Executive Intellectual Property Bulletin
AMERICAN INVENTORS PROTECTION ACT SIGNED INTO LAW
On November 29, 1999, President Clinton signed the American Inventors Protection Act into law. Some of the key provisions are as follows:
1. Publication of utility applications at 18 months
Although the publication of applications was very controversial, a compromise was struck to allow an applicant to opt out provided no foreign applications have been or will be filed. If the foreign applications are less extensive than the U.S. application, a redacted copy of the application can be submitted for publication. The decision not to file abroad can be rescinded by the applicant.
Applicant is given the option to voluntarily publish the application.
No protest or other form of pre-issuance opposition may be initiated after publication.
The Commissioner is given the power to shorten the period to claim foreign priority.
One advantage of publication is that an infringer is liable for a reasonable royalty for actions after publication provided there is actual notice and the claims, as published, are issued in substantially the same form.
This provision does not become effective until one year after the date of enactment.
2. Saturday/Sunday, holiday exception for provisional applications ended
If the one year anniversary of the filing of a provisional application falls on a Saturday, Sunday or holiday, the utility application claiming priority thereto can be filed the next day the PTO is open for business. This applies to applications filed after June 8, 1995 but does not apply to patents which are subject to litigation commenced before the date of enactment.
3. Inter-partes or ex-parte reexamination
The new law allows a third party requester more opportunity to participate in the reexamination. This change also provides a right of appeal to the Board of Patent Appeals and Interferences; however, there is no right of a third party requester to appeal to the Federal Circuit. The patent owner, on the other hand, can appeal to the Federal Circuit.
The procedures for inter-partes reexamination are basically the same; prior art is limited to printed patents and publications and a threshold determination of a substantial new question of patentability must be made.
The inter-partes reexamination has two significant drawbacks: the real party in interest must be identified, and the third party requester is estopped in litigation from asserting invalidity based on any ground that was raised or could have been raised during the reexamination. Neither applies to ex-parte reexamination; however, the third party requester can also appeal but only to the Board of Patent Appeals and Interferences; it is no longer just the patent owner who can appeal.
The inter-partes reexamination provisions are effective upon enactment and apply to any patent that issues from an original application filed in the U.S. on or after that date.
4. PTO organizational changes
The PTO wanted to be an entirely independent public company. The PTO gets a little more freedom, but remains under the Commerce Department. Now, the PTO is given its own "director."
5. Patent term guarantee
The PTO will guarantee a first action in 14 months after filing an application, a reply to an official action or an appeal brief within 4 months, and issuance within 4 months after the issue fee is paid. If the PTO doesn't make those guarantees, then adjustments are made to the patent term. That is, a day is added to the term for every day the PTO is late. However, in that case, days may be subtracted from the adjusted term for unjustified extensions or continuations. Further, no patent, the term of which has been disclaimed beyond a specified date, may be adjusted beyond the expiration date specified in the disclaimer.
6. The §102(f)/(g) exception is extended to §102(e)
Several years ago, the Patent Statute was amended (§103(c)) to prevent rejections under 35 U.S.C. §102(f)/§103 and §102(g)/§103 provided both inventions were assigned or under an obligation to assign to the same inventive entity). Now, Congress revised the Patent Statute to eliminate §102(e)/§103 rejections as well, in situations where two applications are commonly owned. 35 U.S.C. §103(c) is now amended to add §102(e) prior art to the prior art exception if two applications were jointly owned or subject to a common obligation to assign.
The §102(e)/§103 provision is effective for any patent application filed after enactment of the Bill.
7. Limited defense (prior user rights) to method claim infringement based on earlier invention
Keeping your invention secret and commercially exploiting it results in a risk that your activities will not prevent another from enforcing his patent covering the same invention against you. That is, your activity will not qualify as a §102(b) sale or invented by another as specified in §102(g). Consequently, someone who independently makes the same invention could obtain a valid patent and enforce it against you. Generally, this is still the case with one exception: a method of doing business. A prior inventor of such a method now has a personal defense provided that the method was reduced to practice at least one year before the effective filing date of the patent and was commercially used before the filing date. The defense is available only prospectively. Further, raising or establishing this defense cannot be used to establish the invalidity of the patent under §102 or §103.
