US-JAPAN PATENT ACCORD TO BENEFIT OTHERS TOO

3:59 AM Jan 25, 1994

US-JAPAN PATENT ACCORD TO BENEFIT OTHERS TOO
Geneva 25 (TWN) -- The reported agreement of the US with Japan for changes in US patent laws would not only remove one irritant in US-Japan relations, but benefit others too.

According to a report in the New York Times, the US has agreed to change its patent laws to provide that the life of a patent would be a period of 20 years calculated from the time of filing of a patent application.

The US (and the Philippines) are the only two countries in the world that have a "first-to-discover" provision for grant of patents which then are protected for 17 years after the grant of the patent. This has resulted in harassment of others by persons gaining 'patents', long after they had discovered it, and getting back-royalties from others using the process (not knowing it was covered by patent applications).

By stringing out the patents, filing separately for each additional improvement, there have been complaints that some patentees have garnered rentier monopoly incomes by abuse of the system.

Attempts in the Uruguay Round to get the US to change its system, and adopt like the rest of the world the 'first-to-file' system which reduces much litigation, failed -- with much of the resistance coming from patent lawyers who have found the system (with its scope for litigation on who discovered first) to their advantage.

While the US is not giving up on the 'first-to-discover', by agreeing to provide for a 20-year life for patents, but to start from the date of application for patent, and not its grant, the retrospective benefit is ended.

The US change, which has to pass through Congress, would be of particular consequence in new high technology areas including biotechnology, computer programmes etc. In return, Japan has agreed to accept patent applications in English, subject to Japanese translations being provided in reasonable time -- thus removing a grievance of foreign applicants.

Both in terms of the Paris Convention and the Trips accord, these changes and benefits would have to be provided to nationals of all other State-Parties.