|
*************** © McLeland &
Associates, P.L.L.C.
President Bush signed on November 2, 2002,
omnibus legislation passed by the U.S. Congress that
includes significant changes in U.S. patent laws.
Notably, the new law lifts certain restrictions on patent
reexamination, and clarifies the "prior art" status of U.S.
patents and published U.S. patent applications. See
first two items below.
Patent reexamination: reference previously considered by PTO
The new law allows the PTO to consider a new
reference cited by a requester in support of the
reexamination of a patent, even though the reference
has already been cited or considered by the PTO in the
examination of the application which issued as the
patent in question. The reference may be considered
again by the PTO to determine whether it raises
a "substantial new question of patentability," which
would cause the PTO to grant the request for
reexamination of the patent. This provision applies to all
reexamination proceedings in which the determination
of the existence of a substantial new question of
patentability is made on or after the date of enactment
of the new law, i.e., November 2, 2002. The provision
applies to intra partes reexamination (in which the
requester is a third party who is not the patent owner
and is precluded from participation past the stage of
filing a request for reexamination), as well as inter
partes reexamination in which the third party is allowed
to participate throughout the entire process.
|
|
Inter partes reexamination: third party requester may appeal |
 |
|
Since the inter partes reexamination procedure was
made available by the American Inventors Protection
Act of 1999, there have been only five (5) requests
filed for inter partes reexamination. The new law
removes a distinct disadvantage for third party
requesters in inter partes reexaminations, by allowing
them to appeal a decision of the PTO's Board of Patent
Appeals and Interferences to the U.S. Court of Appeals
for the Federal Circuit (CAFC), or to be party to such
an appeal. This provision applies to any reexamination
begun on or after the date of enactment of the law,
i.e., November 2, 2002.
|
|
|
Correction of Section 102(e) |
|
|
The long-awaited "technical corrections" to section 102
(e) of the U.S. patent laws remove ambiguities
introduced the last time that section 102(e) was
amended by enactment of the American Inventors
Protection Act of 1999. Section 102(e) defines a
category of "prior art" against which the patentability
of the claims of a U.S. patent application is measured.
Prior art under 102(e) was previously limited to granted
U.S. patents. When the American Inventors Protection
Act of 1999 mandated that U.S. patent applications be
published within 18 months of their filing dates, section
102(e) was also amended to designate such pre-grant
publications to be prior art under section 102(e).
The prior art defined by section 102(e) is significant in
that its effective date is the filing date of the patent
application from which the prior art, which is either a
granted U.S. patent or a pre-grant publication of a U.S.
patent application, originates. For illustration, when
U.S. patent application A is published, the publication
of A serves as prior art against other U.S. patent
applications filed after the filing date of application A.
Thus, if application A is published today, for an
invention which was kept secret until the publication of
the application, the publication of A can be applied as
102(e) prior art against other applications filed after
the filing date of application A, even if such other
applications are filed before the publication date of A.
Because of its effective date, 102(e) prior art is potent
in preventing another person from patenting an
invention that is identical or obvious from the invention
described in publication A.
The ambiguities in 102(e) as amended by the American
Inventors Protection Act of 1999 stemmed from the
treatment of patents or published applications
originating from an international patent application filed
in the Patent Cooperation Treaty (PCT) system. Even
though the new law brings much needed clarification,
section 102(e) is still rather complicated because it
provides for a transition around the date of November
29, 2000, set in the American Inventors Protection Act
of 1999.
(i) For International Application Filed Before November
29, 2000
A U.S. patent issuing from the entry into the U.S.
national stage of an international application is 102(e)
prior art, for which the effective date is the date on
which certain requirements for entry into the U.S.
national stage were completed (e.g., filing of a
declaration for patent application, submission of any
required translation, and payment of the requisite fee.)
The cover page of the U.S. patent in such a case
indicates clearly the "102(e) date" accorded to that
patent, which is never the international filing date.
