- The Patent Provisions in the GATT implementing legislation generally are in three categories:
1. Change in the Term of Patents--effective June 8, 1995
2. Provisional Applications--effective June 8, 1995
3. Proof of Invention in Foreign Countries--effective on or after January 1, 1996.
Twenty-Year Term
Any patent issued on an application filed on or after June 8, 1995 will have a term which begins on the date the patent issues and ends 20 years from the earliest U.S. filing date claimed by the patent. Therefore, any patent issuing on a divisional, continuation or continuation-in-part (CIP) application filed after June 7, 1995 will have its 20 year term measured from the U.S. filing date of the parent application or any earlier grandparent, etc. filing date.
This is in contrast to the 17 year term measured from the patent issue date which has been the law for nearly two centuries. The change does not apply to design patents which will continue to have a 14-year term.
Transition Provision--Seventeen or Twenty-Year Term
Instead of a 20-year term, a transition provision in the new law provides for a patent term which is the longer of either 17 years from issue or 20 years from the earliest U.S. filing date. That provision applies to patents issuing on applications filed before June 8, 1995 and also to all patents still in force on June 8, 1995.
Since U.S. patents indicate on their face not only their issue date but also the filing date of each prior U.S. application for which it has benefit, calculation of whether the 17-year term or 20-year term controls the expiration date should be straightforward. Hopefully, the PTO will start printing expiration dates on the face of patents.
Around 90% of the patents which have issued in recent years have been issued in less than three years. Consequently, most patents which are still in force on June 8, 1995 will have their term extended. This extension will be automatic--no application, petition or the like will be necessary to effect the extension, it will be by operation of the law. The possible extension of patents will need to be taken into consideration during infringement considerations for, perhaps, the next couple of decades.
Now is the time to start considering the outstanding restriction requirements in pending applications, as well as the need for continuations and CIPs, so that they can be filed before June 8 and enjoy a 17-year life.
Extention of Twenty-Year Term
The new law also provides for the extension of the 20-year term up to 5 years total if an application:
- is delayed due to an interference proceeding, or
- is the subject of a secrecy order,
- or is delayed by a successful appeal to the Board of Patent Appeals and Interferences or a Federal Court.
These provisions are discussed in more detail in the Proposed PTO Rule Changes section in this Report as are the provisions for further examination of cases pending for at least two years and examination of more than one invention in an application.
Provisional Applications
For the first time, U.S. applicants will be able to file provisional applications starting June 8, 1995. Numerous other countries have had this advantage for many years. Now, U.S. applicants will have that advantage, too.
A provisional application can be filed with only one-fifth the official filing fee and without claims or an inventor's declaration or oath. Only a specification and any necessary drawings are required along with the names of the actual inventors. However, the specification must contain a full disclosure and must be replaced within one year (non-extendable) with a complete application in order to obtain a patent.
The PTO will not examine a provisional application for patentability. Priority from a foreign application or an earlier U.S. application cannot be claimed in a provisional application. However, a provisional application can be the basis for claiming priority in applications filed in other countries within one year from the filing date of the provisional application. The pendency time of a provisional application will not be counted in the 20-year term which will be measured only from the filing date of the complete application.
The additional year which a provisional application will provide will give the inventors and owners more time to determine the viability of the invention and commercial value before spending a much larger amount of money to file a complete application, while preserving an early filing date in the PTO.
While the U.S. provisional application system will be available for use by inventors and organizations from any foreign country, it would not appear to be advantageous to them unless they simply wish to buy time or were filing first in the U.S. instead of their home country.
Proof of Invention in Foreign Countries
Since December 8, 1993, inventors in NAFTA countries have had the opportunity to prove the date of their inventions in their respective countries. That opportunity will now be extended to inventors in countries which are members of the World Trade Organization (WTO) beginning one year from the date the WTO enters into force which probably will be January 1, 1995. Consequently, starting on or after January 1, 1996, inventors in WTO countries will be able to use knowledge, use or other activities in their respective country to prove the date of invention for applications filed in the U.S. on or after that starting date.
It is strongly recommended that all inventors and researchers keep a detailed daily log of their activities. They should also sign and date each page daily as should someone else who actually reads and understands the information on the page. That will provide a good basis for proving a date of invention if such is needed to antedate a reference or prevail in an interference.