USPTO - America Invents Act First-to-Inventor to File Roadshow Fall 2014

The USPTO has started the AIA First Inventor to File Roadshow Fall 2014.

According Alexandra Roberts, Executive Director of the Franklin Pierce IP Center, "the presentation provided attendees with an invaluable opportunity to improve their understanding of recent changes in patent law, gain insight into USPTO procedure, get exposure to practical concerns in patent prosecution, and cement their new knowledge by applying it in a hands-on way."

Here are the upcoming dates:

Dallas - September 30
Denver - October 2 (also webcast from Rocky Mountain Office)
Silicon Valley - October 7
Atlanta - October 9

See AIA Roadshow for more information on the upcoming live and webcast roadshow dates, which are free on a first-come first-serve basis.

See the USPTO first inventor to  file page for the roadshow presentations after October 9, 2014.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO Hosting a Roadshow to Discuss First to File System of America Invents Act

The USPTO is hosting a nationwide roadshow to discuss the first inventor to file provisions of the America Invents Act in September - October 2014.

"The roadshow series will begin on September 16 and run through October 9, 2014, with stops in Concord, New Hampshire; Madison, Wisconsin; Dallas, Texas; Silicon Valley, California; and Atlanta, Georgia, as well as on USPTO campuses in Alexandria, Virginia, and Denver, Colorado. The roadshows in Alexandria on September 23 and Denver on October 2 will be webcast live through the USPTO website.

The roadshow events are free and open to the public. Seating is available on a first-come, first-served basis. For more information, including roadshow logistics, venues, and webcast access information, please refer to the AIA roadshow page on the USPTO website."

See USPTO press release for further details.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - America Invents Act - First-Inventor-to-File Public Forum on March 17, 2014

Tonight, I want to pass on an invitation to a USPTO public forum to discuss the first-inventor-to-file provisions of the America Invents Act on March 17, 2014:

"The United States Patent and Trademark Office (USPTO) will host a public forum to discuss the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA) on the first anniversary of the FITF implementation. The forum will be held on Monday, March 17, 2014, at the USPTO headquarters, Madison Auditorium, in Alexandria, Virginia from 12:30 to 5 pm ET.  Members of the public are invited to attend in person or via webcast (access information below).

The forum is intended to bring stakeholders together with USPTO subject matter experts to discuss the FITF provisions.  It will begin with a thirty-minute informal meet-and-greet session, allowing participants to chat with the experts, followed by an informational program covering the following topics:

• Review of FITF filings made to date
• Explanation of whether/when an application will be examined under the FITF statutory framework
• Overview of the FITF statutory framework and tips on responding to prior art rejections
• Tour of the AIA (FITF) website
• Q&A panel discussion

Pre-registration is not required; seating is first-come, first-served.  CLE is not available."

Webcast access instructions:

• Event number: 996 792 614
• Event password: 12345
• Event address:  https://uspto-events.webex.com/uspto-events/onstage/g.php?t=a&d=996792614

Copyright © 2014 Robert Moll. All rights reserved.

America Invents Act - Professor Abrams and Wagner's Poisoning the Next Apple: How the America Invents Act Harms Inventors

Is the America Invents Act a misnomer? It's beginning to look that way with respect to small entities. In a Stanford Law Review article, Poisoning the Next Apple: How the America Invents Act Harms Inventors, David Abrams and R. Polk Wagner of University of Pennsylvania Law School state: "The America Invents Act, the most significant patent law reform effort in two generations, has a dark side: It seems likely to decrease the patenting behavior of small inventors, a category which occupies special significance in American innovation history."

Mr. Abrams and Wagner note: "In this paper we empirically predict the effects of the major change in the law: a shift in the patent priority rules from the United States’ traditional “first-to-invent” system to the predominant “first-to-file” system.

While there has been some theoretical work on this topic, we use the Canadian experience with a similar change as a natural experiment to shed the first empirical light on the question. Our analysis uses a difference-in-difference framework to estimate the impact of the Canadian law change on small inventors. Using data on all patents granted by the Canadian Intellectual Property Office and the US Patent and Trademark Office, we find a significant drop in the fraction of patents granted to small inventors in Canada coincident with the implementation of first-to-file. We also find no measurable changes in patent quality and perform several additional analyses to rule out alternative explanations.

While the net welfare impact that can be expected from a shift to first-to-file is unclear, our results do reveal that, contrary to the conventional wisdom, the March 2013 implementation of a first-to-file rule in the U.S. is likely to result in reduced patenting behavior by individual inventors."

Although the America Invents Act was presented by Congress as reform that would lead to the "promised land," the article paints a different picture of the likely impact of the America Invents Act: a smaller fraction of US patents granted to small entities.

