As Congress continues to propose new legislation to “improve” the Leahy-Smith America Invents Act (AIA), practitioners and stakeholders must not forget that significant law and rule changes implementing the Patent Law Treaty of 2000 (PLT) take effect December 18, 2013. The Patent Law Treaties Implementation Act of 2012 (PLTIA) was enacted on December 18, 2012, and the USPTO published its final rules on October 21, 2013. As I wrote previously, some of the most significant changes relax the requirements for securing an application filing date, provide for restoration of a priority claim if an application is unintentionally filed beyond the priority term, and eliminate the “unavoidable” standard for reviving abandoned applications and obtaining acceptance of delayed fee payments. The USPTO’s final rules also make other changes to miscellaneous application filing and processing rules.
Many thanks to my colleague Andrew Baluch for his contributions to this article.
One of the provisions of the Innovation Act introduced by Congressman Goodlatte (R-VA) on October 23, 2014, purports to codify the doctrine of obviousness-type double patenting for applications and patents examined under the first-inventor-to-file regime. However, the proposed statutory language appears to both go too far (including possibly making double patenting a basis for inter partes review) and not far enough in its attempt to carry forward the judicially-created doctrine.
On October 23, 2014, Congressman Goodlatte (R-VA) introduced the “Innovation Act,” which is intended “to make improvements and technical corrections” to the Leahy-Smith America Invents Act (AIA) “and for other purposes.” Although the bulk of the Act focuses on patent litigation, Section 9 includes significant changes to a variety of substantive provisions of U.S. patent law that will impact an applicant’s ability to obtain a patent in the first place. A hearing before the House Judiciary Committee is scheduled for Tuesday, October 29, 2013.
On September 16, 2013–the second anniversary of the America Invents Act (AIA)–the USPTO will host a forum on the AIA at its Alexandria, Virginia campus. The USPTO AIA forum will provide an overview of AIA implementation to date, and will include an opportunity for practitioners and stakeholders to ask USPTO representatives about specific provisions of the AIA.Continue reading this entry
As I wrote previously, Congressman Goodlatte (R-Va.) released “a discussion draft” of patent reform legislation on May 23, 2013. Although the stated purpose of the draft legislation is to “address the ever increasing problem of abusive patent litigation,” it also includes other significant proposed changes, including provisions that would eliminate Section 145 actions and eliminate Exelixis I-type Patent Term Adjustment (PTA), as I summarized in this article. Here, I look at the provisions that would codify the doctrine of obviousness-type double patenting (OTDP). Continue reading this entry
As reported on the House Judiciary Committee website, on May 23, 2013, Congressman Goodlatte (R-Va.) released “a discussion draft of legislation designed to address the ever increasing problem of abusive patent litigation.” This draft legislation comes on the heels of the Patent Abuse Reduction Act of 2013 (S. 1013), which was introduced in the Senate by Senator Cornyn (R-Tx.) on May 22, 2013. While much attention has been focused on the patent litigation provisions of these bills, the Goodlatte proposal also would, among other things, eliminate Section 145 actions and eliminate Exelixis I-type Patent Term Adjustment (PTA). While this bill has not been introduced in the House, it is supported by Senator Leahy (D-Vt.) who may introduce similar legislation in the Senate. Continue reading this entry
While U.S. patent practitioners have been focusing on the changes to U.S. patent law embodied in the Leahy-Smith America Invents Act (AIA), Congress has taken additional steps to harmonize and streamline patent application procedures in accordance with an international treaty, the Patent Law Treaty of 2000 (PLT). The Patent Law Treaties Implementation Act of 2012 (PLTIA) was enacted on December 18, 2012, with a one-year effective date of December 18, 2013. The USPTO has published proposed rules to implement the PLT provisions, and will consider written comments received by June 10, 2013. Stakeholders will be interested to see the changes that relax the requirements for securing an application filing date, provide some flexibility in making a priority claim after the priority term has expires, and eliminate the “unavoidable” standard for reviving abandoned applications and obtaining acceptance of delayed fee payments.
On March 25, 2013, the USPTO published final rule changes to “Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review.” The rule changes have an effective date of March 25, 2013, and relate to statutory changes with an effective date of January 14, 2013.
