SEVEN THINGS YOU MAY NOT KNOW ABOUT THE NEW PATENT
REFORM LAW(SOON TO BE UPON US)
PROF. PAUL JANICKEUNIVERSITY OF HOUSTON LAW CENTER
SEPTEMBER 2011
2011 2
1. WE ARE NOT GOING TO A “FIRST TO FILE” SYSTEM
• THE SENATE FLOOR REMARKS AND THE HOUSE REPORT MAKE CLEAR THAT THE RULE WILL BE:
• IN A CONTEST BETWEEN INDEPENDENT INVENTORS, THE VALID CLAIM WILL GO TO THE FIRST TO PUBLICLY DISCLOSE
2011 3
• FIRST-TO-FILE IS THE DEFAULT RULE–WHERE NO ONE HAS PUBLICLY
DISCLOSED, THE FIRST TO FILE WINS
• MEANING OF “DISCLOSE” IS NOT 100% CLEAR– PROBABLY INTENDED TO COVER ALL
THREE TYPES OF PRIOR ART:• PATENTS AND PRINTED PUBLICATIONS• PUBLIC USES• PUBLICLY ACCESSIBLE OFFERS FOR SALE
2011 4
EXAMPLE
• JANUARY A INVENTS• FEBRUARY B INVENTS• MARCH B PUBLICLY USES• APRIL A FILES• MAY B FILES
• B WINS, EVEN THOUGH A WAS FIRST TO INVENT AND FIRST TO FILE
• A IS BARRED BY THE PUBLIC USE• B IS SAVED BY HIS “GRACE PERIOD”
2011 5
SOME PROCEDURAL STICKINESS
• PTO KNOWS NOTHING ABOUT THE PUBLIC USE
• PTO WILL ISSUE A’S PATENT (INVALIDLY)
• WHEN B’S APPLICATION IS EXAMINED, B WILL NEED TO ESTABLISH THAT HE WAS FIRST TO PUBLICLY DISCLOSE [NEW TYPE OF “RULE 131” AFFID.]
• B’S APPL. SHOULD THEN BE ALLOWED
2011 6
2. MOST ONE-YEAR CLOCKS FOR TIME BARS WILL BE ABOLISHED
• OFFERS FOR SALE AND PUBLIC USES WILL NOW BE WORLD-WIDE
• THEY INSTANTLY BAR ANYONE WHO IS NOT ALREADY ON FILE SOMEWHERE (PRIORITY DATE), EXCEPT WHERE AN INVENTOR TRIGGERED THE BAR
2011 7
THE GRACE PERIOD ONLY FOR FIRST-INVENTOR-TO-PUBLISH
• WHERE AN INVENTOR’S WORK TRIGGERED THE BAR, DIRECTLY OR THROUGH AN INTERMEDIARY:
– HE GETS A ONE-YEAR GRACE PERIOD IN WHICH TO FILE
– ANY PARIS CONVENTION FILING WILL DO
2011 8
3. INVENTION DATE IS HERE TO STAY FOR QUITE SOME TIME
• THE PHASE-IN OF “NEW” PRIOR ART PROVISIONS IS PAINFULLY SLOW
• NEW APPLICATIONS FILED AFTER MAR. 16, 2013, WITH NO EARLIER PRIORITY CLAIM, ARE UNDER “NEW” PRIOR ART
• BUT >>>
2011 9
• ALL NOW-EXISTING PATENTS• ALL APPLICATIONS NOW PENDING– AND PATENTS ISSUING THEREON
• ALL APPLICATIONS FILED UP TO MAR. 16, 2013– AND PATENTS ISSUING THEREON
• ALL LATER APPLICATIONS, IF THERE IS ANY CLAIM TO EARLIER PRIORITY– AND PATENTS ISSUING THEREON
• ARE UNDER THE OLD LAW!
2011 10
• RESULT:
–WE SHOULD EXPECT TO SEE LITIGATION DEFENSE OF EARLIER INVENTORSHIP BEING ADJUDICATED UNTIL ABOUT 2025; MAYBE LONGER
–WE SHOULD NOT SAY INTERFERENCES HAVE BEEN ABOLISHED, OR ARE EVEN OBSOLESCENT, UNTIL AT LEAST 2020
2011 11
4. BEST MODE CAN NOW BE CONCEALED
• EVEN DELIBERATELY
• § 15 OF THE BILL:
– “. . . EXCEPT THAT THE FAILURE TO DISCLOSE THE BEST MODE SHALL NOT BE A BASIS ON WHICH ANY CLAIM OF A PATENT MAY BE . . . HELD INVALID OR OTHERWISE UNENFORCEABLE”
>>>
2011 12
• WHY DID THEY KEEP BEST MODE IN
§ 112?
• DOES IT HAVE SOME LINGERING EFFECT?
