Vol. 7, No. 2, Pg. 20. Intellectual Property Rights Abroad and at Home After GATT.

• Author: By Stephen E. Bondura and Lloyd G. Farr

South Carolina Lawyer

1995.

Vol. 7, No. 2, Pg. 20.

Intellectual Property Rights Abroad and at Home After GATT

20Intellectual Property Rights Abroad and at Home After GATTBy Stephen E. Bondura and Lloyd G. Farr As more American businesses pursue a global market, the United States has recognized the need to establish and maintain a satisfactory and consistent minimum level of intellectual property rights around the world. The Uruguay Round Agreements under the General Agreement on Tariffs and Trade (GATT) require member countries to establish such minimum levels of intellectual property rights within their national laws.

On December 8, 1994, President Bill Clinton signed into law the Uruguay Round Agreements Act to fulfill the United States' obligation under GATT. This article discusses the general requirements all member countries will have to satisfy under GAIT, the more significant changes in U.S. intellectual property law as a result of GATT and the procedures for obtaining foreign patent protection.

The inclusion of intellectual property rights on the GATT agenda was and is controversial. Many developing countries contend that GATT has exceeded its mandate by succumbing to the demands of the industrial nations. The U.S. has justified its position by asserting that inadequate intellectual property protection abroad is a real and distinct trade barrier and is, therefore, a proper issue for GATT to address.

There are 107 countries participating in GATT. As of December 31, a total of 26 countries, including Japan, the 12 European Union countries, Canada and Mexico, had deposited instruments of acceptance of the Uruguay Round. The Trade Related Aspects of Intellectual Property Rights (TRIPs) has thus become the first major multi-national effort and agreement to establish minimum baseline levels of intellectual property protection among the world's trading countries.

TRIPs is, however, in its infant implementation stages. Its enforcement provisions are unproven and are particularly controversial. Furthermore, TRIPs permits a delay of up to 10 years for developing countries to adhere to the agreement, thus delaying meaningful evaluation of the agreement's effectiveness. Nevertheless, TRIPs represents a significant effort to establish standard worldwide intellectual property rights.

Intellectual Property Protection at Home after GATT

GAIT does not establish international intellectual property law. Member nations must bring their laws in line with GATT requirements. Consequently, the GATT Uruguay Round implementing legislation (P.L. 103- 465) signed by President Clinton included significant changes to U.S. intellectual property laws. The next section of this article will discuss the more significant changes.

Patents. Until recently, a U.S. patent expired 17 years after its issue date. By amendment of 35 U.S.C. § 154, a patent resulting from an application filed on or after June 8, 1995 will expire 20 years from the filing date of the earliest related U.S. application. This will affect all patent applications filed on or after June 8, regardless of whether such an application claims priority to an earlier filed parent application. Obviously, under the new law the sooner a patent is issued after an application is filed, the longer its term will be. Accordingly, inventors having products, such as pharmaceuticals, that are profitable toward the end of the patent term will want to prosecute their applications as quickly as possible.

The time a patent application remains in its prosecution phase at the U.S. Patent and Trademark Office depends on a number of factors, including the complexity of the technology, the backlog of the Patent Office examining unit responsible for handling the application and the patent applicant's diligence in prosecuting the application. Typically, chemical, pharmaceutical and bio-tech applications take longer to prosecute than those in the mechanical and electrical fields. Although the Patent Office advertises an average application pendency under three years in all technical fields, patents...