On December 8, 1994, Congress passed legislation to implement GATT (General Agreement on Tariffs and Trade). Among GATT's provisions was TRIPS (Trade-Related Aspects of Intellectual Property), the first agreement to establish minimum standards of intellectual property protection for its 117 member nations. TRIPS's purpose is to standardize the laws of these lands.
Harmonization, however, won't be achieved for some time because many members' political bodies haven't ratified it yet, and because members have between one and 11 years to implement its provisions. The US and Japan, however, have implemented some TRIPS provisions, several of which are already in effect, while others will become applicable on January 1st.
Both countries also have executed a separate agreement spurring major modifications in both US and Japanese patent law, which most patent practitioners feel will fundamentally affect US inventors' prior patent processes and procedures.
Legislators are scrambling to revise current intellectual property laws to address the mediums and situations which arise every second. GATT-TRIPS, for example, is an ambitious attempt to standardize intellectual property protection among the major countries in the world. Until it's ratified and implemented on a worldwide basis, though, companies and sole inventors should continue to investigate intellectual property protection on a country-by-country basis before they distribute or license their technology or products in international markets.
How GATT-TRIPS Changes Utility Patents
In the US, GATT-TRIPS changes the term of utility patents, which had existed for over 100 years. The term of utility patents changes, from 17 years once the patent is issued by the US Patent and Trademark Office (PTO) , to 20 years from the date a patent is filed with the PTO. The new legislation applies to patents filed on or after June 8th, 1995.
This critical change brings the centuries-old US patent term in line with most other countries, which have long had 20 year-since-filing terms. While a major legal modification, the new term will be "of marginal benefit to the majority of inventors," said Paul Hickman, founding partner of Hickman & Beyer, a patent law firm in Palo Alto, California.
Most patents take between two and two and half years for the PTO to issue, so under the new 20-year regime most inventors will enjoy only a slightly longer term of patent protection. If, however, your patent takes more than three years to issue from the PTO, which many new media inventions do, your patent will receive a slightly shorter term of legal protection under the new regime.
How GATT-TRIPS Affects Submarine Patents
The new 20-year term will notably affect a number of inventions, called "submarine patents," which, while in the minority, can wreak legal and technological havoc. All patents are held in secrecy by the PTO until they are issued.
While the US has conceded, as an element of the Japan-US agreement, to terminate this long-standing PTO policy and disclose pending patent applications within 18 months of their filing date by January 1st, the bill implementing this provision remains stalled in the House of Representatives.
In the past, some submarine patents have taken as long as 20 years to mysteriously surface from the PTO. These inventions then enjoy an additional 17 years of legal protection and can cause technology patented and used for a decade in the interim to instantaneously become infringing. Many submarine patents have revolved around digitally-based technology such as integrated circuits or video game-related inventions. The new term will shorten significantly the legal life of these patents, but until the secrecy provisions are altered, they shall remain potential stealth bombers.
"Companies will be more likely to develop an invention if they do not have to worry about being blocked subsequently by another patent that has remained secret in the Patent Office for many years," said Ed Bailey, managing partner of Fish & Neave, a premier patent litigation firm in New York City.
Elimination of Filing Patent Claims
GATT-TRIPS also provides for provisional patent applications, whose stated purpose is to provide a low-cost mechanism for inventors to secure priority rights in their inventions without fulfilling the elaborate patent application process.
If you're an inventor, you can file a simple document containing a description of your invention, some drawings, pay between $75 and $150 in fees , and you get priority for your patent. The biggest savings? You don't need to file patent claims, which usually require a patent lawyer.
You have one year after your provisional filing to submit the complete patent application, including patent claims, and during your initial one-year period, your 20-year clock doesn't start ticking.
Provisional applications are considered by some patent practitioners to be risky because no progress is made on your patent application during that year and you'll have no insight regarding how the PTO will view your invention.
For example, on the one-year anniversary of your filing, you'll need to decide whether to file for patent protection in foreign countries, a costly and time-consuming process, without knowing whether the PTO is favorably, or unfavorably, reviewing your application.
In addition, your original, perhaps dashed-off application, will determine the scope of your patent protection and you could easily file a document insufficient to meet your needs later. Other patent attorneys, however, view the provisional patent application as a cheap and easy mechanism to establish your patent claim.
In Japan, some patent laws were changed effective July 1st and some for January 1st to comply both with GATT-TRIPS and the Japan-US agreement. Most notably, from July 1st onward, patent applications in Japan may be initially filed in English, so long as a Japanese translation is filed within two months.
The fee for initial-English patent applications is a bit higher at 35,000 yen, as opposed to 21,000 yen for a Japanese patent application. When you're in a hurry with no time for elaborate Japanese translations and all your personnel are scrambling to ship your new, whizzy title, an extra 14,000 yen (currently about $136) will seem a small price to pay.
