By Kevin E. Noonan --
Lurking
in H.R. 6621, a bill entitled "To correct and improve certain provisions of the Leahy-Smith
America Invents Act and title 35, United States Code" and introduced on November 30th by Rep. Lamar Smith (R-TX)
is a provision that would substantively affect (and effectively eliminate)
patent rights for the ~200 pending U.S. patent applications having a filing
date prior to June 7, 1995 (when legislation enabling the provisions to the
Uruguay Rounds of the General Agreement on Tariffs and Trade (GATT) were
enacted that changed the term of U.S. patents from 17 years from grant to 20
years from earliest priority/filing date). That provision reads as follows:
(m) Effective Date of Uruguay Round Agreements Act –
(1) CERTAIN PATENT APPLICATIONS- Notwithstanding section 534(b)(1) of the Uruguay Round Agreements Act (35 U.S.C. 154 note), section 154(a) of title 35, United States Code, as amended by section 532 of the Uruguay Round Agreements Act (Public Law 103-465; 108 Stat. 4809), shall apply, and section 154(c)(1) of title 35, United States Code, shall not apply, to any application that is –
(A) filed before the date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act; and
(B) pending on a date that is 1 year or more after the date of the enactment of this Act.
(2) EFFECTIVE DATE – This subsection shall take effect on the date that is 1 year after the date of the enactment of this Act and shall apply to any original plant or utility patent application that is pending on or after that effective date.
Hiding in this verbiage is the requirement that the 20-year term (35 U.S.C. § 154(a)) shall be applied to pre-GATT filed patents provided that they are pending "1 year or more after enactment of" the bill. This means, in effect, that unless the U.S. Patent and Trademark Office has granted these patents within this time the term of any patent that grants on such a pending application would be 20 years from earliest filing date (which would eliminate term for any pending application having an effective filing date of ~1994, i.e., the vast majority of the pending pre-GATT cases).
The motivation for this provision in the bill is
unclear. These cases are somewhat of an embarrassment to the Office, of course,
insofar as their existence can be used to insinuate that the Office has been
tardy in examining them. But this is
mostly not the case: the majority of these applications have been involved in
protracted interferences, appeals, or had examination suspended for Office
consideration of third party interferences that would influence the
patentability of pending claims. What is decidedly the case is that the delay
in prosecuting these applications has not been the result of applicant delay,
strategic or otherwise. This is because
the implementing legislation and PTO rules were drawn to prevent such
shenanigans. For example, filing a continuation
or Request for Continued Examination in these applications strips such
applications of their pre-GATT status (and would result in the same
loss-of-rights that the present bill would cause). Transitional procedures adopted by the Office
permitted an applicant to petition for withdrawal of the finality of a
rejection but this opportunity could only be used twice; thereafter, the only
recourse for pre-GATT applications was filing an appeal. Thus, the Office carefully crafted its rules
to minimize long pendencies for pre-GATT cases, a policy that undoubtedly is
responsible for limiting the number of existing cases to 200.
In view of the lack of culpability of patent applicants for the situation (and keeping in mind how skewed expectations have become since the change to the 20-year term), it applies particular prejudice on applicants to have their patent rights be completely dependent on the PTO completing prosecution and granting a patent within one year of enactment of the bill. Besides the obvious logistical difficulties this scheme would occasion, it also raises the likelihood that citizens' property rights would evaporate by agency inaction, an outcome that fails Civics 101.
There are alternatives if Rep. Smith or the Office are serious about bringing prosecution of these cases to conclusion. For example, the Office could establish a program, analogous to the "Fast Track" program for patent prosecution, that would be dedicated to these applications and having them granted, abandoned, or appealed within some reasonable timeframe. There are undoubtedly other ideas that could be explored. What should not be enacted is a bill passed on the "fast track" in a lame duck Congress and touted as being merely technical in nature. Although the bill is rumored to be slated to be passed without comment or amendment in the House, concerned citizens or their interest groups should contact their Senator to put a hold on this legislation until it can be considered more deliberately in the next Congress.
Hat tip to Hal Wegner for recognizing this provision of the bill.
"The motivation for this provision in the bill is unclear."
My guess is that the author of this legislation has a constituent (read: campaign contributor) who is opposing the grant of one of these 200 applications.
