The following article has been written by Ishani Samajpati, pursuing B.A. LL.B. (Hons) under the University of Calcutta. The article attempts to provide a meaningful insight into the patent policy of the US government. Further, it discusses how the US Government promotes policies to protect patent rights both nationally and internationally.
It has been published by Rachit Garg.
“The very first official thing I did, in my administration—and it was on the very first day of it, too—was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab, and couldn’t travel any way but sideways or backways.”
The titular Yankee says the above in eminent American writer Mark Twain’s 1889 comic novel “A Connecticut Yankee in King Arthur’s Court”. While the quote is just a literary example, it perfectly illustrates the importance of a sound and comprehensive patent policy in any country.
By a patent, the owner gets an exclusive right to manufacture, use, sell, and market any creation protected by it. It provides the inventor a temporary monopoly for a limited time to compensate the inventor financially to reimburse the costs spent during the invention. On the other hand, filing a patent requires disclosing the details of the invention in public domain. In this regard, the patent policy of the United States government has always acted as a crucial means to promote innovation, creativity and development. The United States patent system is probably the oldest element even enshrined in its Constitution. The policy is mainly driven by the quest for scientific and technological advancement along with economic development. As technology advances, the US government has established a number of initiatives that help to protect the rights of inventors while also encouraging innovation. These initiatives provide a comprehensive overview of the US government’s patent policy and are designed to ensure that inventors are adequately compensated for their work.
The article attempts to provide a comprehensive overview of all the issues regarding patent policy in the United States.
Statutes and regulations governing patent policy in the US
The US patent policy is an important policy matter of the US Government and is shaped by the US Congress. It is governed by various important patent law doctrines regarding various aspects of a patent, including the specifications and claims of the patent. There are also some legal doctrines on the matters of patentability, enforcement, and patent validity. Patent matters are governed by various federal statutes and regulations guided by the US Constitution.
The patent policy of the US government is governed by multiple federal statutes, codes, regulations and case laws. The origin of the right of the US government to grant patents is based on the US Constitution. Title 35 of the United States Code governs laws regarding patents in the US, while essential federal regulations are governed by Title 37 of the Code of Federal Regulations.
In addition to these, the services and procedures regarding patent applications are supervised and approved by the federal agency named United States Patent and Trademark Office (USPTO). Online services for patent application search are also provided by the USPTO. It is the main agency governing and advocating US government patent policies.
Constitution of the United States of America
As a constitutional federal democratic republic, the Constitution and federal laws serve as the “supreme law of the land,” as laid down under Article VI Clause 2, known as the Supremacy Clause.
Article I, Section 8, Clause 8 of the US Constitution provides Congress with the power to deal with matters regarding intellectual property. It bestows the Congress with the power to promote the “Progress of Science and useful Arts” and also grants the right to issue patents to writers and inventors through providing the exclusive right for the creation or invention for a particular limited time.
United States Code
Title 35 of the United States Code governs all aspects of patent law in the US. It currently contains 37 Chapters and 376 Sections. It contains four parts, namely Part I, II, III and IV and deals with the working principles of USPTO, patentability of inventions and procedures regarding grant of patents, protection of rights and Patent Cooperation Treaty respectively.
United States Code of Federal Regulations
Title 37 is the set of rules and regulations on patents (as well as trademarks and copyrights) issued by federal agencies of the US. It is the 37th title comprising the United States Code of Federal Regulations and contains the codified version of the general and permanent rules established by the federal agencies. It contains four chapters and additionally, Chapter V is reserved. For the purpose of patents, Chapter I deals with USPTO and Department of Commerce. Subchapter A under Chapter I contains information regarding patents.
Leahy-Smith America Invents Act (AIA) of 2011
The Leahy-Smith America Invents Act (AIA) of 2011 is the most important US federal statute on supervising patent issues. It was brought into law in 2011, signed by the then US President Barack Obama. The Act of 2011 contains some important provisions which have helped to modernize the US patent policy. It sought to create a cost-effective and inventor-friendly patent system that enables the USPTO to act on granting patent rights with more resources, combined with the harmonization of the US patent system with the international patent systems. Some of the important provisions of the Act governing the US patent policy are as follows:
First-to-file and effective filing date
The Act amended Section 100 of the Title 35 of the United States Code which deals with patentability of inventions and grant of patents. Earlier, the US patent law used to grant patent rights following the system of “first-to-invent.” Under the concept of “first-to-invent”, the patent right was granted to the individual who was the first inventor. In case more than one inventor used to claim as the inventor of the same invention, the USPTO used to conduct an interference proceeding under the pre-AIA 35 U.S.C. 135(a) to determine the person to grant patent rights.
It was a complicated process as well as time-consuming and expensive. Thus, the Act replaced it with the system of “first-to-file.” Under the “first-to-file” system, the patent right is granted to the person who files the patent application first.
The effective filing date, under this Act, is considered to be the actual filing date of the patent application. The person filing the patent application at the earliest is entitled to a right of priority.
For reissuing of patents of a claimed invention, the effective filing date is determined by deeming the claim to the invention in the patent for which reissue has been sought, as mentioned in Section 3(2) of the Act.
The “first-to-file” system is applicable to all patent applications filed on or after March 16, 2013.
The law established a one year grace period for disclosure of inventions. It means that the inventors have a period of one year from the date of public disclosure of their invention to file a patent application. The application can also be filed by the person who obtained the invention from the inventor. This is an exception to the concept of prior art, i.e., the novelty and non-obvious subject matter which acts as criteria for patent subject matter eligibility.
Derivation proceedings and Patent Trial and Appeal Board
The Act replaced the previous interference proceeding with derivation proceeding and Board of Patent Appeals and Interferences (BPAI) with the Patent Trial and Appeal Board, commonly known as “the Board.”