(ii) For International Application Filed On or After
November 29, 2000
A U.S. patent or an application publication originating
from an international patent application filed on or after
the November 29, 2000 transition date is 102(e) prior
art only if: (1) the international patent application
designates the United States, and (2) the international
patent application is published in English by the World
Intellectual Property Organization (WIPO) in its regular
publication program under PCT Article 21(2), as
opposed to a special publication initiated by the
applicant. The effective date of such a 102(e)
reference is the international filing date of the
application. To understand the rationale for this
provision, it may be helpful to think that an
international patent application that designates the
United States and is published in English is in effect the
same as a published U.S. patent application, and
logically should be accorded the same treatment for
purposes of section 102(e). The new 102(e)
provision will be applied across the board to all patent
applications undergoing examination, regardless of their
filing dates. Soon after the new law was signed, the
PTO issued new examination guidelines for use by U.S.
patent examiners in selecting 102(e) prior art to be
applied against the claims of a patent application under
examination. The guidelines set forth the PTO's
interpretation of the new law, and include useful
examples of what is considered 102(e) prior art by the
PTO. (iii) PCT "Bypass Continuation Application"
Confers No 102(e) Advantage
Prior to enactment of the American Inventors
Protection Act of 1999, applicants who filed
international applications in any of the PCT member
countries other than the United States, and designated
the United States as a country in which patent
protection was sought, had resorted to the so-
called "bypass continuation application" to secure a
beneficial 102(e) date for any U.S. patent granted on
the application. In the bypass process, the applicant
filed in the U.S. Patent and Trademark Office a regular,
domestic U.S. patent application which claimed to be a
U.S. domestic "continuation" of the earlier international
application. The applicant in effect bypassed the entry
into the U.S. national stage of the international
application, and by this loophole secured as 102(e)
effective date for the granted U.S. patent the
international filing date, as opposed to the less
favorable and subsequent date of entry into the U.S.
national stage of the international application, as
discussed in section (i) above. The changes made
by the Inventors Protection Act of 1999 cast doubt on
the utility of the bypass route, although the effect of
that law was not clear due to its ambiguous language
for section 102(e). The recently signed law now makes
it clear that the bypass route confers no 102(e)
advantage. In particular, the Joint Explanatory
Statement of the Committee of Conference (of the U.S.
House and U.S. Senate) for the new law specifies
that "for patents and published applications derived
indirectly from an international application filed before
November 29, 2000 through a bypass continuation
application," such patents and published applications
are effective as prior art references (under section 102
(e)) "as of the filing date of the bypass continuation
application," as opposed to the international filing date.
Full text of guidelines (pdf) »
|
|
|
Harmonization: formalities; substantive |
|
|
The patent system in the United States and in other
established patent-granting countries has been a victim
of its own success. The number of applications for
patents handled by the major patent offices has surged
so dramatically in the last few decades that their
resources are severely stretched. From the perspective
of the users of the patent system, the cost of
obtaining, maintaining and enforcing patent protection
has been steadily increasing, in part because business
strategies require that protection be sought nowadays
in more countries. For small business, patent issues
may be particularly daunting, not only in terms of
costs, but also in complexity. Patent owners, as well as
patent granting agencies, are seeking solutions to their
respective problems, and legislators are also responding
to the needs of their business constituents. As a result,
more changes in patenting procedures in the United
States and at the international level are expected.
Undoubtedly, these changes will come about slowly
because of the time needed for consensus building and
passage of legislation, in particular in the United States
where patent legislation typically moves very slowly
through the U.S. Congress.
Global harmonization of the patent laws is fraught with
difficult issues for the United States because it requires
considering giving up the first-to-invent system, in
which the first inventor to make an invention gets the
patent, for the first-to-file system in which the first
applicant to file a patent application for an invention
gets the patent. The United States is the only country
with a first-to-invent system, the first-to-file system
being followed by the rest of the world. Attempts to
forge a harmonization framework in the last decade
failed to produce agreement on substantive points, but
resulted in the signing of the Patent Law Treaty (PLT)
in 1999 which harmonizes the formalities for filing a
patent application. The PLT will enter in force when it is
ratified by 10 signatory countries. To date, four
countries have ratified the treaty, which has not yet
been ratified by the major players in the global patent
scene. The United States is a signatory to the treaty,
but has not yet ratified it.
