Patent Issues Arising from the US-Korea Free Trade Agreement

This week, US Congress ratified a negotiated free trade agreement with (South) Korea. The agreement includes a major section on intellectual property law.

Agreed to terms include the requirements that each nation:

  • Make patents available for any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves an inventive step, and is capable of industrial application.
  • May only exclude inventions from patentability when it is necessary to protect public order or morality; or when the invention is a diagnostic, therapeutic, and surgical procedure for the treatment of humans or animals. However, the fact that a particular practice is against the law of a nation may not be used as a reason to deny patentability.
  • May only revoke a patent on grounds that would have justified a refusal to grant the patent.
  • Shall not allow third-party oppositions of pending patent applications (pre-grant).
  • Will offer at least a 12-month pre-filing grace period for disclosures authorized by or derived from the patent applicant.

The agreement must also be ratified by the Korean National Assembly. Read the US-Korean agreement here: /media/docs/2011/10/asset_upload_file273_12717.pdf. US Congress also passed similar agreements with the Latin American Nations of Panama and Columbia.

Design Registration? The agreements all additionally call for the parties to “make all reasonable efforts to ratify or accede to … the Hague Agreement Concerning the International Registration of Industrial Designs (1999) and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989).” The United States is not currently a signatory to either of these agreements.

Further agreements in the air: The US passage of the Leahy-Smith America Invents Act has been taken as a signal that further harmonization efforts may also be successful. In particular, it appears that many nations would be willing to implement a new US-style grace period at least if they are limited activities subsequent to a non-commercializing public disclosure authorized by or derived from the patent applicant or inventor.

 

29 thoughts on “Patent Issues Arising from the US-Korea Free Trade Agreement

  1. There finally coming around to my way of thinking. If its benificial to human advancement new and useful and capable of contributing to a free market system of capitalism grant the patent for anything new and valuable and in need of protection including the inventor who invented it because he is in danger to from the greedy thugs who want to steal it.

  2. anon, I watched the debate in the House committees and the House floor live. I think it was Smith who referenced Kappos’s statement about the grace period being so important, but I am not sure.

    As to everything in 102(a)(1) being excluded from being prior art to the inventor under 102(b)(1), this too was part of the the House debate. In fact, there was a staged colloquy between Smith and another member that expressed this opinion.

  3. Ned,

    Do you have documentation (and preferably in the congressional record) of your supposed interpretations?

    Mind you I ask merely for arguments sake as I am also of the crowd that believes that the language of the law -as it is – simply does not permit the introduction of the congressional record for interpretation.

    I will also note that I talked directly with my congressmen and senators about this issue prior to the bill’s passage into law, making no bones about how I felt about the actual language being used and how I felt that that language actually said. But I am only one man (sure, an anonymous man, but still only one man).

  4. Sockey, well I was and am POed.  A strong grace period was and is important for all the reasons many of us have argued before.  The statute can be read that any act of the inventor that creates prior art or a bar, is not prior art or a bar to him personally if it occurs within a year.  Any limitation to "non commercial" and to "public" is not in the statutory language as it is.   It is a interpretation.   But such interpretation is at odds with what the administration assured us was their interpretation before passage, if what Kappos said is to be given any weight.  The change is interpretation is what is so aggravating.

  5. That laughter you hear is not laughter with you.

    As for keeping up – the appearance that you are ahead of me (and that appearance is only to you personally) is only because you are facing the wrong direction.

  6. Ramona and Uncle John’s Uncle, that is who I am. he lived like a Pauper, it was his Restaurant. He saved and bought Real Estate so we could have a life. Obviously Mine starts now. So Ray is controlling my Patents with IAN. And the Mannings’ are living off my Inheritance. The game is over!
    Aunt Mary and Uncle John wanted no part. But Lou and Marcella took me so they could prosper!

  7. For the first time in recent memory Malcolm has gone below the surface of an item and actually read something.

    And for the hundredth time in the last month, a sockpuppet has posted some false and obnoxious gxrbxge out of buddy love for another sockpuppet.

  8. “The submission of potentially relevant art by 3rd parties is no more of a “proceeding” than the submission of an issue fee.”

    Are you high?

    No, you are ignorant.

    Try to keep up, though. Eventually you might succeed in actually keeping up. Maybe.

    Okay, probably not. But keep trying anyway. We need the laughs.

  9. Read the last sentence of Dennis’ post. “Non commerical!” “Public.”

    Dennnis’ last sentence has nothing to do with my comment nor my view of the actual treaty already signed. It is only that treaty and its relation to the AIA that I am addressing in my comments. I am not getting lost in other weeds at the moment.

    That is reading an awful lot of words and limitations into the plain language of the new 102(b)(1).

    I completely disagree. I think that that not accepting the fact that a very different “grace period” has been enacted is what takes “reading an awful lot of words and limitations into the plain language.” I think the plain language is what it is and that it is merely a personal grace period only. To make it more than that, to make it such that the system as a whole is a “first to disclose” as opposed to a “first to file” cannot be sustained by looking at that plain language of the new law.

    This is a betrayal to all of us, but mostly to America.

    I think this melodramatic statement is “over the top.” There is no “betrayal to all of us.” This is a change in law – nothing more, nothing less. This is not to say that the change in law itself is not one of a large scale, it is. But it is meant to be.

  10. No hijack at all. Read the last sentence of Dennis’ post. “Non commerical!” “Public.”

    That is reading an awful lot of words and limitations into the plain language of the new 102(b)(1).