As mentioned earlier, in case of multiple patent applications filed for a single invention, the interference proceeding used to determine which patent application was filed by the first inventor by the BPAI which was an expensive and time-consuming procedure. Hence, it was replaced by the derivation proceeding governed by the Patent Trial and Appeal Board.
The derivation proceeding is conducted by the Board to determine the followings:
- Whether the claimed invention was derived by an inventor named in any earlier patent application from the one named in the petitioner’s application?
- Whether the earlier said application was filed without authorization?
Under first-to-file provisions, the petition to institute a derivation proceeding should be filed within 12 months of the publication of the claimed invention which is the same as the earlier application filed. The petition should be supported by substantial evidence. Applicants filing patent applications on or after March 16, 2013 are eligible to file a petition for the proceeding.
Definition of prior art
The Act broadened the definition of “prior art.” It refers to evidence which shows that the claimed invention is already known. It does not necessarily require the invention available to the public or available commercially, but the evidence that the same technology has been used to make or describe something similar to the invention earlier.
Under 35 U.S. Code § 102, as amended by the Act, prior art includes:
- The availability of the claimed invention to the public before the effective filing date of the claimed invention; or,
- The claimed invention was either described in a patent issued or in a patent application filed before the effective filing date, named another person as inventor.
However, Sections 102(b)(1) and 102(b)(2) deal with certain exceptions to prior art with regard to disclosures made one year or less before the effective filing date and disclosure that the subject matter was obtained from the inventor or joint-inventor, directly or indirectly and has been disclosed by the third party who obtained it.
Validity of granted patents
A third-party may file a petition for a Post-Grant Review seeking review of the granted patent within 9 months from the date of the grant of patent. The petition of Post-Grant Review will be granted if the patent contains one or more claims considered to be ineligible for patentability on any ground under § 282(b)(2) or (3). If the Post-Grant Review proceeding is not dismissed, the Board shall determine the issue within 1 year, which can be extended maximum to 6 months more for “good cause.”
On the other hand, Inter Partes Review can be instituted challenging the patentability under § 102 or 103, and on the basis of prior art by a third party.
The proceeding of Inter Partes Review begins 9 months after the grant of the patent is over and if the Post-Grant Review has been terminated. Similar to Post-Grant Review proceeding, the Board shall determine the issue within 1 year, which can be extended maximum to 6 months more for “good cause.”
Both the proceedings of Post-Grant Review and Inter Partes Review can be instituted for any patent issued before, on, or after September 16, 2012.
Bayh–Dole Act of 1980
The Bayh–Dole Act of 1980, also known as the University and Small Business Patent Procedures Act of 1980, is another important piece of federal law that governs the US government patent policy on funding, ownership and commercialization of patents by institutions. In other words, it enables institutions such as universities, non-profit research organizations, small businesses etc. to own, apply for patents or commercialize the inventions whose research has been funded by the federal government under their institution.
The intention behind the enactment of the Act was to create a uniform patent policy for government-sponsored research and development. It encouraged the commercialization of invented technology and also to patent the same. Patent ownerships help in generating additional funds required for the necessary investment for bringing the new technology into market, since the research funding alone in such cases may not be enough. Hence, the Act focused on commercialization and ownership of the patent of the outcome of federally funded research.
However, there are some confusions and controversies regarding the ownership of the patent under this Act, particularly in regard to the “march-in” rights. The concept of march-in rights allows the government or federally-funded agencies access to use the research they funded in the institutions for meeting agency missions, such as lowering the prices of a life-saving drug. This creates controversy in regards to depriving the original inventor of the commercial benefits.
The US Supreme Court, in the case of Stanford Junior University v. Roche Molecular Systems, Inc. (2011), clarified that the original ownership of the patent always vests with the inventor and that the employers of the inventors, for example, the federal government can only own the patent when the inventors themselves assign the patent explicitly. The Court also held that the Bayh-Dole Act did not change the Intellectual Property Clause of the Constitution namely Article I, Section 8, Clause 8.
Overview of US Government Patent Policy
The US government’s patent policies regarding domestic and international patents are led by the federal agency named the United States Patent and Trademark Office (USPTO). The agency also seeks to protect intellectual property rights relating to US patents, both national and international. This agency is responsible for examining patent applications and granting patent rights. As such, it is important for inventors to understand the US government’s patent policies in order to protect their inventions.
USPTO also represents the US government during the signing of bilateral and multilateral treaties regarding intellectual property rights. Over the years, it has also successfully negotiated and some important international patent related treaties. Some of the treaties include Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), 1995, the Patent Cooperation Treaty (PCT), 1970 and the Patent Law Treaty (PLT), 2000. It also continues to monitor the proper enforcement of all these treaties. Apart from this, the US government has been a member of WIPO since 1971 and is an active participant in the organization’s activities. In addition, the US is a member of the Intellectual Property 5 (IP5) agreement, which is a cooperation between the US, Europe, Japan, China, and South Korea to improve patent quality and efficiency.
The patent policies of the US government can be mainly classified into domestic and international patent policies. According to the USPTO, based on the geographical areas, the US government patent policy can be classified into the followings:
- Government patent policies;
- Patent-related international treaty negotiations and its enforcement;
- Implementation of international patent related treaty obligations in the US;
- Providing technical assistance to US and foreign officials on patent-related matters.
In addition, the US government has established several initiatives to help inventors protect their inventions. These initiatives include the International Union for the Protection of New Varieties of Plants (UPOV), the Intellectual Property 5 (IP5), and the Digital and new technology designs. The UPOV is an international body that works to protect the rights of plant breeders, while the IP5 and Digital and new technology designs are designed to protect the rights of inventors in the digital age.
