GATT's Effects on Patents

Introduction.

During November and December of 1994, the General Agreement on Tariffs and Trade [GATT] was the subject of an intense debate in both houses of the United States Congress. Implementation legislation was passed by Congress, and signed by President Clinton, in early December 1994. GATT affects a broad range of trade- and tariff-related issues, not the least of which is intellectual property. The following briefly describes the major effects of the legislation. However, the overall impact of GATT will also be measured by rules adopted by commissions and regulatory agencies, both within the United States and other countries. The actual text is available.

Table of Contents.

  1. Inventorship and "Discovery".

  2. Provisional Patent Applications.

  3. 20-year Patent Term.

  4. Transition from the 17-year term (starting with issuance) to the 20-year term (starting with first application).

  5. Possible Expansion of Patent Term.

  6. Broader Definition of Patent Infringement.

  7. Revised Patent Prosecution Rules.

  8. Revised Patent Interference Rules.

  9. Patent Strategy.

1. Inventorship and "Discovery".

GATT has changed the definition of inventorship. Previously, the date of inventorship (for the purposes of United States patent law) related to inventive activities within the United States. The United States continues to be a "first-to-invent" country. However, under GATT, the date of inventorship will be related to inventive activities within the United States and/or any of the more than one hundred other GATT (later, World Trade Organization [WTO] countries).

In interference proceedings, inventors could be challenged on the basis of activities in any GATT country. Coupled with the effect of the new definition of the duration of a patent (discussed below), this means that long interference procedures will unfavorably impact patent rights by effectively reducing the time between their issuance and their expiration.

In addition, the legislation enabling GATT is styled along the lines of the generally more extensive type of discovery permitted in the United States. This form of discovery can thus be applied to foreign United States patent applicants who typically do not have to face any type of discovery. Consequently, this area of the law will potentially generate many situations requiring the rectification of international laws.

2. Provisional Patent Applications.

A "provisional" patent application is a new patent law feature added by GATT. The provisional patent application will be filed without any claims, and offers the advantage of effectively adding up to one additional year to the 20-year patent term otherwise provided by GATT. This new feature delays the start of the patent term's 20-year-term "clock" by one year. The filing fee of the provisional patent application is evidently planned to be one-fifth of the filing fee of the counterpart patent application. Because there is no need for claims, a provisional patent application should also be somewhat easier to prepare than is a patent application.

3. 20-year Patent Term.

The 20-year term of a patent provided for in GATT begins from the first filing date of the patent's first ancestor. However, there are special term extensions that may apply under relatively unusual circumstances, beginning on June 8, 1995.

This new term will apply to continuation applications, divisional applications and some PCT applications. Therefore, designating an application as a continuation application could unnecessarily limit the ultimate term of the resulting patent. Caution and careful consideration of the effects are strongly recommended when deciding the form of the patent application (if there are options available). Also, those having portfolios of patent applications should review them to determine whether continuation (including possible divisional) applications should be filed before June 8, 1995.

4. Transition from the 17-year term (starting with issuance) to the 20-year term (starting with first application).

All patents issuing on patent applications filed before June 8, 1995 and all current patents in force on June 8, 1995, will be subject to a special transition provision. This provision provides for an automatically-given extended term that expires at the later of the end of the 17-years-from-issue term and the end of the 20-years-from-earliest-filing term.

5. Possible Expansion of Patent Term.

The new 20 year patent term provided by GATT can be extended for a total of up to five years for the delay incurred if the application is subjected to a) an interference proceeding, b) a secrecy order, or c) a successful appeal to the Board of Patent Appeals and Interferences or to a Federal Court.

6. Broader Definition of Patent Infringement.

GATT widens the definition of patent infringement to include "offering to sell" and "importing into the United States." The offering-to-sell provision allows the patent holder to prevent the sale of something that is within the claims of the patent. The importing-into-the-US provision expands the present law, which applies to importation of something that is made by a process that is the subject of a claim in a US patent.

7. Revised Patent Prosecution Rules.

An application whose earliest effective United States filing date precedes June 9, 1993 will be allowed the entry of an after-final amendment as a matter of right (for the payment of a fee equal to the base filing fee). This alleviates the PTO of the need to process a continuation application. If the examiner's action on this first after-final amendment is another final rejection, the application can be given a second after-final amendment upon another payment of an amount equal to the base filing fee.

In addition, the PTO is presently proposing to allow the prosecution of more than one invention upon payment of a $730 fee for each invention, to pay for the costs of the additional searches.

The extension of the patent term for up to five years is described above.

8. Revised Patent Interference Rules.

In US patent interferences, GATT essentially eliminates the "in a foreign country" exception to establishing a date of invention.

9. Patent Strategy.

As with most changes, the implementation of GATT offers many opportunities, both advantageous and disadvantageous. Aside from what is generally described above, little can be said about optimal strategies without a full review of a patent- or patent application-holder's portfolio or a potential patent applicant's plans as well as the latest developments in the GATT community and the implemented Patent and Trademark Office rules. Consultation with a United States patent practitioner by early May, 1995 is strongly recommended.

Please send any email requests concerning patent aspects of GATT not dealt with above to: patents@patent-it.com.


Maintained by Robert M. Storwick. Copyright © 1994-1994 Robert M. Storwick. All Rights Reserved.

Last updated on 20 October 1995.