    After all the smooth and kind words from Kappos about the US grace period being the holy grail, we get this? A highly limited, highly crapped version? Limited to NON COMMERCIAL activities and PUBLIC disclosures?

    That is not a grace period in any sense of the term Americans have traditionally understood the term.

    This is a betrayal to all of us, but mostly to America.

  11. To hijack the thread but for a moment, I think the treaty’s section 7 lends a particular thrust to one side of the new 102(b) exception debate:

    “7. Each Party shall disregard information contained in public disclosures used to determine if an invention is novel or has an inventive step if the public disclosure:

    (a) was made or authorized by, or derived from, the patent applicant, and

    (b) occured within 12 months prior to the date of filing of the application in the territory of the Party.”

    This language paints a VERY clear picture that the exception provided by public disclosure is ONLY a personal exception and is extremely shallow (that is, the exception does not cover indepedent invention).

    Of course, this shallow view is only the view of this particular treaty agreed to by the US.

    Take it for what it’s worth (and certainly not dispositive on its own) – if the US Office makes a statement that the new 102(b) exception is only for a (shallow) personal exception, and that announcement tracks closely to other actions by Congress (such as signing international treaties), I think that the courts may follow that logic as well…

  12. at least in terms of the language used

    MM,

    You are not treating the exact terms of the treaty to a one to one match up with the AIA, are you? Seriously?

    That’s a pretty lame move by any account.

    The submission of potentially relevant art by 3rd parties is no more of a “proceeding” than the submission of an issue fee.

    Are you high?

    Clearly one submission’s aim is to oppose the grant of a patent and the other is to secure the grant of a patent. These are so self-evidently and diametricaly opposed that your feeble attempt to link the two fails the sniff test.

    Can you not come up with anything better? At least think through your putdowns just a little please.

  13. I’m fairly sure the US is a member of Madrid, and has acceded to the Protocol (although not, of course, the Agreement).

  14. From the treaty:

    Let’s hear some applause!

    For the first time in recent memory Malcolm has gone below the surface of an item and actually read something.

    wtg Rut Row – few have achieved so much with MM.

  15. ” limited [to] activities subsequent to a non-commercializing public disclosure authorized by or derived from the patent applicant or inventor.”

    What is this? Some back-handed way to interpret the AIA to exclude from the grace period commercial activities?

    !!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

    Outrageous.

    !!!!!!!!!!!

    Really. This is too much.

  16. May only exclude inventions from patentability when it is necessary to protect public order or morality; or when the invention is a diagnostic, therapeutic, and surgical procedure for the treatment of humans or animals.

    B-b-b-ut the AIA forbids patents on hairbrushes that are “directed to human beings”!!!!!!

    Lulzalicious.

  17. From the treaty:

    Where a Party provides proceedings that permit a third party to oppose the grant of a patent, the Party shall not make such proceedings available before the grant of the patent.

    The AIA makes a distinction between post-grant proceedings (Section 6) and pre-issuance submissions (Section 8), at least in terms of the language used. There are no rules regarding any “proceedings” under Section 8. The submission of potentially relevant art by 3rd parties is no more of a “proceeding” than the submission of an issue fee.

    The rules regarding submissions under Section 8 also require that submissions be provided at the *latest* before the Notice of Allowance (or earlier). Thus, there is no “grant” of a patent to be opposed to.

    So many chicken little sockpuppets. So little time.

  18. Good point – is Section 8 of the AIA considered a “third-party opposition of pending patent applications (pre-grant)?

    Let’s see.

    Third-party – Yes
    oppositon – Yes
    of pending patent applications (pre-grant) – Yes.

    Well, MaxDrei, it seems to me that Section 8 of the AIA is in direct violation of this treaty.

  19. > Shall not allow third-party oppositions of pending patent applications (pre-grant)

    I am not familiar with pre-grant oppositions. How about third party observations, optionally through poor man’s opposition? A quick search through the PDF document did not provide any answers other than a section relating to inequitable conduct.

  20. Correct me if I’m wrong but I thought that the AIA is doing what the EPC did in 1973 namely provide for opposition post-issue but freedom for members of the public to make observations on patentability to the PTO pre-issue.

    Those observations do not turn ex parte proceedings into inter partes proceedings.

    Inter partes proceedings can be used to delay issue interminably, as several European countries were experiencing before they harmonised on post-issue opposition in 1973.

    Do you not think it a good idea then, that Korean companies can’t launch pre-issue oppositions against Korean patent applications in the name of American inventors?

  21. Like TRIPS, the trade agreement is permissive in that regard. Nations may exclude such procedures from patentability, but they do not have to do so. The trade agreement does not appear to change US law in that regard.

    However, I did notice that unlike TRIPS the trade agreement says “Each party may only exclude from patentability…” (emphasis added). That might plausibly constrict the judicially created exceptions to patentability, although that argument might be sidestepped by holding that things like laws of nature and abstract ideas are simply not inventions.

  22. Shall not allow third-party oppositions of pending patent applications (pre-grant).

    Didn’t we just pass a law to the opposite effect?

  23. or when the invention is a diagnostic, therapeutic, and surgical procedure for the treatment of humans or animals

  24. The first two points (“Make patents available for any invention…” and “May only exclude inventions from patentability…”) are taken almost verbatim from TRIPS, so I don’t think they change the status quo.

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