applications for the same invention (interference). This is contrary to practice in the U.S., where the conception date of the invention, if coupled with diligence in reducing it to practice, is taken into account. In the U.S., filing a patent application is considered one way of reducing the invention to practice (called a "constructive" reduction to practice), since the inventor is attempting in this way to make his invention known to the public. Possible Appeals
A searcher examines the patent files of the U.S. Patent Office. The amount of literature that must he searched in processing a new patent application has increased enormously
All decisions made by examiners in the European Patent Office will be appealable to a Board of Appeals. The Board of Appeals will not be bound by the arguments submitted previously by the parties involved. A further appeal to a European Patent Court will be possible to assure that the patent convention is applied and interpreted uniformly. Two different
The West German government has supported a unified EEC patent lata partly as a means of solving the problems of its overburdened patent office. This is the West German Patent Office in Munich
types of appeals to the court will be possible. In one, the court will be bound by previous arguments and will inquire only into questions of law. In the other type of appeal, the court will delve into new facts and arguments. In U.S. patent practice, patentability decisions made by primary examiners are appealable to a Board of Appeals within the Patent Office. No evidence apart from that already on the record may be used. If an applicant wants to appeal an adverse decision further, he has two choices. He may appeal to the Court of Customs and Patent Appeals (C.C.P.A.) on the record that has already been established, or he may file a civil action in the District Court for the District of Columbia, where new evidence and arguments may be introduced. A further appeal to the Circuit Court of Appeals for the District of Columbia is possible. In very rare instances, an appeal from either the C.C.P.A. or the Circuit Court of Appeals could end up in the U.S. Supreme Court. Before the applicant makes his decision as to which road to follow, he must first decide whether to appeal on the record or whether he thinks new evidence is needed to support his arguments. The European draft convention provides that alleged infringements of patent rights must be litigated in the appropriate national court of the coun-
try in which the infringement takes place. This provision was made because, as yet, there is no federal jurisdiction in Europe to cover such actions. Infringements under a European patent will only extend to products and processes concerned with industrial or commercial purposes; those used for private or experimental purposes will not be considered infringements. In the U.S., experimental or private noncommercial use of a patented invention is technically an infringement. However, U.S. courts generally do not enjoin or penalize such infringements. Importation The importation of goods into countries participating in the proposed patent convention will be considered an act of infringement under the proposed law if these goods are patented in these countries. In the U.S., importation or use of a product that isn't patented in the U.S. but is the result of a patented process is not an infringement. (However, in some cases, importation of such a product may be prevented under the Tariff Act of 1940 on the grounds of unfair competition.) On the other hand, importation or use of a product protected by a U.S. patent is considered an infringement of a patentee's rights under his patent. If the question of validity of a
European patent is raised during an infringement proceeding, the proceeding will be interrupted to allow the European Patent Office to determine the question of validity. National courts will not have the right to judge the validity of European patents. Compulsory
Licensing
Some observers have argued that the question of compulsory licensing should be left entirely to the national law of each member country. However, the draft convention provides for compulsory licensing of European patents by either national authorities or by the European Patent Office. If exploitation of an invention by a third party is considered necessary in the public interest of one of the member countries, a compulsory license within that country may be granted by its national authorities. Such a license would be effective only in the country concerned. If the invention is not put to use within the entire territory of the convention after three years from the patent grant and four years from the filing date, a compulsory license may be granted by the European Patent Office. This license may cover the entire convention territory or only certain specified countries, depending on the case. The European Patent Office may also grant a compulsory license on the basis of the dependency of patJUNE
