Please Kegn_US Patent. Terms Measured From Date Of Issue.

As co-inventor of U.S. Patent 4,398,249 I am very respectfully... requesting that Congress continue the current practice of measuring any and all US Patent terms from the DATE OF ISSUE, rather than from the date of filing as is presently being considered for purposes of GATT. Granting Patent terms measured from the date of issue is by far the single most fair practise because far too many unpredictable events outside the control of the applicants can and do arise to unduly delay the issuance of patents.

Our software based patent application was trapped in the Patent Office for 13 years as a direct consequence of the 1972 U.S. Supreme Court ruling in the case of Gottschalk v. Benson.

In that ruling, the Supreme Court held that the software based invention presented was the equivalent of a mathematical algorithm and therefore ineligible subject matter under the Patent Law.

The Patent Office thereupon took the broadest posible interpretation of that decision and for the next 10 years fundamentally disallowed almost all of the software based Patent applications, including ours. We had applied for a U.S. patent in 1970 and after passing through all of the due examination procedures our application had been given a notice of allowability in 1972. Soon thereafter the Benson decision was handed down, and the Patent Office withdrew the allowability in March 1973, rejecting the application entirely on the basis of their understanding of the Benson decision.

I spent the next 10 years defending the application on a pro se basis, Goeing myself travel the distance from the primary examiner to the Patent Office Board of Appeals, and from there to the Court of Customs and Patent Appeals, which in 1982 upheld the eligibility of the application.

After yet another unpredictable delay of one year by the Patent Office, the patent issued in 1983, fully 13 years after its filing date.

- 1.

It is precisely because of this experience, and the entirely unpredictable nature of the events which caused the undue delay between filing and issuance, that I very much fear any change which would provide a Patent term beginning from anything but its date of issue.

Had the present legislation stipulated Patent terms from the date of filing, as currently proposed, then we would have been unfairly denied a very substantive portion of the Patent's lifetime.

Therefore, I very strongly believe that Patent terms must continue to be granted from their date of issue because personal experience has proved such practise to be the single most fair procedure.

APPENDIX 7.-STATEMENT BY GENENTECH, INC., AUGUST 12, 1994

STATEMENT OF GENENTECH, INC.

BEFORE THE

JOINT HEARING OF THE

SUBCOMMITTEE ON INTELLECTUAL PROPERTY AND

JUDICIAL ADMINISTRATION
COMMITTEE ON THE JUDICIARY

U.S. HOUSE OF REPRESENTATIVES

AND

SUBCOMMITTEE ON PATENTS, COPYRIGHTS AND TRADEMARKS

COMMITTEE ON THE JUDICIARY

U.S. SENATE

AUGUST 12, 1994

EXECUTIVE SUMMARY

Genentech, a leader in the American biotechnology industry, supports the proposed legislation to implement the Uruguay Round of the General Agreement on Tariffs and Trade (GATT). We welcome the positive changes made in the agreement to strengthen intellectual property protection worldwide. With certain changes in the implementing bill, we support the proposed changes to United States patent law, including the 20 year from filing patent term.

BACKGROUND

The American biotechnology industry is a vital economic success story. The growth of this industry over a short 18 year period has been meteoric. Our biotech firms have produced dozens of new treatments for diseases, agricultural, and environmental products using the best of American science, fueled by risk capital and a strong intellectual property system.

Few other industries can point to a single intellectual property based court decision as a seminal event in their history. But the biotechnology industry marks its emergence as an industry from 1980 when the Supreme Court decided the case of Diamond v. Chakrabarty, 447 U.S. 303; 206 U.S.P.Q. 193 (S.Ct. 1980). This is so, because without the incentives to innovate offered by our patent system and the commensurate protection against free riding there would be no biotechnology industry. The Supreme Court's decision in Chakrabarty and subsequent actions by the courts, and the Congress (especially including the Process Patent Amendments), have strengthened the United States patent system.

GATT

The original goals of the Punte Del Este Declaration in the Uruguay Round were predominately to improve intellectual property protection for United States inventors outside the United States. The assumption for virtually all of the years of negotiation within the Uruguay Round was that there was little need to change United States intellectual property law except to the extent that it was necessary to conform to the GATT, or to secure some other similar or larger benefit from other trading partners.

There were at least two major United States goals in the patent context that were of importance to the United States

Kastenmeier and Beier, International Trade and Intellectual Property: Promise, Risks and Reality, 22 VAND. J. TRANSNATIONAL, 285 (1989).

biotechnology industry. First, the United States wanted to expand the list of patentable subject matter in the developing world. Second, we wanted to expand patent term in other countries, both developed and developing, to a minimum of 20 years from filing. We succeeded in both areas, but with some exceptions or limitations.

GATT PROBLEMS

SUBJECT MATTER

This

The proposed GATT agreement substantially improves subject matter protection by eliminating pharmaceuticals and chemicals from the list of unprotectable matter. This change will, in time, mean that other nations will no longer be able to avoid offering patent protection to these classes of inventions. change will eventually reduce piracy and improve our trade balance. Unfortunately, the language on excludable subject matter in the patent context includes some inventions related to biotechnology.

Under the terms of Article 27 (3) (B), Contracting Parties to the GATT (soon to be the World Trade Organization [WTO]) will be allowed to exclude from patentability the following:

"...plants and animals other than microorganisms, and essentially biological processes for the production of plants and animals other than non-biological and microbiological organisms..."

This language excludes from patent protection some subject matter that would be protected under United States law, especially in the area of genetically altered plants. It is our understanding from discussions with the Executive Branch that this language is a modification of the excludable patent subject matter language that is used in the European Patent Convention (EPC). We expect that this language will be applied in the same manner as that EPC language has been construed by the European Patent Office. This would leave us with most of the patent protection we need for our inventions outside the United States, but with less protection than is available in the United States.

The language on patentable subject matter is subject to review after a four year time period by the WTO. [Article 27 (3)(b)). It is our construction of this Article of the GATT and a view expressed by the Administration that this review cannot result in any diminution of patent protection in this area. Moreover, any changes in this area of patent protection would need to be adopted using the consensus rule-making process within the WTO.