February 13, 2001
The American Inventors Protection Act And How It Affects Your U.S. Patent Strategies
Recently enacted legislation has made some important changes to U.S. Patent Law. On November 29, 1999, President Clinton signed the "Intellectual Property and Communications Omnibus Reform Act of 1999." Title IV of the Omnibus Act is entitled the "American Inventors Protection Act of 1999" (AIPA) and includes provisions to amend the Patent Law and reorganize the United States Patent and Trademark Office. We outline below the significant changes to U.S. Patent Law and patent practice as a result of the AIPA and offer some new strategies to deal with these changes. The most recent of these changes affect applications filed on or after November 29, 2000.
18 Month Publication
One of the most significant changes brought about by the AIPA is that United States patent applications will now be published 18 months after their filing date or the earliest claimed priority date. With this change, the United States has joined the other major industrialized nations. However this does not mean that all United States patent applications will be published.
All utility patent applications filed in the United States Patent and Trademark Office after November 29, 2000 will be published if an applicant does not expressly request on filing that the application not be published. An applicant may make a request for non-publication if (1) the applicant has not filed the application in any other country that publishes applications; and, (2) the applicant does not intend to file the application in any country that publishes applications. Accordingly if an applicant has filed or intends to file an application in, e.g., Canada, Europe or Japan, or to file a Patent Cooperation Treaty (PCT) application, the applicant should not request non-publication of the U.S. patent application.
If an applicant requests non-publication of a United States patent application at the time of filing the application, the applicant may withdraw the request that the application not be published and take advantage of the new provisional compensation rights (discussed below) which are granted to published applications. Further, the request for non-publication must be withdrawn if the applicant decides to subsequently file the application in a country that publishes applications. The applicant must advise the United States Patent and Trademark Office of such a filing within 45 days of the filing or the United States application will be deemed abandoned. It is recommended that non-publication only be requested in those cases when there is a firm belief that a patent application will not be filed in any country other than the United States of America.
The United States Patent and Trademark Office will publish applications every Thursday. Publication will occur electronically. Initially, the easiest way to search published United States patent applications will be via the Internet on the home page of the United States Patent and Trademark Office (www.uspto.gov).
Provisional Compensation Rights
Formerly, it was not possible to claim damages from an infringer for any activities that occured prior to the issuance of a United States patent. With the change in the law allowing for publication of pending United States patent applications, an applicant may claim reasonable royalties from a competitor during the period from publication of the application to the date the patent is issued.
To obtain these royalties, the activities of the competitor must be within the scope of a claim of the issued patent and the issued claim must be "substantially identical" to a claim as published. These provisional compensation rights are also available based on the published claims of a PCT application that designates the United States and is published in English. Therefore, if, after publication, the claims in a pending United States patent application or a PCT application designating the United States are changed to vary the scope or nature of the invention claimed, consideration should be given to having the application republished with the new claims. An application can be republished several times if desired.
In addition, an application filed prior to November 29, 2000 may be published at the request of the applicant. If it is anticipated that a competitor may try to benefit from an invention prior to the issuance of a patent, the applicant could request voluntary publication to avail themselves of these provisional compensation rights.
Although the term provisional compensation is used, this should not be confused with the protection under a provisional application. Provisional applications will not be published and no provisional compensation will be available in respect of a provisional application.
Use of Published Applications as Prior Art
Previously, the United States Patent and Trademark Office would not cite a pending United States patent application filed by one applicant against a co-pending application filed by another applicant. The Examiner would defer the examination of the later filed application until the earlier filed application issued to patent and then cite the issued United States patent against the later filed application. With the change in the law, an earlier filed published United States application will be citable as prior art against a later filed United States patent application. Therefore, if it is planned to abandon an unpublished application, consideration should be given to publishing the application prior to abandonment. While publication would make the application public, it will make the information in the application available as prior art against subsequently filed applications as of the date the application was filed. This could prevent a competitor from obtaining a patent for a similar invention that was independently developed. Thus, publication may preserve a company’s right to make the product in the future.
Submission of Prior Art
If a published patent application is considered to have claims that are too broad, a third party may bring prior art to the attention of the examiner once the application is published. However, this is a limited right. A third party may file up to ten prior art references, but may not provide any argument as to why the subject matter claimed in the published application is not patentable in view of these references. Further, the prior art must be filed within two months of the publication date and a copy must be served upon the applicant. Therefore, it could be advantageous to monitor the published United States patent applications of competitors. This would provide advance notice of the areas of research in which a competitor is engaged. It also provides an opportunity to provide an examiner with prior art that the examiner may otherwise not locate.
Patent Term Adjustment Provisions
In 1995, the United States of America changed the term of patents from 17 years from the date of issue to a 20 year patent term, calculated from the date of filing. This is the International standard. It is recognized, however, that protracted examination of a patent application can result in a shorter effective patent term from the actual issue date, as compared to the old patent term of 17 years calculated from the issue date.
The new patent term adjustment provisions are intended to address this problem. Provision is made for lengthening the 20 year patent term for delays caused by the United States Patent and Trademark Office. Delays caused by the applicant will reduce any such lengthening to give a net adjustment of the patent term.
The new term adjustment provisions apply to all utility and plant patents issuing from applications filed on or after May 29, 2000. They provide for a day-to-day adjustment of the patent term (that is otherwise 20 years). There are three bases for lengthening the patent term due to actions by the United States Patent and Trademark Office:
- The United States Patent and Trademark Office fails to act on an application within specified time periods (e.g., failure to issue a first Office Action or Notice of Allowance within 14 months of the filing date);
- The United States Patent and Trademark Office fails to issue a patent within three years of the actual filing date, subject to a number of statutory restrictions; and
- Time consumed by interferences, imposition of secrecy orders, and for successful appeals.
Reductions of any such lengthening will occur if the applicant fails "to engage in reasonable efforts to conclude processing or examination of an application." Recently published regulations provide guidance as to circumstances that would constitute such conduct. For example, failure to respond to an Office Action within the usual three month period will result in a reduction of any patent term adjustment otherwise available.
Regardless of the length of delays deemed to be caused by the applicant, there cannot be a negative patent term adjustment below the base term of the patent (generally 20 years from the date of filing). In order to minimize any reduction of a potential patent term adjustment, however, applicants should respond as quickly as possible to any issues raised by the United States Patent and Trademark Office.
These patent term adjustment provisions are automatically calculated by the United States Patent and Trademark Office upon issuance of a patent. They are separate from the patent term extension provisions that remain in effect that permit a patentee to seek an extension of the patent term when the introduction of a product has been delayed due to regulatory review and approval.
Rocket Docket for U.S. Designs
An applicant may now request that a United States design application be processed and examined in a very short time. Moreover, such a request may be made for any design applications that are currently pending before the United States Patent and Trademark Office. Accordingly, an applicant can now quickly obtain protection for a valuable design while it is currently in vogue.
To request expedited processing and examination of a design application, an applicant must conduct a search for prior art, file formal drawings if they have not already been filed, and pay an additional $900.00 U.S. fee for requesting expedited examination. If these requirements are met, a design application will be examined with priority and the clerical functions will be conducted or monitored by specially designated personnel at the United States Patent and Trademark Office.
For more information, please contact:
Roger Hart
t: 416.957.1691
e: rhart@bereskinparr.com
Sam Frost
t:416.957.1687
e: sfrost@bereskinparr.com
Philip Mendes da Costa
t: 416.957.1695
e: pmdcosta@bereskinparr.com
Stephen M. Beney
t: 416.957.1697
e: sbeney@bereskinparr.com
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