Intellectual Property Newsletter

The Effect of GATT on U.S. Patent Law

After World War II, there were various proposals for furthering international economic cooperation. One proposal was the General Agreement on Tariffs and Trade (GATT), a wide-ranging agreement dealing with issues related to international trade and economics. A form of GATT was provisionally adopted in 1947 by 23 countries and subsequently modified at multilateral meetings referred to as “rounds.”

At one “round” in Uruguay in 1986, GATT was revised, creating the World Trade Organization (WTO) and adding a section entitled “Trade Related Aspects of Intellectual Property Rights.” This revised GATT was ratified by the U.S. Congress and implementing legislation was adopted, taking effect June 8, 1995. It has resulted in a number of changes in U.S. patent laws.

Length of Patent Terms

In accordance with the requirements of the revised GATT, the effective term of a U.S. patent had to be modified. Prior to the enactment of the revised GATT, the term for a U.S. patent was 17 years from the date the patent was issued. In most cases, U.S. patents granted after June 8, 1995 are effective for a period of 20 years from the date of the first filing.

There is a possibility that the useful life of the patent may actually be reduced, if the application and approval process takes more than three years. An invention has some protection during the patent process, but the protection is limited compared to the protection after the patent has been granted. The patent term may be extended for a maximum of five years under certain circumstances, when issuance of the patent has been delayed.

Provisional Patent Applications

Prompted by the revised GATT, a new “provisional patent application” was created, allowing protection for an invention for up to a year prior to a patent application. An international convention regarding patents requires that the term of patents granted in different countries for the same invention be independent of each other. According to the U.S. Patent and Trademark Office (USPTO), this prevents measuring the term of a U.S. patent from the time a patent for the same invention was applied for in a foreign country. However, the benefits of the foreign filing may be claimed in the U.S., effectively extending the term of the patent beyond the 20 years for the U.S. patent.

An applicant for a provisional patent need not be a U.S. citizen or resident, and the application does not even have to be in English (although a translation must eventually be provided to the USPTO). The provisional patent gives an earlier filing date for patent protection purposes, creating some protection from the date of its filing, but it does not begin the 20-year patent term. Provisional patent applications require:

  • A cover sheet that identifies the application as a provisional one;
  • A “specification” section, containing a description and details about the invention, as required by U.S. patent law;
  • Any drawings necessary to understand the invention; and
  • A filing fee that is substantially less than the fee for a regular patent application. This fee is not credited if a formal application for a patent is filed.

A provisional patent application is automatically considered abandoned one year after its filing date. The inventor must take action to file a non-provisional patent application within this time period to obtain priority protection of the provisional application, but the patent’s life may thus be extended in some respects by one year.

Date of Invention in Foreign Countries

Under the revised GATT, as implemented in U.S. law, activities of an inventor in one of the over 100 countries that are members of the WTO (signatories of the revised GATT) are treated in exactly the same manner as the inventor’s activities in the U.S. for patent purposes. Members of the North American Free Trade Agreement (NAFTA), Canada and Mexico already had similar rights. This allows inventors to establish the date of their inventions based on activities outside of the United States, whereas previous U.S. law only recognized actions in the U.S. as a basis for granting a U.S. patent.

U.S. patent law and regulations were also revised to guard against possible difficulties in authenticating claims of activities outside the U.S. The applicant generally has the burden of establishing the activity leading up to the invention. That may require independent verification of actions outside the U.S. If this is done by statements from third parties, such statements may have to be sworn under penalty of perjury or the equivalent under foreign law, with penalties similar to those for committing perjury in the U.S.

Infringement of Patents

Another change in U.S. law prompted by the revised GATT, affects acts that are considered infringement of a patent. Under the new provisions, an offer for sale in the U.S. or importation of a product that infringes on a patent may constitute infringement, regardless of whether or not a sale actually occurs.

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