CRYSTAL CITY, Va. -- When it comes to processingbiotechnology patent applications, the Patent and TrademarkOffice faces an inventory problem, according to Charles E. VanHorn, the PTO's patent policy and projects administrator.

"In 1991, the backlog -- which we prefer to call 'the inventory'-- was 17,336 pending patents," Van Horn told the NinthInternational Biotechnology Symposium here.

The inventory has been building at the PTO becausebiotechnology patent applications have been increasing inrecent years. Just 30 biotechnology patent applications weremade in 1978, while the number is expected to reach 10,000this year, Van Horn said.

The backlog helps explain the grumbling among industryofficials -- and the array of proposed solutions to whittle itback.

"Our patent system is completely upside down," Robert A.Armitage, Upjohn Co.'s vice president for patents andtrademarks, told the same session on Tuesday. "We need tomake several fundamental changes to turn it right-side up."

Some help may be on the way, Van Horn said. An advisorycommittee convened two years ago to recommendimprovements in the U.S. patent system is expected to deliverits final report on Monday to Secretary of Commerce Carla Hills.

Among the proposals of key interest to the biotechnologycommunity are some intended to harmonize the U.S. andEuropean systems:

-- The first to file an application would have priority over thefirst to invent.

-- An application would be published within 24 months.

-- The patent term would be extended to 20 years.

-- An assignee of an invention could file a patent application.

Van Horn said the PTO advisory committee was made up of"corporate users, small businesses, two universityrepresentatives and two representing the public interest." Hesurmised that the report would lead to legislation, "dependingon what happens in November."

Those proposals won't address a problem raised by Gerald J.Mossinghoff, the head of the Pharmaceutical ManufacturersAssociation. The severest problem, he said, "is frustration withkeeping skilled examiners in biotechnology. As soon as they aretrained, industry hires them away," typically at higher wages.

Publishing the contents of an application would address acomplaint raised by Upjohn's Armitage. "Everything done in thePatent and Trademark Office, from the time an application isfiled until the patent issues, is done in total secrecy. You neverknow what patents might issue to a competitor -- for years."

The U.S. is alone in not opening up patent applications to publicview after a set period of time, he said. "This is an upside-downway to protect a patent application," he continued. "It's adisadvantage to the business community for planning itsinvestments and future actions."

-- David N. Leff Science Editor

(c) 1997 American Health Consultants. All rights reserved.

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