Archive for December, 2012

UPDATE: Amended AIA Technical Corrections Bill Passes House

December 19, 2012

Yesterday evening, the House of Representatives passed the AIA Technical Corrections bill by a vote of 308-89.  Prior to passage of the bill, it was amended to remove the rather draconian provisions that would eliminate the transition patent term for applications filed prior to June 7, 1995.  Instead, the bill requires a study or report on those applications.

The bill will now require passage by the Senate and signature from Pres. Obama prior to becoming law.

New False Marking Statute Not Unconstitutional

December 13, 2012

When Congress passed the America Invents Act last year, it changed the false marking statute.  Previously, the statute provided for qui tam actions, meaning that anyone could sue for false marking and receive half of any damage award from the court.  This created a spate of false marking cases where lawyers and others were filing and requesting large amounts of damages.

The America Invents Act amended the statute to be more in line with most other causes of action.  The new statute required the plaintiff to show actual injury or harm in order to bring suit for false marking.  In effect, competitors (or maybe deceived consumers) would be the only parties with standing to bring such suits.  The controversial aspect of the law is that the change was made retroactively, meaning that many of the suits that were pending in various courts when the law was enacted suddenly required dismissal due to lack of standing by the plaintiff.  Brooks v. Dunlop Mfg. was one such case.

The plaintiff sued Dunlop in September 2010 under the previous version of the false marking statute.  Once the America Invents Act was enacted in September 2011, the defendants moved to dismiss the case due to lack of standing by the plaintiff.  After hearing arguments on whether the retroactive nature of the change of the law violates the Due Process Clause or the Takings Clause of the Constitution, the district court dismissed the case last December.

On appeal, the Federal Circuit held that Congress had a rational basis for changing the law on a retroactive basis.  In the legislative history of this section of the law, Congress made it clear that it was concerned with perceived abuses and inefficiencies from litigation under the old version of t he law.  Congress was also concerned with the constitutionality of the earlier version of the law that did not require actual injury to the plaintiff to bring suit.

The court also rejected Brooks’s argument that the filing of a qui tam action under the old law created a binding contract with the United States that Congress could not repudiate by changing the law.

This case should bring to an end a great deal of false marking cases.

PTO Requests Comments on RCE Practice

December 11, 2012

Last week, the PTO published a notice in the Federal Register requesting comments on Request for Continued Examination (RCE) practice.

The notice indicates that the PTO has a backlog of 90,000 patent applications that have not been examined since the filing of an RCE.  The notice propounds 11 questions for which it solicits comments:

(1) If within your practice you file a higher or lower number of RCEs for certain clients or areas of technology as compared to others, what factor(s) can you identify for the difference in filings?

(2) What change(s), if any, in Office procedure(s) or regulation(s) would reduce your need to file RCEs?

(3) What effect(s), if any, does the Office’s interview practice have on your decision to file an RCE?

(4) If, on average, interviews with examiners lead you to file fewer RCEs, at what point during prosecution do interviews most regularly produce this effect?

(5) What actions could be taken by either the Office or applicants to reduce the need to file evidence (not including an IDS) after a final rejection?

(6) When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an RCE?

(7) When considering how to respond to a final rejection, what factor(s) cause you to favor the filing of an amendment after final (37 CFR 1.116)?

(8) Was your after final practice impacted by the Office’s change to the order of examination of RCEs in November 2009? If so, how?

(9) How does client preference drive your decision to file an RCE or other response after final?

(10) What strategy/strategies do you employ to avoid RCEs?

(11) Do you have other reasons for filing an RCE that you would like to share?

I applaud the PTO for taking the initiative to ask its constituents for input on RCEs rather than simply instituting new rules that may be ineffective.  I’m just not sure the issue is as large as the PTO perceives it to be.  If examiners would do more complete first examinations, and more importantly, consider amendments after a final office action, there would certainly be less need to resort to RCEs.

The comment period for these questions runs until February 4, 2013.

UPDATE: Patent Law Treaties Implementation Act of 2012

December 5, 2012

As reported on Patently-O, the House passed S. 3486, which was originally passed by the Senate in September.

The bill provides for implementation of the Hague Agreement Concerning International Registration of Industrial Designs and the Patent Law Treaty ratified by the Senate in 2007.  Substantively, the bills extend the term of design patents to 15 years from issuance and change other aspects of international applications by permitting up to 100 designs to be included in a single international application and permitting provisional rights in the design from the publication date of the international application.

The bill now proceeds to President Obama for signature and enactment.

America Invents Act Technical Corrections

December 3, 2012

As expected, a bill to provide technical corrections to the America Invents Act was introduced on Friday in the House of Representatives:  H.R. 6621.

Manus Cooney of American Continental Group provides a good summary at IPWatchdog.

Most of the proposed changes are indeed technical and do not greatly affect on inventors.  Of interest are proposed changes to eliminate a “dead zone” for patents subject to post-grant review and technical corrections for the time period for instituting derivation proceedings.

In 1995 when the US passed the Uruguay Round Agreements Act, it changed the term of patents from 17 years the issue date to 20 years from the earliest filing date.  For applications pending on the Act’s effective date, June 8, 1995, the patent term is the longer of the two.  For example, for a patent application filed June 7, 1995 and issued June 7, 1997, the patent would expire June 7, 2015.  If the patent issued June 7, 1999, the patent would expire June 7, 2016.

There are still a few applications pending from prior to the enactment date, meaning that if a patent application was filed June 7, 1995 and did not issue until December 3, 2012, it would not expire until December 3, 2029, more than 34 years after the application was filed.

The new bill seeks to eliminate the transition patent term, meaning that for all applications not issued within a year of passage of the bill, the 20 year term would apply.  If the patent application was filed June 7, 1995 and issued January 1, 2014, it would expire on June 7, 2015, giving it an 18 month patent term.

The bill provides no fix to the post-grant estoppel provisions, nor does it provide clarification of the “disclosure” for the newly limited grace period for inventor activity.

Congress will probably spend most of the Lame Duck session on the fiscal cliff which means that a bill like this one will probably pass without debate, possibly tacked onto another, completely unrelated, bill.

Supreme Court to Review Myriad Case Again

December 3, 2012

USSupremeCourtWestFacadeThe Supreme Court has again granted certiorari in the Myriad gene patent case.  Specifically, the Court agreed to decide the following question presented:

Are human genes patentable?

The Court declined to address the method claims or the standing issue in the case.

The ACLU and other plaintiffs sued Myriad and the USPTO in 2009 claiming that Myriad’s patents to isolated genes are invalid as directed to non-statutory subject matter and in violation of the First Amendment to the Constitution.  In early 2010, the district court agreed that the gene patent claims were invalid under § 101 of the Patent Act, but not under the First Amendment.

In 2011, the Federal Circuit reversed, holding that isolated DNA have a markedly different chemical identity and nature from DNA found in the human body.  After the Supreme Court issued its decision in Prometheus where it confused obviousness with patentable subject matter, the Court sent the Myriad case back to the Federal Circuit for reconsideration in light of that decision.  After reviewing the case again, the Federal Circuit reached the same conclusion that the isolated DNA claims are patentable.

The Supreme Court has now agreed to consider this case again.  Given its propensity for confusing patentability with patentable subject matter, the outcome is completely uncertain.

The case will be briefed in the coming months and should be argued before the Court in March or April.  A decision is expected by the end of the Court’s current term in June.


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