Since prior user rights first came up as an issue in the patent reform debate I have been opposed to the idea. Whether I like prior user rights or not, the reality is that prior user rights are now a part of U.S. patent law. Nevertheless, the debate goes on about whether prior user rights are a good idea. In fact, the United States Patent and Trademark Office is tasked through the America Invents Act with conducting a Prior User Rights Study. To facilitate this study a public hearing on prior user rights was held on October 25 in the Madison Auditorium at its Alexandria, Virginia campus of the USPTO.
With this in mind I thought I would once again revisit prior user rights. One of the arguments I have heard recently supporting prior user rights is that a corporation that is going to invest billions of dollars into a facility should know that their investment is safe and that the plant can’t be shut down by a later filed patent application. This argument is so specious as to be nearly laughable if you ask me. This strikes me as just more of corporate America wanting the government to save them from themselves.
The Tenth Circuit handed down a message in a recent case brought by DISH Network against its Commercial General Liability (CGL) carriers, where DISH Network Corporation had been sued on patents claiming call center technology. Although unlikely, some CGL policies may still be interpreted to have some coverage for patent infringement claims if the patent is claimed to be on a way of advertising a product. In DISH Network Corp. v. Arch Specialty Ins. Co., __F.3d__ No. 10-1445 (10th Cir. Oct. 17, 2011), DISH argued that the CGL coverage for “advertising injury” was potentially triggered by the asserted patents’ claims which purportedly included advertising or product promotion.
Prior to reaching the Tenth Circuit the district court held that the underlying complaint did not allege an “advertising injury” under the policies issued to Dish by the five defendant insurers. As a result, the district court granted the insurers’ motion for summary judgment, and Dish appealed. The Tenth Circuit reversed and remanded. By so doing those who only casually review the decision or news stories related to it might take away the wrong message.
No doubt you have heard about the new law that is upon us in the land of patents; it’s in all the papers and on all the blogs. The America Invents Act was signed by President Obama on September 16, 2011, and marks the largest single re-write of U.S. patent law ever. Even the 1952 Patent Act pales in comparison because that was almost completely a codification of existing case law that had developed over the decades. America Invents, however, embarks upon a new path and leads us into the great unknown in many respects.
Those preparing to take the patent bar exam or contemplating sitting for the exam at some point in time in the future likely don’t want to hear that U.S. patent law is heading into the great unknown. How can you be expected to take a pass the patent bar examination under these circumstances? First: Relax. You do not have to unlearn or forget what you are currently learning, or soon will learn, for the patent exam or for your practice life after you pass the exam. That being said, the sooner you do take the patent bar exam the better off you will be!
It is virtually impossible to in any intellectually honest way truthfully determine what the legislative intent of Congress was for any particular piece of legislation. Justice Antonin Scalia has railed against the use of legislative history for decades, saying “legislative history is irrelevant when the statutory text is clear,” and referring to the “legal fiction” that legislative history, including Committee Reports, actually reflect the intent of the Congress. This is, of course, because it is exceptionally easy to get something into the legislative history, so anything that appears in the legislative history may only be the view of one particular Member of Congress, or worse the view of a lobbyist paying for access. There is also the problem associated with Members of Congress saying things they simply don’t understand, and the reality that the legislative history cannot be cross examined. Even Committee Reports are at best the view of a majority of a group that makes up a small fraction of the overall Congress. It seems a fools errand to rely on legislative history in all but the rarest case, and Scalia’s view seems to be the prevailing view of this Supreme Court.
Notwithstanding the inherent unreliability of legislative history and the truly scary prospect of trying to get inside the head of Members of Congress, it seems fairly clear to me that the America Invents Act, which was signed into law by President Obama on September 16, 2011, contains at least a handful of things that can only be characterized as unintended consequences. Among them are: (1) U.S. patents issued from foreign filings will be prior art as of the foreign filing date; (2) commonly owned patent applications cannot be used against each other for novelty purposes; and (3) the creation of an post grant challenge limbo because of the delay in initiating post-grant review procedures.