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National Patent Systems and How They Developed Patent laws around the world differ both in degree and kind. For one thing, patent laws have had varied beginnings in different countries. For another, they have developed in various countries in different environments. Hence, many variations in patent procedures can be found from one country to another. Harmonization of these diversities into a unified patent law covering more than one country, such as the EEC effort, is exceedingly difficult. Most patent laws are relatively new. However, records exist of some very old patent grants. In 1332, Bartolomeo Verde of Venice received a revocable 12-year patent on a windmill. In 1469, a patent was granted to John Speyer, a German, for printing. In 1474, a Venetian patent statute was enacted that provided for the granting of exclusive rights for 10 years to "inventors of new arts and machines." The idea of granting patents to promote progress in the useful arts gradually caught on throughout Europe. Patents were offered to artisans and inventors as a reward for their efforts in improving the arts through new inventions and innovations. Thus, trade and industry were able to begin to break away from the influences of the guilds and the apprentice system, under which many arts had remained static. The British Act of 1623, the so-called Statute of Monopolies, provided for the protection of inventions, usually
ents. If a later dependent patent (for example, an improvement in a chemical process) serves different industrial purposes or constitutes a "considerable" technical advance, a compulsory license under the earlier patent may be granted to the later patentee if he shows that he was unable to obtain a license from the earlier patentee on reasonable terms. At the same time, he must guarantee that he will actually use the invention. In the case of identical industrial purposes, the owner of the earlier patent may obtain a license under the later patent on request. Compulsory licenses stemming from a failure to use an invention or from a dependency of patents will, in most cases, be effective throughout the entire convention territory. Compulsory licenses will be nonexclusive. They will provide for reasonable compensation and may include restrictions and conditions. Also, 94
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through the granting of monopolies by the Crown. However, the law prohibited the Crown from making other monopoly grants. In Great Britain, the monopoly afforded by a patent has always been considered to be the grant of a special privilege by the sovereign. British law today still follows this concept. Hence, a patent grant in Britain is not considered a matter of right, as it is under U.S. law. The first time that the idea of examining patents for novelty appeared was in the U.S. patent law of 1836. Great Britain did not begin using novelty examinations until 1902 (opposition proceedings were started in 1852). Today, U.S. and British patent practices differ greatly, despite their basic similarities. A second type of system, the registration system (in which the proper filing of a patent application and the payment of a government fee automatically result in the granting of a patent) was introduced by France in 1791. This system still prevails there today (except for drug patents), as well as in other countries, such as Italy, Belgium, and Luxembourg. Many small and less industrially developed countries have adopted a registration patent system because it is less complex and less costly to operate than an examination system. For example, a large staff of technically trained patent examiners is not required. Germany has another type of patent system. The German patent law was enacted soon after the German states
there may be territorial limitations. A compulsory license may be canceled in a subsequent proceeding because of changed conditions or for failure of a licensee to live up to the terms of the agreement. Also, it may be modified if this is later justified. These, then, are the main provisions of the original draft convention for a European patent law. There are, of course, numerous other provisions concerning proceedings, delays, and other details. Many of the provisions of the preliminary draft may be omitted or changed in a revised version, but most observers think that the general pattern of procedure will remain the same. In fact, even the original draft in some cases has suggested various alternate procedures that still have to be worked out. The EEC working party on patents believes that the proposed patent system has many advantages. The procedure of granting a provisional pat-
ent and of having it lapse after five years if no examination is requested has definite advantages, the working party says. Also important are the high standards for patentability and the strict examination procedure. For the patentee, the system provides time to evaluate the economic potential of his invention before investing in its development—a time during which he remains fully protected. If the invention seems to have real merit, immediate patent examination is possible. After examination, the confirmed patent gives strong protection. The public, and especially competitors, will benefit from early publication of the patent, the working party points out. The published provisional patent and the novelty report will allow interested parties to assess the value of the invention. (Actually, early publication is not a new idea. Belgian patents, for example, are usu-
