Posted on 01 June 2019

Interview on International Patent Subjects

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with James Babineau, Patent Lawyer at Fish & Richardson

By Bodo Arlt, Editor BP


Bodo Arlt: Where do we see differentiation between Europe and America in patent law?

James Babineau: One very significant difference is that the US grants a patent to the first person to invent, not necessarily to the inventor who files the first patent application. If two people independently invent the same thing and file separate patent application, the US patent office will conduct an investigation (called an interference) to determine who invented first. The investigation can be very expensive for both inventors, and focuses on original documentation of the conception of the invention and the diligence taken by each inventor between their conception and their first practice of the invention. So in the US the inventor who files the second patent application may be the one who gets the patent. In Europe, it is critical to be the first inventor to file a sufficient patent application. In both systems there is a clear advantage to filing a patent application as soon as reasonably possible. But because of US interference law, it is also important that even European inventors keep good records of the early development of inventions they intend to protect in the US. We recommend that an inventor explain their invention in an early writing, preferably in a bound notebook and by hand, with the signatures also of one or two witnesses who understand the invention. Another big difference between US and European patent law is how “prior art” is considered. In the US we have a much more complicated system of determining whether an earlier publication, for example, will count against the inventor in the examining of the patent application. For example, if a European inventor publicly discloses his invention one day in Germany, before filing any patent application, European patent law may conclude that he has lost his right to European patent protection. But he may still be able to seek a patent in the US, if he files within a certain period of time. Most European patent attorneys know this, and will explain to European inventors when they may still have a right to US patent protection, but not all European attorneys do. As another example, a secret offer to sell an example of the invention does not itself typically prevent an inventor from later filing a patent application and obtaining a European patent. But such a secret sale offer will itself preclude a US patent under certain conditions.

Bodo Arlt: How do you see a trend in patent laws more the way to become American or more European position?

James Babineau: In my opinion, the trend in patent laws everywhere is to become more European. This began happening in the 1970’s, when most industrialized countries came together and agreed on an international treaty (the Patent Cooperation Treaty or PCT) that would govern the processing of an international search and non-binding examination of a patent application. They agreed to adopt essentially the EP approach in the PCT, and this has helped to spread the EP approach around the world, particularly to countries without their own established patent examination offices and procedures. The differences in how prior art is considered and differences in the standards of examination are still substantive barriers to harmonization of patent laws, and we are still a long way from establishing an international patent system. But in the US there are active attempts to change the US patent law to a first-to-file system, rather than a first-to-invent system, and this will be a large step forward.

BodoArlt: What does it mean for the inventor to file at the right time?

James Babineau: An inventor should foremost consider the rules in the major countries where he would like to protect his invention. If he files too late, some intervening event may prevent a patent in some places. In Europe, for example, another inventor may file her application first, or the invention may be accidentally disclosed. But on the other hand, it is equally important to think of the commercial situation. Patent protection is of limited duration. In certain industries like pharmaceuticals, it may take years to bring a new invention to market, and filing for patent protection early may shorten the time of effective market protection. Also, in most cases a patent application will publish 18 months from the time it is filed – meaning that the invention will then become known and the industry will begin to design alternatives or improvements. Optimally, patent applications should be filed 18 months before the invention will be put to use publicly. But delaying the filing to that time does carry the risks that I have mentioned. In short, trying to time a patent filing is like trying to time investments. Often the safest course is to file as soon as enough information is known to be able to make the invention work.

Bodo Arlt: What records are important to have on hand?

James Babineau: I have already mentioned that an inventor should keep good records of the conception of her idea and its early development. This includes original test data, for example, showing that the invention worked for its intended purpose. What can also be important under US law is evidence of the acknowledgement by the inventor that the invention worked. Inventors often are so excited at this time that they forget to write anything down, and this can hurt them in a US patent interference. If an inventor believes that she is ready to work with a patent attorney to prepare and file a patent application, the process is generally much more efficient and the likelihood of protection greatest when the inventor comes to the patent attorney with a very good description of her invention, as well as examples of what she thinks is the closest prior art, which could be available products, newspaper articles, or even earlier patents. It does no good to hide prior art from the attorney in order to obtain a patent. In the US, there is an affirmative duty to tell the patent office everything you know about relevant prior art.