In addition, even after your patent is granted, you can now correct errors in your Japanese translation as long as the corrections doesn't extend the scope of your patent claims. By January 1st, you will be able to request a "fast" examination of your patent application, requiring the Japanese Patent Office to issue a decision either granting or rejecting your patent within 36 months from your request. This process cuts about two years off the typical time of five years it currently takes the Japanese Patent Office to grant or reject patent applications.
You Can't Patent Software?
For many years, it has oft been believed that you can't patent software. Skilled patent practitioners have, however, obtained patents on software for years by carefully drafting the patent claims. The PTO has now issued proposed guidelines for examination of patent applications for computer programs, which take a giant leap towards recognizing the patentability of software, reducing the legal burden for proving infringement of software, and decreasing the time and money spent by inventors and attorneys battling the PTO for software-related inventions.
The Patent Office received comment s from the public, the industry and the legal community up through August 18th, and will issue final guidelines after these comments are considered.
Under the PTO's proposed guidelines, you still will not be able to patent simply the software; rather, patent claims directed to software still must include reference to a "physical element," such as a computer, a floppy diskette, or a CD-ROM.
Patent examiners now, however, will presume computers, floppy disks, and CD-ROMs containing computer programs to be patentable subject matter. Besides easing the burden of patentability for software, this change eases the burden of demonstrating patent infringement of software.
Previously, because software patent claims had to include reference to a computer, a distributor or seller of an infringing software product (who didn't also sell the computer) could only be sued for contributory, and not direct, patent infringement.
With the new proposed PTO guidelines, sellers of software now could be sued for direct patent infringement. However, as Paul Hickman said, "These guidelines are very preliminary and a number of patent examiners are suspending prosecution for up to six months on patent applications having software claims."
The White Paper
In July 1994, the Working Group on Intellectual Property Rights of the National Information Infrastructure (NII) wrote and distributed its recommendations for changes in the US Copyright Act via the Green Paper. The Group then conducted hearings with interested groups in Chicago, Los Angeles, and Washington, DC and received public comments.
On September 1st, the Group issued its final recommendations via the White Paper, which it said was the result of over two years of work.
Bruce Lehman, chairman of the Group and Commissioner of Patents and Trademarks, said legal changes were necessary because "without enforceable laws in place, intellectual property owners will be unwilling to put their works at risk in this rapidly expanding digital environment.
The Working Group has examined existing copyright law and is recommending changes that will allow owners and users of all types of materials, from movies to software, to realize the full potential of the information superhighway as a commercial marketplace."
However, the White Paper insists "existing copyright law needs only the fine tuning that technological advances necessitate in order to maintain the balance of the law in the face of onrushing technology."
Education is Key
Besides legal alterations, the Group determined education is the other key to the success of the NII and initiated a Copyright Awareness Campaign in March to raise public knowledge of the existence of intellectual property. The White Paper notes core copyright industries, those that create copyrighted works, produce $238.6 billion dollars annually.
Related industries, those that distribute copyrighted works, produce an additional $120 billion per year. The government certainly doesn't want to lose those greenbacks. These industries also are growing at a rate of 5.6 percent annually, twice as fast as the entire US economy.
The Group recommends school-age children should be taught about the concepts of computer property, ownership and "electronic citizenship," or "how to determine the owner of a copyrighted work and how to go about asking for permission to use it." Digital Media itself has satisfied one of the Group's recommendations, in publishing a report serving as what the Group called "a directory of attorneys having expertise in a particular field, such as copyright issues" ( see our Guide to Hiring a New Media Lawyer). We're looking forward to feedback from these folks.
Green Paper v. White Paper
The specific changes to the Copyright Statute proposed in the White Paper are almost the same as those proposed in the Green Paper (see Vol. 4, No. 3, p. 20) , the exceptions having a little more clarification.
The White Paper proposes the Copyright Act be amended to ensure "transmissions" are distributions, importations and publications which are within the exclusive rights of a copyright owner. It suggests libraries should have the right to make three copies of works in digital form, although only one may be in use at a time.
In addition, the White Paper proposes that willful reproduction or distribution of copies with a retail value of $5,000 be a criminal offense. In the current Copyright Act such acts are crimes only if the perpetrator seeks a "commercial advantage" or "private gain."
While it doesn't make mandatory the inclusion of copyright management information in a work, such as the name of the copyright owner, it does forbid anyone from knowingly including false copyright management information, altering any copyright management information, or making or distributing devices which bypass or remove devices which prevent unauthorized use of a copyrighted owner's work.
Fines for violations of these sections are not only hefty, at $2,500 to $25,000 and three times as much for repeated violations, but fraudulent violation can result in a whopping $500,000 fine and five years in jail. In other words, if these recommendations become ratified legislation, don't even think about violating these provisions unless you've got a White Bronco and lots of gas.
The Working Group, even after proposing new copyright legislation to encompass the NII, said the White Paper does not provide all the answers. More importantly, it said, "it may not even present all of the questions." While all these attempts are admirable, it will be years before the technological and legal wrinkles underlying enforcement of intellectual property rights in the digital world will be ironed out.
Courtesy of Marie D'Amico of Digital Media.