I also expect the America Invents Act one-year grace period will reduce the number of US patents granted to small entities. Small entities will engage in activities that may be later viewed as on sale or public use prior to the filing date. Arguing the activities are experimental may fail or prove expensive to establish. To understand why the one-year grace period has been narrowed, it should be helpful to review part of 35 USC 102, which sets forth the conditions for patentability, novelty and loss of right to the patent:

(a) NOVELTY; PRIOR ART.--A person shall be entitled to a patent unless--

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(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.

(b) EXCEPTIONS.--

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.--A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if--

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Some suggest inventor disclosure triggers a one-year grace period that shields against an inventor's subsequent public use or offer for sale of the invention. I am uncertain how a court will ultimately interpret 35 USC 102, but note even this favorable interpretation does not answer whether or not third party public use or sales would be shielded. What if a subsequent sale or use pertains to subject matter that overlaps the inventor's disclosure? In the past, the Federal Circuit has not equated the different categories of prior art in 35 USC 102. Thus, "public use" and "on-sale" are not the same thing and do not require "disclosure." Is it better to disclose all the details of the invention when making an offer for sale or use before the filing date? That's a decision to forego trade secret at a time patent protection is in doubt. Will the Federal Circuit equate the different categories to help broaden this seemingly narrow grace period of the America Invents Act? Court decisions may not arrive for years. Until we get answers, the safer approach is to treat the one-year grace period as only shielding direct and indirect inventor disclosures.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO Public Forum to Discuss First-Inventor-to-File, Micro Entity, and Patent Fee Final Rules on March 15, 2013

The USPTO has changed the time of the public forum on the first-inventor-to-file, the micro entity and fee final rules. Here is the agenda: First-Inventor-to-File, Micro Entity, and Patent Fee Public Forum Agenda

The forum will be held at the Madison Auditorium on the Alexandria campus 1-4 pm ET, Friday, March 15, 2013. This enables the West coast to participate by webcast, but remains close to the effective date of the final rules: first-inventor-to-file rules become effective on March 16, 2013 and micro entity and fees rules become effective on March 19, 2013.

Here is the WebEx Webinar Access Information:
Event number: 996 254 133
Event password: 123456
Event address for attendees: https://uspto-events.webex.com/uspto-events/onstage/g.php?d=996254133&t=a

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - Final Rules and Examination Guidelines to Implement the First-Inventor-to-File Provision of the America Invents Act

Today, the USPTO published the final Rules implementing the first-inventor-to-file provision of the America Invents Act (AIA) effective on March 16, 2013.

See the Federal Register publications: Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act and Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines

The USPTO also published guidelines setting forth its interpretation of how the first inventor to file provision changes the current novelty and obviousness requirements. The guidelines inform how the law has changed (expanded) the scope of prior art and changed (narrowed) the scope of the grace period.

The Acting Director of the USPTO Teresa Stanek Rea states: "Migration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries."

Usually if the law changes radically, a litigant will push for a favorable interpretation of the new law. Until the court decisions build up and limit possible interpretations, the law is likely to be less predictable. On the other hand, the first inventor to file system provision may bring greater predictability in the long term, since many priority disputes will be resolvable by filing date.

On the flip side, unpredictability may arise in the new derivation proceedings that are intended to ensure a person will not be able to obtain a patent even when filing first for an invention that he or she did not actually invent. The scope of the one-year grace period is another area to expect unpredictability. Sure patentability of an invention is not defeated by the inventor’s own disclosures, disclosures of information obtained from the inventor, or third party disclosures of the same information as the inventor’s previous public disclosures, but what happens when the third party disclosure is not identical to the "first" inventor's disclosure? Do we have a one-year grace period against the third party disclosure? Further, do we have a grace period for an third party offer for sale or public use? Thus, unpredictability exists on the grace period of the new law.

The migration to the first inventor to file system is another step toward harmonizing U.S. patent law with that of the rest of the world, but the US definition of prior art and scope of the grace period is different. And the steps proceed in parallel for better or worse. For example, the USPTO implemented a common classification system for the USPTO and the EPO to enhance examination on January 1, 2013. The so-called Tegernsee Group is another effort to harmonize patent law among the major offices.

The USPTO is also giving a fair level of customer support. It will give more information on the first-inventor-to-file provision at a public training session held at the USPTO in Alexandria, Virginia on March 8, 2013, which will also be available on the Web. See details at www.uspto.gov/americainventsact. Also one may contact the AIA help line at 1-855-HELP-AIA (1-855-435-7242) or send an email to helpaia@uspto.gov for first-inventor-to-file and other AIA questions. The USPTO also suggests if we have questions regarding the final rules to call Ms. Susy Tsang-Foster, Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7711 and direct questions about the first-inventor-to-file final examination guidelines to Ms. Mary C. Till, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7755.

Copyright © 2013 Robert Moll. All rights reserved.