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The Leahy-Smith America Invents Act

On September 8, 2011, the U.S. Senate passed the Leahy-Smith America Invents Act, which President Obama signed into law on September 16, 2011. The America Invents Act is the most significant change to U.S. patent law since the Patent Act of 1952. The Act is large and presents many changes, but some of the most significant changes are as follows:

  • Fee Increase: The fees charged by the U.S. Patent and Trademark Office (USPTO) will increase by 15% on September 26, 2011 – 10 days after the Act was signed into law.

  • Micro Entity Status: While an explanation of the precise requirements of this status has yet to be set forth by the USPTO, individuals that have not been named on more than four patent applications, did not have a gross income more than three times the median household income for the preceding year, and have not assigned the application to an entity whose income exceeded that amount, seem likely to qualify.

  • First-to-File System: In closer harmonization with the rest of the world, the Act implements a modified first-to-file system, rather than a first-to-invent system. This provision goes into effect eighteen months after enactment, or March 16, 2013. An inventor must file a patent application first, publish the subject matter to be patented and then file within a year, or prove that an applicant who filed first derived the claimed subject matter from the inventor. As such, interference proceedings will be replaced by “Derivation Proceedings” and the Board of Patent Appeals and Interferences will be replaced by the Patent Trial and Appeal Board.

  • Expedited Prosecution – for a Fee: For a fee of $4,800, Applicants will be able to take advantage of prioritized examination, which is intended to reach final disposition of an application within twelve months. In other words, such applications will be placed at the top of the Examiner’s queue.

  • More Prior Art Available to Examiners: The scope of prior art that is available to Examiners when rejecting claims has also been broadened. Effective eighteen months after enactment, or March 16, 2013, Examiners will be able to use foreign published applications or issued patents where granted U.S. patents claim the priority dates thereof. Such applications and issued patents will be prior art effective as of their filing dates. Also, activities that formerly only defeated patentability in the U.S, including prior use and placing products on sale, will now also be detrimental when performed in foreign countries.

  • Public may Enter Prior Art During Patent Prosecution: Third parties can submit patents and printed publications that qualify as prior art, as well as certain statements by a patent owner before a Federal Court or the USPTO, during patent prosecution.

  • No Inter Partes Reexamination: This practice will no longer be available to parties looking to challenge the validity of patents.

  • Post-Grant Review and Inter Partes Review: Post-Grant Review will be available up to nine months after issuance of a patent. Any ground of invalidity may be used during this proceeding. On the other hand, Inter Partes Review will be available beginning nine months after a patent issues or reissues, and will be limited to consideration of novelty or non-obviousness as it pertains to patents and printed publications. The threshold for each type of review differs. Post-Grant Review requires that it is more likely than not that at least one of the claims challenged will be unpatentable, or a novel or unsettled legal question must be raised that is important to other patents or patent applications. Inter Partes Review requires a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged.

  • No More Best Mode Requirement: While failure to disclose the best mode for practicing an invention has only successfully invalidated a small number of patents during its existence, this requirement has been eliminated.

In summary, significant changes are coming to the patent process that will likely change the way that prudent Applicants pursue protection of their inventions. For instance, with the implementation of a first-to-file system, it seems likely that the importance of swiftly filing provisional patent applications will increase to ensure that the subject matter disclosed therein can be protected down the road. Also, organizations may choose to investigate the published applications of their competitors and to submit art for consideration in such cases. This, in turn, may lead to an increase in the number of nonpublication requests that are submitted with new applications. In any case, the America Invents Act merits careful consideration by Applicants as they reconsider their patent strategies.

Change in Criteria for Reissue Error under 35 U.S.C. § 251 in Light of In re Tanaka

The United States Patent and Trademark Office (USPTO) recently issued a notice that clarifies the criteria for a reissue error under 35 U.S.C. § 251. Previously, MPEP § 1402 stated that:

[A]n error under 35 U.S.C. § 251 has not been presented where a reissue application only adds one or more claims that is/are narrower than one or more broader existing patent claims without narrowing the broader patent claim by amendment or canceling the broader patent claim. A reissue application in which the only error specified to support reissue is the failure to include one or more claims that is/are narrower than at least one of the existing claim(s) without an allegation that one or more of the broader patent claim(s) is/are too broad together with an amendment to such claim(s), does not meet the requirements of 35 U.S.C. 251. Such a reissue application should not be allowed.

However, in the recent decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in In re Tanaka, the CAFC held that in a reissue application, the addition of claims that are narrower in scope than the existing claims, without any narrowing of the existing patent claims, may be the basis for correcting an error under 35 U.S.C. § 251 to support a proper reissue application.

To view the USPTO’s Notice regarding reissue applications, please click Here.

USPTO Memorandum on Analogous Art

On July 26, 2011, the United States Patent and Trademark Office (USPTO) issued a memorandum explaining to Examiners when art should be considered to be analogous. In particular, the memorandum explains that art is considered to be analogous to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if the reference addresses a different problem than the claimed invention); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if the reference is not in the same field of endeavor as the claimed invention).

The memorandum further states that the Examiner may include a statement of understanding regarding the problem faced by the inventor when relying on analogous art, or include a statement explaining why one seeking to solve the identified problem would have allegedly looked to the reference in an attempt to find a solution to the problem.

It appears that the memorandum may increase the burden on the Examiner when relying on a reference as analogous art. Also, the memorandum may be beneficial to practitioners when responding to an Office Action that relies on analogous art when rejecting claims as obvious.

To view the USPTO’s Memorandum, please click Here.