Chapter

21

New Developments and International Patent Law

Tr i v i a
U.S. resident inventors accounted for more than 60 percent of all biotechnology patents issued since 200. Approximately 0 percent of all patents issued are related to software. In 98, ,00 software patents were issued. In 200, more than 9,000 were issued. In 2006, four U.S. companies (IBM, Hewlett-Packard, Micron Technology, and Intel) were on the USPTOs top 0 list of private sector patentees. Samsung, a South Korean company, was the number two recipient. The remaining five recipients were Japanese companies. In 2005, U.S. citizens filed 28,472 patent applications with the USPTO. Citizens of foreign nations filed 9,060 applications with the USPTO, with citizens of Japan filing the most applications, followed by citizens of Germany, Taiwan, the Republic of Korea, the United Kingdom, and France. In fiscal year 2006, the USPTO received more than 52,000 international or PCT applications, representing nearly 2 percent of all applications filed with the USPTO and representing a  percent increase over 2005.

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CHAPTERSUMMARY
The most significant new development in patent law is likely the Federal Circuits decision in State Street to largely discard the business method exception to patentability. So long as they produce a useful, concrete, and tangible result, mathematical algorithms, software, and business methods are patentable. In the wake of State Street, patents for Internet business methods, software patents, and e-commerce technologies have been applied for in tremendous numbers. Other new developments in patent law relate to inventions in the areas of medicine, pharmacology, and ag-biotech. Because patents granted by the USPTO have no effect in a foreign country, inventors desiring patent protection in other countries must apply for patents in each of the countries in which protection is desired. Because applying for and prosecuting patents on a country-by-country basis is expensive and cumbersome, inventors often rely on the protection afforded by the Paris Convention, a treaty adhered to by more than 70 nations. On the basis of an application filed in one of the member countries, the applicant may, within one year, apply for protection in any or all of the other member countries, and claim as its priority date the date the application was first filed. This 2-month period of time allows inventors to gather funding and engage in marketing analysis to determine in which countries patent protection should be sought. Another treaty, the PCT, facilitates the filing of applications for patents in member countries by providing a centralized filing procedure and standardized application format. The filing of an international application under the PCT affords applicants an international filing date and provides a later time period (up to 0 months) within which individual national applications must be filed. Other international conventions also exist, principally the EPO (a centralized patent system affording patent protection in as many of the member countries as the applicant designates in a single patent application), and TRIPs, by the terms of which the United States revised the duration of utility patent protection from 7 years from date of grant to 20 years from the date of filing of a patent application. The new PLT aims to simplify and streamline the process for international patent filings. Under U.S. law, it is necessary to obtain a license from the Commissioner of Patents before applying for a patent in a foreign country. Filing an application in the United States is equivalent to requesting a license, and when the USPTO issues a filing receipt, it will indicate whether the request is granted or denied. The USPTO may order an invention to be kept secret if national security concerns are implicated.

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INTER NETRESOU RCES

Federal statutes governing patents: USPTOs business method Web pages: THOMAS: http:/ /www.law.cornell.edu http:/ /www.uspto.gov/web/menu/pbmethod http:/ /thomas.loc.gov (Congresss Web site, allowing tracking of legislation by sponsor, key word, or bill number) http:/ /www.eff.org (information on cutting-edge patent and IP issues) http:/ /www.gigalaw.com (Web site providing legal information on Internet and technology-related issues and allowing users to subscribe to free, daily updates on breaking IP and patent news) http:/ /www.wipo.int (information about and text of the Paris Convention, PCT, and PLT) http:/ /www.wto.org (information about and text of TRIPs) http:/ /www.european-patent-office.org (information about and text of the European Patent Convention and European Patent Organization) http:/ /www.uspto.gov (See PCT home page and Chapter 800 of MPEP) http:/ /www.piperpat.com http:/ /www.uspto.gov/web/menu/other.html

Electronic Frontier Foundation: GigaLaw.com:

Information about, and text of, treaties:

USPTO information about PCT: Lists of patent attorneys and patent offices around the world:

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