Archives for January 2012

America Invents Act Provides a New Tool to Influence the Prosecution of Patent Applications with New Third Party Submission Rules

Last week the Patent Office proposed a new rule for preissuance submissions to implement the new requirments of the America Invents Act enacted in September of last year.  Previously, third party submissions of prior art to the Patent Office were very limited in that there was a short deadline for filing the submission and the third party could not include any analysis of the prior art submitted. The new third party submission law established by the America Invents Act is effective September 16, 2012, retroactive for all applications filed before that date.

Under the new rule, preissuance submissions will become a power tool for those with an interest in the denial of a patent application because now the third party can provide analysis of the prior art.  For example, if applicant mischaracterizes the prior art in the application, the record can be set straight with a third party submission.  The deadline for the submission under the new rule will be the earlier of 1) the date of the notice of allowance or 2) six months after publication of the application or the date of first rejection of any claim by the examiner, whichever is later.  So generally speaking, the deadline for any such third party submissions will be the date of the first office action.  Under current rules, the submission must be made within two months of publication of the application, and no analysis can be provided.  Because of the short time frame and the inability to provide analysis to the examiner, the procedure is not currently deemed as very effective in most cases and could in fact be detrimental because the third party could no longer argue to the court in an infringement action that the reference was not considered by the examiner.

Under the rule proposed by the Patent Office, the documents submitted must be “of potential relevance to the examination of the application” and a concise description of the relevance of each document must be provided.  Moreover, it is not required that the documents be “prior art” under the new rule–any relevant documents can be submitted for consideration by the examiner.  Concise submissions are encouraged–the proposed rule allows for three “free” submissions.  If more than three documents are submitted, a fee of $180 for each ten documents is required.  Finally, there is no longer a requirement to serve the applicant with the submission, but the applicant will receive notice of any such submission in the first office action.

As a result of the new rules for third party submission, and in light of the post grant review procedure that will come into effect in the future, it will be ever more important for companies to exercise vigilance in the monitoring of published patent applications.  Otherwise, you will not be able to take advantage of these new rules designed to help companies avoid finding themselves on the receiving end of a patent infringement lawsuit asserting an invalid patent.  The tool could be particularly useful in patent litigation where a continuation application is pending that has been crafted to read more closely on the alleged infringing method or apparatus.


America Invents Act: A Sea Change in Patent Law

President Obama signed the Leahy-Smith America Invents Act (AIA) into law on September 16, 2011.  The AIA is the first major change in the U.S. patent law system since 1952 and probably the most far reaching statutory changes since the 1836 Patent Act established the Patent Office and the modern system of patent examination.  The changes include substantive changes to the standards of patentability as well as significant changes to the way the Patent Office handles challenges to the grant of a patent.

Some parts of the law went into effect upon enactment, but the more significant changes will go into effect at various times in the future.  It will be years before we are fully converted to the new system, and practitioners must keep track of both the current law and the new law in the interim.

Although the AIA did not include venue or damages reform that was in past versions of patent reform legislation, it did include an anti-joinder rule in patent cases.  The new anti-joinder rule prohibits the joinder of multiple defendants in the same patent case just because they have infringed the same patent(s).  Rather, joinder is now only proper if the defendants all allegedly infringe the patent with the same product or process.

The anti-joinder rule went into effect on September 16, 2011 and has resulted in a decrease in the number of defendants that are sued in a single case, particularly in the Eastern District of Texas.  Although the full effect of the new anti-joinder provision remains to be seen, it will likely result in more cases being filed in venues other than the Eastern District of Texas.  Delaware, for example, has seen an increase in the number of patent cases filed there given that many corporations are incorporated in Delaware.

Another significant change of the American Invents Act is the conversion from a “first to invent” to a “first to file” patent system that will go into effect for patent applications with an effective filing date on or after March 16, 2013.  Under the current system, the first person to invent is generally entitled to a patent even if another inventor files an application first.  The first to file rule is not absolute, however.  For example, a new “derivation proceeding” will allow a second filer to obtain a patent upon proof that the first filer derived the invention from the second filer.

A number of changes to patent office procedure will go into effect on September 16, 2012, including a new third party submission procedure, post-grant review, and inter partes review.  These new procedures will affect strategies for both obtaining patent protection and defending against the patents of others.

To avoid getting caught behind the curve, it is important for companies to plan for the changes in the law now and to implement strategies to take advantage of the new laws.  Without proper planning, valuable patent protection may be lost or the ability to operate freely may be impeded by the patents of others.