WHAT HAVE AIA GOTTEN INTO?

Part 4: What Did We GATT IN 1995?

This is the fourth in a series of blog posts examining the historical path of the United States patent system from its beginnings in the Constitution to today.

In the initial post I discussed first principles, including the Constitutional grant to the federal government of the power to issue patents.  I followed that with a post titled Part 2: What Was Here Before AIA Got Here?, where I discussed of the Patent Act of 1952, which remained largely in force until the enactment in 2011 of the America Invents Act ("AIA")[1].  In my last post, titled Part 3: The Disharmony of Harmonization I started to discuss the process of "patent harmonization," particularly through the adoption of the 1883 Paris Convention for the Protection of Industrial Property[2] ("Paris Convention") and the Patent Cooperation Treaty ("PCT"), which entered into force in 1978.[3]  Today in Part 4 I’ll discuss a feature of patent harmonization that was implemented in the 1990s, as a result of negotiations conducted under the General Agreement on Tariffs and Trade (GATT).

In 1948, the United States was one of the 23 original signatories to GATT, a multilateral international agreement promoting free trade.  In 1995 GATT was subsumed in the jurisdiction of the World Trade Organization, which retains and enforces the agreements entered under GATT.

One result of the 1986 – 1994-negotiated “Uruguay Round” of amendments to GATT was the change of the term of a U.S. patent.  Prior to June 8, 1995, a U.S. patent had a term of protection lasting 17 years from the date of issuance.  Since June 8, 1995, an issued U.S. patent has 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 patent application.  The 20 year term from the date of filing brought the United States into harmony with most of the other countries in the world.

Although the mechanism for changing the term from 17 years after issue to 20 years after application was the GATT-implemented patent harmonization, perhaps the strongest motivation to change the longstanding term of 17 years after issue was to eliminate the phenomenon known as “submarine patents.”  Historically, patent applications have been examined in secret before they issue.  This led to circumstances where a patent would suddenly surface – like a submarine – in some cases in a mature market for the patented invention.  At that point, any party who was making, using, or selling the invention – even one who was diligent in avoiding existing patents when it entered the market – became a patent infringer instantly.  This situation was exacerbated by shrewd applicants who intentionally delayed the examination of their patent applications, and who filed a series of multiple applications over time based on the same invention.

Even today there are still pending patent applications that were filed prior to June 8, 1995.  If any of those applications issues as a patent in 2018, it will have a term that will not expire until the year 2035.

In one respect, this specific aspect of patent harmonization appears to benefit inventors.  In an informal study conducted in 2010, 64% of issued patents had a longer term under the new system than they would have had under the old system.

In the next installment in this series, I hope to discuss further the concept of “submarine patents,” a subject that overlaps with other aspects of patent harmonization, including the definition of novelty, and publication of patent applications.  In the meantime, I welcome your comments.

© 2018 Russell O. Paige, all rights reserved.

 

[1] Pub. L. No. 112-29: http://www.govtrack.us/congress/bills/112/hr1249/text.

[2] See generally Summary of the Paris Convention for the Protection of Industrial Property (1883), http://www.wipo.int/treaties/en/ip/paris/summary_paris.html.

[3] http://www.wipo.int/pct/en/pct_contracting_states.html