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THE GATT-TRIPS AGREEMENT - WHAT IT IS AND HOW IT HASCHANGED THE PLAYING FIELD FOR ALL APPLICANTS FORUNITED STATES PATENTS

S. Peter Ludwig and Adda C. GogorisDarby & Darby PC, 805 Third Avenue, New York, New York 10022-7513, Telephone:212-527-7700, Internet Web Site: http://www.darbylaw.com

Abstract

Entry into force of the GATT-TRIPs agreement on intellectual property haschanged the rules for obtaining patents in the United States. These changes includea revision in the manner in which the term of U.S. patents is calculated as well as theintroduction of a simplified and low-cost provisional patent application. Theprovisional application can be used to secure an early invention date, withouttriggering the beginning of the patent term (which now commences on filing of a non-provisional U.S. patent application). The amended U.S. law also makes it possiblefor inventors based outside the U.S. to prove the date of invention by relying on actsof invention outside the territory of the United States. Since U.S. patents are awardedto the first party to invent the subject matter, this change is of great importance toboth U.S. and non-U.S. inventors and businesses. Non-U.S. based inventors inparticular must now maintain adequate invention records in the same way that U.S.inventors have been required to for more than 200 years.

INTRODUCTION

Patent practice in the United States was radically altered after the U.S. adoptedthe changes mandated by the GATT-TRIPs agreement

[1].

The

TRIPS

agreement wasan effort by members of GATT to establish minimum standards for the protection ofintellectual property. The

TRIPS

-prompted changes to the U.S. Patent Law weresigned into law on December 8, 1994, and are contained in the Uruguay RoundAgreements Act (URAA) [2].Most significantly the URAA revised the term of U.S. patents and affordedinventors working outside the U.S. rights similar to those given to inventors workingwithin the U.S. for establishing priority of invention.

are:

Title V of the URAA makes five significant changes to U.S. patent law. They• The term of a U.S. patent, previously 17 years from the issue date, has beenchanged to 20 years from the earliest U.S. filing date;• U.S. and foreign inventors can file a simplified, lower-cost provisionalapplication;• Patent term extensions are now available for up to five years if issuance of apatent is delayed by an interference proceeding, a government secrecy order, asuccessful appeal to the Board of Patent Appeals and Interferences, or theFederal Courts;• Inventors working outside the U.S. can refer to work carried out in any WorldTrade Organization (WTO) country in order to establish a date of invention;and,• The statutory definition of infringement has been broadened by giving U.S.patent holders the right to exclude others from importing infringing productsinto the U.S. and offering such products for sale in the U.S.Each of these changes is discussed below and accompanied by a brief outline on howeach can affect scientific and business operations.

CHANGE TO THE PATENT TERM

Since the inception of the U.S. Patent Law, the term of a U.S. patent has been17 years from the date the patent is granted. Thus, in the past, time spent prosecutinga U.S. patent application in the Patent and Trademark Office (USPTO) did not affectthe term of any patent that was ultimately granted. Under prior U.S. law an inventorcould (and often did) maintain an application in the USPTO for 10 or more yearsbefore the patent was granted, without compromising the full 17 year patent termstarting with the grant date. The era of the guaranteed 17 year U.S. patent termended with the enactment in the U.S. of the URAA. The patent provisions of theURAA became effective on June 8, 1995 [3].Article 33 of the TRIPs agreement provides for a patent term of 20 yearsbeginning on the filing date of the earliest patent application for the invention [4].

17The URAA changes the term of U.S. patents by amending the U.S. Patent Law (35U.S.C. § 154) to provide for a patent term of 20 years that is calculated from the dateon which the application was filed in the USPTO. Determination of the effectivefiling date of a U.S. patent application is critical for measuring the date on which the20 year period commences. For original U.S. patent applications filed under 35U.S.C. §111(a), the patent term ends 20 years from the date on which the applicationis filed in the USPTO. For continuing or divisional applications (i.e. those claimingthe priority of an earlier co-pending U.S. patent application), the patent term ends 20years from the filing date of the first U.S. or international application from whichpriority is claimed under 35 U.S.C. §120, 121, or 365(c) [5]. The term of a patentissuing on a continuing application is now measured from the filing date of the earliestapplication in the chain leading up to the patent grant, regardless of what type ofcontinuing application is filed (continuation, continuation-in-part, or divisional) [6].The URAA also includes transitional provisions. Thus, for U.S. patents issuedbefore June 8, 1995, or patents granted on U.S. patent applications on file prior toJune 8, 1995, the patent term is the longer of 17 years from the grant date, or 20years from the earliest claimed U.S. filing date.In order to determine the effective life of a U.S. patent, it is now necessary toascertain the earliest filing date (application date) which the patent claims. Theclaimed initial filing date must be checked to determine if it is before or after June8, 1995. With this information in hand, the expiration date of the patent can beascertained from the face of the patent document, but only in the absence of certainproceedings such as an interference or a successful appeal during the pendency of theapplication. If there was such a proceeding, it or a portion of it may have tolled therunning of the 20 year term for up to five years. Thus, determining the expirationdate of a patent can be quite complex.The following examples illustrate how the new provisions operate. First, forpatents or patent applications on file prior to June 8, 1995 [7].• Patent application A is filed on June 10, 1976 and issues on June 10, 1978.Since the earliest application on which the patent was granted was filed priorto June 8, 1995, the patent term is computed using the transitional provisionsof the URAA. Patent A expires on June 10, 1996, 20 years from the filingdate.The guaranteed patent term of 17 years from the date of issue (June 10,1995) is shorter than the term computed by reference to the filing date.