WIPO, IP5, ID5, and the International Union for the Protection of New Varieties of Plants (UPOV)
The World Intellectual Property Organization (WIPO) is an international organization that works to promote intellectual property rights around the world. WIPO is responsible for administering the Patent Cooperation Treaty (PCT), which is an international agreement that simplifies the process of filing for a patent in different countries. WIPO also works to promote the protection of intellectual property through international treaties and agreements.
The US is also a member of the Intellectual Property 5 (IP5) agreement, which is a cooperation between the US, Europe, Japan, China, and South Korea to improve patent quality and efficiency. The IP5 is responsible for developing and maintaining a common set of standards for patent applications, which helps to ensure that patent applications are examined in a consistent and efficient manner.
In addition, the US is a member of the International Union for the Protection of New Varieties of Plants (UPOV). UPOV is an international organization that works to protect the rights of plant breeders by granting them exclusive rights to their inventions. UPOV also works to ensure that plant breeders are adequately compensated for their work.
Types of patents under the patent policies of the US Government
Besides offering protection for the invention, the grant of patent provides the inventor with certain rights namely, “the right to exclude others from making, using, offering for sale, or selling.” An invention eligible for patentability should be legal, novel, useful to humanity and non-obvious.
The US government has different types of policies for each type of patent. Before discussing the patent policies of the US government, let’s take a look at the types of patents available in the US. The three types of patents are utility, design and plant.
Based on the usefulness of a product, utility patents are granted. These are granted for a new invention of any useful items. In other words, utility patents grant protection to the usefulness or the functional aspects of an invention. Utility patents are the most frequently referenced type of patents in the US. It is valid for 20 years from the date on which the patent application is filed with maintenance fees. However, the patent term can be extended or adjusted under specific circumstances.
Design patents provide protection to industrial designs, i.e., the ornamental designing elements in a product. These patents serve no purpose in invention other than protecting the design element. Apart from design patents, industrial designs can also be protected by trademarks or copyrights in the US. Design patents are valid for a term of 15 years in the US. For design patents, no maintenance fee is required.
Plant patents offer protection to new types of flowering plants that can be produced or bred asexually. Asexual reproduction means that the plant should be produced without using fertilized seeds or pollen grains. The asexual breeding technique includes rooting cuttings, layering, budding, grafting or genetically engineering plants. In such a case, the newly produced plant variety is protected by a plant patent. The plant can also be protected by utility patents and plant variety protection. USPTO provides plant patents for newly produced asexual plants and utility patents for genes in cases of genetically modified plants, traits and plant parts etc.
New varieties of seeds, tubers, sexually and asexually reproduced plants are also provided intellectual property protections by the U.S. Department of Agriculture (USDA) through its Plant Variety Protection Office (PVPO).
The USPTO, in collaboration with the PVPO and other federal governmental and international organizations, coordinates US patent policies and their development. The patent policies for each of the patents are discussed below in more detail.
US Government patent policies on utility patents
Utility patent policies of the US government are dictated by international treaties on patents. The treaties include Patent Cooperation Treaty (1970) and Patent Law Treaty (2000).
The USPTO has single handedly taken multiple patent policies and also collaborated with several international organizations regarding policies on utility patents.
Patent Cooperation Treaty (PCT)
Concluded in 1970, Patent Cooperation Treaty (PCT) is an international treaty on patent-related intellectual rights administered by World Intellectual Property Organization (WIPO), which made seeking international patent application easier. If an inventor needs a patent protection internationally or across multiple nations in the world, he or she can achieve it by filing a single “international” patent application. Unlike the Paris Convention, which required the applicant to file patent applications in all the countries of the applicant’s interest within 12 months from the date of filing patent application in the home country, PCT provides a consolidated procedure with multinational legal effects. PCT makes it possible for the inventor to file a single international patent application, which, if not rejected, will enable patent protection simultaneously in multiple nations or at an international level.
The main procedure for patent application under the PCT is to file only one patent application in the home country of the applicant. The application would then be searched by at least one International search authority (ISA). Next, the patent application would be examined by the selected International Preliminary Examining Authority (IPEA) who would provide their written opinion.
Currently, PCT has 157 member countries. The single patent application has the same effect in all the 157 member countries as filing separate patent applications in all the participating member countries. PCT enables the applicant to postpone the national fees for patent applications charged by the USPTO during the examination of the patent application. PCT also allows the inventor to know the likelihood of getting the patent. The procedures of filing a patent application under PCT includes the following:
- After filing the PCT application, the applicant is informed about the potential patentability of the invention from WIPO.
- The WIPO publishes the PCT application informing the general public and potential investors about the invention.
- National filing, translation of the patent application and fees are due 30 months from the filing of the first patent application in the home country.
- The national patent offices in the PCT member countries where the applicant wants to get patent protection decide whether or not to grant a patent protection for the invention, based on the potential patentability information.
The United States of America is a signatory of the PCT from 24 January 1978 with the declarations provided under Articles 64(3)(a) and 64(4)(a). For the US, the patent protection provided by PCT extends to all areas where the US is internationally responsible.
Patent Law Treaty (PLT)
Patent Law Treaty (PLT) is also a treaty on international patent protections, adopted in 2000 with the aim to make the procedures of patent applications easier and more user-friendly. According to the WIPO, the purpose of PLT is to “to harmonize and streamline formal procedures in respect of national and regional patent applications and patents.”
Currently, there are 43 member states. The treaty is open to any member states of the WIPO or states which are signatories to the Paris Convention, which means they can be signatories to PLT if they want. Certain intergovernmental organizations are also allowed to be signatories.
