Earlier today (Thursday, June 23rd), the House of Representatives passed its version of the America Invents Act of 2011, H.R. 1249. This follows earlier passage of the Senate Bill, S.23.
Chief among the reforms contained in both the House and Senate versions of the bill is the "First to File" provision. Such a change to U.S. patent law would harmonize us with the rest of the world in this respect. There may be reasons why individual inventors would prefer that we remain in a "First to Invent" system.
A significant difference remains between the House and Senate versions that will need to be resolved in conference. While the Senate voted to end diversion of fees from the USPTO, the House did not pass that provision. Currently, inventors' patent application fees can be diverted from the patent office to fund general operations of the government. The results are a shortage of patent examiners, an average pendency of patent applications of three years, a three to five year backlog of patent appeals, among other things. The Senate's version of patent reform held the promise that the patent office would soon be able to keep 100% of the revenue it generated, which would make faster processing of patent applications possible.
Let's hope an end to fee diversion is a part of the ultimate bill that comes out of the conference committee.
Thursday, June 23, 2011
Thursday, June 9, 2011
Supreme Court Upholds Clear and Convincing Standard for Showing Patent Invalidity
In February, I wrote about the Microsoft v. i4i case, being heard in the U.S. Supreme Court. Today, the Court has handed down its decision. In an 8-0 judgment (Chief Justice John Roberts did not take part because he has stock holdings in Microsoft), the Court upheld the lower court verdict for i4i and against Microsoft.
For the broader patent community, however, the decision is more significant. Microsoft had argued that the burden of proof that should be required for a showing that a patent is invalid was the "preponderance of the evidence" standard, rather than the higher "clear and convincing evidence" standard. You can read more about the argument in my earlier blog posting, but the Court rejected the proposition.
That is good news for patentees. Essentially, the Court was being asked to make it easier to show after the fact that a patent is invalid. If it became easier to invalidate a patent, patents in general would not have as much value.
More will be written about this important decision, but for now, it can be accessed at the website of the Supreme Court.
For the broader patent community, however, the decision is more significant. Microsoft had argued that the burden of proof that should be required for a showing that a patent is invalid was the "preponderance of the evidence" standard, rather than the higher "clear and convincing evidence" standard. You can read more about the argument in my earlier blog posting, but the Court rejected the proposition.
That is good news for patentees. Essentially, the Court was being asked to make it easier to show after the fact that a patent is invalid. If it became easier to invalidate a patent, patents in general would not have as much value.
More will be written about this important decision, but for now, it can be accessed at the website of the Supreme Court.
Wednesday, June 8, 2011
If you're selling your invention or using it publicly, you only have one year to file!
If you've invented something and brought it to market or put it into public use, in most cases you have to get a patent application on file within a year of the date you did so. Otherwise, you will likely lose the right to a patent on the invention.
An inventor who is granted a patent by the United States Patent and Trademark Office generally gets a 17-year exclusive right to the invention. Technically, for a utility patent (which is most patents) the term is 20 years from the filing date, but owing to the average of three years that it takes for an application for a patent to be examined, the effective term is 17 years.
In the United States, we have a "First to Invent" system. The first person to conceive of an invention generally is awarded the patent. Even if another inventor files an application for the same invention before the original inventor's application is received at the USPTO, the application of the original inventor (being the first to invent, not the first to file) gets priority.
In most other countries, the first inventor to file an application has priority. There is discussion in Congress to transform the United States patent regime to this "First to File" system used in the rest of the world, but for now the United States retains a "First to Invent" system.
But it is not a "pure" First to Invent system. In a "pure" First to Invent system, there would be no deadline for filing an application once you brought your invention to market. Since your monopoly term lasts only 17 years, an inventor could theoretically wait as long as possible to file the application, until a competitor was about to file. In this manner, the inventor would be "extending" the term of the monopoly by delaying its starting date through withholding the application as long as possible. Because the inventor was the first to invent, the inventor who delayed filing in a pure First to Invent system would still be able to prevent the competitor from practicing the invention AND have a longer patent monopoly.
This issue was recognized early on, see Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 (1829), and in 1836 the U.S. Patent Act was re-written to include a limitation on the amount of time an inventor could wait to file for a patent. That time limit is now one year.
