IP in Depth: Changing the Patenting Process
On September 16, 2012, a number of the provisions of the American Invents Act (also referred to as the “Patent Reform Act of 2011”) will take place. One of the provisions will allow assignees of inventions to file U.S. patent applications. Prior to this change, U.S. patent law only allowed the true inventor(s) to file patent applications, except in specific circumstances when one or more of the inventors was unwilling to sign an oath or declaration for a patent application; could not be located after diligent effort; or was deceased, legally incompetent or incapacitated. In the case of each of these specific circumstances, the party seeking to file on behalf of the true inventor(s) was required to file a petition along with various signed statements and/or evidence.
Under the new provisions, after a U.S. patent application is filed on behalf of the inventor(s), an assignee of the entire right to the invention can request to exclude the inventor(s) from prosecution by proving ownership of the entire right to the invention. Proof of ownership can be an assignment from the inventor(s) or proof of an obligation on the part of the inventor to assign the invention (e.g., an employment agreement covering intellectual property rights). A patent issuing from such an application can issue in the name of the real party in interest.
Under this provision, an assignee (or employer having a suitable employment agreement in place) will no longer need to ask the inventor(s) to execute an oath or declaration for a patent application.
A number of provisions of the American Invents Act that go into effect on September 16 will allow third parties to challenge pending applications and issued patents before the U.S. Patent and Trademark Office (USPTO), including third-party pre-issuance submissions; third-party requested post-grant review; and inter partes post-grant review.
Third-party pre-issuance submissions (also referred to as “pre-issuance submissions”) will allow third parties to submit printed publications, along with a description of the relevance of the publications, to the USPTO to be considered during the examination of a pending patent application. While this provision will potentially enable competitors to bring to the attention of patent examiners prior art that may adversely impact the patentability of pending patent applications during examination, it is much better for the applicant to become aware of and deal with such prior art during the examination of a patent application than to be confronted with the prior art while trying to enforce a patent granted on the application.
Third-party requested post-grant review will allow third parties to present essentially any legal challenge to the validity (i.e., request cancellation) of at least one or more claims of an issued patent. The request for post-grant review must be filed within nine months of a patent’s issuance. The request will be handled by the USPTO Board of Patent Appeals and Interferences (to be renamed Patent Trial and Appeal Board), which must determine whether at least one of the challenged claims is unpatentable, or whether the post-grant review would resolve an unsettled legal question important to the patent system. At the outcome of the procedure, the USPTO will provide a certificate canceling any claim(s) of the patent finally determined to be unpatentable and confirming any claim(s) of the patent determined to be patentable.
After the nine-month window for post-grant review expires, third parties may file for an inter partes review procedure. This procedure will replace the current inter partes reexamination procedure and would be limited to the consideration of novelty and/or obviousness issues based on prior art patents and printed publications.
A new supplemental examination procedure that will go into effect on September 16 will enable patent owners to correct possible oversights and avoid potential legal challenges of inequitable conduct and unenforceability. This procedure will allow only patent owners to request consideration, reconsideration or correction of any “information believed to be relevant to the patent.”
There are no limitations on the nature of the information that can be submitted to consideration or correction. For example, public use or offers for sale, written description or enablement issues, accuracy of prior declarations, statements regarding inventorship, and printed publications and patents can be raised during supplemental examination. Possible inequitable conduct can be cured without any provision for discovery by the USPTO.
Upon submission of a request for supplemental examination, the director of the USPTO has three months to issue a certificate indicating whether the information presented in the request has raised a new question of patentability. If the certificate does indicate that a new question of patentability has been raised, the director will order a reexamination of the patent.
Other provisions of the American Invents Act include a requirement that the director of the USPTO establish a transitional post-grant review proceeding to consider the validity of business-method patents, as well as new rules about the Board of Patent Appeals and Interferences and provisions for appeals to the Court of Appeals for the Federal Circuit (CAFC) from certain Board decisions.
The full text of final bill of the American H.R. 1249: Leahy-Smith “America Invents Act” can be found at www.govtrack.us/congress/billtext.xpd?bill=h112-1249.
Michael Gzybowski is an intellectual property attorney with Brinks Hofer Gilson & Lione. He has over 25 years of experience, including serving as a patent examiner at the U.S. Patent and Trademark Office prior to entering private practice. He can be reached at firstname.lastname@example.org.
Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.