The US signed the treaty in 2000. However, the ratifications were done 13 years later. In order to implement the provisions of the PLT into the US patent laws and practices, the Congress passed the Patent Law Treaties Implementation Act of 2012. Then, the PLT was finally ratified in 2013 with reservation under Article 23(1) of the PLT.
Collaborations by the USPTO
Apart from the two treaties, the USPTO has collaborated with the WIPO and other nations. They are as follows:
Standing Committee on the Law of Patents (SCP)
In order to create a developed and well-balanced effective eco-system for patents and related intellectual property rights globally, the Standing Committee on the Law of Patents (SCP) was formed in 1998. It serves as a forum to “discuss issues, facilitate coordination and provide guidance” on patent law and its development internationally. All the member states of WIPO signatories of the Paris Convention are part of this committee. Member states of the UN who are not members of WIPO and non-signatories to the Paris Convention can also participate in SCP as observers. Accredited intergovernmental and non-governmental organizations are also allowed to participate in the SCP as observers. The SCP regularly conducts meetings and sessions between member countries. SCP conducted a draft of the Substantive Patent Law Treaty but was put on hold in 2006 due to lack of consensus between its members.
The USPTO played a huge role in the SCP in helping to harmonize the laws and procedures regarding patents and its application internationally. In addition to this, the USPTO took additional collaborative initiatives such as IP5 and Trilateral Offices to enhance the quality and benefit the patent users.
Five IP offices (IP5)
IP5 was formed to make the patent examination process efficient on an international level. IP5 is a forum containing five countries with the largest intellectual property offices and strong intellectual property laws. The five members in this forum are the US, Europe, Japan, Korea and China. Along with the USPTO, the four other patent offices which are part of this collaboration are the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KPO), and the National Intellectual Property Administration in China (CNIPA).
It was launched in 2007 to exchange knowledge, to improve patent qualities, reduce workload and develop the international patent system as a whole. USPTO, in collaboration with IP5, works to make patent services easier and accessible to all.
For the first 10 years of its establishment, the main focus of IP5 was to improve patent examination quality and efficiency, reduce duplicate workloads and guarantee the rights bestowed by patent.
From 2017 onwards, IP5 focused more on harmonizing the procedures regarding patents along with providing a cost-effective and user-friendly patent service. In 2019, it also started paying special attention to new emerging technologies (NET) and artificial intelligence (AI).
In order to achieve the goals, IP5 has set three working groups namely WG1, WG2 and WG3. WG1 works to harmonize traditional patent classification systems, such as Cooperative Patent Classification (CPC) and FI (File Indexing) schemes. It is also working to harmonize the regional patent classification systems with the International Patent Classification (IPC) scheme. The USPTO significantly contributes to the improvement of the classification system by coordinating with CPC.
To improve efficiency and provide user-friendly services, the WG2 works on creating a global dossier through its Global Dossier Task Force (GDTF) founded in 2012. It has envisioned five priorities on which each of the members is working to improve. The five priorities set up by the IP5 are:
- Improving alerting features through email and RSS feeds for the IP5 members for any file wrapper changes.
- Managing patent related documents by both users and patent offices through the promotion of XML format.
- Standardization of a global mapping table which includes applicants’ details in the respective languages to maintain uniformity and prevent mistakes.
- Promotion of the inquiry of legal status by the users and public in general.
The above four priorities are led by EPO (alert), JPO (Promotion of XML format), KIPO (Standardizing applicants’ information) and CNIPA (promotion of inquiry of legal status by users and public).
The final priority is to enable inter-office document sharing for any official requirements. USPTO is actively leading this to make it possible.
Apart from this, in 2013, the USPTO was a key initiator in formulating the Patent Information Policy which aspires in making a system to lower barriers from obtaining patent related information from the IP5 office.
In order to eliminate unnecessary workload and duplication of systems, the WG3 is working on improving the quality of search and examination results of patents. It also includes reducing time through work-sharing. Needless to say, the USPTO acts as an important contributor to this initiative.
The Trilateral Offices is an international cooperation to improve the processing of filed patent offices worldwide. It also sought to reduce workload and also focused on paperless administration and increased attention to electronic means for filing patent applications. It particularly focused on international patent applications based on PCT.
The initiative of Trilateral Offices is the result of trilateral cooperation between three patent offices, namely, United States Patent and Trademark Office, the European Patent Office, and the Japan Patent Office since 1983. The three patent offices exchange technical know-how and incorporate advancement of information technology through the establishment of an international standard by developing patent search tools and sharing the practices of patent examination.
As a part of the Trilateral Offices, the USPTO undertook several pilot projects for utilizing the PCT work products in the Patent Prosecution Highway (PPH) framework which speeds up the examination process for patent applications. The USPTO conducted two separate PPH pilot programs with the JPO and EPO.
Trilateral Offices also perform multiple comparative study reports on patent features such as novelty, disclosure, claims and non-obviousness.
WIPO Group B Activities
WIPO Group B is the core group of WIPO which takes decisions on key matters regarding patent policies and often propose topics to develop the patent system internationally. It consists of highly industrialized countries in the world where a large number of patents are filed regularly.
After the 22nd Trilateral Conference in 2004, the USPTO took a step ahead and invited all the member states of the European Patent Convention, the European Commission, the European Patent Office, Japan, Australia and Canada for a separate meeting hosted by USPTO on substantive harmonization of international patent law. The meeting resulted in a Statement of Intent re: Patent Law Harmonization. As a part of this process, two working groups were formed. The first group works to reduce workload and improve harmonization and the second group focuses on development of intellectual property rights. Together with the Trilateral working group, it also focuses on overall development of patent policies of the US and internationally,
USPTO patent worksharing
The efforts of patent worksharing were first led by IP5, consisting of five members. Soon, with time, other nations in the world also started filing a significant number of patent applications as they continued to occupy a global place as an innovation hub. This led to two options: either to increase the member intake capacity of IP5 or to create a new forum for the budding innovation hub countries. In order to solve the issue, USPTO took a key step here by creating some unique gateways for reducing the inefficiencies of the intellectual property offices due to a lack of resources.