united to form the German Empire in 1871. It was drafted mainly to satisfy existing commercial needs. The main difference between German patent law and the U.S. law is that it provides for opposition and annulment proceedings. There are many specific differences between the various types of patent systems. In the U.S., a valid patent can be granted only to the first inventor. A decision as to who is legally first among rival claimants involves many complex legal questions. Hence, U.S. patent law contains provisions for interference proceedings, the sole purpose of which is to determine "priority of invention." However, nearly all other countries (Canada is an exception) grant a patent to the applicant who files in the patent office first (or who has the earliest priority date under an international treaty by filing in another country). No provision is made to determine who may have actually first conceived the invention and reduced it to practice. A U.S. patent remains in force for a full 17 years unless a court invalidates it in a patent suit. There is no requirement that the invention be put to actual use, and at present there are no maintenance fees for patents. In most other countries, the patentee must pay periodic fees, usually annually, to keep his patent in force. Actual use of the invention within the country granting the patent is a requirement in many countries. Nonuse may lead to the granting of a compulsory license to someone who is willing to work the invention. In a few countries, nonuse may result in actual revocation of the patent. U.S. patent law requires that the description of the invention be sufficiently detailed so that the invention can be understood by others. Also, the patent claims must define
ally published one to six months after filing.) Economic development will not be impeded by unused patent monopolies. On the one hand, patent monopolies will be restricted as to the industrial area they cover, while being strong in their coverage. On the other hand, much technical knowledge will remain in the public domain because of the strict standards of patentability which will help to prevent the creation of monopolies on subject matter that really isn't patentable. Such knowledge will, therefore, be available for anyone to use after the provisional term of five years, since economically unpromising patents will probably not undergo final examination. Furthermore, since holders of a European patent can be fairly sure that their patent is valid and since the scope of the patented subject matter will be quite clearly defined, patentees and their competitors alike will be better
the scope of the protected invention and clearly distinguish it from known products and processes. Some registration countries (for example, France) do not require a definitive listing of claims, but merely a short resume. Other registration countries require a statement of claims, but merely for determining whether more than one invention is involved, rather than for defining the scope of the patent. In German patents, the claims consist only of a statement of the elements that are functionally essential for defining the inventive concept. The scope of a U.S. patent is chiefly limited by the exact wording of the claims. However, in countries that use a French-type registration system or the British- or German-type systems, the entire disclosure is studied in the light of the prior art, in the event of an infringement litigation, to determine what inventive contribution the patentee may have made to the state of the art. Thus, the scope of the patent is open to broad interpretation if the prior art permits. Finally, there are many variations in what constitutes patentable subject matter. For example, chemical compounds and drugs may be patented in the U.S. On the other hand, most other countries do not grant patents for chemical compositions. However, in many of these countries, processes for making such products can be patented, and the process patent protects the product if it is made only by the patented process. Of course, the same product may be freely made by others if they use a different process. Success in harmonizing such diversities into a unified law could lead to greatly simplified procedures for individuals or companies seeking world-wide patent protection.
able to assess their relative positions within the market. Thus, the proposed patent system would promote strong competition and the efficient use of resources within the Common Market countries, the working party points out. Adherence or Association The draft patent convention contains two articles that provide that nonmembers of EEC may either "adhere" to the convention or "associate" with it. These articles invite any country that is a member of the International Convention for Industrial Property (the Paris Union Convention) to apply for full membership (Article 211) or associate membership (Article 212). Most countries with a patent system belong to the Paris Union Convention (the U.S.S.R. and India, however, are notable exceptions). Membership in the conven-
tion is available to any country on simple request. As Mr. Robbins points out in the April 1963 issue of Journal of the Patent Office Society, Articles 211 and 212 may be regarded as a proposal for a potential world patent system. These articles, however, are highly controversial, especially in European circles. The meaning of "association" is quite nebulous. Association could mean anything from 1 to 99% of full adherence. The meaning of full adherence is clear, but it is questionable whether some of the Common Market countries would want "outsiders" to become full-fledged members of the European Patent Convention—at least at first. Each of the original Six has complete power of veto; thus, each can control future membership. Patent table on next two pages Text continues on page 98 JUNE
15,
1964
C&EN
95
Patent Laws Are Enormously Varied 3 What Is
What Patented
Opposition
Life of Patent
Maintenance Fees
Working Requirement
Form a n d novelty
Within three m o n t h s after p u b l i c a t i o n of acceptance
16 years f r o m f i l i n g of c o m plete s p e c i f i cation
Once before e n d of f o u r t h year, t h e n yearly f r o m patent date
Three years from patent g r a n t ; C.L./
German
Form a n d novelty
W i t h i n four m o n t h s after O.P.I.o
18 years f r o m O.P.I.
