Pre-GATT Patent Applications Threatened by Lamar Smith's H.R. 6621

by McDonnell Boehnen Hulbert & Berghoff LLP
Contact

[author: Kevin E. Noonan]

Smith, LamarLurking 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).

Washington - Capitol #4The 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.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP
Contact
more
less

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.