The USPTO is hosting a roundtable on international harmonization of substantive patent law on November 19, 2014:
"The United States Patent and Trademark Office (USPTO) is seeking input on certain matters relating to the international harmonization of substantive patent law. In view of the importance of harmonization of substantive patent law to the successful reutilization of the examination work of one intellectual property office by another, or work sharing, the USPTO is particularly interested in stakeholder comments on the following key patent examination-related issues the definition and scope of prior art; the grace period; and standards for assessing novelty and obviousness/inventive step. To assist in gathering this information, the USPTO is holding a public roundtable which interested members of the public are invited to attend."
When: Registration at 8:00 am and roundtable at 8:30 am
Where: USPTO, 600 Dulany Street, Madison Auditorium, Concourse Level, Alexandria, VA 22314.
It seems the international harmonization discussion should include 35 USC 101 patent eligibility.
Copyright © 2014 Robert Moll. All rights reserved.
Showing posts with label grace period. Show all posts
Showing posts with label grace period. Show all posts
Monday, November 17, 2014
Monday, February 24, 2014
Professor Lemley - Does "Public Use" Mean the Same Thing It Did Last Year?
Prior to the America Invents Act's effective date of March 16, 2013, 35 USC 102 states an inventor loses patent rights if the invention is in "public use" more than one year before the filing date. The purpose is to prevent too much delay (i.e., more than one year) in filing a US patent application while the invention is being commercially used.
In Does 'Public Use' Mean the Same Thing it Did Last Year?, Stanford Law Professor Mark Lemley makes a compelling argument that the AIA did not change the meaning of "public use" nor eliminate the rule of Metallizing Engineering v. Kenyon Bearing & Auto Parts.
The Metallizing case held that a secret commercial use is not prior art that bars a third party from obtaining a US patent, but does start the one-year grace period for the commercial user seeking the US patent. The PTO Examination Guidelines stating otherwise doesn't seem to squarely address how the AIA impacts Metallizing.
Professor Lemley appears to be right on the statutory interpretation of 35 USC 102 under the AIA despite other opinions in the USPTO Examination Guidelines (See America Invents Act - One Sale Bar, 35 USC 102), Bob Armitage, a principal AIA drafter, and Senator Kyl's staffer Joe Matal.
If Professor Lemley turns out to be wrong, the US patent system has handed out an incentive to commercially use inventions as trade secrets indefinitely until filing a patent application.
Copyright © 2014 Robert Moll. All rights reserved.
In Does 'Public Use' Mean the Same Thing it Did Last Year?, Stanford Law Professor Mark Lemley makes a compelling argument that the AIA did not change the meaning of "public use" nor eliminate the rule of Metallizing Engineering v. Kenyon Bearing & Auto Parts.
The Metallizing case held that a secret commercial use is not prior art that bars a third party from obtaining a US patent, but does start the one-year grace period for the commercial user seeking the US patent. The PTO Examination Guidelines stating otherwise doesn't seem to squarely address how the AIA impacts Metallizing.
Professor Lemley appears to be right on the statutory interpretation of 35 USC 102 under the AIA despite other opinions in the USPTO Examination Guidelines (See America Invents Act - One Sale Bar, 35 USC 102), Bob Armitage, a principal AIA drafter, and Senator Kyl's staffer Joe Matal.
If Professor Lemley turns out to be wrong, the US patent system has handed out an incentive to commercially use inventions as trade secrets indefinitely until filing a patent application.
Copyright © 2014 Robert Moll. All rights reserved.
Tuesday, April 30, 2013
America Invents Act - USPTO Guidance on First-Inventor-to-File - Videos & Slides
On March 15, 2013, the USPTO published videos and slides regarding the first-inventor-to-file system that help explain the extensive changes to 35 USC 102, especially with respect to the narrowing of the one-year grace period and the various activities that constitute prior art today. Understanding these topics is crucial in seeking a US patent. Here is the USPTO's guidance on the first-inventor-to-file system:
"The First Inventor to File (FITF) provisions transition the U.S. to a first-inventor-to-file system from a first-to-invent system. The FITF provision includes a 1-year grace period. Specifically, prior art disclosures made publicly available one year or less before the effective filing date can be overcome by applicant showing (1) the prior art disclosure was by another who obtained the disclosed subject matter from the applicant (a deriver), see 102(b)(1)(A), or (2) the applicant or a derived publicly disclosed the subject matter before the date of the prior art disclosure, see 102(b)(1)(B).
