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Tuesday, September 6, 2011
US Patent 8,011,593US Patent : 8,011,593
Issued to Preta et. al. on August 9, 2011
4:55 pm edt
US Patent 8,011,593US Patent 8,011,593 issues to Preta et. al.
America Invents ActOpposition proceduresThe proposed bill, H.R. 1249, revises and expands opposition procedures.
The bill retains existing ex parte reexamination,[6] adds preissuance submissions by third parties,[7] expands post-grant inter partes reexamination and renames it inter partes review,[8] and adds post-grant review.[9] H.R. 1249 provides additional tools to oppose patent applications with expanded discovery,[10] and to file multiple oppositions[11]. First
to file and grace periodProposed law would switch U.S. patent priority from the present "first-to-invent" system to a "first-to-file" system. The proposed legislation also modifies the prior art definitions of the patent law. Acts and prior art that
bar a patent will include public use, sales, publications, and other disclosures available to the public as of the filing
date, other than publications by the inventor within one year of filing (inventor’s “publication-conditioned grace
period”), whether or not a third party also files a patent application. Applicants that do not publish their inventions
prior to filing will receive no grace period. The proceedings at the U.S. Patent Office for resolving priority contests among
near-simultaneous inventors who both file applications for the same invention ("interference proceedings") are repealed, because priority will be determined based on filing date. An administrative proceeding—called
a “derivation” proceeding, similar to that currently used within some interference proceedings is provided to
ensure that the first person to file the application is actually an original inventor and that the application was not derived
from another inventor.[2]The bill refers to the new regime as "First-Inventor-to-File
(FITF)." This new regime operates differently than the FTI regime in the US and the various FTF regimes in place in the
rest of the world. An analysis of the differences between FTI, FTF, the original FITF, and the regime in the current bill
was performed for some 200 different typical fact patterns involving the actions and timing of two different inventors in
terms of whether and how each would publish or file patent applications. The comparison demonstrates the different outcomes
that can occur under each of the four different regimes.[12] Additional
proposed changesThe America Invents Act as amended prior to cloture filed on March 3, 2010 proposes
additional changes to current patent law, including:[2] - Tax strategy inventions. Provides that any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown
at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention
from the prior art.
- False marking. Would eliminate false marking lawsuits except for ones filed by the US government or filed by a competitor who can prove competitive injury.
- Filing by other than inventor.
Would enable an entity to file an application on behalf of an inventor who assigned, or is under an obligation to assign,
the invention rights to the entity, without seeking the inventor's execution of the application.
- Oath
and declaration. Would make it easier for
a corporation to file a substitute inventor's oath when the inventor cannot be reached or is non-cooperative.
- Best mode. Although an inventor
will still be required to “set forth” the best mode for accomplishing the invention, the bill would exclude failure to disclose a Best Mode from being used as a basis for invalidating an issued patent.
- Reports to Congress. Requires within one year of enactment that (a) the Small Business Administration report on effects on small businesses of repealing the invention date-based system of priority and transitioning to the filing-date-based
system; (b) the USPTO report on the operation of prior user rights in selected countries in the industrialized world.
USPTO practice changes- Fee Setting Authority. The USPTO would be given authority to adjust its fees in a way that "in the aggregate" recover the estimated costs of its
activities.
- "Fee diversion". Provides a special USPTO Public Enterprise Fund from paid-in user fees, ending fee "diversion"
from the Office.
- Review of inter partes reexamination. Would deny the right of de novo review of USPTO decisions in inter partes reexaminations in D.C. Federal District Court, making direct appeal to the Federal Circuit the only path for judicial review in inter partes reexamination cases. Anomalously, the legislation leaves intact
the right of the Patent Office (acting through the Board of Patent Appeals and Interferences) to sandbag a patent owner with
a "new ground of rejection" at the last stage of intra-Patent Office proceedings, but denies the patent owner any
responsive or reciprocal right to introduce evidence in rebuttal.
- Prioritized examination. Provides for prioritized examination for technologies important
to American competitiveness.
- Disclosure on USPTO's "Special Dispatch". Require
the USPTO to disclose the length of time between the commencement of each inter-partes and post-grant review and the conclusion
of that review.
- Additional USPTO facilities. Establishes additional USPTO
satellite offices.