Yearly f r o m O.P.I.
Three years from patent g r a n t ; C.L.
French, Ger m a n , or Flem
Form only
No o p p o s i t i o n ; grant two t o four or 26 weeks after f i l ing
20 years f r o m f i l i n g date
Yearly f r o m fil i n g date
W i t h i n a year of first industrial or c o m m e r c i a l working abroad or three years after a c c e p t a n c e ; C.L.
Country''
Prior Arte
Language
AUSTRALIA
Australia only ( p a t e n t s issued w i t h i n t h e past 50 years)
Mere m i x t u r e s English of f o o d s a n d medicinals and processes for making them
AUSTRIA
Use in A u s t r i a , publication
State m o n o p olies (salt, to
Examination
medicinals, and chemical products BELGIUM
U s e i n B e l g i u m , I n v e n t i o n s not publication w o r k a b l e in anywhere dustrially or commercially
ish
BRAZIL
U s e d or k n o w n in Brazil, pub l i c a t i o n any where
C h e m i c a l prod Portuguese ucts, foods, and medicinals (processes for making them are p a t e n t a b l e )
Form a n d novelty
W i t h i n 30 days after p u b l i c a t i o n of c l a i m s
15 years f r o m p a t e n t date
Yearly f r o m p a t e n t date
Two years f r o m p a t e n t grant (no break greater t h a n two y e a r s ) ; C.L.
CANADA
Anywhere ( m a i n l y prior
Medicinals a n d English or f o o d s p r o d u c e d French
Form a n d novelty
17 years f r o m patent grant
None
ents)
( p r o c e s s e s for making them are p a t e n t a b l e )
No o p p o s i t i o n ( i n t e r e s t e d par t i e s m a y pro t e s t validity of patent)
Three years from patent d a t e ; C.L.
I n v e n t i o n s " o f Danish no great i m p o r t a n c e , " medic inals, foods, and methods of f o o d prep aration
Form a n d novelty
Within eight w e e k s after O.P.I.
17 years f r o m f i l i n g date
Yearly from fil i n g d a t e , be ginning the s e c o n d year
Three years from patent g r a n t ; C.L.
DENMARK Use in Den· and GREEN - m a r k or Green LAND land only, pub l i c a t i o n any where
EGYPT
Egypt only
Medicinals a n d Arabic f o o d s (proc esses for m a k i n g t h e m are p a t e n t a b l e for 10 years)
Form only
W i t h i n two m o n t h s after acceptance
15 years f r o m filing date
Yearly f r o m fil i n g date
Three years from patent d a t e ; C.L.
FRANCE
Anywhere
Drugs are cov e r e d by spe cial p a t e n t s
French
Form only (exc e p t for d r u g applications)
W i t h i n three m o n t h s after p u b l i c a t i o n in bulletin (drug patents only)
20 years f r o m f i l i n g date
Yearly f r o m fil i n g date (even if not yet granted)
Three years from patent date (no break greater than three y e a r s ) ; C.L.
GREAT BRITAIN and NORTH ERN IRE LAND
Great Britain and Northern Ireland o n l y . w i t h i n t h e past 50 years
English
Form a n d novelty
Within three m o n t h s after p u b l i c a t i o n of acceptance
16 years f r o m f i l i n g of c o m plete specifica tion
Once before e n d of f o u r t h year, t h e n yearly f r o m p a t e n t date
Three years from patent d a t e ; C.L.
INDIA
India only
C h e m i c a l c o m English p o u n d s (proc esses for making them are p a t e n t a b l e ) and inventions r e l a t i n g to a t o m i c energy
Form a n d novelty
W i t h i n four m o n t h s after p u b l i c a t i o n of acceptance
16 years f r o m f i l i n g date
Once before t h e e n d of f o u r t h year, t h e n yearly from patent date
Three years from patent d a t e ; C.L.
