Patent Reform Act of 2007 - Update (Part 7)

Posted on September 23, 2007 by Brian Wm. Higgins

Summary: The House version of the Patent Reform Act of 2007 would bar submission of search reports prepared by non-U.S. citizens.


     H.R.1908, the Patent Reform Act of 2007, was introduced in the House of Representatives on April 18, 2007. As proposed, the Bill did not include Section 12, entitled "Additional Information," which made its way into the legislation when the House debated, and eventually passed, H.R.1908 on September 7, 2007. The table below, left column (after the jump), shows the original language of the provision, which would add a new Sec. 123 to Title 35 U.S.C. and grant the PTO authority to require prior art search reports. House Report 110-314 describes the measure as follows:

"The USPTO has discussed the need for some sort of examination support document [ESD] or applicant quality submission to improve the examination process. It may include a thorough search of the art in the field of the invention and in related fields in which one skilled in the art pertaining to the invention would expect to find information applicable to the invention. It is also expected that the information discovered by the search that is material to the patentability of the claimed invention be disclosed to the USPTO along with an analysis of how the information relates to the claimed invention and how the claimed invention is distinguished over the prior art information."

 

 

     During the House debate over H.R.1908, Section 12 was apparently amended, as shown in the table above, right column, to include a new provision that would limit prior art searches requested by the PTO to those conducted by U.S. citizens.

     Ostensibly, Section 12 could curtail the practice of outsourcing prior art search work to India, China, and other countries, a practice that seems to be gaining acceptance by U.S. law firms who are increasingly feeling pressure to reduce costs associated with patent legal services. However, it is not clear whether Section 12, if enacted, would be relied upon by the PTO to require that prior art searches, prepared in accordance with the PTO's new "Claims and Continuations Practice - Final Rule," effective November 1, 2007, be done by U.S. citizens. Currently, the PTO's "Guidelines For Examination Support Documents Under 37 C.F.R. § 1.265" does not mandate that prior art searches, conducted as part of ESD submissions, be performed only by U.S. citizens.
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Countdown to the New PTO Patent Rules - Part 2 of 2

Posted on September 18, 2007 by Brian Wm. Higgins

     Yesterday, Part 1 of this post identified issues of potential concern regarding the impacts of the new U.S. Patent & Trademark Office (PTO) rules on the number of continuation, continuation-in-part (CIP), and Request for Continued Examination (RCE) applications being prosecuted at the PTO for an invention. Below are some suggestions for dealing with the rule's limitations on the number of claims permitted in those patent applications, as suggested by Peter Weissman, a Partner at Blank Rome LLP.  In particular, patent applicants and their representatives should:

  • Carefully consider all claims in an application to ensure they add benefit to the application;

  • Review pending unexamined applications that exceed the 5/25 number of claims limitation in preparation to limit the number of claims or conduct a search prior to receiving a notification from the PTO; 

  • Be mindful of disclosed but unclaimed embodiments in the specification;

  • Consider conducting a search prior to filing an application, because a search could be used for the combined purpose of accelerating examination in one application and requesting additional claims beyond the allotted 5/25 limit in another application. But remember that these procedures could have a substantial negative impact on the scope of claims.

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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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Patent Reform Act of 2007 - Update (Part 3)

Posted on August 7, 2007 by Brian Wm. Higgins

Although the Senate and House versions of the Patent Reform Act of 2007 (S.1145 and H.R.1908, respectfully) may not find their way into a compromise bill that lands on the President's desk in 2007, the bills provide a glimpse into what the final legislation may look like.  For example, the new law will apparently contain substantial changes to section 102--Conditions for Patentability; Novelty--in order to implement the much-debated "first to file" system of granting patents.

Not everything will change, however.  A new section 102(a)(1)(A) of the law, which may look like the identical versions introduced in the Senate and House, could include some familiar provisions:

"(a) A patent for a claimed invention may not be obtained if--(1) the claimed invention was patented, described in a printed publication, or in public use or on sale--(A) more than one year before the effective filing date of the claimed invention"

That provision looks like the tried and true absolute novelty bar that patent practitioners are accustomed to (note the familiar one-year grace period).

Section 102(a)(1)(B) of the law, however, could be completely new:

"(a) A patent for a claimed invention may not be obtained if--(1) the claimed invention was patented, described in a printed publication, or in public use or on sale--(B) one year or less before the effective filing date of the claimed invention, other than through disclosures made by the inventor or a joint inventor or by others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor"

Under that new provision, it would appear that an inventor, for example, who publishes an article about his/her invention that is later claimed in a patent application (filed less than a year later) would not be barred under 102(a)(1)(B) from obtaining a patent (the article's publisher, or the inventor's employee who publishes information about the invention on its web site, would apparently be covered by the "others who obtained the subject matter..." language). 

Section 102(a)(1)(B) apparently would not allow an inventor to remove as prior art a printed publication of his/her invention made by a third party.  However, new section 102(b), could provide an exception to that prior art problem:

"(b) Exceptions-(1) PRIOR INVENTOR DISCLOSURE EXCEPTION- Subject matter that would otherwise qualify as prior art under subparagraph (B) of subsection (a)(1) shall not be prior art to a claimed invention under that subparagraph if the subject matter had, before the applicable date under such subparagraph (B), been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor, joint inventor, or applicant." (emphasis added)

A new section 102(a)(2) of the law may look like the following, if enacted in its current form:

"(a) A patent for a claimed invention may not be obtained if--(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention."

This new provision would appear to grant rights to the first person to file a patent application for a claimed invention (i.e., a "first to file" system).  The provision must be read in light of a new definition for "effective filing date," which may be included in a new section 101(h) of the law:

"(h) 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."

Comments:

  • Why, after more than a century of granting patents under a "first to file" system, is Congress now looking at changing the way in which priority of invention is granted in the U.S.?  There is plenty of debate about the reasons for change and its timing.  Arguably, a first-to-file system would strengthen U.S. patent rights globally by harmonizing the U.S. system with the rest of the world that has already adopted "first to file" patent systems.

  • While the complexity of section 102 may be reduced in the new law, the new provisions shown above will obviously need to be fully vetted in the courts before their full reach and impact will be appreciated.
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University of Baltimore Law Library Offers Patent and Trademark Search Seminar

Posted on August 1, 2007 by Brian Wm. Higgins

According to the University of Baltimore School of Law web site, staff from the U.S. Patent and Trademark Office (PTO) will provide free training on Tuesday, August 7, 2007, to inventors, would-be inventors, entrepreneurs, law firms, research firms and similarly interested parties in searching for U.S. patents and trademarks.  The training, conducting in cooperation with the Law School's Law Library, will teach how to use the PTO web site to search patents and trademarks, and how to access the PubWEST database, which is the same search tool used by PTO patent examiners.  Registration and continental breakfast are to begin at 8 a.m., followed by a training program from 9 a.m.-4 p.m.

Contact information:  Joanne Dugan; (410) 837-4373; patentlibrary@ubalt.edu.

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