Bodo Arlt: What do you think about the formal opposition period in Europe?

James Babineau: Personally, I think that it is a very good thing, and that it helps to rectify mistakes by the patent office. As you probably know, we have never had an opposition period in the US, but that is likely to change soon, perhaps even this year. The only disagreement in the US Congress on this point right now is whether to have only one opposition period immediately following grant, as in Europe, or to also have a second opposition period, starting as soon as the patent owner tries to enforce the patent. This second opposition period would be similar, in many respects, to a European patent nullity proceeding, and would also proceed before the US patent office rather than in a court of law. Introduction of any opposition period in US patent law will result in big changes in the way patents are enforced.

Bodo Arlt: What do you think about big companies that are using patent arsenals to keep the competition off the scene?

James Babineau: I think that, in the big picture, it is hard to say whether the compilation of large patent portfolios by major companies is a good or a bad thing, in terms of the global economy. There are those who believe that such portfolios are stifling innovation and development, while there are others who believe that the ‘patent wars’ we see between some companies, like real wars, spur innovation and technological advance. Certainly we see from history that the absence of patent protection leads to the hiding of developments as trade secrets, and the slowing of global technology development. In the US and in Europe we have anti-monopoly laws that prevent one company from completely taking over a market. These laws look far beyond patent portfolios, to actual market forces, and are thus much more effective at preventing market abuses – whether or not such abuses are aided by patents. Ultimately, one must remember that the only real value in any patent is to prevent competition for a limited time. Patent laws, whether in the US or Europe, extend the promise of a temporary monopoly in order to obtain a public disclosure of the invention and how to make it work. The value of this exchange cannot be overestimated. In my opinion, it has had at least as significant an effect on the global economy as the development of banking.

Bodo Arlt: If the patent is not made to use by the patent holder should it get free for public usage?

James Babineau: In patent law this is called a mandatory license. Many mandatory licensing systems have been proposed, but they are not widespread across developed nations, in part because it is difficult to implement fairly. In principle, it seems like a good idea: that an inventor should get a reasonable time to put her invention to use, or otherwise accept a reasonable license arrangement from someone who will put it to use. The difficulty is in determining what is ‘reasonable’, which differs substantially across industries and markets. How long should it take to develop and get approval for a new drug, for example? Who sets the ‘reasonable’ terms of the license? Anyone who has read a patent license agreement will see that there are many terms to such a license, beyond simply a royalty rate. Almost every serious proposal for a mandatory license system suggests at least some reasonable compensation to the inventor who has not been able to put his invention to practice. The only ‘free’ mandatory licenses I have heard suggested are in dire situations – such as when a government threatens to allow the unlicensed production and distribution of a patented drug, for example. But in those situations the patent holder is generally practicing the invention, and it is not really a license that is mandated but the government simply chooses not to allow the patent to be enforced in its courts. Generally, market forces work. It is irrational for a corporation to build and maintain a large number of valuable patents that they have no plans to use. If there is truly a need for the patented technology, someone will put it to use, either the patent holder or by someone offering to take an expensive license.

Bodo Arlt: What do you think about the perpetual motion inventors? J

James Babineau: I’m not sure how the European patent office handles these, but the US patent office has a special group of examiners and examination procedures for patent applications claiming a device that appears to defy physical laws. For example, this is the only technical field for which, under US patent law, a working model is required. The US patent office will even send the examiner to the model for inspection if it is too large to bring to Washington D.C. As you can imagine, very few patents are issued for such inventions. Of course, every patent attorney dreams of being involved in helping to protect the first such device proven to actually work, just as every inventor dreams of inventing it. It would certainly change the world. In reality, most patent attorneys know to be very sceptical of such machines, and I know many who refuse to work with inventors who claim to have one.

Bodo Arlt: What do you think about patents that have a strong influence on our environment?