There is another justification for the one-year time limitation. Remember the basic bargain in a patent exchange between the inventor and the U.S. government. The inventor receives the 17-year monopoly, but in exchange for a disclosure of the invention and how to make it. The government grants the exclusive rights to the inventor, and in return the invention passes into the public domain once the monopoly has expired. At that point, we all will get the benefit of the new invention, and it is in the public's best interest for that point to come as soon as possible. Therefore, inventors are required to make that disclosure sooner, rather than later.
One very important note if you are considering patent protection in countries in addition to the United States: in most instances you don't even get the one year. There is an absolute novelty standard in which the day you publicly use or offer to sell your invention, you lose the right to apply for a patent if you have not done so already. If you want a patent overseas, be very careful about disclosing your invention prior to applying for a patent. That's good advice domestically, but even more critical for foreign applicants.
If you have questions about what you can and can not do publicly before an application is filed, a qualified patent agent or attorney can help you understand what activities "trigger" the one-year clock, at the end of which you must file or lose the right to do so.
An inventor who is granted a patent by the United States Patent and Trademark Office generally gets a 17-year exclusive right to the invention. Technically, for a utility patent (which is most patents) the term is 20 years from the filing date, but owing to the average of three years that it takes for an application for a patent to be examined, the effective term is 17 years.
In the United States, we have a "First to Invent" system. The first person to conceive of an invention generally is awarded the patent. Even if another inventor files an application for the same invention before the original inventor's application is received at the USPTO, the application of the original inventor (being the first to invent, not the first to file) gets priority.
In most other countries, the first inventor to file an application has priority. There is discussion in Congress to transform the United States patent regime to this "First to File" system used in the rest of the world, but for now the United States retains a "First to Invent" system.
But it is not a "pure" First to Invent system. In a "pure" First to Invent system, there would be no deadline for filing an application once you brought your invention to market. Since your monopoly term lasts only 17 years, an inventor could theoretically wait as long as possible to file the application, until a competitor was about to file. In this manner, the inventor would be "extending" the term of the monopoly by delaying its starting date through withholding the application as long as possible. Because the inventor was the first to invent, the inventor who delayed filing in a pure First to Invent system would still be able to prevent the competitor from practicing the invention AND have a longer patent monopoly.
This issue was recognized early on, see Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 (1829), and in 1836 the U.S. Patent Act was re-written to include a limitation on the amount of time an inventor could wait to file for a patent. That time limit is now one year.
There is another justification for the one-year time limitation. Remember the basic bargain in a patent exchange between the inventor and the U.S. government. The inventor receives the 17-year monopoly, but in exchange for a disclosure of the invention and how to make it. The government grants the exclusive rights to the inventor, and in return the invention passes into the public domain once the monopoly has expired. At that point, we all will get the benefit of the new invention, and it is in the public's best interest for that point to come as soon as possible. Therefore, inventors are required to make that disclosure sooner, rather than later.
One very important note if you are considering patent protection in countries in addition to the United States: in most instances you don't even get the one year. There is an absolute novelty standard in which the day you publicly use or offer to sell your invention, you lose the right to apply for a patent if you have not done so already. If you want a patent overseas, be very careful about disclosing your invention prior to applying for a patent. That's good advice domestically, but even more critical for foreign applicants.
If you have questions about what you can and can not do publicly before an application is filed, a qualified patent agent or attorney can help you understand what activities "trigger" the one-year clock, at the end of which you must file or lose the right to do so.
Wednesday, June 1, 2011
Pre Appeal Brief Conference
Once a non-provisional patent application is filed, after an average of 18 months, the application receives its first substantive review by an examiner. In the majority of cases the patent claims of the application are rejected. The application can respond and argue for patentability, and/or make amendments to the claims.
Following the examiner's second review of the application, if the examiner still does not agree with the applicant that a patent should issue, the claims can be rejected a second time with the rejection being made "final." At that point, the applicant has a couple of options, one of them being an appeal to the Board of Patent Appeals and Interferences (BPAI).
Similar to an appeal heard in an Article III court, the parties (the applicant and the examiner) submit appellate briefs to the BPAI prior to the appellate proceeding. The applicant's appellate brief is due within 60 days of filing the notice of appeal. An appellate brief contains information needed by the board to decide whether to uphold the rejection or to return the case to the examiner for further examination (which usually means a patent). Appellate briefs are long and thorough documents, typically are expensive to prepare, and require the applicant to pay an additional PTO fee just for filing. Then the case goes into the queue for the BPAI, which can be three to five years long.