The USPTO patent worksharing strives for an inter-office collaboration which reduces the burden of extra patent filing, reduces time and improves the quality of the patent procedures. USPTO creates arrangements of patent worksharing. It enables all the patent offices for a collaboration regarding examinations of similarly or commonly filed patents. The patent worksharing initiative of USPTO is based upon the principles of foreign priority under the Paris Convention or Patent Cooperation Treaty.
The patent worksharing arrangement by USPTO are as follows:
- Patent Prosecution Highway (PPH) enables patent worksharing between two or more than two IP offices. Suppose an applicant wants to get a patent from two separate locations and has received an opinion in his or her favor from one patent office, he or she is able to request first-track examination to the second IP office. USPTO provides services of first-track examination and accelerated examinations of patent applications and is a party to multiple PPH arrangements including IP5 PPH arrangements and Global PPH.
- U.S. patents grant the users to obtain patents abroad based on the US patent. Accelerated Patent Grant (APG) and Parallel Patent Grant (PPG) are the two arrangements which enable them. APG is an arrangement between USPTO and its partner IP offices, which allows a recipient of a US patent to request a patent in the partner country based on the US patent without subsequent examination. PPG allows granting a foreign patent application which has been filed for a similar and approved patent application filed in USPTO.
- Other patent worksharing arrangements by the USPTO include the pilot programs like PCT Collaborative Search and Examination Pilot (CS&E) and Expanded Collaborative Search Pilot (CSP) to improve patent search.
Advancement of green technology by patent worksharing
The USPTO has also initiated steps to encourage the advancement of green technology by using the patent worksharing arrangements. USPTO has formed a collaboration together with the National Oceanic and Atmospheric Administration (NOAA) for a worksharing program that focuses on both intellectual property rights and climate and environmental technologies. Through the collaboration, the USPTO will share its knowledge for research and technology to NOAA. On the other hand, NOAA has decided to help the USPTO in proceeding for examination of patent applications regarding climate and environmental technologies.
USPTO is also a partner to the WIPO initiative promoting green technology, WIPO GREEN. The NOAA has decided to advise the USPTO on green energy initiatives, too.
US Government patent policies on industrial designs
Industrial design refers to the visual design and orientation of a product. It helps in increasing the attractiveness of a product, thus, helping to increase marketability and commercial value. Industrial designs are protected by intellectual property rights. While industrial designs can be protected by trademarks and copyrights, another way to protect it is design patent. Offered for a term of 15 years, it requires no maintenance fees.
The US government has taken certain noteworthy policies to protect the intellectual property rights on industrial designs through design patents by means of becoming signatories to certain international treaties and through collaboration.
Industrial Design Forum (ID5)
Similarly to IP5, a collaboration by five of the leading patent offices in the world to focus, improve and harmonize international patent laws and related procedures, ID5 is the collaboration of five of the largest industrial design offices in the world. The five offices collaborating on ID5 are the China National IP Office (CNIPA), the European Union IP Office (EUIPO), the Japan Patent Office (JPO), the Korea Intellectual Property Office (KIPO) and the USPTO. According to USPTO, the five industrial design offices together as ID5, represent approximately 90% of application fillings on industrial design applications annually.
As a member of the ID5, the USPTO works on to increase effectiveness and consistency of industrial design protection, improving practices and policies on the examination procedures of design registration applications and identifying and creating solutions for ongoing challenges and problems. It also takes initiatives to promote sustainable development.
Recently, in April 2023, as an ID5 member, the USPTO has announced Trademarks for Humanity awards to provide recognition to brand-owners who are working to solve humanitarian challenges, especially in regards to climate and environmental issues.
Geneva Act of the Hague Agreement
The Geneva Act (1999) of the Hague Agreement, also known as the Hague Agreement, provides the same intellectual property rights to design patents as the Patent Cooperation Treaty (PCT) provides to utility patents and the Madrid Protocol for trademarks. It deals with the international registration of industrial designs. It enables the applicant to file a single design patent application and that application, if approved, will grant the applicant design protection rights to all the member states of the Hague Agreement. The agreement was adopted in 1925 to govern the international registration of any design with minimal formalities by increasing efficiency and reducing workload through a cost-effective system.
The design registration under the Hague Agreement can only be obtained by a natural person through filing an application for registering the design with WIPO. The registration can be renewed or modified by a single step. The all-inclusive facility of an international filing of registration for industrial designs saves the applicant both time and money. Additionally, it offers protection for industrial designs not only in the home country but internationally.
The US joined the Hague Agreement in 2015. In 2012, the Patent Law Treaties Implementation Act of 2012 (PLTIA) was passed by the US Congress. Title I of the PLTIA provided provisions to implement the Hague Agreement in the US. The provisions enabled USPTO to allow US applicants to file international design applications as an office of indirect filing by using Form DM/1 and appropriate fees. It also allows the applicant to designate the US for offering design protection while filing international design registration applications.
Hague Working Group
Under the Hague System for the International Registration of Designs, it has multiple working groups to monitor and further develop the processes of registration by modernization. The Hague Working Group also focuses on improving operational efficiencies regarding the registration processes.
The US government is one of the active participants of the Working group and forward their opinions and suggestions at the annual WIPO meetings. It particularly focuses on improving efficiencies of the processes to ensure user-friendly service.
