!020794 PTO backs off from first-to-file harmonization The New York Times has an interesting article on the recent PTO decision to stick with "first-to-file" for the time being (NYT Feb 7, 1994, page D2). Two weeks ago, the PTO announced its decision, with Commerce Secretary Brown commenting "While other international negotiations continue, we will maintain our first-to-invent system, while keeping open the option of full patent harmonization in the future". Many people were disconcerted about the way the announcement was made, with no one, WIPO, Congress, and the patent legal community given any notice about the decision. In particular, Senator DeConcini who chairs the Senate subcommittee on Patents, Copyrights and Trademarks, said he was considering holding oversight hearings on the policy decision. In an interview, PTO Commissioner Lehman clarified the announcement. He said he was in favor harmonization, but that it encompassed more than just first to file. The United States' main problems lie with Japan, he said. "The Japanese system does not give timely exclusivity while Japanese inventors get timely exclusivity here". "That is a predicate to having any kind of harmonization." Also, problems with Europe are a factor. Complete protection for one patent in Europe (even with EPO) costs $88,000 (for filing fees in each country), while the total fee in the United States is $7500/$3750. "You don't ask a large segment of your user community to give up something they consider to be valuable unless you can show them that in exchange we will get an international system that gives them tangible and substantial benefits abroad", the Commissioner said. More controversial is Section 104 of the US patent law, which lets Americans receive patents based on date of invention, while restricting foreign inventors to receiving patents based on date of filing. Because of the recetn GATT treaty, this restriction will go away, and foreign inventors will receive patents based on date of invention. This should complicate interference proceedings, with foreigners being able to claim first-to-invent and initiating international law suits. Some think this new headache might cause small inventors to support first-to-file in the long run. Greg Aharonian Internet Patent News Service