Earlier this summer the United States Patent and Trademark Office published a Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board. This request for comments pertains to the new administrative trial proceedings ushered in by the America Invents Act (AIA), which President Obama signed into law on September 11, 2011. The administrative trial proceedings at the USPTO did not go into effect immediately, but rather went into effect on September 16, 2012, the first anniversary of the signing of the AIA.
The administrative trial proceedings created by the AIA are: (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012. It is now time for the USPTO to take a step back and take account of these new proceedings, aided by public input. This is not an unexpected occurrence. Many will recall that during the rule making phase the USPTO held roundtable discussions in a number of cities across the country. During this timeframe the USPTO committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some unspecified period of time and had gained experience with the new administrative trial proceedings. With nearly two years of practical experience with these new proceedings, the time has now come for the USPTO to revisit and quite possibly revise the rules.
In the Federal Register Notice the USPTO explains that electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. It is hard to argue with this statement given the worldwide growth of patent applications. Truthfully, whenever there is a public forum at the USPTO of leaders from patent offices around the world it almost seems like everyone is overwhelmed. Working together in bi-lateral fashion has given us various Patent Prosecution Highway pilot programs that seek to accelerate applications. The United States worked with the European Patent Office to streamline and update patent classification systems. Sharing files electronically is another step toward streamlining the process for applicants and Offices alike.
Standing in the way of file sharing with other offices is the confidential nature of unpublished U.S. patent applications, as set forth in 35 U.S.C. 122. An applicant now must provide the United States Patent and Trademark Office (USPTO) written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.
Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of 35 U.S.C. § 154(b)(1)(B). As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.
The USPTO announces two public hearings in March 2014 to receive feedback about proposed rules concerning the ownership of patents and applications (aka “attributable ownership proposed rules”). The public is invited to attend the hearings in person or via Webcast. Additionally, the public is invited to give testimony in person at the hearings and/or to submit written comments about the proposed rules. The deadline for requesting to give testimony has been extended to Wednesday, March 12, 2014, and the deadline for submitting written comments has been extended until Thursday, April 24, 2014.
The attributable ownership proposed rules require that the attributable owner, including the ultimate parent entity, be identified during the pendency of a patent application and at specified times during the life of a patent. More details about the attributable ownership proposed rules are available here: http://www.gpo.gov/fdsys/pkg/FR-2014-01-24/pdf/2014-01195.pdf
Just when you thought that the United States Patent and Trademark Office might be done with rulemaking for at least a bit, taking a collective sigh of relief after the final implementation of first-to-file rules on March 16, 2013, and new fees on March 19, 2013, the USPTO is back at it again. This time the USPTO is proposing rules necessary to implement he Patent Law Treaties Implementation Act of 2012 (PLTIA). SeeChanges to Implement Patent Law Treaty – Proposed Rules.
First, what is the Patent Law Treaty? The official party line is that the PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications. Still, I am just worn out from all the changes!
Historically the PLT was concluded on June 1, 2000, and entered into force on April 28, 2005. The United States Senate ratified the PLT on December 7, 2007, but it did not become effective in the United States upon ratification in 2007 because it is not a self-executing treaty. Legislation (i.e., title II of the PLTIA) to amend the provisions of title 35 to become compliant with our new treaty obligations was enacted on December 18, 2012.
The PLTIA amended U.S. patent laws to implement the provisions of the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title II. However, we have to look forward to additional proposed rules because the USPTO is implementing the Hague Agreement and title I of the PLTIA in a separate rulemaking. This proposed rules package pertains only to the changes required to implement the PLT.
Almost two weeks ago the United States Patent and Trademark Office issued two Federal Register Notices in anticipation of the U.S. converting from first-to-invent to a first-to-file regime. The first were the Changes to Implement First to File and the second was First to File Examination Guidelines. Both are important. The new regulations that make up 37 CFR are found in the former, but much of the meat and potatoes are found in the later. The Guidelines, which the USPTO says they are not obligated to follow, is where the Office spends most of the time comparing and contrasting old pre-AIA 102 with AIA 102. The Guidelines is also where the USPTO explains which cases they believe have been overruled (i.e., Hilmer and Metallizing Engineering) and which cases continue to have relevance. They also selectively cherry pick portions of the legislative history to back up their interpretations.