Posted by: James Demers | December 07, 2012 at 06:08 AM
Dr. Noonan states: "filing a continuation or Request for Continued Examination in these applications strips such applications of their pre-GATT status"
I'm curious as to if the recent Exelixis case have an impact on the applications so stripped.
Posted by: Skeptical | December 07, 2012 at 08:32 AM
Dear Skeptical:
Pre-GATT cases are not eligible for the patent term adjustment provisions of the AIPA, because those provisions were intended to ensure at least 17 years from grant to US patents (less any time lost due to applicant delay). Because pre-GATT cases are entitled to 17 years from grant by statute, they cannot get PTA.
Thanks for letting us clarify.
Posted by: Kevin E. Noonan | December 07, 2012 at 11:43 AM
Sorry Dr. Noonan, but I am a little dense and do not understand the clarification. You say pre-GATT cases are not eligible at the same time you are stripping the status of pre-GATT from the cases in question. If you strip something out, I am assuming it no longer applies.
Posted by: Skeptical | December 07, 2012 at 12:52 PM
OK, Skep, here is how it goes. Pre-GATT cases are not eligible for patent term adjustment under the AIPA, because the PTA provisions were enacted to ensure post-GATT applicants would get a patent term of at least 17 years from grant (but penalizing applicants who delay prosecution, for example, by filing extension of time requests).
If H.R. 6621 were enacted, most of the pre-GATT applications would have no term remaining (because it has been 20 years or more since the earliest priority/filing date). There is no provision that would then entitle them to PTA based on PTO delay, and so no way for these applications to recoup term.
Q.E.D.
Posted by: Kevin E. Noonan | December 07, 2012 at 11:16 PM
"concerned citizens or their interest groups should contact their Senator to put a hold on this legislation until it can be considered more deliberately in the next Congress."
Or you can send an email to your Congressperson strongly encouraging him/her to pass the bill, which is exactly what I did.
Posted by: Good Riddance | December 10, 2012 at 01:16 PM
"it also raises the likelihood that citizens' property rights would evaporate by agency inaction, an outcome that fails Civics 101"
How about the rights of the public to use the abandoned invention that was "restored" by Congress as a porky add-on to the original AIA? Or has everyone forgotten about that little travesty already?
Posted by: Good Riddance | December 10, 2012 at 01:18 PM
"Porky add-on?" Care to enlighten us?
Posted by: Kevin E. Noonan | December 10, 2012 at 05:35 PM
Pre-GATT patents are a problem. The root cause in many cases is delay at the PTO, not the applicants. HR6621 avoids the real causes and rubs salt into the wounds of those applicants who have already suffered at the incompetence of the PTO. Pre-GATT applicants will fight this law and have a have a good case that HR6621 is unconstitutional. If (when) it is overturned, HR6621 will just make the current problem worse.
http://www.pharmapatentsblog.com/2012/12/05/hr-6621-would-topredo-submarine-patents/
Posted by: Simon Elliott | December 11, 2012 at 01:46 PM
Shaving 200 applications from the PTO's backlog, in the name of "patent reform", just doesn't pass the smell test. There being a chip maker or two in Texas, I'm thinking the microprocessor applications of Gilbert Hyatt, some of which the PTO (not Hyatt) has dragged out for decades, might be the actual target of this legislation.
Posted by: James Demers | December 12, 2012 at 11:19 AM
Lamar Smith is a excellent example of the damage a corrupt corporate puppet can do once in office. If he continues in office The U.S. will need a new designation as a forth world country.After 13 terms, this person has been among the main reasons this country has regressed to the status of 3rd world. His "Millennium Copyright Act' alone has set the United States, and world, back by about 50 years. His irresponsible sell-out to the law enforcement community in his home state of Texas should have him charged with human rights violations for allowing the D.P.S. to openly declare war on a neighboring country, Mexico.. Nearly all his bills were bought and paid for by corporations These bills,(S.O.P.A. and P.I.P.A.) among others, have caused the largest protests in American history. The entire House Judiciary Committee was peopled by his equally corrupt cronies on these corporation payrolls. Now he is headed for the chair of the house committee on science and technology. This is a Christian scientist, not a scientist. A person who denies global warming,. He doesn't quite make the grade for a skeptic; also who believes prayer, not science and research can cure disease. As soon as we can get these corporate contributions outlawed the better for all. It will take us all many years to undo some of the damage this greed has caused. We need to get these corporations and their puppets out of our government.
Posted by: RICHARD | December 13, 2012 at 07:44 PM