Anticipate This!™ | Patent and Trademark Law Blog

Patent Reform Act of 2007 – Initiatives Relevant to Prosecution.

Posted in General Commentary, Statute Commentary by Jake Ward on January 27, 2008

  patref07

Considering the likelihood that we may actually see the Patent Reform Act of 2007 become a legal reality this year, this post highlights initiatives in the bills presently before Congress that may be of particular interest to patent prosecutors.  Much of the following information may also be found in the CRS Report and the Senate Committee Draft Report previously commented on by the AT!.

First-Inventor-To-File:

In an effort to harmonize U.S. law with the rest of the world, the U.S. would shift to a “first-inventor-to-file” from the present “first-to-invent” system in determining which individual has a right to a patent on an invention.  Under the “first-inventor-to file” system, an inventor who first files an application at the patent office will be presumptively entitled to the patent.  Unlike the present “first-to-invent” system, whether the first applicant was actually the first individual to complete the invention in the field will be irrelevant. 

The shift will also eliminate “interference” proceedings.  Interferences are complex and costly administrative proceedings that, although not commonly used, allow the Patent Office to determine the true first inventor of a contested invention.

Notably, the “first-inventor-to-file” system will still prohibit derivation where one individual copies another individual’s invention and then races to the patent office to file first.  To prevent individuals from obtaining patents on inventions obtained by derivation, both bills provide for an “inventor’s rights contest” that will allow the Patent Office to determine which applicant is entitled to a patent on a particular invention.

One-Year Grace Period:

Under current U.S. law, a public disclosure of an invention, such as a public use, sale, or publication thereof, starts a one-year clock running in which an inventor must file a patent application or the invention is dedicated to the public domain. 

According to the present bills, and potentially contingent upon a reciprocal change to European and Japanese patent laws, disclosures will qualify as prior art if they were made by 1) the inventor more than one year before the patent application’s filing date; or 2) a third party prior to the filing date and prior to the inventor’s disclosure.  Thus, an inventor would still be protected from losing a right to a patent by the inventor’s own disclosure.  However, the grace period would not protected the inventor from an earlier disclosure of a third party.

Assignee Filing:

Presently, only an inventor may make an application for a patent.  An inventor is also required to declare by appropriate oath or declaration that he or she is the “original and first inventor”.  The proposed S.1145 initiative allows, however, that a “person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.”  Thus, an assignee-company would be able to file a patent application on behalf of an inventor-employee having an obligation to assign to the company.

Post-Grant Review:

Post issuance review of an issued U.S. patent is currently conducted by reexamination proceedings (available both in ex parte and inter partes types).  To initiate a reexamination, any individual may cite art that raises a new and substantial question of patentability with respect to the issued patent.  For a variety of reasons not discussed here, however, reexamination proceedings have been sparingly used.

The present bills would provide a “post-grant review” proceeding that would begin, for example, within 12 months of the date the patent was issued.  The proceeding would give the patent owner an opportunity to amend to overcome any issues raised.  Importantly, a decision from the Patent Office would be required within one year of commencement of the review, and any patent left standing would be protected from a reassertion in other legal proceedings of the issues raised during post-grant review.

Pre-Grant Publications:

Most patent applications presently publish 18 months after filing, although an applicant may decide to opt out of publication as long as the applicant certifies that the invention will not be the subject of a foreign patent application.  The House and Senate bills would eliminate a possibility of opting out of pre-grant publication.

Pre-Issuance Art Submission:

Under the current law, a protest may be filed by any member of the public against a pending application under certain, and very narrow, circumstances (i.e., prior to the first of the date the application was published or the mailing of a notice of allowance).  Under the proposed initiatives, any person would be able to submit patent documents and other printed publications to the Patent Office within the later of 1) an issuance of a notice of allowance,  or 2) six months after pre-grant publication or the rejection of any claim in the application.  The submission would have to include a concise description of the relevance of each submitted document.

Tax Planning Method Patents:

Under the House proposal, tax planning method patents would be banned.  See the previous AT! post on tax-related patents here.

Mandatory Search Reports (aka Applicant Self-Examination):

Applicants are presently under a duty of disclosure to the Patent Office to indicate any art of which they are aware that may be material to patentability.  See a previous AT! article on the duty of disclosure here.

The Senate bill would also require that “applicants submit a search report and other information and analysis relevant to patentability”.  As compliance with this requirement would be costly (not even to mention the potential for inequitable conduct ramifications), an applicant would be exempted if it would qualify as a “micro-entity”.  This determination would be based on an enumerated list of factors including: income level; number of patent applications filed; small entity status; and assignment activity.

Inequitable Conduct:

See the previous AT! article on inequitable conduct here

The H.R. 1908 bill would provide that a holding of inequitable conduct is appropriate only if the patentee, its agents, or another person with a duty of disclosure to the USPTO intentionally misrepresents or fails to disclose material information, such that the USPTO would “have made a prima facie finding of unpatentability.”  S. 1145 would provide that information is material if it is not cumulative to evidence already before the Examiner, and “a reasonable patent examiner would consider such information important in deciding whether to allow the patent application.”  The standard for proving inequitable conduct would be set at “clear and convincing”.

USPTO Rulemaking Authority:

The Patent Office is currently limit to establishing regulations that govern the conduct of proceedings before it, and the recognition and conduct of patent attorneys.  The Senate bill would further grant the authority to “set or adjust by rule any fee established or charged by the Office”.  The House bill would authorize the Patent Office to “promulgate regulations to ensure the quality and timeliness of applications and their examination”.  The language of the House bill could greatly affect the Patent Office’s proposed claims and continuations rules presently being litigated, and that have been enjoined from becoming effective pending the outcome of the litigation.  See AT! post on the claims and continuations rules here, here, and here.

JW Note:  We would be greatly interested in hearing about the concerns of our practitioner-readers relating to the legislation.  Leave your comments as you may!

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