James Babineau: Certain types of these inventions, such as those that relate to renewable energy, the US patent office will try to examine faster than other types, in order to not delay their commercialization. As a society, we should want our governments to do whatever they can to promote the development and commercialization of inventions that help the environment, that promise cleaner, less expensive energy, that fight disease and hunger, and that promote the welfare of mankind and future generations. We all agree about this. The disagreement is over how this can be accomplished. If we were not concerned at all about future innovation, then it would clearly be best to revoke all patents – essentially, to refuse to allow any inventor to keep anyone from using his invention, to put all of today’s best ideas in the public domain. But then where would tomorrow’s ideas go? Would the next inventor disclose her idea right away, or would she rather keep her recipes secret and the market to herself? It is not being discussed in most of the public patent debates, but some of the tension we feel with the patent system at present is because the speed of development (indeed, the speed of just about everything) is accelerating so much. Most patent systems grant protection for 20 years, more or less, just the same as they did 100 years ago when the market life of an idea was much longer and 20 years didn’t seem like such a bad compromise. In today’s high-tech industries, 20 years is an eternity! Therefore, the patent term seems burdensome, excessive, stifling. Perhaps we should be discussing lowering the patent term in such technology areas, such as to 10 or 15 years.

Bodo Arlt: Should these patents in environmental areas have a government sponsoring of the inventor so that all can use it to our best?

James Babineau: I think you’re asking whether the government should adopt mandatory licensing for such inventions, or otherwise compensate the inventor and make the invention publicly available. The US government does retain licensing rights in inventions developed with government research money, although they are rarely invoked. But it is not easy to see how to reduce or eliminate the patent right without reducing the incentive to invent. You should bear in mind that often early disclosure of a first idea, through publication of a patent application, will immediately prompt development of further patentable improvements that can be bartered with the original patent owner. In this way, commercialization of both the core idea and the improvements is promoted.

Bodo Arlt: Medical innovation in the past was seen so by some inventors?

James Babineau: Different types of medical innovations have been treated differently under various patent systems. For example, in the US a method of medical treatment is patentable, while in Europe the actual method employed by a physician on a patient is not patentable. Yet innovation in this field continues in the European medical device community, in part because Europe does allow the patenting of the devices, even if not the methods of their use. As expensive as medical treatment is some times, it certainly has advanced substantially in the last century, in part because of patent protection.

Bodo Arlt: The IT industry has a different approach?

James Babineau: The information and electronics industries are perhaps moving too fast for the patent system to keep up with them. In many countries it can take 3-5 years to get a patent that can be used against someone who copies your invention and competes with you, and in many cases that is longer than the expected life of the invention before it is displaced by yet another approach. Even though each country has only one patent system, it serves many different industries and it is therefore hard to give clear advice that should be followed by all. My best suggestion is to seek advice from a patent attorney who knows your industry as well as your technology, and to ask about alternatives to patent protection. Patent protection is not always the best answer.

Bodo Arlt: When will the next big change in patent laws finally happen?

James Babineau: In the US, the biggest change in the patent laws in over 50 years may be happening right now. It is a very exciting time for a US patent attorney. Europe just completed a much less radical revision of its patent laws, by comparison. Beyond these, it may be many years before the next big change. But that is mere speculation, of course.

Bodo Arlt: Thank you for your time and we look forward to a successful future.


James Babineau

James Babineau

University of New Mexico B.S. Mechanical Engineering Tau Beta Pi University of Michigan M.S. Mechanical Engineering Harvard Law School J.D. 2000

Professional experience:
James Babineau is a Principal in the Austin office of Fish & Richardson P.C. He has previously worked as an Engineering Manager for Applied Research Associates (1993-1996) and a Project Engineer for General Motors Corporation (1986-1993). His duties at GMC included design and development of steering and suspension systems.

Bar admissions:
Admitted to the bar in Texas and Massachusetts. Registered to practice before the United States Patent & Trademark Office.

Additional information:
Mr. Babineau is a former Professional Engineer and engineering instructor. He is the named inventor on various U.S. and foreign patents relating to automotive systems, materials processing and subsurface geotechnical equipment. He frequently writes and lectures on foreign patent practice and strategy and is conversant in Spanish. He is also a member of AIPLA and BPLA.



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