Guest Post: Protectionist PTO Memo is on a Collision Course with TRIPS

"The memo argues that manufacturing moving overseas is causing significant economic and national security damage and claims that these developments bear directly on the Director's statutory obligation to consider the effect of institution standards on the economy and the integrity of the patent system. It further notes that large companies lacking significant U.S. manufacturing are the most frequent users of IPR and PGR proceedings."

"With regard to nondiscriminatory practices, Article 27 further specifies that patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced. Based on memo's language, the USPTO will be more likely to institute an IPR or a PGR against a patent holder whose competing products are not manufactured in the United States."

USPTO Director John Squires issued a memorandum establishing a new policy for IPR and PGR proceedings that considers manufacturing location as an institution factor. The memo argues that overseas manufacturing relocation causes economic and national security damage, and notes that large companies with minimal U.S. manufacturing most frequently use these proceedings. Under this policy, the Director will evaluate whether accused infringing products and patent owners' competing products involve U.S. manufacturing when deciding institution. However, this approach raises WTO TRIPS compliance concerns. The United States is bound by TRIPS Article 3, requiring national treatment in intellectual property protection, and Article 27, mandating patent availability without discrimination based on product origin or manufacturing location. The policy's manufacturing-based criteria potentially violates these international nondiscrimination obligations.

Read at patentlyo.com