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The Politicization Of The US Patent System

The Washington Post story, How patent reform’s fraught politics have left USPTO still without a boss (July 30), is a vivid account of how patent reform has divided the US economy, preempting a possible replacement for David Kappos who stepped down 18 months ago. The division is even bigger than portrayed. Universities have lined up en masse to oppose reform, while main street businesses that merely use technology argue for reform. Reminiscent of the partisan divide that has paralyzed US politics, this struggle crosses party lines and extends well beyond the usual inter-industry debates. Framed in terms of combating patent trolls through technical legal fixes, there lurks a broader economic concern – to what extent ordinary retailers, bank, restaurants, local banks, motels, realtors, and travel agents should bear the burden of defending against patents as a cost of doing business.


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    Inside Views
    Inside Views: Why So Many Patent Filings Were Filed In The US On Or Before 15 March 2013

    Published on 27 March 2013 @ 2:28 pm

    Disclaimer: the views expressed in this column are solely those of the authors and are not associated with Intellectual Property Watch. IP-Watch expressly disclaims and refuses any responsibility or liability for the content, style or form of any posts made to this forum, which remain solely the responsibility of their authors.

    Intellectual Property Watch

    By Charles R. Macedo

    Summary: Attorney Charles Macedo addresses the question: Why did so many patent applicants rush to file patent applications before the America Invents Act (AIA) law changes went into effect – and what might happen if they didn’t?

    On March 16, 2013, the new priority rules under the America Invents Acts (“AIA”) went into effect in the United States.

    • Patent applications that were filed before March 16, 2013, continue to be governed under the old “first-to-invent” priority rules.
    • Patent applications that are filed on or after March 16, 2013 (and do not claim priority to patent applications filed before March 16, 2013), will be governed under the new “first inventor-to-file” priority rules.
    • Patent applications that are filed on or after March 16, 2013, and claim priority to patent applications filed before March 16, 2013, may be governed either under the old “first-to-invent” priority rules, or under a hybrid “first inventor-to-file” priority rule which includes a first inventor defense. When an applicant presents in one of these applications a claim that has an effective filing date on or after March 16, 2013 (such as may be the case in the context of a continuation-in-part application), all of the claims in that application or any application claiming priority to it will be subject to the hybrid priority rule.  To the extent an application (and all of its parent applications) have only presented claims entitled to priority to applications filed before March 16, 2013, the old “first-to-invent” priority regime governs.

    A further implication of the March 16, 2013 implementation date, is that the post-grant issuance proceedings will not apply to any applications filed before March 16, 2013, or applications filed thereafter claiming priority to applications filed before March 16, 2013 that are not subject to the hybrid rule.

    In addition to the new priority rules, starting March 16, 2013, the AIA increased the scope of prior art available to invalidate patents.  It now includes foreign offers for sale, sales, and public uses as prior art (the U.S. counter-parts have long been considered prior art).  In addition, the new law now credits the foreign priority date of patents and published applications, whereas the patent law previously recognized only the U.S. filing date (or PCT filing date for PCT applications that designated the U.S.).

    Within this context, based on (at least the perception) that the law old priority rules are preferable to the new priority rules and the greater availability of prior art, there was an unusually large number of patent applications filed in the days and weeks before March 16, 2013.

    Patent Office estimates of filings made between March 19, 2012 and March 19, 2013, generally show a trend of roughly 1,000 to 2,000 non-provisional patent applications and less than 1,000 provisional applications filed each day, with a large peak of 14,000 non-provisional and provisional applications filed each day leading up to March 16, 2013.  Based on differences between filing serial numbers, we saw a difference of 30,000 application numbers between applications filed on March 13 and March 14, 2013.   We expect that there have been hundreds of thousands of patent applications filed in the weeks leading up to the change of the law.

    provisional patent applications

    Source: USPTO Data Visualization Center

    So the question is why have so many patent applicants rushed to file patent applications before the new law went into effect?

