GATT patent strategies

The United States Patent Office grants patent applicants a 17-year monopoly once their patent issues, regardless of how long the application takes to prosecute. The General Agreement on Tariffs and Trade (GATT) will change the patent period for utility patents to 20 years from the date of filing, regardless of when the patent issues.

Despite some flexibility in the agreement, most applicants will end up with a shorter period of patent protection. For an additional fee, a continuation application essentially buys you more time to make your case to the patent examiner. When a continuation application is filed under the new rules, the 20-year period will begin at the filing date of the parent case. Thus applicants will argue to the patent office during the period of their own patent, which should discourage many from pursuing this option.

Since filing a continuation application will reduce the patent period while an appeal will not, more appeals will be filed. Currently, the Board of Appeals and Interferences takes more than a year to hear an appeal, which often costs more than a refiling and amendment. From a patent-office standpoint, using an appeal instead of refiling misuses resources.

Exceptions to the rule. For some patent applications in some disciplines, allow-ance and issuance of the patent can be obtained within a year of filing, which would give the patentee a 19-year patent period. Filing a petition to "make special" can speed up the process. If granted, it lets the case be examined out of order-to go to the head of the line.

To file a make-special application, specific reasons must be given. Some reasons require a petition fee, all require paper work. Faced with a limited patent period, more applicants will probably apply for make-special petitions, assuming this remains an option.

Ramifications. Before GATT provisions take effect, the inventor may file the make special petition and have the patent examined and issued as soon as possible. Or the inventor can take advantage of the delays and have the patent issued later. Usually, inventors choose the first tactic when they need protection from infringers, who easily enter a rapidly increasing market. The latter tactic suits applicants unsure about the patent's economic viability; if the market demands it, the inventor can file a make-special petition to speed up the start of examination. With GATT, everyone will want to speed the processing of their patents to preserve more of their patent period, and will likely file petitions to make special.

Assuming the patent office avoids hiring new staff, increased filings should lengthen waiting periods for those who elect not to file the petition. The 20-year-from-filing rule may also diminish the practical benefits of the continuation-in-part application, which adds new material to the parent case. The new rules effectively restrict the continuation-in-part application to the same terms as continuation applications.

The 20-year patent-term limitation will restrict inventors' patent strategy options and choices for incorporating inventive improvements into a final patent.

Curtis Harrington, adjunct professor at the University of Phoenix in Southern California, holds an M.S. in both Chemical and Electrical Engineering, an M.B.A., and a J.D.

Legal Questions

Q: How do the GATT provisions differ from the changes proposed in patent harmonization?

A: Patent harmonization would have changed a series of rules. These changes would bring U.S. patent practice into line with patent practices in Japan and Europe. In patent harmonization, patent term rules would change from 17 years after issuance to 20 years from filing and give the U.S. a first-to-file system, just as the GATT treaty provides. However, patent harmonization would also lay open new patent applications 18 months after filing, and institute a special fee to guarantee that the patent will be examined within 18 months of filing. GATT, on the other hand, changed the term to 20 years from filing without supporting provisions.

Q: Is the U.S. Patent Office ready for the changes under GATT?

A: I don't believe the patent office is ready for the changes GATT will require. As the adjacent discussion explains, the patent-office system will probably receive more requests from inventors to have their applications examined early. The increased traffic ought to cause some problems because the provision for early examination, proposed under harmonization rules, is absent from GATT.

Q The GATT treaty will change the U.S. patent procedure. However, is a treaty the best way to effect such change?

A: No. Forcing changes to our patent system through foreign treaties is harmful and inefficient. U.S. laws should be drafted and passed, with due consideration to our internal patent system needs as well as international harmonization needs. Forcing changes by treaty, with minimal patent office input, is foolish.