A few years ago, the PTO added a proceeding called a "Pre Appeal Brief Conference" (PABC). Where there is reversible procedural error in the examiner's rejection, an applicant can ask for a PABC when the notice of appeal is filed. The procedure is for the applicant to submit with the notice of appeal a memo of no more than five pages which points out the examiner's error. For example, an examiner may have asserted an invention is obvious without providing any evidence of obviousness. If the BPAI were to get such a case where that was the sole issue, a reversal of the examiner would be probable.
There is no fee for filing the PABC memo, nor is there a fee for requesting the conference. The PABC is held at the PTO within 45 days of the submission of the notice of appeal and the memo. The applicant and the applicant's agent or attorney do not participate. Instead, the examiner, the examiner's supervisor, and a third individual at the PTO who specializes in appeals discuss the memo. Statistics kept since the institution of the PABC procedure at the PTO show that in 1/3 to 1/2 of the cases, prosecution is re-opened following a PABC, with a patent often following.
So, the benefits of the PABC for the applicant if prosecution is re-opened are that the applicant does not need to pay a practioner to prepare the detailed brief, the applicant does not need to pay the PTO the filing fee to file the appeal brief, and there might be a positive decision from the PABC much sooner than an appeal might actually be heard.
The flip side is that if the PABC decision is not in the applicant's favor -- in other words, that the case must proceed to the appeal -- then the applicant has paid the practitioner to research and prepare a five-page PABC memo and still has to pay for the appellate brief. (The 60-day clock for getting the appellate brief filed is re-started once the notice of the PABC decision is mailed.)
However, if still there's a good case for patentability following a final rejection predicated on reversible procedural error on the part of the examiner, the PABC procedure is an excellent choice. In many instances, merely the 1 in 3 possibility of avoiding the 3-5 year period before an appeal is heard makes a PABC worth a try.
Remember, the PABC memo must be filed concurrently with the notice of appeal. A qualified patent agent or attorney should be able to review the case to see whether it's a good one to request the PABC. This will most often be in instances where there is a clear reversible error in the final rejection because the examiner has not carried his or her burden by adducing evidence.
Following the examiner's second review of the application, if the examiner still does not agree with the applicant that a patent should issue, the claims can be rejected a second time with the rejection being made "final." At that point, the applicant has a couple of options, one of them being an appeal to the Board of Patent Appeals and Interferences (BPAI).
Similar to an appeal heard in an Article III court, the parties (the applicant and the examiner) submit appellate briefs to the BPAI prior to the appellate proceeding. The applicant's appellate brief is due within 60 days of filing the notice of appeal. An appellate brief contains information needed by the board to decide whether to uphold the rejection or to return the case to the examiner for further examination (which usually means a patent). Appellate briefs are long and thorough documents, typically are expensive to prepare, and require the applicant to pay an additional PTO fee just for filing. Then the case goes into the queue for the BPAI, which can be three to five years long.
A few years ago, the PTO added a proceeding called a "Pre Appeal Brief Conference" (PABC). Where there is reversible procedural error in the examiner's rejection, an applicant can ask for a PABC when the notice of appeal is filed. The procedure is for the applicant to submit with the notice of appeal a memo of no more than five pages which points out the examiner's error. For example, an examiner may have asserted an invention is obvious without providing any evidence of obviousness. If the BPAI were to get such a case where that was the sole issue, a reversal of the examiner would be probable.
There is no fee for filing the PABC memo, nor is there a fee for requesting the conference. The PABC is held at the PTO within 45 days of the submission of the notice of appeal and the memo. The applicant and the applicant's agent or attorney do not participate. Instead, the examiner, the examiner's supervisor, and a third individual at the PTO who specializes in appeals discuss the memo. Statistics kept since the institution of the PABC procedure at the PTO show that in 1/3 to 1/2 of the cases, prosecution is re-opened following a PABC, with a patent often following.
So, the benefits of the PABC for the applicant if prosecution is re-opened are that the applicant does not need to pay a practioner to prepare the detailed brief, the applicant does not need to pay the PTO the filing fee to file the appeal brief, and there might be a positive decision from the PABC much sooner than an appeal might actually be heard.
The flip side is that if the PABC decision is not in the applicant's favor -- in other words, that the case must proceed to the appeal -- then the applicant has paid the practitioner to research and prepare a five-page PABC memo and still has to pay for the appellate brief. (The 60-day clock for getting the appellate brief filed is re-started once the notice of the PABC decision is mailed.)