The Dead Zone
The AIA created two new procedures for challenging a patent within the USPTO: Post Grant Review and Inter Partes Review. As enacted, Post Grant Review only can be requested within the first nine months after a patent grants, and Inter Partes Review only could be requested thereafter. However, Post Grant Review only is available for patents examined under the first-inventor-to-file provisions of the AIA (which only apply to certain applications filed on or after March 16, 2013). This created a “dead zone” for patents that are not subject to Post Grant Review, because they could not be challenged within the USPTO within the first nine months after grant or reissue.
The AIA Technical Corrections Act
The AIA Technical Corrections Act stemmed from HR 6621, and eliminated the Inter Partes Review dead zone by providing that the nine month time period restriction does not apply to patents that are were not examined under the first-inventor-to-file provisions of the AIA. Thus, under the AIA Technical Corrections Act, an Inter Partes Review proceeding to challenge a “first-to-invent” patent or reissue can be brought anytime once the patent or reissue is issued.
By the terms of the AIA Technical Corrections Act, these statutory changes took effect on January 14, 2013 (the date of enactment) and apply to proceedings commenced on or after that date.
The USPTO Rule Change
To implement these statutory changes, the USPTO has amended 37 CFR § 42.102(a) to read as follows:
(a) A petition for inter partes review of a patent must be filed after the later of the following dates, where applicable:
(1) If the patent is a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act, the date that is nine months after the date of the grant of the patent;
(2) If the patent is a patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act, the date of the grant of the patent; or
(3) If a post-grant review is instituted as set forth in subpart C of this part, the date of the termination of such post-grant review.
A “patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act,” is a patent that was not examined under the first-inventor-to-file provisions of the AIA, the applicability of which is set forth in section 3(n)(1) of the AIA. Using the short-hand used in the Federal Register Notice, a “patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act,” is a “first-to-invent” patent.
No Notice And Comment Period
As noted above, the USPTO published the final rule changes on March 25, 2013 and the rule changes have an effective date of March 25, 2013. The USPTO explained why this rule change was not subject to a notice and comment period:
Good cause exists to make these procedural changes without prior notice and opportunity for comment and to be effective immediately so as to avoid inconsistencies between regulations and the AIA Technical Corrections Act.
An Important Correction
This correction could be important to patents that may be involved in litigation, because the Inter Partes Review statute requires that a petition for Inter Partes Review be brought within one year after the petitioner has been served with a complaint alleging infringement. Without the correction, an accused infringer would have to wait until nine months after grant to petition for Inter Partes Review, even if the one year clock was running.
Now that the first-inventor-to-file provisions of the America Invents Act (AIA) have taken effect, stakeholders should understand how to preserve the first-to-invent status of patent applications that were filed before March 16, 2013.Continue reading this entry
Now that the March 16, 2013 effective date of the first-to-file provisions of the Leahy-Smith America Invents Act (AIA) is fast-approaching, I have been reviewing the commentary in the USPTO’s February 14, 2013 Federal Register Notices publishing the final First Inventor To File rules and Examination Guidelines. Comment 12 of the Guidelines, which relates to experimental use, caught my attention. Continue reading this entry
Now that we are less than one month away from implementation of the First-Inventor-To-File provisions of the America Invents Act (AIA), stakeholders are considering whether to file new patent applications now, to secure examination under the current First-To-Invent patent system, or wait until March 16, 2013, so that the applications will be governed by the new U.S. patent laws. While there are a few situations where delaying filing could be advantageous, stakeholders do not need to wait to file their patent applications until March 16, 2013 in order to maximize their prior art effect.Continue reading this entry
The USPTO’s final First Inventor To File rules and Examination Guidelines were published in the February 14, 2013 edition of the Federal Register. While many of the final rules are identical to the proposed rules, there are some important changes to note.Continue reading this entry
On January 14, 2013, President Obama signed HR 6621 into law. The title of HR 6621 is “To correct and improve certain provisions of the Leahy-Smith America Invents Act,” but it also makes changes to other provisions of U.S. patent law, including the Patent Term Adjustment (PTA) provisions. This article provides an overview of the substantive changes to the AIA embodied in this law.Continue reading this entry
As of today, we are two months from March 15, 2013–the last day to secure an effective filing date under the current “first to invent” patent system. While we still are waiting for the USPTO to publish its final rules implementing the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), most of those rules will come into play after an application is filed. For the time being, inventors and applicants should be considering whether patent applications that may be ready for filing should be filed before or after the effective date of the first-to-file laws. This article provides a non-comprehensive, big picture review of the changes that take effect on March 16, 2013. Continue reading this entry
The Senate has passed a modified version of HR 6621, which focuses on changes “[t]o correct and improve certain provisions of the Leahy-Smith America Invents Act” and also includes other provisions unrelated to the AIA, such as those impacting Patent Term Adjustment (PTA). The President is expected to sign the bill soon, and it will take effect on the date of enactment, unless otherwise provided.