The effective filing date for a claimed invention in an application now includes the filing date of a prior foreign application if applicant is entitled to foreign priority and thus, in this situation, the 1-year grace period will be measured from the foreign priority date claimed.
A prior disclosure of the invention which is publicly available more than one year before the effective filing date of an application continues to be a statutory bar.
Prior public use or sale is no longer limited to the U.S.
For prior art purposes, U.S. patents and patent application publications are available as prior art as of any foreign priority date, provided that the subject matter being relied upon is disclosed in the foreign priority application.
Applicants can now rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. 102.
In addition, derivation proceedings are established in place of interference proceedings for FITF applications and patents.
The FITF provisions take effect on March 16, 2013. 35 U.S.C. 102 and 103 in effect before March 16, 2013 will apply to applications filed before March 16, 2013, and continuations and divisionals of such applications.
35 U.S.C. 102 and 103 in effect on March 16, 2013, will apply to any application that ever contains a claim that has an effective filing date on or after March 16, 2013.
35 U.S.C. 102(g) in effect before March 16, 2013, will apply if the application ever contains a claim that has an effective filing date before March 16, 2013.
Examiner Training
"The First Inventor to File (FITF) provisions transition the U.S. to a first-inventor-to-file system from a first-to-invent system. The FITF provision includes a 1-year grace period. Specifically, prior art disclosures made publicly available one year or less before the effective filing date can be overcome by applicant showing (1) the prior art disclosure was by another who obtained the disclosed subject matter from the applicant (a deriver), see 102(b)(1)(A), or (2) the applicant or a derived publicly disclosed the subject matter before the date of the prior art disclosure, see 102(b)(1)(B).
The effective filing date for a claimed invention in an application now includes the filing date of a prior foreign application if applicant is entitled to foreign priority and thus, in this situation, the 1-year grace period will be measured from the foreign priority date claimed.
A prior disclosure of the invention which is publicly available more than one year before the effective filing date of an application continues to be a statutory bar.
Prior public use or sale is no longer limited to the U.S.
For prior art purposes, U.S. patents and patent application publications are available as prior art as of any foreign priority date, provided that the subject matter being relied upon is disclosed in the foreign priority application.
Applicants can now rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. 102.
In addition, derivation proceedings are established in place of interference proceedings for FITF applications and patents.
The FITF provisions take effect on March 16, 2013. 35 U.S.C. 102 and 103 in effect before March 16, 2013 will apply to applications filed before March 16, 2013, and continuations and divisionals of such applications.
35 U.S.C. 102 and 103 in effect on March 16, 2013, will apply to any application that ever contains a claim that has an effective filing date on or after March 16, 2013.
35 U.S.C. 102(g) in effect before March 16, 2013, will apply if the application ever contains a claim that has an effective filing date before March 16, 2013.
Examiner Training
- First-Inventor-to-File Follow up Video (March 2103)
- First-Inventor-to-File Follow up Video Slides (March 2013)
- First-Inventor-to-File Live Overview Training Slides (March 2013)
- First-Inventor-to-File Introductory Video (March 2013)
- First-Inventor-to-File Introductory Video Slides (March 2013)
- First-Inventor-to-File Statutory Framework
- Public Forum (March 15, 2013)
- First-Inventor-to-File Rules Correction (78 Fed. Reg. 16182, March 14, 2013)(corrected pages)
- First-Inventor-to-File Final Rules (78 Fed. Reg. 11024, February 14, 2013)
- First-Inventor-to-File Final Guidance (78 Fed. Reg. 11059, February 14, 2013)
- Roundtable (September 6, 2012)
- First-Inventor-to-File Proposed Rules (77 Fed. Reg. 43742, July 26, 2012)
- First-Inventor-to-File Proposed Examination Guidelines (77 Fed. Reg. 43759, July 26, 2012)
- 18 Months Implementation Timeline
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.
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.
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