According to United States patent law, and with reference to designs
implemented within the U.S., laboratory notebooks written prior to patent
application are valid documents for the establishment of a date of invention.
Prior law, however, dictated that non-U.S. prefiling work was unacceptable.
The NAFTA agreement changed this stipulation and the GATT (General Agreement on Trade and Tariffs) treaty further expanded the change.
Change allows foreign designs priority. Inventors can now prove dates of invention by acts done anywhere within countries contracted in the GATT treaty, providing they have properly documented, proven, and admitted their work and dates of implementation into evidence in a U.S. tribunal.
The most significant effect of this change is that a design invented in a foreign country (one which the GATT treaty specifies, that is) is on equal footing with a design invented in a U.S. laboratory with regards to date of invention and thus priority.
While this impact may not sound significant, it represents a major change in the U.S. practice of determining who is the first inventor of a design. The documentations may arise in the U.S. Patent and Trademark Office or in a U.S. Court to determine what may constitute prior art (prior relevant work by another may also enter the picture).
One problem, however, is the availability and quality of non-U.S. proof. In other words, under what conditions will non-U.S. evidence be available to a U.S. tribunal and under what conditions will that tribunal accept the evidence? This question suggests trade-related and sovereignty problems.
Questions to consider. And what is the implication if the evidence is not admissable? Will the U.S. tribunal merely refuse to admit the evidence?
This and many other questions will arise regarding the prior art effect of non-U.S. evidence, as well as case law developed in the U.S. specifying when and under what circumstances non-U.S. activities are to be given prior effect. The prior case law is principally related to printed publications and patents printed in a foreign country. Patent applications that had been filed were to be accorded filing rights limited to the application's filing date and prior art rights as of the publication date.
This change by GATT could significantly impact patent rights by:
Increasing the value and impact of non-U.S. work.
So, GATT has expanded patent rights for non-U.S. entities. For U.S. entities, GATT requires greater diligence and vigilance to secure rights under the U.S. Patent Laws and to protect against non-U.S. developments.
The patent office is in the process of developing rules and regulations to govern such evidence. In patent parlance this issue deals with the acceptability of a Rule 131 affidavit based on work done outside the U.S. but in a GATT or NAFTA country.
What can a United States entity do to maximize its potential patent rights under GATT invention provisions?
A: The most effective act is to ensure that procedures are in place to fully and legally document an invention's conception and reduction-to-practice. For example, two people should periodically read and witness laboratory notebooks. But there are secondary actions that also must be considered. They include publication of the invention promptly in an attempt to predate any other work--but exercise caution to assure protection for one's self.
What is the probability that work by a non-U.S. entity will effectively deny a U.S. entity patent rights?
A: By law, if the proofs of the non-U.S. entity are proper and admissable, then the non-U.S. entity should be successful and on equal footing with a U.S. entity. But this is if local government permits access to relevant data and that the U.S. tribunal ultimately accepts the proof.
Is this matter closed?
A: The GATT portion of any question is closed but there could be a great deal of interpretation in the implementation of the provisions and the impact of the changes on U.S. companies.
What should a non-U.S. entity do to maximize its patent-right position?
A: Keep good records, recognize the expense of the U.S. discovery, determine if there are local limits in provision of information, and be prepared to introduce information to obtain patent rights.