The AIA Changes
HR 6621 makes several “technical amendments” to the AIA, some simply correcting “scrivener’s errors” and others making more substantive changes.
Inter Partes Review
One of the most significant changes in HR 6621 closes the Inter Partes Review (IPR) “dead zone.” The original IPR statute provides that IPR cannot be requested within the first 9 months of a patent’s grant date. This time period will complement the time period for Post Grant Review (PGR), once PGR is available because PGR only can be requested within 9 months of a patent’s grant date. But, PGR only is available against certain business method patents and patents examined under the first-to-file version of 35 USC § 102, which does not take effect until March 16, 2013. Thus, under the original IPR statute, patents granted now cannot be challenged in an inter partes USPTO proceeding until they have been in force for 9 months.
HR 6621 eliminates this “dead zone” by providing that the 9-months-from-grant requirement does not apply to patents that are not examined under the first-to-file version of 35 USC § 102. (Congress does not shy away from double negatives!)
HR 6621 also eliminates a similar “dead zone” for reissue patents, by providing that the 9-months-from-grant requirement does not apply to reissue patents.
HR 6621 changes the time period for filing an executed inventor’s oath/declaration (or substitute statement) from “by allowance” to “no later than the date on which the issue fee .. . paid.” This will greatly simply allowance procedures, and will permit the USPTO to issue a Notice of Allowance even when an executed inventor’s oath/declaration has not yet been filed.
Advice Of Counsel
HR 6621 provides that the section of the AIA deeming that evidence of any failure to obtain “advice of counsel” cannot be used to establish willfulness or intent to induce infringement apply to “any civil action commenced on or after the date of enactment” of HR 6621.
HR 6621 clarifies the deadline for bringing a derivation proceeding, and provides that such a proceeding must be brought within one year of the publication or grant of a relevant claim in the earlier-filed application. This is consistent with how the USPTO had interpreted the original language of the derivation statute.
HR 6621 also defines “earlier application” and re-writes much of the derivation statute in terms of the “earlier application.”
HR 6621 clarifies that the USPTO Patent Trial and Appeal Board (PTAB) and Federal Circuit can hear appeals of interferences commenced after the effective date of the AIA’s amendments to § 135(a).
Patent Term Adjustment Provisions
HR 6621 includes the changes to the Patent Term Adjustment statute that I discussed in this article, including changes that I think may be problematic.
In his speech providing a “section-by-section summary” of HR 6621, Rep. Lamar Smith expressed his views that the district court decision in Exelixis v. Kappos (which I wrote about here) will cause “absurd and undesirable results” that will undermine Congressional goals in adopting a 20-year patent term. (The USPTO has appealed the Exelixis decision.)
Pending, Unpublished Pre-GATT Patent Applications
As I wrote previously, HR 6621 was amended to eliminate the controversial provisions that effectively would have eliminated the term of pending, unpublished pre-GATT patent applications, and instead would have required the USPTO to issue a report on such applications. The Senate took that revision one step further and removed all provisions relating to pre-GATT patent applications.
Effective Date of HR 6621
The default effective date of HR 6621 is its date of enactment, and it will apply “to proceedings commenced on or after” that date, except where it states otherwise.
More Changes Ahead?
In his speech providing a “section-by-section summary” of HR 6621, Rep. Lamar Smith indicated that further changes to the AIA may be under consideration. In particular, he indicated that Congress is considering changing the “raised or could have been raised” PGR estoppel provisions. Additionally, Congress clearly wants to address the problem of pending pre-GATT applications, which is discussed in more detail in this article.
