grant opposition and serial consideration of oppositions in order to reduce the pendency period; (3) adopt a broader doctrine of equivalents; and (4) adopt an effective discovery process, particularly relevant to litigation over process patents.
A wide range of specific policy options was discussed, including options for the U.S. government and for corporations and other organizations (such as universities and research institutions).
The U.S. government has played and will continue to play an important role in IPR through legislation, through negotiations with Japan, and through judicial processes and regulatory reviews. Based on recent experience, legislation has proven effective in addressing specific obstacles faced by U.S. industry in protecting IPR. The 1988 trade act, for example, makes it easier for a U.S. company to sue for infringements of process patents. Suits can be brought against not only the manufacturing company that infringes on the process patent but also the importing company and the user. The provision of copyright protection for software is another example of a significant legal change.
In a number of cases where U.S. companies have brought Japan-related patent problems to the U.S. government, these companies have received strong support in making their grievances known. In some cases, this has resulted in changes in behavior on the part of Japanese companies or the Japanese government. One message that came through quite clearly was that if the United States makes changes in its system, promoting harmonization of international policies (such as adoption of a first-to-file system), the United States should get something significant in return. In preparing for such negotiations, the U.S team needs to analyze carefully what each country will gain and lose from prospective changes.
Several desirable changes in the Japanese system may not be as difficult to bring about as is often assumed. Although workshop participants disagreed on the importance of Japan switching from its unique system of pregrant opposition to a postgrant system as is practiced elsewhere, this is an example of an area where Japan may be willing to adjust its policies. Other changes in the Japanese system that might be pursued in negotiations include increasing the number of examiners; eliminating serial consideration of oppositions as well as pregrant opposition; making it possible to reissue patents and expand claims; adopting a broader doctrine of equivalents; expanding discovery rights on process patents; expediting judicial review; gaining broader protection for patents; adopting a one-year grace period for activities of the inventor and his or her employer prior to filing; and (perhaps the change that would have the broadest and most immediate impact) allowing foreign language filings as is the practice in the United