Friday, March 29, 2013

America Invents Act - Making the Simple Act of Filing a Continuation Complex

A continuation is a patent application that is entitled to the benefit of the filing date of a prior application. The specification and drawings are the same but the claims are different. A continuation allows one to seek different claims to protect different aspects of the invention. Before the America Invents Act, filing a continuation was also relatively inexpensive. One simply copied the specification, added a sentence claiming priority, drafted claims, completed an application transmittal, calculated USPTO fees, and uploaded the application papers at the USPTO.

The America Invents Act has increased the expense of continuation applications filed after September 16, 2012 in that it requires an application data sheet (ADS) form, which was formerly optional, just to claim domestic or foreign priority. See 37 CFR 1.76 and 1.78. Adding to the chore if you file after the application is filed, the ADS form will not permit adding an application number, an attorney docket reference, or the title. You must apparently grab a typewriter or handwrite that information. But you still are not done, because the ADS requires filing an AIA power of attorney with no data field for the application number. Acting in a representative capacity under 37 CFR 1.34 is not an option in the form. What application does the power of attorney refer to? It refers to a statement under 37 CFR 3.73(c) for the application number. But this requires completing the statement, which requires gathering the notice of recordations in the chain of title. USPTO forms should save time, not generate the need to complete more forms! Further, the USPTO should amend 37 CFR 1.76 and 1.78 to be more consistent with Congressional law. There a claim to priority is only required to be contained in an application. These rules requiring priority claims be made in an "optional ADS form" generate filling out additional forms with little benefit to applicants.

Copyright © 2013 Robert Moll. All rights reserved.

Thursday, March 28, 2013

Google's Open Patent Non-Assertion Pledge - Dipping a Toe in the Water?

Today, I am hearing that Google has a patent pledge (legal terms here) to decrease patent threats to the open source software community. In short, Google pledges not to file a patent infringement suit against a provider or user of open source software (OSS) unless it is sued first. Since the OSS community is unlikely to sue Google for patent infringement, I don't see this is an escape clause. See Google's explanation about the pledge (here).

IBM pledged 500 patents and Sun 1,600 patents to OSS so what's on Google's list? The pledge list (here) says four US patents, four US published applications, and two PCT applications. A published application can generate pre-issuance royalties if a US patent issues, a claim proceeds from publication to issuance unchanged, and an infringer is given actual notice, but a PCT application gives no royalty rights only the right to file later. So does Google file foreign patent applications via the PCT applications or stop at the PCT stage to save some cash? Even if we call it ten patents the pledge involves less than 0.06% of Google's patent portfolio assuming it owns about 17,000 US patents. FOSS says this is a PR stunt (here) but maybe it's the start of a bigger pledge and this is "dipping the toe in the water."

Copyright © 2013 Robert Moll. All rights reserved.

Wednesday, March 27, 2013

America Invents Act - Inter Partes Review Available Upon Issuance - Eliminating the Nine Month Dead Zone

The USPTO revised the final rules of practice with respect to inter partes review petitions challenging first-to-invent patents and reissue patents on March 25, 2013. The rules implement the amendment to 35 U.S.C. 311(c) that eliminated "dead zones" by allowing inter partes review challenges to first-to-invent patents and reissues during the first nine months after issuance.

As stated by the USPTO: "Under the AIA, as originally enacted, a petition for inter partes review could only be filed after the later of either: (1) The date that is nine months after the issuance of an original patent or reissued patent; or (2) if a post-grant review is instituted, the date of the termination of such post-grant review. Notably, inter partes reviews were available only for patents that had been issued for at least nine months. Additionally, post-grant reviews were not available for first- to-invent patents and reissued patents where the original patent was no longer eligible for post-grant review (35 U.S.C. 325(f)). See sections 6(d) and (f)(2) of the AIA. That created two nine-month "dead zones,'' namely first-to-invent patents and reissued patents could not be challenged in an inter partes proceeding before the Office during the first nine months after issuance."

For further details see the USPTO release (here).

Copyright © 2013 Robert Moll. All rights reserved.

Sunday, March 24, 2013

Written Comments on USPTO's Proposals for Recording Ownership During Application Pendency and Patent Term

The USPTO recently proposed to increase transparency regarding ownership of US patent applications and US patents. The drivers of the initiative (e.g., patent trolls use of shell corporations) seem unclear, but it does sound like a good idea-- after all we should be able to efficiently determine who owns a given application or a patent. However, the benefit of identifying "the real-party-in-interest" at all stages will cost something on every application filed as patent attorneys and staff charge to maintain ownership records from the filing date to the end of the patent term. "Dangnabbit, I thought you would do it for free!"

Hopefully, the USPTO will not implement rules to increase transparency until it addresses the costs and other problems raised in some of the written comments from AIPLA, IPO, DOJ, American Antitrust Institute, Article One Partners, Coalition for Patent Fairness, HP, Intellectual Ventures, and Novartis, plus individuals: Professor Colleen Chien, Professor Robin Feldman, Professor Arti Rai, and patent attorney Alan Minsk.

For details see the following written comments made in response to the Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.

Copyright © 2013 Robert Moll. All rights reserved.

