USPTO - Improvements to Private PAIR

Today, the USPTO announced improvements to Private PAIR, which gives online access to records of unpublished patent applications:
 
"Users can now self-administer, in real time, a number of routine administrative tasks that previously required the submission of a paper form. The new Private PAIR features enable self-administration of the following items:

• Entity status changes (Micro, Small, or Regular Undiscounted)
• Update Correspondence Address
• Update Maintenance Fee Address
• Request a new customer number

Entity status and correspondence address updates will be visible in the transaction history, and a copy of each change request will be uploaded to the Image File Wrapper (IFW).

Users may notice that all applications are set to Regular Undiscounted entity status by default upon initial filing until the application completes formalities review. Once this review is complete, the entity status will be updated based on any assertion of small or micro entity status.

The Address & Attorney/Agent tab has also been enhanced to include complete information for Correspondence Address, Maintenance Fee Address and Power of Attorney information."

Learn more at the PAIR Announcements page.

Copyright © 2015 Robert Moll. All rights reserved.

Startups Face Obstacles Protecting Innovation with US Patents

I was visiting Professor Hricik's blog tonight, and noticed his post with a link to an IP Today article by Joseph Hosteny on prosecution bars. Prosecution bars prevent prosecuting attorneys from viewing confidential information that is discovered during litigation that could be used to guide the strategy for patent prosecution of pending applications. When I arrived at IP Today it required a login, etc. I decided to sidestep all of that by visiting the Niro, Scavone, Haller & Niro's web site where Mr. Hosteny works to see if I could download the prosecution bar article and noticed he has his own website with publications. Although it didn't include the prosecution bar article, the articles were interesting.

Tonight, I mention one of them because it may cause some to think differently about how Congress is striking the balance in favor incumbents over startups with respect to patents. Lobbyists have Congress' attention on patent trolls, but startups interests tend to be ignored. This may be because they cannot afford lobbyists and must focus on innovation rather than changing laws. At the same time, the innovation needs legal protection from larger entities that can take it. Congress needs to give startups favorable patent laws to help them grow and if they deserve it, become incumbents. If we reform patent law in ways that generates obstacles for startups protecting their patentable innovation, we produce a world where only incumbents win.

In The Long Walk From the Gobi Desert to the River Styx Mr. Hosteny paints a stark detailed picture of the obstacles inventors face in profiting from patents. Although Mr. Hosteny talks about inventors, I think the ideas can be extended to startups which are built on inventions. He notes they have a long march to succeed. They have to invent something valuable, hire a patent attorney to prepare and file patent applications timely, build prototypes (let's assume real inventions), convince the examiner of the merits, then persuade skeptical companies to license the patent, and at times enforce the patent against companies with much more resources. Unfortunately, defendants' attorneys often treat inventors worse than robbers or embezzlers during enforcement. Don't expect to see it in court -- the judge is watching, but you do see it in depositions, where inventor's character is too often called into question. And the battle to enforce patents can stretch over years as it goes back and forth between the district court and the Federal Circuit on various issues. Definitely worth reading as it may help some realize that the playing field is not at all level for small companies and inventors that seek to license and enforce their patents.

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.