Patent Reform Act of 2007 - Update (Part 5)

Posted on August 23, 2007 by Brian Wm. Higgins

     In an earlier post, the proposed new 35 U.S.C. § 103(a), set forth in the Patent Reform Act of 2007, was summarized.  To illustrate how an obviousness analysis might be approached under the new § 103(a), assume I “invent or discover” a new invention on Day 1 in the U.S., reduce the invention to practice on Day 60, file a provisional patent application in the PTO on Day 80 (without any claims), and file a nonprovisional application on Day 250 (claiming the invention).  Under this scenario, Day 80 could be my “effective filing date” even though the provisional application did not include any claims:

“The ‘effective filing date of a claimed invention' is--(1) the filing date of the patent or the application for patent containing the claim to the invention; or `(2) if the patent or application for patent is entitled to a right of priority of any other application under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c), the filing date of the earliest such application in which the claimed invention is disclosed in the manner provided by the first paragraph of section 112.”   See proposed new § 100(h).

     However, if the invention is not adequately disclosed in the provisional application, my “effective filing date” could be Day 250. 

     It would appear, then, that, subject to the exceptions under proposed new section § 102(b) (see related post), any prior art available between Day 1 and Day 80 (or Day 250, as the case may be) could be used in an obviousness analysis by the PTO to reject my claims.  In other words, under the new first-to-file system, I would not be able to swear behind prior art using evidence of an earlier conception and reduction to practice.  Eligible prior art available between Day 1 and Day 80 (or Day 250) could include patents, printed publications, public uses, and sales of inventions. See new § 102(a).

 

Comments:



  • Clearly the proposed new § 103(a) statutory framework encourages me to rush to the Patent Office to file a patent application as soon as possible after my invention/discovery on Day 1.

  • It wouldn't be too much of a stretch to say that many organizational patent departments operate in a somewhat leisurely manner (or carefully and calculating, depending on your perspective) when it comes to processing invention disclosures.  That's understandable, given that under the first-to-invent system currently in place in the U.S., there is no real urgency when it comes to submitting a patent application to the PTO (absent the need to protect the invention for foreign filing purposes, or if there is a current infringer in the market knocking off your invention).  Invention disclosures will obviously need to be handled in a more expeditious manner under the first-to-file system.

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Patent Reform Act of 2007 - Update (Part 4)

Posted on August 20, 2007 by Brian Wm. Higgins

          The doctrine of obviousness has been called the “cornerstone of American patent law.” That could explain why the Supreme Court’s KSR v. Teleflex decision, which arguably tightened the doctrine in a way that could make it increasingly harder for inventors to obtain patents in the U.S., has resonated so loudly over the last several weeks. On the heels of KSR, however, is another possible shake up of the doctrine, this time emanating from the Legislative Branch in the name of Patent Reform. While it may be too early to ascertain whether the Patent Reform Act of 2007 will make the prospects of obtaining patents in the U.S. more uncertain, it is clear that it will affect the way inventions are analyzed under the doctrine of obviousness.

          Traditionally, the question of whether an invention was obvious under 35 U.S.C. § 103(a) involved considering the four “Graham factors”: (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness. Graham v. John Deere, 383 U.S. 1 (1966). However, under the proposed new § 103(a), as shown in the table below (juxtaposed with the current version of the law and showing proposed changes), the Graham factors may need to be applied in a different manner in the future.

 



          A key difference between the existing and proposed § 103(a) is the respective time periods defining eligible prior art. Traditionally, prior art been defined as what was available to those of ordinary skill in the art on or before the date the invention was made, which means the date of “discovery” (see the existing definition of “invention” in § 100(a), which is “invention or discovery”). Under the new law, however, prior art could be defined somewhat broader as what was available to those of ordinary skill before the effective filing date of the claimed invention (see the proposed definition of “claimed invention” in new § 100(i), which could be defined as “the subject matter defined by a claim in a patent or an application for a patent”). Those two dates—the invention/discovery date and the application filing date—could be months, or even years, apart. And during that intervening time period, a considerable amount of new prior art could be developed and used against a patent applicant. 

          Check back for a subsequent post that will summarize how the new § 103(a) could affect the approach to analyzing the nonobviousness of a new invention using the Graham factors.

Comments:

  • The versions of the Patent Reform Act of 2007 introduced in the Senate and House are S.1145 and H.R.1908, respectively
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