Periodically I write articles aimed at giving inventors some information about preparing a patent application, such as primers on writing patent claims, writing method claims, describing your invention completely and language difficulties, to name but a few. Every time I do this I cringe a little out of fear that inventors will get the wrong idea. For the typical inventor who might have several inventions over the course of a lifetime. This level of experience makes it unrealistic to believe you can do it yourself without any assistance and do it just as well as a patent attorney or patent agent would or could.
I like drawing an analogy to the commercial where the man is sitting at the table with a butter knife and the surgeon on the phone is telling him how to perform the surgery. He asks: “Shouldn’t you be doing this?” A wise question for sure! Preparing a patent application on your own is a lot like doing surgery on yourself. You are going to make mistakes, it is not a good idea and only in the most extreme of circumstances should it be attempted.
Having said this, if you have no other choice — for whatever reason — you should be armed with the best information you can obtain. For that reason I write these articles, and I also write because I am convinced that the more you know the better you will be as an inventor. So even if you never plan on representing yourself if you understand the common mistakes and likely pitfalls it will make you a better consumer of legal services, and it will make you a better inventor because you will learn what is important and why, thereby giving your patent attorney or patent agent far more useful information than you otherwise would.
Earlier today the United States Patent and Trademark Office tweeted the following: “Follow Einstein’s and Jefferson’s footsteps…become a #Patent Examiner. Apply to the USPTO by Nov. 1.” Yes, the USPTO is hiring more examiners, which is very good news.
The fiscal year 2011 results are now in and the backlog of untouched patent applications as of the end of FY 2011 was 669,625, so there is plenty of work to be done and hiring more patent examiners has to be a part of the solution. But did you know that Albert Einstein was a patent examiner? How about Thomas Jefferson? Jefferson is largely regarded as the first U.S. patent examiner. Thomas Jefferson (then Secretary of State), along with Secretary of War Henry Knox, and Attorney General Edmund Randolph, made up the first patent examination panel for the United States of America. Einstein, on the other hand, worked for the Swiss Patent Office. It was while working for the Patent Office that Einstein came up with his theory of relativity.
As part of a series of programs complementing The Great American Hall of Wonders exhibition, the United States Patent and Trademark Office (USPTO) and the Smithsonian American Art Museum will sponsor a free, two-day Inventors Symposium on October 27-28, 2011, in the museum’s Nan Tucker McEvoy Auditorium.
On Thursday, October 27, 2011, the first day will focus on the recently enacted America Invents Act and its impact on independent inventors and small businesses. Registration will begin open at 1pm with programming starting at 2pm and running through 5:30pm. Thursday’s program will conclude with a networking reception from 5:30pm to 7:00pm. Those who have attended USPTO events in the past know that these networking receptions are in many respects the highlight of the day. USPTO Officials take time to mingle and speak with independent inventors who have questions or who just want to meet the people in charge of administering the Office. USPTO networking receptions are among the best networking events you will likely ever attend.
Recently the President’s Council on Jobs and Competitiveness, otherwise known as the Jobs Council, issued an interim report outlining a number of suggestions and recommendations. Some of the suggestions are quite good, although hardly revolutionary. Indeed, one obvious recommendation is for Congress and the Obama Administration to explore tax reforms that would increase the competitiveness of businesses locating in the United States. I guess it is that type of outside-the-box thinking that only a Presidential blue-ribbon panel could come up with!
Indeed, many of the ideas in the interim report are quite broad and vague, but on the tax issue there were at least a couple specific recommendations. The Jobs Council recommends eliminating capital gains taxes on investments of $25 million or less in privately held companies where the investment is held for 5 years or longer (see page 19). Also recommended is eliminating corporate taxes for the first year a company is in existence and reduce corporate taxes by 50% in the second and third year of existence (see page 19). The thinking here is that by reducing tax burden during the first three years companies will be able to invest in growth and expansion, which seems reasonable and also calculated to lead to job creation given that start-ups disproportionately are responsible for creating new jobs. Unfortunately, being reasonable and calculated to lead to job creation likely means that it has no realistic chance of being implemented.