• PTO HAS INDICATED AN INTENTION TO CONTINUE TO ENFORCE IT (SOMEHOW)
2011 13
5. PENITENCE“SUPPLEMENTAL EXAMINATION” § 10 OF H.R. 1249,
NEW 35 U.S.C. § 257(c)
• INEQUITABLE CONDUCT CAN NOW BE CURED BY A POST-GRANT CLEANSING PROCEDURE
• ANY WITHHELD INFORMATION CAN BE BROUGHT FORWARD TO PTO
• IF CLAIMS ARE RE-ALLOWED, THIS INFO IS BLOCKED IN COURT
2011 14
CONDITIONS FOR CLEANSING
• CANNOT COMMENCE OR CONTINUE SUPPLEMENTAL EXAM IF PATENTEE HAS BROUGHT A PENDING INFRINGEMENT ACTION– FILING OF SUIT TERMINATES THE
SUPPLEMENTAL PROCEEDING
• CANNOT COMMENCE SUPPLEMENTAL EXAM IF A D.J. SUIT IS PENDING AND THE CHALLENGER HAS PLEADED INEQ. CONDUCT “WITH PARTICULARITY”
2011 15
6. DECEPTIVE INTENT
• “WITHOUT DECEPTIVE INTENTION” HAS BEEN REMOVED FROM THE STATUTE– CHANGE OF INVENTORSHIP (§§ 116, 256)– ERROR IN REISSUE (§ 251)– FILING A DISCLAIMER (§ 253)– SUING ON A PATENT CONTAINING AN
INVALID CLAIM (§ 288)– FOREIGN FILING WITHOUT A LICENSE (§§
184, 185)
2011 16
WHY?
• MAYBE: TOO MANY MENTAL STATES FOR A MODERN COMMERCIAL STATUTE
• MAYBE: HARMONIZATION ATTEMPT
2011 17
7. PUBLIC SUBMISSION OF PRIOR ART AND OTHER INFO
• WE HAVE LONG HAD 35 USC § 301: – ANY PERSON, AT ANY TIME, CAN SEND
IN PRIOR PATENTS OR PUBLICATIONS FOR CONSIDERATION RE. SOMEONE ELSE’S APPLICATION
– IF EXPLANATION IS GIVEN, WILL BE PLACED IN THE FILE
• AMENDED § 301 ADDS A WRINKLE THAT COULD BE IMPORTANT >>>
2011 18
• A PERSON CAN NOW SUBMIT CLAIM-SCOPE POSITION STATEMENTS PREVIOUSLY MADE BY PATENTEE– THESE CAN BE USED FOR PURPOSES OF
CONSTRUING A CLAIM IN• AN INTER PARTES REVIEW [LATE TYPE]• A POST-GRANT REVIEW [EARLY TYPE]• A REEXAM
• CAVEAT PATENTEE: BROAD CLAIM- SCOPE ASSERTIONS CAN BITE!
2011 19
AND WILL NOW BE ALLOWED TO ATTACK PENDING
APPLICATIONSH.R. 1249 §8, ADDING 35 U.S.C. §122(e)
• SUBMISSIONS OF PRIOR PATENTS AND PUBLICATIONS
• SOME TIME CONSTRAINTS:1. BEFORE NOTICE OF ALLOWANCE
2. OTHER LIMITS BASED ON APPL. PUBLICATION DATE OR CLAIM REJECTION
2011 20
• THE STATUTE SAYS THESE SUBMISSIONS ARE “FOR CONSIDERATION AND INCLUSION IN THE OFFICIAL RECORD”
• EXPLANATIONS ARE REQUIRED
• THEORETICALLY, THESE ARE NOT OPPOSITION PROCEEDINGS– PRE-GRANT OPPOSITIONS ARE STILL
PROHIBITED BY 35 U.S.C. §122(c)
2011 21
THINGS IN THE REFORM LEGISLATION THAT YOU
PROBABLY DO KNOW ABOUT
• ASSIGNEE FILING (FINALLY)
• POST-GRANT REVIEW:– MUST FILE WITHIN 9 MONTHS OF ISSUE– ANY GROUND OF INVALIDITY– 3-JUDGE DECISION– BROAD PRECLUSIVE EFFECT – ANY GROUND
THAT WAS “RAISED OR REASONABLY COULD HAVE BEEN RAISED”
2011 22
• INTER PARTES REVIEW:– CAN BE FILED ONLY AFTER 9 MONTHS
FROM GRANT– GROUNDS: PATENTS AND PRINTED
PUBLICATIONS ONLY– 3-JUDGE DECISION– BROAD PRECLUSIVE EFFECT RE. ITEMS
THAT WERE OR COULD HAVE BEEN RAISED (PATENTS AND PRINTED PUBLICATIONS)
2011 23
QUI TAM ACTIONS FOR MISMARKING ABOLISHED
• ONLY U.S. CAN SUE IN GENERAL
• A DAMAGED PRIVATE ENTITY CAN SUE FOR THE AMOUNT OF HARM CAUSED
• BUT NO ONE CAN SUE FOR MISMARKING WITH AN EXPIRED PATENT NUMBER
2011 24
TAX STRATEGY PATENTS ABOLISHED
• “DEEMED TO BE WITHIN THE PRIOR ART” [BILL § 14]
• WHY NOT AMEND § 101?
• REJECTIONS WILL NOW BE UNDER §102?
2011 25
TWO MINDS NEEDED!
• FOR THE NEXT 15 YEARS OR SO, WE WILL BE LITIGATING OLD PATENTS UNDER THE OLD STATUTE– FOR THOSE CASES, PRIOR ART IS
UNDER THE OLD RULES, WITH ONE-YEAR CLOCKS, ON-SALE AND PUBLIC-USE BARS THAT WORK ONLY IN THE U.S.
– FOR THOSE CASES, INVENTION DATE COULD BE IMPORTANT