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As foreign inventive activity will be considered in a determination of which inventor was the first to invent, fairness to both U.S. and foreign inventors demands certain sameness of treatment in regard to relying on inventive activity in the United States and abroad. Consequently, the inability of an inventor to rely on a date of invention in the United States where the invention has been subsequently abandoned, suppressed or concealed (section 102(g) of the patent law) should apply equally to the inventor relying on foreign inventive activity.

Unchanged is the present practice that following a determination of which of several inventors was the first to invent a particular invention, the losing party is precluded from patenting the invention in dispute, even if the invention of the winning party was not made "in this country" as in section 102(g) of title 35 of the United States Code. The losing party is precluded by interference estoppel from successfully claiming the invention in dispute or an invention that is patentably indistinguishable from the invention in dispute (see In re Deckler, 24 USPQ2d 1448 (Fed. Cir. 1992).

While the change to section 104 of the patent law is not scheduled to enter into force until a year after the establishment of the WTO, changes already made to this section to implement the NAFTA (Pub. L. 103-182, November 8, 1993) as well as the implementing regulations to be published this fall, will preview this further change. The implementing bills also provide that persons serving in the armed services of one of the WTO Member countries are extended the special provisions for those serving in the U.S. armed services regarding the ability to rely on a date of invention while serving in another country.

Section 9 of S. 2368 and H.R.

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The Nature of the Patent Right

Article 28 of the TRIPS Agreement requires Members to provide that a patent to a product shall confer on its owner exclusive rights to prevent others from making, using, offering for sale, selling, or importing that product. In regard to a patent to a process, the exclusive rights conferred prevent others from using the process, and from using, offering for sale, selling, or importing the product obtained directly from the process. The implementing bills amend sections 41(c)(2), 154, 252, 262, 271, 272, 287, 292, 295 and 307 of the patent law to align the patent rights conferred on the owner of a patent with the requirements of Article 28 of the TRIPS Agreement.

Some of the changes made to section 154 of the patent law add to the rights of a patent owner of an invention the right to prevent others from offering the invention for sale or importing it into the United States, and add to the rights of a process patent owner the right to prevent others from offering to sell the product of the process. Changes to the other sections are made to conform the language in those sections to the expanded rights conferred by the amended section 154. Other changes are made to section 154 to change the term of a patent in accord with Article 33 of the TRIPS Agreement.

Section 10 of S. 2368 and Section 8 of H.R. Term of Protection of a Patent.

The current term of protection of a U.S. patent is 17 years measured from the grant of the patent, provided the required fees for maintaining the patent in force are paid. Article 33 of the TRIPs Agreement requires that the term of protection

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available with a patent shall not end before the expiration of a period of 20 years measured from the filing date of the application for the patent.

These Sections amend section 154 of the patent law to provide that the term of protection begins on the date of grant and ends 20 years from the date of the application for the patent. If the priority of an earlier application or applications is claimed under sections 120, 121 or 365(c) of the patent law, the 20-year period is measured from the date of the earliest of such earlier applications. S. 2368 provides that the 20-year term may be extended for up to five years for delays in issuance of the patent due to interferences or because of national security considerations. H.R. adds an extension for up to five years for delays in issuance of the patent due to patentability appeals to a federal court. The Administration supports this addition.

The Paris Convention for the Protection of Industrial Property requires that the terms of protection of patents for the same invention granted by different countries should generally be independent of one another. This precludes the United States from measuring the term of protection from the filing date of a foreign filed application, even though the benefit of that foreign filing date is subsequently claimed in an application to the same invention filed in the United States. To give U.S. inventors a similar opportunity of having an initial application filing which does not serve as the basis from which the term of protection is measured, the implementing bills provide for a provisional application filing in the United States.

Section 111 of the patent law is amended to provide for a provisional application which must be followed within 12 months by an application to the same

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invention. The provisional application will not require claims and will have a filing fee of only $150.00, which may be paid after the filing of the application. The provisional application will become abandoned after 12 months. The laterfiled application is able to claim the benefit of the filing date of the provisional application. The term of protection for the patent that results from the application runs from the filing date of the application, even though the application has the benefit of the filing date of the provisional application. The benefit of the filing date of the provisional application may also be claimed when filing applications for the same invention abroad.

The term of 20 years from the filing date will apply to all applications filed after a transitional period of six months measured from the date of enactment of the legislation. During this six-month period, those having patent applications pending before the Patent and Trademark Office will be able to file continuations or continuations-in-part without having the term of protection measured solely from the earliest priority date claimed. Instead, pursuant to Article 70 of the TRIPS Agreement, these applications filed before the end of the six-month period, as well as patents that are in force at the end of the six-month period, will be able to benefit either from the 17 years from grant term or the 20 years from filing term, whichever is greater.

*While the substance of the two bills is very similar. H.R.

contains some

improvements offered after the introduction of S. 2368, several of which are in

the effective date provisions.

Mr. HUGHES. Mr. Shapiro, Welcome.

STATEMENT OF IRA S. SHAPIRO, GENERAL COUNSEL, OFFICE OF THE U.S. TRADE REPRESENTATIVE

Mr. SHAPIRO. Thank you, Mr. Chairman. This committee needs no statements from me about the importance of intellectual property. You and your predecessors as chairmen have been working in this arena for a long time. But it is true that only in recent years has the true importance of intellectual property protection for U.S. industries in foreign markets become an increasingly clear and important priority in our trade policy. And frankly, there is no area that Ambassador Kantor and his predecessor, Ambassador Hills, spend more time on than the intellectual property arena.

There are very few countries in the world where we haven't negotiated and fought for copyright, patent and other intellectual property protection, country by country, industry by industry, oftentimes, and then when we have gotten strong laws, we have gone after the ability to enforce them. And, Mr. Chairman, without exaggeration, that goes from the European Community to Ecuador, from Japan to Jamaica, and from China to Chile. But as we have gone after these problems on a country-by-country basis, we have also recognized that the most important thing we could do to advance U.S. intellectual property protection is to have a TRIPS agreement that would bring 120 countries up to a high standard of intellectual property protection.

As you said, Mr. Chairman, we all often focus on the disappointments that we had in certain areas, like national treatment and the overly long transition periods, but my statement and Secretary Lehman's lay out, as you have indicated, Mr. Chairman, the accomplishments in TRIPS which truly are important and indeed historic for the full range of our intellectual property industries.

And what we are here today to address is the question of implementation of some of the provisions that were negotiated in TRIPS. And I need, rather than start with the technical points or get into rhetoric about the trade agreement, I need to make one commonsense point which sometimes gets lost in the discussion.

In this area, the United States stands to gain the most. We are a country that already provides high levels of intellectual property protection. We are seeking to bring other countries up to our level of protection, and we are the world leader in the industries that benefit most from the protection. This is about bringing other nations up to our level and getting the protection for our industries around the world.

We need to make relatively few changes in our law to implement the agreement fully, while other nations are going through considerable pain because they have to put in place new legal and regulatory regimes. If you go around the world, whether it is Taiwan, India, or Argentina, you will find that the intellectual property obligations that we negotiated in the TRIPS, agreement, a negotiation that was driven by the United States' negotiators from the beginning, those are huge political issues in those countries because they have to put new regimes in place. And as we consider the implementing legislation today, and we appreciate the chance to have this hearing, we have to say that the gains of the TRIPS agreement