-
ITALY
Anywhere
Medicinals a n d processes for m a k i n g them
Italian
Form only
No o p p o s i t i o n
15 years f r o m f i l i n g date
Yearly f r o m filing; d a t e , be ginning the s e c o n d year
Three years from patent d a t e ( n o break greater t h a n t h r e e years)
JAPAN
Use in J a p a n , publication anywhere
Foods, m e d i c inals, a n d p r o d u c t s of a c h e m i c a l reac t i o n or nuclear change
Japanese
Form a n d novelty
W i t h i n two m o n t h s after p u b l i c a t i o n in bulletin
15 years f r o m publication d a t e ( n o t more t h a n £θ years after f i l i n g date)
Total of first t h r e e years is d u e on p a t e n t d a t e , rest yearly f r o m publication date
At least t h r e e consecutive years; C.L.
" T a b u l a t i o n covers only p a t e n t s of i n v e n t i o n . It does not i n c l u d e t r a d e m a r k s ιor p a t e n t s for d e s i g n s or m o d e l s . Λ All of t h e c o u n t r i e s l i s t e d . e x c e p t t h e U.S.S.R. a n d I n d i a , are m e m bers of t h e I n t e r n a t i o n a l C o n v e n t i o n for t h e Protection of ln
V ^ V W ^ ^ W W ^ W M V ^ W ^ W V ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^ ^
It's "D-Day"
αοη-centaminating
QUARTZ THERMERSION
ι.
ACID
^
^
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PEOPLE Continued
from
page
84
D r . Lancelot C . A. Thompson a p p o i n t e d assistant d e a n for u n d e r g r a d u a t e studies a t University of T o l e d o college of arts a n d sciences. H e is associate professor of chemistry. Arthur H . Black, also associate p r o fessor of chemistry, w h o m h e succeeds, n a m e d d e a n of m e n . D r . Gerrit V a n Zyl, professor of chemistry a n d c h a i r m a n of t h e c h e m istry d e p a r t m e n t a t H o p e College, r e ceives a citation from t h e W e s t e r n Michigan Section of A C S . H e w a s recognized for h i s " d e v o t e d service to t h e cause of c h e m i c a l e d u c a t i o n . . . a n d his active p a r t i c i p a t i o n i n t h e affairs of t h e A m e r i c a n Chemical Society b o t h o n t h e local a n d n a t i o n a l levels." H e is retiring after 4 1 years on t h e H o p e faculty. 108
C&EN
JUNE
15, 1 9 6 4
The
Chemistry
in Biological Waste TreatW . W . ECKENFELDER, J R . , JOSEPH
MCCABE,
editors.
viii -j- 440 pages. Macmillan Co., 60 Fifth Ave., New York 11, N.Y. 1963. $20. Proceedings of the Third Conference on Biological Waste Treatment sponsored by Manhattan College, N e w York, April 1960. Advances in Catalysis and Related Subjects. Vol. 14. D. D . E L E Y , H E R MAN P I N E S , PAUL B. W E I S Z , editors,
xii -f 522 pages. Academic Press, Inc., I l l Fifth Ave., New York 3. N.Y. 1963. $16. Represents nine authors in six sections, each covering a particular facet of his specialty. Advances
in
Chemical
Engineering.
Vol. 4. T H O M A S B. D R E W , JOHN W . H O O P E S , J R . , THEODORE V E R M E U L E N ,
editors, x + 374 ypages. Academic Press, Inc., I l l Fifth Ave., New York 3, N.Y. 1964. $14. Review articles selected for their interest and importance to chemical engineers, in the "engineering science" aspects of the field. Advances Vol. 9.
in
Cryogenic
Engineering.
K. D . T I M M E R H A U S ,
editor.
viii + 580 pages. Plenum Press, 227 West 17th St., New York, N.Y. 10011. 1964. $17.50. Proceedings of 9th National Conference, University of Colorado college of engineering and National Bureau of Standards, August 1963 at Boulder. Advances in Nuclear Science and Technology.
Vol. 2.
E R N E S T J. H E N L E Y ,
editor, x -f- 378 pages. Academic Press, Inc., I l l Fifth Ave., New York 3, N.Y. 1964. $14. Alicyclic Compounds.
