The following article appears in the journal JOM, 47 (5) (1995), p. 79. JOM is a publication of The Minerals, Metals & Materials Society

GATT Brings Major Changes in U.S. Patent Law

On December 8, 1994, U.S. President Bill Clinton signed into law the General Agreement on Tariffs and Trade (GATT). This legislation makes significant changes to U.S. patent law of which all users of the patent system should be aware.

Most of the provisions of the GATT legislation will take effect on January 1, 1996; however, a very significant part of the legislation regarding patent law changes will take effect six months after the bill was signed—on June 8, 1995. On that date, there will be a change in a patent's term of protection and the establishment of a domestic priority document designated as a provisional application. A third major change regarding the treatment of inventive activity outside of the United States will go into effect January 1, 1996.

The current term of protection on a U.S. patent is 17 years from the date when a patent is issued. Therefore, a patent application that was filed on October 1, 1992, and was issued as a patent on October 1, 1994, would be enforceable (subject to the payment of maintenance fees) until October 1, 2011. Under the new law, a patent application filed after June 8, 1995, will have a term of protection that begins on the date of the grant of the patent and ends on a date 20 years after the filing date of the application. For example, a patent application that is filed on August 1, 1995, and issued on August 1, 1997, will have a term of protection starting on August 1, 1997, and ending on August 1, 2015.

Another change regarding the term of protection is that the 20-year patent term may be extended for a maximum of five years for delays in the issuance of patents caused by patent interferences, secrecy orders, and/or successful appeals of the patent examiner's refusal to grant the patent. Patent interferences are adversary proceedings conducted in the patent and trademark office between two or more inventors claiming the same invention. Those proceedings may sometimes take several years. Because the term of protection will be measured from the date of filing as opposed to the date of grant, the winner of the patent interference may lose a substantial amount of the term of protection because of the long length of the interference hearings. Similarly, secrecy orders, which are applicable to inventions that involve aspects of national security, or successful appeals to the Board of Patent Appeals in the U.S. Patent and Trademark Office or to the federal courts of a patent examiner's refusal to grant a patent may also delay the issuance of a patent. The extension provisions in the GATT legislation will cover all of these situations.

The second major change to U.S. patent law under the GATT legislation is the establishment of a domestic priority system. A document titled a provisional application can, after June 8, 1995, be filed with the U.S. Patent and Trademark Office to establish an early priority date for an invention without the need of filing a regular patent application.

A provisional application only requires the filing of a specification that complies with the standards of regular patent applications, and with drawings, where the drawings are necessary for the understanding of the invention. There is no need to file patent claims, as with a regular national patent application. The provisional application, however, must be made in the name of the inventor or inventors and must include a statement somewhere in the application that identifies it as a provisional application and not a regular national patent application. A filing fee, currently substantially less than fees for filing a regular national patent application, must also be submitted.

Once a provisional application has been filed, the inventor or inventors have one year to file a regular national patent application in order to claim the benefit of the early filing date of the provisional application. The provisional application will be abandoned one year after its filing date. Similarly, applications outside of the United States must also be filed within one year after the filing of the provisional application in order to claim the benefit offered by the provisional application.

The provisional application has several benefits. First, it enables one to establish an early effective filing date for a regular national application filed later. This early filing date can be important in avoiding prior art and in prevailing in interference proceedings. Second, the filing of the provisional application does not trigger the start of the 20-year patent term. In this way, the provisional application provides a free year for efforts to further develop, market, manufacture, or license the invention. Third, because the requirements for filing a provisional application are not as rigorous as the requirements for filing a regular national patent application, the provisional application can be filed more quickly and inexpensively.

The last major change in patent law brought about by the GATT legislation affects the way acts of invention outside of the United States are treated. Under U.S. patent law before the GATT, such acts of invention were not considered in establishing a date of invention. Under the GATT legislation, however, they will now be considered in establishing a date of invention. This provision will have a major effect in interference proceedings. In an interference proceeding, the first to invent the subject matter claimed will receive the patent. Under pre-GATT law, if an inventor in France, for example, made an invention and another inventor subsequently made the same invention in the United States, the inventor making the invention in the United States would receive the patent, assuming all factors regarding the acts of invention were equal. Under post-GATT law, the result would be reversed.