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Tag: legislation

  • America Invents Act USPTO Roadshow

    I’ve posted several times about the America Invents Act, which was passed last September by Congress. Soon, you can attend a discussion forum with USPTO officials about the rules the Office has proposed to implement the legislation. Although the attendees may be mostly patent attorneys and other legal professionals, I think it is commendable that the USPTO is making itself available to the the general public to discuss the upcoming sweeping changes to the patent system.

    The roadshow will hit the following cities between February 15 and March 9:

    • Alexandria, VA
    • Sunnyvale, CA
    • Salt Lake City, UT
    • Dallas, TX
    • Ft. Lauderdale, FL
    • Boston, MA
    • Chicago, IL
    • San Diego, CA

  • New and Old Section 103

    35 U.S.C. § 103 deals with the non-obviousness requirement for patentability. Here is a side-by-side comparison of the current Section 103 of Title 35 with the new version from the America Invents Act:

    Old Section 103 New Section 103
    § 103 Conditions for patentability; non-obvious subject matter.

    (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

    (b)

    (1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-

    (A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and

    (B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.

    (2) A patent issued on a process under paragraph (1)-

    (A) shall also contain the claims to the composition of matter used in or made by that process, or

    (B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.

    (3) For purposes of paragraph (1), the term “biotechnological process” means-

    (A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to-

    (i) express an exogenous nucleotide sequence,

    (ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or

    (iii) express a specific physiological characteristic not naturally associated with said organism;

    (B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and

    (C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

    (c)

    (1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

    (2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if –

    (A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

    (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

    (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

    (3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

    		 § 103. Conditions for patentability; non-obvious subject matter

    A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

  • New and Old Section 102

    35 U.S.C. § 102 deals with the novelty requirement for patentability. Here is a side-by-side comparison of the current Section 102 of Title 35 with the new version from the America Invents Act:

    Old Section 102 New Section 102
    § 102 Conditions for patentability; novelty and loss of right to patent.

    A person shall be entitled to a patent unless –

    (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

    (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

    (c) he has abandoned the invention, or

    (d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or

    (e) the invention was described in –

    (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or

    (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

    (f) he did not himself invent the subject matter sought to be patented, or

    (g)

    (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or

    (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

    		 § 102. Conditions for patentability; novelty

    (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.

    (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

    (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

    (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; or

    (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

    (c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—

    (1) the subject matter disclosed was developed and the
    claimed invention was made by, or on behalf of, 1 or more
    parties to a joint research agreement that was in effect on
    or before the effective filing date of the claimed invention;

    (2) the claimed invention was made as a result of activities
    undertaken within the scope of the joint research agreement; and

    (3) the application for patent for the claimed invention
    discloses or is amended to disclose the names of the parties
    to the joint research agreement.

    (d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

    (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

    (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

  • Major Changes Coming to the U.S. Patent System

    Last Friday, September 16, 2011, President Obama signed the Leahy-Smith America Invents Act (available here) into law. The America Invents Act makes significant changes to the U.S. patent system. Among other things, the America Invents Act:

    • changes the patent system from a first-to-invent to first-to-file regime
    • eliminates the year-long grace period following public disclosure

    What do these changes mean for the typical patent applicant?

    (Additional aspects of the America Invents Act will be discussed in future blog posts.)

    First to File Regime

    Since the beginning of the U.S. patent system, the first person to invent is the one who has priority when multiple inventors claim the same subject matter, regardless of when each person filed their respective patent applications. The America Invents Act changes that. When this change goes into effect (in March, 2013), a patent or patent application that claims or discloses the same subject matter of a later-filed patent application will act as prior art to effectively bar the latter patent application from issuing. In other words, it no longer matters who invented first anymore–it only matters who filed first.

    Grace Period

    Current law provides that a patent may be granted even if the claimed subject matter was disclosed or on sale up to a year prior to the filing date. The America Invents Act will eliminate this one-year grace period, so that if there has been any disclosure, sale, patent application, etc. of the claimed subject matter prior to an application’s filing date, the applicant will not be entitled to a patent. One exception to this rule is that a disclosure will not prevent the patent from issuing if the disclosure was made by an inventor or by another who obtained the disclosed subject matter from an inventor.

    Why did Congress Make These Changes?

    America is the only major industrialized country that adheres to a first-to-invent regime. In the bill, Congress provided its three-fold rationale for enacting the America Invents Act:

    • administer the Constitutional mandate for the patent system: “promote the progress of science and the useful arts by securing for limited times to inventors the exclusive rights to their discoveries;”
    • “provide inventors with greater certainty regarding the scope of protection provided by the grant of exclusive rights to their discoveries;” and
    • “promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures.”

    Impact of the Changes

    While it is not possible to predict how these changes will affect the behavior of the patent-applying masses, I speculate that the number of patent filings will increase by a significant margin. Before the changes go into effect, an inventor has priority over subsequent inventors as long as he exerts reasonable diligence in reducing his invention to practice. He also may obtain a patent even if the invention claimed was on sale during the year prior to the application filing date. The America Invents Act might take away the leisure and privilege of waiting until an idea has been fully developed. Instead, inventors will file as soon as possible to minimize the possibility of losing rights due to a prior filing, sale, or publication.

    The need to file as soon as possible will likely be most burdensome for individual inventors and companies with a smaller patent budget. Provisional patent applications will probably be used, more than ever, to try to bridge the patent-spending gap between such entities and larger corporations.