DOUGLAS LLOYD.
ix + 171 pages. American Elsevier Publishing Co., Inc., 52 Vanderbilt Ave., New York 17, N.Y. 1964. $6.50. Aimed at the honours undergraduate or the nonspecialist postgraduate student, this book attempts to remedy neglect of a class of organic compounds seldom given more than a nod in standard texts. Chemical Equilibria and Beaction Bates at High Pressures. 2nd, rev. ed. M. G. GONIKBERG. 212 pages. Program for Scientific Translations, 14 Shammai St., P.O.B. 7145, Jerusalem, Israel. 1963. $8.00.
rev. ed. 468 pages.
of Cements.
H. F . W . TAYLOR, editor,
Vol 1. xi +
460
pages. Academic Press, Inc., I l l Fifth Ave., New York 3, N.Y. 1964. $14.
Chemistry of the calcium silicates and aluminates, both anhydrous and hydrated, described, as well as related compounds. Chemistry:
Achema Jahrbuch 1962/1964. Vols. I, II, III. cxxvi + 1870 pages. D E C H E M A , 6000 Frankfurt ( M a i n ) , Postfach 7746, Germany. 1964. Limited number, DM 25.
xiv +
W. A. Benjamin, Inc., 2465 Broadway, New York 25, N.Y. 1964. $9.75. Popular and widely used textbook, thoroughly revised.
A Physical Approach.
LIAM F . SHEEHAN.
Advances ment.
Sensitivity: 0.01 mg
Thermodynamics.
IRVING M. KLOTZ.
xi +
WIL-
601 pages.
Allyn and Bacon, Inc., 150 Tremont St., Boston, Mass. 1964. $8.75. Book is said to be, rather than a collection of facts, "a key to the acquisition, understanding, proper ordering, and effective use of facts." Chemical Principles. P. W. SELWOOD. x + 582 pages. Holt, Rinehart and Winston, Inc., 383 Madison Ave., New York, N.Y. 10017. 1964. $8.50. Written for first-year college chemistry student with at least two years of preparatory mathematics and one of chemistry. The Chemistry of Imperfect Crystals. F . A. KROGER, xvi -f 1039 pages. Interscience Publishers, Inc., 605 Third Ave., New York 16, N.Y. 1964. $33. Surveys problems met when preparing crystals with well defined physical properties, such as purification, crystal growth, doping, phase theory, and imperfection chemistry. Classical Thermodynamics of Non-Electrolyte Solutions. H. C. V A N NESS. viii + 1 6 6 pages. Macmillan Co., 60 Fifth Ave., New York 11, N.Y. 1964. $6.00. Thorough and unified treatment of classical thermodynamics pertaining to properties of vapor and liquid solutions of nonelectrolytes. Chemistry in Premixed Flames. C. P. FENIMORE. ix - j - 119 pages. Macmillan Co., 60 Fifth Ave., New York 11, N.Y. 1964. $5.00. Vol. 5 of Topic 19 (Gas Kinetics) in International Encyclopedia of Physical Chemistry and Chemical Physics. Clinical
Chemistry:
Technics.
Principles
RICHARD J.
HENRY,
and xxiv
-f 1128 pages. Hoeber Medical Division, Harper & Row, 49 East 33rd St., New York 16, N.Y. 1964. $24.50. College Chemistry. 3rd ed. LINUS PAULING, xxiv -f 832 pages. W . H. Freeman & Co., 660 Market St., San Francisco 4, Calif. 1964. $8.25. Comparative Biochemistry: A Comprehensive Treatise. Vol. VI. Cells and Organisms. MARCEL HOWARD S. MASON, editors,
FLORKIN, xix -j- 561
pages. Academic Press. Inc., I l l Fifth Ave., New York 3, N.Y. 1963. $20; subs., $18. Cosmetics and the Skin. F . V. W E L L S , I. I. LUBOWE. viii -f- 690 pages. Reinhold Publishing Co., 430 Park Ave., New York, N.Y. 10022. 1964. $22. Continued
on page 116
