Executive Intellectual Property Bulletin

Patent Prosecurtion One Year After GATT

A little more than one year after the GATT activation date of June 5, 1995, a consensus is emerging among both practitioners and technology transfer personnel about the most effective patent prosecution strategies to employ. Of course, no single strategy is "right" for every application. The outline below is particularly applicable to applications for inventions which are of major importance and/or for which prosecution cost control is not a major factor. This strategy is particularly useful for applications which will yield patents that are of greatest value in the last years of their terms, such as many biotech/medical inventions. The central factor driving this strategy is that all patents issued on applications filed after June 5, 1995 have a twenty-year term from the earliest effective filing date that they assert, with the exception that the one-year term of a parent provisional application does not start the twenty-year term running.

1. File the provisional with headings and claims. In short, the provisional should be as close to a regular application as possible.
2. File follow-up provisionals during the one-year lifetime of the provisional to cover further results obtained by the inventors.
3. Shortly before the first provisional application expires, file a PCT application designating the U.S. and other countries of interest and enter U.S. prosecution as quickly as possible.
4. Oppose restriction requirements whenever possible. If you must elect one of several claimed inventions, do so orally, and file any necessary divisionals as soon as possible.
5. Prosecute vigorously after final rejection, and appeal the rejected claims quickly. File a "safety application" at the same time to continue the prosecution of narrow claims if the broader claims are lost.
6. Continuation-in-part filing should seldom be used. The patent term clock continues to run from the initial filing date. Supplemental material should be presented by declarations. Minor advances should not be filed on, and major advances should be made the subject of their own applications.

This is far from a complete survey and far from the last word. Features of GATT like early publication of applications and the right of non-U.S. applicants to present evidence of inventive work abroad have yet to take effect or have a full impact, while Rule 129 practice will gradually fade away.

For more information on this topic and how these new guidelines may affect US industry and trade, please contact Warren Woessner, PhD. or any of the attorneys at Schwegman, Lundberg & Woessner, P.A. at 612-339-0331 or by facsimile at 612-339-3061 or via this website.