- Third-party submission of prior art. Codifies existing regulation for third-party
submission of prior art in published application by extending the period allowed for such submissions in 37 C.F.R § 1.99 from two months to
six months after publication.
America Invents ActOpposition proceduresThe
proposed bill, H.R. 1249, revises and expands opposition procedures. The bill retains existing ex parte reexamination,[6] adds preissuance submissions by third parties,[7] expands post-grant inter partes reexamination and renames it inter partes review,[8] and adds post-grant review.[9] H.R. 1249 provides additional tools to oppose patent applications with expanded discovery,[10] and to file multiple oppositions[11].
First
to file and grace periodProposed law would switch U.S. patent priority from the present "first-to-invent" system to a "first-to-file" system. The proposed legislation also modifies the
prior art definitions of the patent law. Acts and prior art that bar a patent will include public use, sales, publications,
and other disclosures available to the public as of the filing date, other than publications by the inventor within one year
of filing (inventor’s “publication-conditioned grace period”), whether or not a third party also files a
patent application. Applicants that do not publish their inventions prior to filing will receive no grace period. The proceedings
at the U.S. Patent Office for resolving priority contests among near-simultaneous inventors who both file applications for
the same invention ("interference proceedings") are repealed, because priority will be determined based on filing date. An administrative proceeding—called
a “derivation” proceeding, similar to that currently used within some interference proceedings is provided to
ensure that the first person to file the application is actually an original inventor and that the application was not derived
from another inventor.[2]The bill refers to the new regime as "First-Inventor-to-File
(FITF)." This new regime operates differently than the FTI regime in the US and the various FTF regimes in place in the
rest of the world. An analysis of the differences between FTI, FTF, the original FITF, and the regime in the current bill
was performed for some 200 different typical fact patterns involving the actions and timing of two different inventors in
terms of whether and how each would publish or file patent applications. The comparison demonstrates the different outcomes
that can occur under each of the four different regimes.[12] Additional
proposed changesThe America Invents Act as amended prior to cloture filed on March 3, 2010 proposes
additional changes to current patent law, including:[2] - Tax strategy inventions. Provides that any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown
at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention
from the prior art.
- False marking. Would eliminate false marking lawsuits except for ones filed by the US government or filed by a competitor who can prove competitive injury.
- Filing by other than inventor.
Would enable an entity to file an application on behalf of an inventor who assigned, or is under an obligation to assign,
the invention rights to the entity, without seeking the inventor's execution of the application.
- Oath
and declaration. Would make it easier for
a corporation to file a substitute inventor's oath when the inventor cannot be reached or is non-cooperative.
- Best mode. Although an inventor
will still be required to “set forth” the best mode for accomplishing the invention, the bill would exclude failure to disclose a Best Mode from being used as a basis for invalidating an issued patent.
- Reports to Congress. Requires within one year of enactment that (a) the Small Business Administration report on effects on small businesses of repealing the invention date-based system of priority and transitioning to the filing-date-based
system; (b) the USPTO report on the operation of prior user rights in selected countries in the industrialized world.
USPTO practice changes- Fee Setting Authority. The USPTO would be given authority to adjust its fees in a way that "in the aggregate" recover the estimated costs of its
activities.
- "Fee diversion". Provides a special USPTO Public Enterprise Fund from paid-in user fees, ending fee "diversion"
from the Office.
- Review of inter partes reexamination. Would deny the right of de novo review of USPTO decisions in inter partes reexaminations in D.C. Federal District Court, making direct appeal to the Federal Circuit the only path for judicial review in inter partes reexamination cases. Anomalously, the legislation leaves intact
the right of the Patent Office (acting through the Board of Patent Appeals and Interferences) to sandbag a patent owner with
a "new ground of rejection" at the last stage of intra-Patent Office proceedings, but denies the patent owner any
responsive or reciprocal right to introduce evidence in rebuttal.
- Prioritized examination. Provides for prioritized examination for technologies important
to American competitiveness.
- Disclosure on USPTO's "Special Dispatch". Require
the USPTO to disclose the length of time between the commencement of each inter-partes and post-grant review and the conclusion
of that review.
- Additional USPTO facilities. Establishes additional USPTO
satellite offices.
- Third-party submission of prior art. Codifies existing regulation for third-party
submission of prior art in published application by extending the period allowed for such submissions in 37 C.F.R § 1.99 from two months to
six months after publication.
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2011.09.01
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