Frankly, we know that when the Supreme Court ultimately gets involved interpreting the AIA, which is a virtual certainty, the legislative history will play absolutely no role in interpreting the statute. This Supreme Court holds legislative history in near contempt. It is hard to argue with them on that point knowing how easy it is for something to be included into the legislative history. More interesting, however, will be whether the Federal Circuit will consider legislative history, or at least to what extent. But, as for now, the Patent Office is deferring to legislative history with respect to a number of items. On first glance nothing caught me as out of place particularly, and the Office has to rely on something given that Congress re-wrote the law and used different terminology for things that have had long-standing, well-known meanings.
Therefore, the question really has to be this: Did Congress mean what they said? Of course, that has multiple components: (1) Did Congress mean what they said in the actual text of the bill, which leaves a great many things open to interpretation; and (2) Did Congress mean what they said in the legislative history, which at times is some of the most clear writing you will ever read. The trouble, of course, is that they voted on the text, not the legislative history. Moreover, in one particular instance (relating to Metallizing Engineering) the USPTO relied on comments from Senator Leahy that only occurred after the Senate acted, which hardly seems reasonable to do give that the comment was after the fact and the exact type of remark that Justice Scalia and others seem to detest. How do we know that anyone other than one Senator believed that? How do we even know that was what that Senator believed when he voted? What a mess!
Washington—The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today published final rules of practice implementing the first-inventor-to-file provision of the Leahy-Smith America Invents Act (AIA). The provision, one of the hallmarks of the AIA, is a major step towards harmonization of the U.S. patent system with those of the United States’ major trading partners, allowing greater consistency in the prosecution and enforcement of U.S. patents. The AIA also includes safeguards to ensure that only an original inventor or his assignee may be awarded a patent under the first-inventor-to-file system. The first-inventor-to-file provision of the AIA goes into effect on March 16, 2013, and represents the final implementation of the changes mandated by the AIA.
The USPTO also today published final examination guidelines setting forth the agency’s interpretation of how the first-inventor-to-file provision alters novelty and obviousness determinations for an invention claimed in a patent application. In particular, the agency’s final examination guidelines inform the public and patent examiners how the AIA’s changes to the novelty provisions of law alter the scope of what is prior art to a claimed invention and how the new grace period operates.
In an efficiently functioning patent market, producers could quickly and inexpensively do the following: 1) identify which rights might be relevant to the product they wish to produce; 2) find the parties who control the interests in those rights; 3) determine the value of those rights in relation to the value off the product to be produced; and 3) secure a license with competitive terms. We are worlds away from such a system, but the Patent and Trademark Office’s proposed rules on disclosure of real-party-in-interest information would take an important step towards that vision, particularly the “broad definition” proposal. As always, promotion of an effective and efficient marketplace for innovation should be of paramount importance to regulatory agencies.
In the last five years, the patent market has undergone a change of seismic proportions. Patent rights are now regularly stripped from any underlying product and traded much like commodities in a largely unregulated market–the market for patent monetization. Prior to this time, the patent system had long operated with the comfort of knowing that more than 90% of patents would never bring any form of direct monetary return. I would refer to these as shadow rights, given that they have hovered on the periphery of the patent system, never fully actualized or fleshed out. We are now shifting to a system in which the opposite will be true–a drastic shift that is likely to have an extensive impact on innovation and the national economy. In our brave new world, large numbers of patents, that would not have garnered any direct return in the past, are being traded and monetized. Their presence in the market, particularly in the form of commoditized, tradable rights, enhances the uncertainty and game playing that may allow patent holders to obtain returns above the value of patent itself. See Robin Feldman, Intellectual Property Wrongs (describing amplification and shadow rights)(forthcoming).