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By Curtis L. Harrington

The GATT agreement recently passed into law in the lame duck session of congress held since the fall election. The agreement contained provisions which significantly affect our patent system. Although it is reprehensible for changes in our domestic patent system to be brought about by a treaty rather than specific congressional bills and debates directed to our national Patent and Trademark Office needs, we nonetheless have to live with it.

The term of the utility patent will be limited to 20 years form the date of filing rather than 17 years from the date of issuance. There are some provisions for extension, not to exceed 5 years, such as delays based upon an appeal, to name one.

A continuation application is in reality the payment of an additional fee to buy more time in which to make your case to the patent examiner. Under the new rules, where a continuation application is filed, the 20 year period will be computed from the filing date of the parent case. Thus the applicant will be arguing to the Patent Office at the expense of the time in his patent period. This rule will cause applicants to think twice about taking the time for further argument where the applicant be lieves that the Examiner has not properly understood the applicant's position.

Further, since the filing of a continuation application will directly reduce the patent period, while an appeal will not, it is further expected that the number of appeals filed will increase significantly. Currently, it can take in excess of a year for an appeal to be heard by the Patent Office Board of Appeals and Interferences. An appeal is usually more costly to the applicant than a re-filing and amendment. From a Patent Office resource standpoint, the use of an appeal at a time when the problem could be taken care of with a refiling, is a major misuse of resources. Additional staffing to handle the problems set forth in this article are likely to lead to increased patent fees.

This is not say that some inventors may be unaffected or may actually benefit from the 20 year period holding. For some patent applications in some disciplines, I have obtained allowance and issuance of the patent within one year of the date of filing. Under the new 20 year from filing rule, the patentee would then have a 19 year patent period of protection. However, the bulk of the cases for which allowance and issuance has occurred in less than one year are cases for which a petition to "make special" has been filed. This petition, if granted, enables the case to be examined out of order, in effect, going to the head of the line.

Just how much time is gained, over the time in which examination would have otherwise begun without a "make special" petition depends upon the area of art in which the application is classified. For some categories, the wait may be in excess of two years, while other categories of classification may have an average wait of a little less than a year.

There are several wide ranging categories of reasons for which an application may be made "special" and for which a petition may be filed. These circumstances are (1) prospective manufacture where a manufacturer binds himself to produce in the U.S. or increase production in the U.S. upon the issuance of a valid patent; (2) infringement, where the invention is currently being infringed by someone else; (3) applicant's health, where the inventor / applicant is so sick that he might not be available to assist in the prosecution (doctor's certificate required); (4) applicant's age (where applicant is over 65); (5) environmental quality, where the invention will materially enhance the nature of the environment; (6) energy, where the invention will materially contribute to the discovery or development of, or more efficient utilization and conservation of energy resources; (7) DNA, for inventions relating to recombinant DNA; AND (8) single invention application, where the scope of the claims cover one invention alone which is available where a search was performed and where a detailed statement is made by the attorney as to how and in what areas the invention is patentable, in addition to other requirements; and for (9) superconductivity inventions.

Some of these require a petition fee to the commissiones, but all require at least some paper work to prepare and send in. When inventors and applicants begin facing a limited 20 year from filing patent period, the petition to make special is expected to be more widely used, assuming it is left in place as an option for applicants.

Currently, and before the GATT provisions take effect, the inventor has the option to file the petition to make special and have the patent examined and issued, if warranted, as soon as possible, or to take advantage of the delays built in to the patent process, and to have the patent issue several years later. Usually the first tactic was chosen where the market was increasing rapidly and early protection was needed to fend off infringers who could easily enter the market. The latter tactic was taken where the applicant was unsure about economic viability of the patent. If high market interest in the invention became apparent, the inventor could then file a petition to make special to speed up the examination. With the changes under GATT, virtually all inventors will want to speed up the processing of their patents to preserve more of the 20 year period, and the instances where petitions to make special are filed will similarly increase.

Under the assumption of a fixed patent office staff, an increased number of petitions to make special filings should result in longer waiting periods for those who elect not to file the petition. These applicants will suffer the most, as the average time period before first examination for petition to make special non-filers will probably continue to increase. Compounding the problem is the fact that few applicants know about the potential for getting an early examination. I am continually surprised in talking with people who have had significant contact with the patent process, but who have not been informed by their attorneys of the petition to make special.

The new 20 year from filing rule may also mean that the practical benefits of the continuation-in-part application may also be diminished. A continuation-in-part application is one which contains new material in addition to the old material of a parent case . The continuation-in-part application operates under the same section of the patent code as continuation applications, and thus operates under the new rules to limit the patent term to 20 years of the filing date of the earliest parent patent from which the continuation-in part depends for priority.

The patent applicant who has made significant improvements in an inventions for which a patent is currently pending will now be faced with a choice of filing a continuation-in-part which will result in a shorter patent period, or file a new case which will probably have narrower claim coverage. The narrower converge may result from the segregation of the broader claims and earlier disclosure from the more specific disclosure and narrower claims which will result from separate treatment of the earlier disclosure which is in essence treated as prior art.

In conclusion, the result of the new 20 year patent term limitation will be a tightening of options to inventors in terms of strategy within the patent office, and less flexibility with respect to choices of how to incorporate inventive improvements into the final patent. This result is likely to be reflected numerically in a significant increase in the filing of petitions to make special, and a significant decrease in the filing of continuation-in-part applications.

CURTIS L. HARRINGTON, is a partner with the Newport Beach law firm of Hawes & Fischer (714)759-6601 and practices in the areas of Patent, Trademark, Copyright and Trade Secret law, and is also an Adjunct Professor at the University of Phoenix in Southern California. He is admitted to practice before the state bars of California, Texas, and Arizona, and admitted to practice before the U.S. District Court, the U.S. Court of Appeals, Fifth and Ninth Circuits, the U.S. Supreme Court and registered to practice before the U.S. Patent and Trademark Office. His education includes a B.S. Chemistry; M.S. Chemical Engineering; M.S. Electrical Engineering; a Master of Business Administration; and Juris Doctorate. He is a member of the Long Beach Bar Association Board of Governors, the Orange County Bar Association and the Japan America Society OF Southern California.

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