Privacy, Business and Law

This year inventors will be hit with a double whammy: First The Government passed the GATT Law which eliminates the 17-year minimum patent term and now the Patent and Trademark Office (PTO) in increasing its fees, effective 1995 October 1. While we can’t do much about the higher fees without a drastic change in the laws, we can help to restore the 17-year minimum patent term.

With respect to the GATT (General Agreement On Tariffs And Trade) legislation (H.R. 5110), this was passed by Congress and was approved by the President on 1994 Dec 8. GATT made significant changes in the U.S. patent laws to make them conform more with those of other countries. GATT made four changes to the patent Laws: (1) it eliminated the minimum 17-year patent term in favor of a 20-year term from filing, (2) it created a Provisional Patent Application, (3) it gave inventors credit for early work done abroad, as well as in the U.S., and (4) it broadened the scope of the patent monopoly law so that offers of sale and imports will infringe a patent. I discuss the latter three changes in the Fourth Edition of Patent It Yourself (out Summer 1995). However since I believe the first change is particularly harmful to inventors and the U.S. patent system, I discuss it briefly here and urge you to contact your senators and congressperson to change the law to restore the minimum 17-year patent term.

Under GATT the term of the patent monopoly will be changed from 17 years from the date of issuance to 20 years from the filing date. This will decrease the length of the monopoly for those cases in which the application is pending over three years, e.g., when a continuation or divisional application is necessary, or where the PTO’s examination is slow. (GATT will actually lengthen the monopoly of most patents since the average pendency of a patent application is now about 19 months, and while the 20-year term can be extended up to 5 more years in case of an interference, appeal, or secrecy order.) However the elimination of the 17-year minimum term is particularly harmful since, as any patent attorney can tell you, virtually every important patent application will take more than three years to prosecute into a patent. This is because a continuation application usually has to be filed to have enough time with the examiner to work out broad and meaningful claim coverage. For example, I just finished getting a client a major and broad patent: it was filed in 1987, but did not issue until 1995-a pendency of eight years! Had the application been filed after the effective date of GATT (1995 Jun 7), its monopoly period would be only 20 – 8 = 12 years, instead of its present 17-year term. This is a significant reduction which certainly reduces the effectiveness and value of the monopoly.

The GATT legislation was rushed through under Congress’s “fast-track” procedures to implement the GATT Treaty. The legislation did not grant adequate hearings to inventors or consider fully their rights. However many Congresspersons are in favor of restoring the 17-year minimum term and a coalition of Congresspersons have sponsored two bills to effect this. Senator Robert Dole of Kansas has sponsored a Senate Bill, S. 284, and Representative Dana Rohrabacher of California has sponsored a House Bill, H.R. 359, to insure that all patents would have a 17-year minimum monopoly period, regardless of how long it took to get the PTO to approve the patent application. Sen. Dole, in support of the bill, stated, “inventors will begin to lose the economic value of the patent should it take longer than 3 years to issue” and “a patent for a pioneer invention, such as the MRI or the Pacemaker [heart stimulator] will take much longer.” Sen. Dole also stated that S. 284 does not violate the terms of the GATT treaty and that this “glaring error” should be corrected.

Nevertheless, forces are at work to block Sen. Dole’s and Rep Rohrabacher’s wise bills. One powerful representative has refused even to hold hearings on the Rohrabacher bill. So we must all work to get these bills passed. I urge you to write to, call, and/or wire your Congressperson to support and press for the enactment of H.R. 359 and do likewise with your senators with respect to S. 284. (If you don’t know your Congressperson and Senators, or their addresses or phone numbers, call your local library for this information.)

With respect to the fee increase, as of 1995 Oct 1, the main small-entity PTO fees will increase as follows: Filing Fee: $365 to $375; Extra Independent Claim Fee: $38 to $39; Issue Fee: $605 to $625; Appeal Fee (Notice or Brief): $140 to $145; Maintenance Fees: 3d year: $480 to $495; 7th year: $965 to $995; 11th year: $1450 to $1495. (A complete list of the new fees is provided in Patent It Yourself, 4th ed.) There is little we can do about these fees now. However once we’ve won the 17-year term cause, we can work to have the Patent and Trademark Office subsidized by Congress, as it used to be, so that patent fees will be lowered to their former reasonable level so as to be affordable by all inventors.

By David Pressman, Esq.

Author, “Patent It Yourself” (Book and Software Nolo Press)