The USPTO has published final rules governing the new Micro Entity status that will permit certain patent applicants to pay certain patent fees at a 75% reduced rate. The rules set forth three independent ways to qualify for Micro Entity status: (i) based on the income of each applicant, (ii) based on each applicant’s employer being an “institution of higher education,” and (iii) based on each applicant having assigned or licensed the application to an “institution of higher education” (or being obligated to do so). This article focuses on (ii) and (iii). Although the rules technically take effect on March 19, 2013, applicants will not be able to pay fees at the Micro Entity rate until the USPTO implements its own fee-setting authority, which it expects to do in “Spring 2013.” When it takes effect, Micro Entity status will offer a cost savings of at least $750 per application, and at least $3000 over the life of a patent. This savings could add up quickly across a university’s portfolio, and may justify the costs of both aligning internal practices to qualify for Micro Entity status and taking the steps to claim Micro Entity status.Continue reading this entry
The USPTO has published “Tips for Filing a Compliant Supplemental Examination Request” on its AIA Implementation web page. According to the notice, the USPTO has received six requests for Supplemental Examination, but apparently not all of them complied with the USPTO’s rules. Luckily for patent owners, requests for Supplemental Examination are not made public unless and until they have been found to satisfy the filing date requirements. Thus, patent owners who file non-compliant requests have an opportunity to cure them before they are made public. The “tips” in the notice underscore the importance of following the rules to a “T,” and making it easy for the USPTO to determine why the “information” is being submitted and whether it is “relevant to the patent.”Continue reading this entry
The U.S. House of Representatives passed an amended version of HR 6621 that does not includes the provisions that could have effectively eliminated the term of any pending patent applications that were filed before June 7, 1995 (“pre-GATT applications”). Instead, the bill requires the USPTO to submit a “report” on pre-GATT applications. (The bill still includes the troubling Patent Term Adjustment provisions that I wrote about in this article.)
Although most of HR 6621 (introduced by Rep. Lamar Smith on Nov. 30, 2012) would make changes “[t]o correct and improve certain provisions of the Leahy-Smith America Invents Act,” the bill includes other provisions that are entirely unrelated to the AIA and that would dramatically impact patent term. The provision receiving the most public attention would eliminate the term of patent applications filed before June 7, 1995 (“pre-GATT applications”) that are still pending. But another provision would affect all pending and new applications, as well as recently granted patents, by changing the way that Patent Term Adjustment (PTA) is calculated and challenged under 35 USC § 154(b). Continue reading this entry
Under the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), the USPTO no longer will institute interference proceedings in order to determine who was the first person to invent a claimed invention. While an applicant will be able to petition the USPTO to institute a derivation proceeding, the statute and implementing regulations provide for such proceedings under only very limited circumstances.Continue reading this entry
The USPTO has announced that it has “reopened” the comment period for the proposed implementing regulations for the first-to-file provisions of the America Invents Act (“AIA”) which take effect March 16, 2013. Public comments now will be accepted until November 5, 2012. The USPTO has demonstrated that it takes public comments seriously, and modified some of the proposed rules for the provisions that took effect on September 16, 2012 in view of public comments. Indeed, the decision to reopen the comment period was made in response to “several requests,” and underscores the agency’s interest in receiving thoughtful input from applicants, practitioners and other stakeholders. Continue reading this entry
Although the first-to-file provisions of the America Invents Act (“AIA”) do not take effect until March 16, 2013, public comments on the USPTO’s proposed implementing regulations are due by Friday, October 5, 2012. The USPTO has demonstrated that it takes public comments seriously, and modified some of the proposed rules for the provisions that took effect on September 16, 2012 in view of public comments. Applicants, practitioners and other stakeholders should not miss this opportunity to shape how the USPTO implements these significant changes to U.S. patent law. Continue reading this entry
Please join my colleague Matt Smith and me for a West LegalEdcenter® webinar on Tuesday, October 2, 2012 at 12:00 pm eastern to discuss the changes to U.S. patent practice that took effect on September 16.
In this one hour program, we will provide an overview of the most significant changes that just took effect, and identify strategies for taking advantage of the new law and positioning your company to benefit from the new proceedings.
We plan to discuss the following provisions in particular:
- Expanded ability of third parties to submit prior art during prosecution
- New supplemental examination for strengthening patents
- New inter partes review proceedings for challenging patents
- Revisions to the inventor oath/declaration requirements
- New ability of assignees to file and prosecute U.S. patent applications.
You can register here.
Although derivation proceedings only will be available for U.S. patent applications with an effective filing date on or after March 16, 2013, the USPTO already has published its final rules implementing the derivation provisions of the Leahy-Smith America Invents Act (AIA). The final rules embody several changes and clarifications as compared to the proposed rules.Continue reading this entry