Wednesday, March 20, 2013

Kirtsaeng v. John Wiley & Sons, Inc. - First Sale Defense Protects Buyer of Authorized Copyrighted Work Made in Foreign Country Reselling Work in United States

Yesterday, in Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court held that if a copyright owner authorizes manufacture and sale of a copyrighted work abroad, the first sale defense protects a buyer's ability to resell that work in the United States. The Supreme Court concluded the Second Circuit mistakenly imported a geographic limitation (United States only) into the phrase "lawfully made under this title," which reduced the scope of the first sale defense inconsistent with the copyright statute, the legislative history, and the common law. As Michael Barclay of IP Duck deftly puts it in Roundup of Commentary on Kirtsaeng v. John Wiley: "if you buy something, you own it."

Although a copyright case, Harold Wegner of Foley & Lardner expects the Supreme Court to grant, vacate, and remand (GVR) Ninestar Technology Co., Ltd. v. International Trade Commissioner to the Federal Circuit to review the scope of patent exhaustion in view of Kirtsaeng given the certiorari petition asks: "Whether the initial authorized sale outside the United States of a patented item terminates all patent rights to that item."

Update March 25, 2013: The Supreme Court denied Ninestar's petition for certiorari seeking review of the law of international patent exhaustion.

Copyright © 2013 Robert Moll. All rights reserved.

Wednesday, March 13, 2013

Design Patents in the Modern World - Stanford Law School on April 5-6, 2013

Professor Dennis Crouch reports Stanford Law School will host Design Patents in the Modern World Conference on April 5-6, 2013. See the above link for registration and details for this free conference.

Copyright © 2013 Robert Moll. All rights reserved.

Tuesday, March 12, 2013

America Invents Act - Repeal of Statutory Invention Registrations (SIRs) on March 16, 2013

Today, the USPTO emailed the following notice:

"Effective on March 16, 2013, the Office will no longer accept requests for Statutory Invention Registrations (SIRs). Section 3 of the Leahy-Smith America Invents Act (AIA) repeals the provisions of 35 U.S.C. 157 pertaining to SIRs. The effective date of the repeal of SIRs is March 16, 2013, regardless of the filing date of the application. The Office will consider any pending requests for SIRs filed before March 16, 2013. Requests for SIRs filed on or after March 16, 2013 will not be treated by the Office. More information on the repeal of SIRs can be found in the Federal Register Notice entitled “Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act,” Final Rule, 78 FR 11024 (February 14, 2013) at"

Copyright © 2013 Robert Moll. All rights reserved.

Wednesday, March 6, 2013

America Invents Act - Narrow Grace Period with High Cost

Under current law, the United States grace period protects an inventor from disclosure of the invention before the filing date. The grace period lasts for 12 months, is unconditional, and it doesn't matter who disclosed the invention.

Beginning March 16, 2013, the one-year grace period only protects a much more limited set of activities, namely, inventor disclosures and disclosures derived from the inventors. I discussed this in more detail in America Invents Act - Uncertain Grace Period for Filing US Patent Application. It's too bad the grace period has become so narrow especially for innovative startups that engage in pre-filing activities.

Not only is the new grace period narrow, it will be costly for applicants. The expense will show up in two ways. First, in prosecution if a prior art rejection is based on a disclosure that the inventor seeks to shield using the grace period, 37 CFR 1.130 requires a declaration describing the details and dates of inventor's disclosure and disclosure to others. Such a declarations will be time consuming and expensive, because it will require talking to all the people involved, and cross-checking facts. Second, to be effective the declaration must be 100% accurate. Even if the examiner allows the case based on the  declaration, litigators may have a large budget and time to attack the declaration as (1) incomplete; (2) inaccurate; and/or (3) misleading. Thus, it will add a large expense to prosecuting U.S. patent applications.

Further, these costs will be unavoidable if an applicants seeks to use the grace period to overcome a prior art rejection. If an applicant files a declaration that a court finds incomplete or inaccurate, the prior art that was overcome in prosecution may be used to invalidate the patent in litigation or in a post-grant proceeding. The patent owner may be forced to file reissue or reexamination papers. Of course this may result in intervening rights or no patent. If the court holds the declaration is misleading, the patent may be held unenforceable.

For a copy of the final rules, comments on the rules, and the examination guidelines please see USPTO - Final Rules and Examination Guidelines to Implement the First-Inventor-to-File Provision of the America Invents Act.

Copyright © 2013 Robert Moll. All rights reserved.

Monday, March 4, 2013

America Invents Act - Uncertain Grace Period for Filing US Patent Application

Today, Hal Wegner blew the trumpet loud and clear. Beginning March 16, 2013, the new one-year grace period, which is currently unconditional, may only give narrow protection with respect to pre-filing disclosures based on a review of 35 USC 102, the recent PTO examination and final rules, certain statements made by principal draftsman Robert Armitage and Joe Matal, and Congressional legislative history. For example, the new one-year grace period may not protect against a third party's disclosure or publication prior to the filing date unless the third party disclosure is identical to the inventor's disclosure.

You may want to sign up for Hal Wegner's free email service for the details. But in a nutshell he advises: if anyone plans to file a U.S. patent application on or after March 16, 2013, they should file the application before disclosure of the invention. If anyone discloses the invention before filing a application, one should file the application as soon as possible to reduce the risk the grace period will be treated as not shielding a non-identical third party disclosure before the filing date. Because the scope of the grace period is uncertain after considerable commentary, this appears to be the safer approach to protect U.S. patent rights until the Federal Circuit gives further guidance.

Copyright © 2013 Robert Moll. All rights reserved.