Standing Committee for the Law of Trademarks, Industrial Design, and Geographical Indications (SCT)
The Standing Committee for the Law of Trademarks, Industrial Design, and Geographical Indications (SCT) is an initiative by the WIPO, formed in 1998, with an intention to provide its members a platform for discussion of ideas and suggestions for the development of international law on intellectual property rights, particularly on laws on areas like trademarks, industrial designs and geographical indication. All member states of WIPO and Paris Union for the Protection of Industrial Property can be a member of this committee. Member states of the United Nations, designated WIPO observers (these include certain intergovernmental organizations, non-governmental organizations, industry groups and other stakeholders) are also allowed to join the committee as observers. The SCT holds regular sessions and annual meetings to discuss relevant issues on trademarks, industrial designs and geographical indications and find solutions.
The US government and USPTO, as members of the committee, take relevant steps to make the missions of the committee successful.
US Government patent policies on plant and plant variety protection
New plant varieties are protected under intellectual property rights in the US. The Plant Variety Protection Office (PVPO) works closely with USPTO to ensure patent protections to new breeds or species of plants. The history of plant patents in the US goes back to the enactment of the Plant Patent Act of 1930. The US government is also a signatory to key international treaties governing the plant patents.
International Union for the Protection of New Varieties of Plants (UPOV)
The International Union for the Protection of New Varieties of Plants (UPOV) is an international organization established by the International Convention of Protection of New Varieties of Plants, also known as UPOV Convention in 1961. The Convention was subsequently revised in 1972, 1978 and 1991. It is an intergovernmental organization with its headquarters in Geneva, Switzerland. The mission of the UPOV is to promote and develop effective practices and procedures of plant variety procedures, including the steps of patent examination. It encourages development of new varieties of plants and plant breeding with benefits to the society at large through providing them intellectual property rights, known as breeder’s rights. UPOV adopts a sui generis system of plant protection that suits the individual needs of plant breeders.
As of September 18, 2022, UPOV has a total of 78 members. 17 states are bound by the 1978 Act of the UPOV Convention. 59 States and 2 organizations are bound by the 1991 Act. 19 states and one intergovernmental organization named African Regional Intellectual Property Organization (ARIPO), consisting of 20 member states of the African continent, have initiated the procedure to accede to the UPOV Convention.
The main objectives of the UPOV are as follows:
- To provide and develop legal, administrative and technical guidance for protection of new plant varieties;
- Assisting states and organizations to develop their own effective legislations regarding plant variety protections and subsequently to implement those;
- Creating public awareness of the UPOV system of plant variety protection.
The UPOV system has provided increased access to new foreign plant varieties and to develop domestic breeding programs. Through enhanced plant breeding protection, UPOV has also helped to diversify the areas of research and technologies in the plant breeding fields.
US became a signatory through the 1991 Act of the UPOV Convention and became a member of UPOV. USPTO, as a federal agency, guides the US government at UPOV meetings. Additionally, USPTO organizes educational programs for UPOV members.
International Treaty on Plant Genetic Resources for Food and Agriculture
The International Treaty on Plant Genetic Resources for Food and Agriculture is a treaty on plant genetic resources. It is known as the ITGRFA or Seed Treaty. Administered by the Food and Agriculture Organization of the United Nations, it was adopted in 2001 in an intergovernmental conference and entered into force in 2004.
The objective of the treaty is to conserve and promote sustainable use of all plant genetic resources for agricultural purposes and foods. It encourages “fair and equitable sharing” of the benefits of using plant genetic resources for food security in harmony with the Convention on Biological Diversity.
The main objectives of the treaty are as follows:
- To promote conservation and sustainable use of all plant genetic resources for sustainable agriculture as well as to increase food security across the world by means of standard material transfer agreement (SMTA).
- It promotes free exchange of plant genetic resources multilaterally and conservation of plant genetic resources. Hence, it contains a multilateral system of access and sharing of benefits.
- It highlights the contribution and efforts of various indigenous farming groups and their traditions that help to conserve plant genetic resources. It also empowers the farmers and indigenous communities with certain rights, known as the farmer’s rights.
- The treaty provides the right to save, use, exchange and sell farm-generated seeds and other propagating materials.
The said treaty was ratified by the US Senate in December, 2016 and the US became a member in 2017. In this regard, USPTO helps to formulate policies on farmer’s rights and supervises and protects intellectual property related matters on standard material transfer agreement (SMTA).
Collaborations by the USPTO with international organizations
The USPTO regularly collaborates with multiple international organizations, other governments, and intergovernmental organizations for the promotion of a sound patent policy and protection of patent rights. The USPTO Office of Policy and International Affairs performs the duty of regularly engaging with the said organizations. Some of these are as follows:
World Intellectual Property Organization (WIPO)
WIPO is an international self-funded organization under the United Nations that promotes the protection of intellectual property worldwide. It was established in 1967 and currently has a member of 193 states. The WIPO Convention governs the mandate, establishment and procedures and is termed as the “constituent instrument” of WIPO. The USPTO and WIPO regularly collaborate to formulate policies on various intellectual property matters, such as partnering for standard essential patents (SEP) related dispute resolutions matters. Standard essential patents are high-value patents for any organization and act as a standard means to protect an industrial standard. The owners of the patents agree to license those patents on “fair, reasonable, and nondiscriminatory terms”, also known as FRAND terms. These patents outline the typical output characteristics of a product and other patents are tested and compared with SEPs to test whether they meet the standard set by authorities. Some of the SEPs in the United States are USB, Wifi, JPEG etc. The disputes on SEPs are a complex matter and the USPTO partners with WIPO for resolving those.
Another important collaboration by USPTO is to partner with WIPO on matters on WIPO Green. It supports the exchange of technologies to combat climate issues, such as climate change and encourages innovation of green technologies as laid down in Chapter 34 of Agenda 21 of the United Nations Program of Action from Rio, 1992.