However, if still there's a good case for patentability following a final rejection predicated on reversible procedural error on the part of the examiner, the PABC procedure is an excellent choice. In many instances, merely the 1 in 3 possibility of avoiding the 3-5 year period before an appeal is heard makes a PABC worth a try.
Remember, the PABC memo must be filed concurrently with the notice of appeal. A qualified patent agent or attorney should be able to review the case to see whether it's a good one to request the PABC. This will most often be in instances where there is a clear reversible error in the final rejection because the examiner has not carried his or her burden by adducing evidence.
Tuesday, May 10, 2011
Innovation Fund
For inventors with a great idea, but who aren't sure they have the resources or wherewithal to devote to patent protection or bringing the idea to market, an alternative is the Edison Nation Innovation Fund.
In brief, in exchange for a royalty once the idea is commercialized, you assign the rights to your idea to Edison Nation, who then funds the patenting and development of the concept.
There is a nominal fee for submitting your idea for review by the Edison Nation board and their partnering venture capitalists. Because you enter into a legal agreement with Edison Nation assigning your property rights, you should consult with an attorney if you are uncomfortable reviewing this information on your own. I am not an attorney, but I have colleagues whom I can recommend.
If you proceed and want to work with me on patenting your idea once Edison Nation has selected your concept, please use my Edison Nation Referral Code of 17-115-297 when you submit your idea.
http://www.edisonnation.com/searches#innovation
Good luck!
In brief, in exchange for a royalty once the idea is commercialized, you assign the rights to your idea to Edison Nation, who then funds the patenting and development of the concept.
There is a nominal fee for submitting your idea for review by the Edison Nation board and their partnering venture capitalists. Because you enter into a legal agreement with Edison Nation assigning your property rights, you should consult with an attorney if you are uncomfortable reviewing this information on your own. I am not an attorney, but I have colleagues whom I can recommend.
If you proceed and want to work with me on patenting your idea once Edison Nation has selected your concept, please use my Edison Nation Referral Code of 17-115-297 when you submit your idea.
http://www.edisonnation.com/searches#innovation
Good luck!
Monday, April 18, 2011
Updates
Just a couple of updates this morning for topics on which I have previously written...
The United States Supreme Court is hearing oral arguments this morning in the Microsoft v i4i case. The issue in this case is whether the burden of proof to show patent invalidity from "clear and convincing evidence" to "preponderance of the evidence." And if the burden should be lowered, in what cases should it be lowered? For example, should it be lowered when the defendant raises prior art which was not considered by the examiner?
The result of this case is important for all inventors, since it goes directly to the value of a patent. A patent which has a presumption of validity which can only be invalidated through clear and convincing evidence is a more valuable patent than one which could be invalidated through a lower standard of proof.
The second update for today regards the America Invents Act of 2011, which last week was approved by the House Judiciary Committee with all of the major provisions from the Senate act intact. First to File is still there, along with provisions permitting the PTO to keep all of the fees it collects rather than seeing some diverted for other government use. The bill now moves to the full House for further consideration.
The United States Supreme Court is hearing oral arguments this morning in the Microsoft v i4i case. The issue in this case is whether the burden of proof to show patent invalidity from "clear and convincing evidence" to "preponderance of the evidence." And if the burden should be lowered, in what cases should it be lowered? For example, should it be lowered when the defendant raises prior art which was not considered by the examiner?
The result of this case is important for all inventors, since it goes directly to the value of a patent. A patent which has a presumption of validity which can only be invalidated through clear and convincing evidence is a more valuable patent than one which could be invalidated through a lower standard of proof.
The second update for today regards the America Invents Act of 2011, which last week was approved by the House Judiciary Committee with all of the major provisions from the Senate act intact. First to File is still there, along with provisions permitting the PTO to keep all of the fees it collects rather than seeing some diverted for other government use. The bill now moves to the full House for further consideration.
Wednesday, April 6, 2011
America Invents Act of 2011 Introduced in the House
Following passage last month of the America Invents Act of 2011 in the U.S. Senate (Senate Bill S.23), a companion bill was introduced in the House of Representatives last week.
The House version of the bill is slightly different from the Senate bill. The major initiatives, first-to-file among them, are intact. The bill is in committee and it is too early to predict whether passage is a sure thing.
The House version of the bill is slightly different from the Senate bill. The major initiatives, first-to-file among them, are intact. The bill is in committee and it is too early to predict whether passage is a sure thing.
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