The PLT is expected to enter in force in the next
couple of years. The treaty is administered by the
World Intellectual Property Organization (WIPO), the
United Nations agency which also administers the
Patent Cooperation Treaty (PCT). Since the PLT applies
to domestic applications as well as international
applications, some PCT rules have already been revised
to be consistent with the PLT. A notable aspect of the
PLT is its forgiveness of unintentionally missed
deadlines, such as the one-year Paris Convention
period for filing an application in a second country,
claiming the priority date of a corresponding application
first filed in another country.
In the opinion of this writer, we are well on the path
toward more revamping of the global patent system,
inching toward substantive harmonization of patent
laws. Who would have believed 10 years ago that U.S.
patent applications would be published prior to grant,
as in most other patent-granting countries, and that
the term of a U.S. patent would be calculated from the
application filing date, as opposed to the date of grant,
as is also the case in most other countries? Those
changes were enacted with the American Inventors
Protection Act of 1999. In the same vein, who would
have believed 10 years ago that the idea of a first-to-
file patent system could be endorsed, albeit with some
qualification, by an organization representing U.S.
patent owners, as was done recently by the
Intellectual Property Owners, Inc.?
|
|
|
PCT new procedures and e-filing |
|
In September 2002 the Assembly of the PCT Union
adopted in Geneva a number of changes in procedures
for international patent applications. For the most part,
the changes were proposed by the United States. They
will be phased in over the next few years according to
the following schedule.
October 17, 2002: Reduction by 200 Swiss francs in
filing fee for applications filed in electronic
form.
January 1, 2003: Forgiveness of deadlines missed
unintentionally or in spite of due care. This change was
adopted to align the PCT procedures with the Patent
Law Treaty (PLT) mentioned in the preceding section of
this newsletter.
January 1, 2004: Implementation of a new EISPE
(Enhanced International Search and Preliminary
Examination) system in which every application will
receive an International Search Opinion (ISO) and an
International Preliminary Report on Patentability (IPRP),
regardless of whether the applicant proceeds under
Chapter I or Chapter II of the PCT. To proceed under
Chapter II, the applicant must file a Demand by the
deadline that is the later of: (a) three months after the
issuance of the ISO, or (b) 22 months from the priority
date. The main difference between Chapter II and
Chapter I is that the applicant has an opportunity for
dialogue with the PCT examiner under Chapter II, but
not under Chapter I.
January 1, 2004: All countries and regional patent
systems will be automatically designated in the PCT
Request (i.e., application form), so that the
international filing fee will be a flat fee, instead of
depending on the number of designations.
A PCT pilot program for electronic application filing was
initiated in November 2002 at the PCT International
Bureau in Geneva, using PCT-EASY extended software
for e-filing, and customized COREL software for
authoring/editing the application in XML format. The
U.S. Patent and Trademark Office is also using the XML
format for patent application e-filing, but the
authoring/editing tool currently provided by the PTO is
customized MS WORD software, which was ruled out for
PCT e-filing because of the differences that exist in the
versions of MS WORD used around the world.
|
|
|
Strategic plan: drastic changes for PTO |
|
|
In response to a congressional mandate, the PTO has
prepared a five-year strategic plan that is causing
great stir in the patent communities because it
proposes extensive changes in examination procedure
and large fee increases. All these changes require
passage of legislation, which is not expected to happen
any time soon. However, one element of the strategic
plan already has been incorporated into the bill signed
into law by President Bush in November: the goal of
complete conversion to e-filing of patent applications
by October 1, 2004.
|
|
|
Carlyle campus construction on schedule |
|
|
Construction of the PTO's Carlyle campus in Alexandria,
Virginia, is proceeding on schedule according to PTO
officials. Technology Center 1600 (Biotechnology,
Organic Chemistry, and Designs) and other patent
examining groups are scheduled to move into two new
buildings by November 2003. Full occupancy of the five
interconnected buildings planned for the new campus is
expected by mid-2005.
|
| Welcome to McLeland & Associates, P.L.L.C. |
|
|