There are several other patent related matters on which the USPTO collaborates with WIPO to improve the patent policies and address disputes and also to encourage innovation.
Apart from WIPO, the USPTO has also collaborated with World Trade Organization (WTO) and International Trade Centre (ITC) to protect intellectual property rights in trade and commerce.
USPTO also works closely with the Organization for Economic Development (OECD) to help them with statistics, data and other resources as necessary.
During international trade and commerce activities, to ensure that the US companies do not face any problems abroad, USPTO closely works with representatives to address patent policies.
US companies particularly face many challenges in China and to tackle the issue, they have a dedicated China team that closely monitors and works with the issues US companies face there. The team also voices to reform IP policies in China.
Apart from this, the USPTO regularly holds an IP Attache Program that focuses on improving IP systems internationally. It also assists US stakeholders to protect their IP rights internationally in fields like entering in a new foreign market, obtaining and protecting patent rights in foreign jurisdiction and other legal challenges the US stakeholders may face. The regional organization USPTO engages for the program are: Asian-Pacific Economic Cooperation (APEC), Association of Southeast Asian Nations (ASEAN), UN Economic Commission for Europe (UNECE), UN Economic Commission for Latin America & the Caribbean (ECLAC), UN Economic Commission for Africa (UNECA) and UN Economic and Social Commission for Western Asia (ESCWA).
Other international treaties on patent-related intellectual property protection
International treaties on patents and related IP rights serve as the backbone for the international IP systems. The US, as a nation, is a member of various multilateral treaties, both administered by WIPO and non-WIPO. The two other treaties are as follows:
It is a treaty administered by WIPO. The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure, known as the Budapest Treaty, was adopted in 1977 and came into force in 1980. The treaty required all member states to recognize a microorganism deposited for patent.
When an invention is related to microorganisms, the applicant is required to deposit a biological sample containing the microorganism at the patent office where the application is being filed. If the applicant wants to file a patent application in multiple countries, submitting it to all the offices is not required as per the terms of the treaty. The rest offices will recognize the submission irrespective of the location of the office where the sample was initially submitted.
The US signed the treaty in 1977 and it came into force in 1980.
Non-WIPO administered treaty: TRIPS
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is administered by the World Trade Organization and came into force in 1995. It is one of the most comprehensive multilateral agreements on intellectual property which includes patents, trademarks, copyrights, geographical indication, exclusionary rights on new varieties of plants and others. It sets down the standards for regulating intellectual properties internationally and is applicable for all WTO members.
Other patent policy initiatives by USPTO
In order to increase expertise on the issues regarding protection of patents, both nationally and internationally, the USPTO has taken certain initiatives. The initiatives were opened to public comments and opinions. Based on public opinion, some of these initiatives were stopped. The initiatives are as follows:
In 2013, the US government took notice of high-tech patent issues and created a taskforce to make a fact sheet regarding those issues. One of the principal issues found by the taskforce group was regarding the ownership of patents. In response to this, the USPTO formulated a notice regarding the owners and applicants to update ownership information regularly. However in 2014, the initiative and rulemaking were completely stopped based on public opinion.
Digital and New Technology Designs
The US government has established a number of initiatives to protect the rights of inventors in the digital age. The Digital Millennium Copyright Act (DMCA) is a US copyright law that is designed to protect the rights of copyright holders. The DMCA makes it illegal to circumvent technological measures that are designed to protect copyrighted works. The US government also established the Copyright Office, which is responsible for registering and protecting copyrighted works.
In addition, the US government has established the Digital and new technology designs initiative. This initiative is designed to protect the rights of inventors in the digital age. The initiative is focused on protecting the rights of inventors who are developing new technologies and designs. This initiative covers a wide range of intellectual property, including software, databases, digital publications, and other designs.
Patents 4 Partnerships
The US government has established the Patents 4 Partnerships initiative to encourage collaboration between inventors and businesses. The initiative is designed to help inventors secure the resources they need to develop their inventions while also helping businesses to find new opportunities to license and commercialize new inventions. The initiative provides resources to help inventors develop their inventions, including funding, resources, and mentorship.
In addition, the initiative provides resources to help businesses find new inventions to license and commercialize by helping businesses identify new technologies and products that are suitable for commercialization.
Patents for Humanity
The US government has established the Patents for Humanity initiative to recognize inventors who are working to solve humanitarian challenges. The initiative recognizes inventors who are working to develop products or technologies that are designed to improve the lives of people around the world. The initiative provides resources to help inventors develop their inventions and make them available to the public.
Additional Patent Policy Initiatives
In addition to the initiatives mentioned above, the US government has established a number of additional patent policy initiatives. These initiatives are designed to promote innovation and protect the rights of inventors.
The US government has established the Technology Transfer initiative to encourage collaboration between universities, government agencies, and private industry. The initiative is focused on promoting the transfer of technology from research institutions to private industry in order to facilitate the development of new products and technologies.
The US government has also established the International Patent Cooperation initiative to encourage collaboration between countries in order to protect the rights of inventors. The initiative is focused on promoting international cooperation in order to protect the rights of inventors. The initiative also works to ensure that inventors receive adequate compensation for their work.
To improve policies and protect patent rights internationally, the USPTO established the Office of International Patent Cooperation (OIPC) in 2014. It primarily focused on global patent harmonization and improving the processes of international patent acquisition policies, mainly for helping US business grow abroad.
It strives to increase certainty for intellectual property rights internationally and also to reduce costs for international stakeholders. The USPTO already had several similar initiatives, such as:
- Global Dossier refers to those business services through which intellectual property rights stakeholders, such as individuals, organizations, groups and even governments can access dossier information of all applications filed in the related IP offices, namely those in IP5.
