2007 is shaping up to deliver some important changes in United States patent law.In the Congress, a proposed Patent Reform Act of 2007 is under consideration.In the U.S. Supreme Court, the KSR v. Teleflex case challenges a long-standing test for patentability.And, in the United States Patent Office, claim and continuation rule changes are imminent.
This NEWSLETTER summarizes a number of the changes being considered.
The views expressed herein are solely those of the author.
Paul D. Chancellor
Patent Attorney
Ocean Law
3463 Red Bluff Ct.
Simi Valley, CA 93063
Tel: 805.368.4586
Email:
Patent Office Changes Rules
Focused on increasing the efficiency of the patent office, the USPTO is poised to implement new rules that limit the number of claims to ten and the number of continuations to one. See the article at right, USPTO Rule Changes.
Congress Debates New Patent Act
One of several significant changes proposed in the Patent Reform Act of 2007 is the replacement of the long-standing "first to invent" system with a "first to file" system. Associated with the first to file change is a limitation on those who can claim the present one year grace period applicable to among other things the on sale bar. See the article below, Patent Reform Act of 2007.
Supreme Court On Obviousness
Patentability requires utility, novelty and non-obviousness. In KSR v. Teleflex, an accused infringer has asked the high court to reconsider the now twenty-five year old standard for obviousness. This is a remarkable case with the potential to remake a cornerstone of the patent law. See the article below, KSR v. Teleflex.
Patent Reform Act of 2007
From a few words in the U.S. Constitution "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries," patent law has grown enormously.On the strength of these words, Congress enacted and has often amended the patent law, now Title 35 of the United States Code.Some patent law amendments are minor, such as changing the fees charged by the USPTO.Others are not, and this is the case with the Patent Reform Act of 2007.The proposed amendments to Title 35 address both administrative and policy concerns.
Selected provisions of the proposed act are addressed below.
First To File:The proposed legislation would change our "first to invent" rule.Today, it is the first to conceive the invention that wins the race, not the first to file a patent application.This is one reason that engineering notebooks should be kept; to document the date of invention.Although few would argue the first to invent rule strikes them as fair, many might argue that the rule has become unworkable.Proponents of the alternative, the "first to file" rule, point out that the first to invent rule is the root of much litigation (interference disputes), often decided on thin evidence since invention equals conception and conception requires little more than having an idea fixed in ones' mind.This burdens our courts with litigation between inventors, each claiming to be the first.Proponents are also quick to note that among industrialized countries, it is only the U.S. and Canada that maintain a first to invent rule.This is an impediment to harmonizing our patent laws with those of other countries.
One Year Grace Period:Current law provides that an invention may be patented upto one year after the invention is publicly disclosed in a printed publication anywhere, publicly used in this country or placed on sale in this country.In the proposed legislation, the applicability of this "grace" period depends upon who disclosed the invention.The inventor would continue to benefit from the one year grace period, but most others would not.For example, a prototype sold by your fabricator to the scrap dealer before applying for a patent would bar the issuance of a patent and dedicate the invention to the public.
Foreign Use & Sale:Current law provides that public use and on sale activity outside the U.S. does not bar the issuance of a patent.In the proposed legislation, there is no distinction between the local of such activities; all such activity, whether foreign or domestic, bars the issuance of a patent.
New Floor On Damages:A reasonable royalty is the present floor on damages for patent infringement and it is this remedy that is provided where the patent owner cannot prove lost profits.The proposed legislation requires that the reasonable royalty calculus now consider the "patent's specific contribution over the prior art."The net effect is that patent owners who cannot prove lost profits would likely receive less compensation under this new version of the reasonable royalty.
Treble Damages:A patent provides its owner with the right to exclude others from practicing an invention and failing this with the right to obtain a remedy from infringers.Where infringement is willful, a court may in its discretion award the patent owner with "treble damages."What this means is the damages determined at trial may be enhanced by the court; increasing, for example, a $100 verdict to as much as a $300 award to the patent owner. The proposed legislation requires that willfulness must be shown by "clear and convincing evidence," a much higher standard that may preclude the assessment of enhanced damages in many cases.
Inter Partes Reexamination:Current law provides that any party may request an inter parties reexamination at any time.Since this reexamination occurs in the USPTO, it is an inexpensive way to test the validity of an issued patent.However, those desiring to challenge the validity of a patent have not frequently used this procedure for that purpose.The reason is that a finding of validity after reexamination in the patent office prevents a court from reconsidering the issue of patent validity on any grounds that were or could have been raised in the patent office.The proposed legislation relaxes the rule of forfeiture and allows the court to consider any grounds for invalidity that were not considered by the patent office.In this writer's opinion, few will be persuaded to use the reexamination procedure while a judgment of the USPTO can result in a bar on the federal courthouse doors:
Takeaways:
1. Consider not disclosing your invention before filing a patent application
2. Consider filing a patent application at your earliest opportunity
3. Consider using provisional applications
KSR v. Teleflex
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Whether an invention is patentable turns on utility, novelty and non-obviousness.All three are required.Of this trio, it is often the question of obviousness that determines whether the USPTO will allow a particular claim.