- Cooperative Patent Classification (CPC) helps to classify the patent information based on a specific subject matter. The classification system commonly used in the US was the United States Patent Classification (USPC) system. From 2013 onwards, USPTO started using CPC to classify US patents. The Cooperative Patent Classification (CPC) was jointly developed together with the European Patent Office (EPO) and has emerged to be one of the most used patent classification systems in the world.
- Collaborative Search Pilot Program (CSP), as the name suggests, deals with patent searches. This collaborative program by USPTO helps to share and exchange search and evaluation results to select the best invention. There are two such pilot programs run in collaboration with the Japan Patent Office (JPO) or the Korean Intellectual Property Office (KIPO).
- Patent Prosecution Highway (PPH) program of the USPTO enables other patent offices to promote worksharing between patent offices as well as to speed up the examination processes of patent application in the related patent offices. The USPTO has collaborated with Global PPH by WIPO and IP PPH. In addition to that, it has also collaborated with some of the national patent offices in the countries such as Brazil, France, Mexico, Malaysia, Morocco etc.
- Electronic Priority Document Exchange (PDX): It is a procedure which facilitates exchanging patent related documents electronically with other foreign intellectual property offices. Initially in 2007, the USPTO started to implement PDX with the European Patent Office (EPO) beginning, Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO). Later in 2008, USPTO expanded the program in collaboration with WIPO for patent offices listed in the WIPO Digital Access Service (WIPO DAS)
- International Authority Files allow for assessing the stage of completion of the patent application. It is classified in two types: Pre-Grant (Patent application publications) and Patent Grant (patents which have already been granted) Authority Files.
In addition to all the abovementioned efforts, the establishment of the OIPC is intended to implement the international patent cooperation efforts effectively.
Judicial views regarding US Government patent policy
In addition to the US Government patent policy, the US Courts, particularly the US Supreme Court, also takes an important step to formulate the patent policies as well as to supervise them, from the patent subject matter eligibility to patent infringement. In the form of landmark rulings to patent cases dated back to the early 19th century to the recently decided, the trend continues till date. This is not an exhaustive discussion but simply an attempt to elaborate the importance of US Courts in shaping the patent policy.
For example, in the case of O’Reilly v. Morse (1853), the US Supreme Court held that a patent claim not involving any practical application and to ask for an exclusive right for something not invented yet is too broad to be patented. In another case of Schillinger v. United States (1894), the Supreme Court held that the federal government cannot be sued for patent infringement. Subsequently, the US Congress passed 28 U.S.C. § 1498, which permits the patent owners to sue the United States if their inventions have been “used or manufactured by or for the United States without license of the owner.” The same decision was used for argument while deciding the case of Zoltek Corporation v. United States Of America (2007) to decide whether the Court of Federal Claims possesses jurisdiction to decide over claims for compensation by patent owners whose inventions have been “used or manufactured by or for the United States without license of the owner.”
The question of whether a living organism can be patented was thoroughly dealt in the case of Diamond v. Chakrabarty (1980), where the Supreme Court confirmed the decision of granting patent for a bacterium namely Pseudomonas putida capable of breaking down crude oil, which helped to advance scientific research and development.
On the other hand, in the Mayo Collaborative Services v. Prometheus Laboratories (2012), the US Supreme Court held that processes that help physicians to determine proper dosage levels of drugs for patients are not patentable under 35 U.S.C.S. § 101. The U.S. Supreme Court unanimously held that the subject matter of the patent are not patent-eligible.
The landmark Supreme Court decision in the case of Alice Corp. v. CLS Bank International (2014) gave rise to a comparatively newer kind of patent, known as business method patents and the case focussed on discussing the eligibility of the same. The USPTO defines the business method patents as a type of “utility patent that protects a method of doing business.”
In recent times, the cases of Mayo Collaborative Services v. Prometheus Laboratories (2012) and Alice Corp. v. CLS Bank International (2014) significantly changed the US policy views of patent subject matter eligibility, as stated by the USPTO.
In recent years, cases like University of California v. the Broad Institute Inc. (2018), where the US Supreme Court determined the rules of obviousness and non-obviousness for patent-eligibility regarding the use of CRISPR-Cas9 system to cut DNA system. Again the case of Apple Inc. v. California Institute of Technology (2022) reasonably limited the opportunities for challenging patent validity by a third party and also has been a source of strain between the holistic relationship between government and the judiciary.
The unanimous decision by the Supreme Court in the recent case regarding patent enablement dispute under 35 USC § 112 namely Amgen inc. v. Sanofi (2023) opened a path for discussion whether it became more difficult for life science companies to obtain broad patents for the claim for an entire genus of antibodies performing a specified function.
The patent rights not only provide an inventor with the sole ownership of the invention but also provides an economic incentive to the inventor. Hence, a sound patent policy should cater to the needs of both. The US government patent policy is designed in such a way that not only encourages innovation but also seeks to protect the patent rights of the inventor, as perfectly asserted by the great American President Abraham Lincoln that the US patent system adds “the fuel of interest to the fire of genius.”
The US government has long been a leader in the field of patent policy. The US government has established a number of initiatives to protect the rights of inventors and encourage innovation. These initiatives provide a comprehensive overview of the US government’s patent policy and are designed to ensure that inventors are adequately compensated for their work. The US government also has initiatives to promote collaboration between inventors and businesses, such as the Patents 4 Partnerships and the Patents for Humanity initiatives. Finally, the US government has established initiatives to promote international patent cooperation, such as the Technology Transfer and the International Patent Cooperation initiatives.
Overall, the US government has established a comprehensive set of initiatives to protect the rights of inventors and encourage innovation. This comprehensive set of initiatives provides an overview of the US government’s patent policy and is designed to ensure that inventors are adequately compensated for their work.
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