The law states that a person is entitled to a claim unless it lacks utility or novelty, or is obvious.Patent examiners seldom question utility since some utility, almost any utility is sufficient to meet the test.To show a claim cannot be allowed for lack of novelty, the Patent Examiner must find all of the limitations of an applicant's claim in single prior art reference; this too becomes difficult where a claim has many limitations.Here, the Patent Examiner uses the test of obviousness which allows the aggregation of multiple prior art references---so long as at the time the invention was made, some teaching, suggestion or motivation existed to lead a person of ordinary skill in the art to combine the references.
In KSR v. Teleflex, the patent owner Teleflex sued KSR for patent infringement.KSR's principal defense to the charge of infringement is that Teleflex' patent is invalid and therefore cannot be infringed.Having lost on this issue in the appeals court, KSR petitioned the U.S. Supreme Court to hear the case.KSR asked our highest court to relook at judge made law, the teaching/suggestion/motivation ("TSM") test.It is significant that the U.S. Supreme Court agreed to hear a case that challenges what many believe to be a well-settled, if not entirely predictable, body of law.
This case is important because it may change the legal standard of patentability.And, as can be seen from KSR v. Teleflex, this standard impacts not only patent applicants, but also patent holders since accused infringers frequently raise the issue of patent invalidity in court.Those siding with KSR argue that the present obviousness standard for patentability sets the hurdle too low for patent applicants; a result is too many trivial inventions are patented and many of these create needless patent litigation downstream.Teleflex argues that while the standard may not be perfect, it is the product of long experience and modification now would spoil long-settled rights.
The U.S. Supreme Court has heard the arguments in this case and some view its decision as overdue.Whatever the decision, it seems likely the obviousness standard for patentability will be changed to raise the hurdle for patent applicants.For example, where the Patent Examiner cannot show teaching, suggestion or motivation to combine prior art references, other inquiries may be substituted; such as, the degree of innovation as compared to the prior art and the level of skill of those practicing the pertinent art.The secondary indicia of non-obviousness should not change.Applicants who can show evidence of unexpected results, commercial success, long-felt but unsolved needs, failure of others and skepticism of experts will have continue to have powerful evidence of patentability.
Takeaway:Consider taking allowed claims in pending applications off the table now by canceling disputed claims and requesting issuance. Presently, disputed claims may be refiled in a continuation application.
The views expressed in this newsletter are those of Paul D. Chancellor and are for informational purposes only. They are not nor are they intended to be legal advice.
The patent office rules appear in Title 37 of the Code of Federal Regulations.Like other federal agencies, the patent office changes its rules from time to time.Each new rule must not only be consistent with law, it must also be fair and reasonable.Two proposed rule changes are now in the works (under review in the Office of Management and Budget) and will be of interest to many patent applicants.These changes aim to increase the efficiency of the patent office by limiting the number of claims examined and restricting the number of continuation applications that can be filed.
Claim Practice:Presently, on paying the basic nonprovisional application fee, an applicant is entitled to submit as many as twenty claims of which three may be independent claims.During examination, each of these claims is examined and a decision is rendered as to patentability.
The proposed rule limits the number of claims that will be examined to ten.Although an applicant may submit more than ten claims, only the "representative" claims will be examined prior to an allowance.The patent office defines representative claims to be all of the independent claims and enough dependent claims to fill the ten claim quota.To the extent that more than ten claims are submitted, the applicant must indicate which of the dependent claims are representative claims.For those of you filing more than ten independent claims, you will need to indicate which subset of your independent claims fills the ten claim quota.
Continuation Practice:Continuation patent applications have long been allowed to claim priority to an earlier filed and copending application.There was no concern if the present continuation application claimed the benefit of an earlier filed continuation application (patent A filed in 2000, continuation B claiming priority to A filed in 2002, continuation C claiming priority to B filed in 2004.)There is now a concern that, among other things, continuations consume too much examiner time.
The proposed rule limits the number of continuation applications that may be filed "as of right" to one.As of right means that the applicant need not explain why he should be entitled to file the continuation application.The rule also redefines continuation applications to include not only continuations and continuations-in-part, but also requests for continued examination.This means an applicant who filed a new nonprovisional application and pursued allowance of the claims during a continued examination period would have no recourse to pursue claims that were not allowed.
Takeaways:
1. Consider filing utility patent applications sooner rather than later to assure claims in excess of ten are examined
2. Consider filing separate inventions as separate patent applications and not using the same specification and drawings
3. Consider filing continuations sooner rather than later to assure the right to file is not lost
4. Consider avoiding use of requests for continued examination
5. Consider claim strategy in light of the combined effect of these two proposed rule changes
OCEAN LAW NEWSLETTER
Paul D. Chancellor
Patent Attorney
Ocean Law
Simi Valley, CA 93063
Tel: 805.368.4586
Email:
Ocean Patent Newsletter | 3463 Red Bluff Ct. | Simi Valley | CA | 93063
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