    Here are some reasons that we suggest motivated this behavior:

    1. Patent applications filed before March 16, 2013, are governed under the old “first-to-file” rules and have these benefits:

    a. A full one-year grace period
    b. Allow the inventor(s) to swear behind intervening publications and patent applications
    c. Are not subject to post-grant proceedings (which have a broader scope of review under the AIA act than ex parte reexamination or inter partes review)

    2. Patent applications filed on or after March 16, 2013, are governed under the new “first inventor-to-file” rules and have these drawbacks:

    a. Only have a limited grace period based on date of publication
    b. Allow for the offensive use of publications in the U.S. but not outside the U.S.
    c. Are subject to post-grant proceedings

    3. Patent applications filed on or after March 16, 2013, and are subject to the hybrid priority rule, also face these restrictions:

    a. Have only a limited one-year grace period based on publication under the new priority rules
    b. Are subject to the old 102(g) priority rule, which allows for other people’s activities to be prior art if conceived, reduced to practice, and diligent in reducing the invention to practice
    c. Are subject to post-grant proceedings after issuance and reissuance for 9 months

    With these motivations in mind, the various strategies that were employed included:

    1. Early conversion of provisional patent applications filed less than one year before March 16, 2013 in order to avoid a “hybrid” rule situation.
    2. Filing of continuation-in-part applications in order to avoid a “hybrid” rule situation.
    3. Filing of one or more continuations in order to avoid the risk of a “hybrid” rule situation.
    4. Arranging for filings before March 16, 2013 and filings after March 16, 2013 of the same disclosure in order to set up an “old” rule situation with the earlier filings and a “new” rule situation with the later filings.  As long as the disclosures are to be assigned to the assignee, the claims are not drawn to identical subject matter, and the earlier application was not published before the later application, then these two sets of applications can result in potentially different possibilities of prior art.
    5. Filing some of the applications before March 16, 2013 as Track 1 (expedited) filings and some as normal (non-expedited) filings.  The prosecution of the expedited applications can provide beneficial information for the non-expedited applications before the costs of continued prosecution are incurred.


    Charles R. Macedo is a partner at Amster, Rothstein & Ebenstein  LLP.  His practice specializes in all facets of intellectual property law. Mr. Macedo would like to thank Michael J. Kasdan and Richard Zemsky for their comments and assistance in preparing this submission.

     

     


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    We welcome your participation in article and blog comment threads, and other discussion forums, where we encourage you to analyse and react to the content available on the Intellectual Property Watch website. By participating in discussions or reader forums, or by submitting opinion pieces or comments to articles, blogs, reviews or multimedia features, you are consenting to these rules.

    We welcome your participation in article and blog comment threads, and other discussion forums, where we encourage you to analyse and react to the content available on the Intellectual Property Watch website.

    By participating in discussions or reader forums, or by submitting opinion pieces or comments to articles, blogs, reviews or multimedia features, you are consenting to these rules.

    1. You agree that you are fully responsible for the content that you post. You will not knowingly post content that violates the copyright, trademark, patent or other intellectual property right of any third party or which you know is under a confidentiality obligation preventing its publication and that you will request removal of the same should you discover that you have violated this provision. Likewise, you may not post content that is libelous, defamatory, obscene, abusive, that violates a third party's right to privacy, that otherwise violates any applicable local, state, national or international law, that amounts to spamming or that is otherwise inappropriate. You may not post content that degrades others on the basis of gender, race, class, ethnicity, national origin, religion, sexual preference, disability or other classification. Epithets and other language intended to intimidate or to incite violence are also prohibited. Furthermore, you may not impersonate others.

    2. You understand and agree that Intellectual Property Watch is not responsible for any content posted by you or third parties. You further understand that IP Watch does not monitor the content posted. Nevertheless, IP Watch may monitor the any user-generated content as it chooses and reserves the right to remove, edit or otherwise alter content that it deems inappropriate for any reason whatever without consent nor notice. We further reserve the right, in our sole discretion, to remove a user's privilege to post content on our site. IP Watch is not in any manner endorsing the content of the discussion forums and cannot and will not vouch for its reliability or otherwise accept liability for it.

    3. By submitting any contribution to IP Watch, you warrant that your contribution is your own original work and that you have the right to make it available to IP Watch for all purposes and you agree to indemnify IP Watch, its directors, employees and agents against all damages, legal fees and others expenses that may be incurred by IP Watch as a result of your breach of warranty or of these terms.

    4. You further agree not to publish any personal information about yourself or anyone else (for example telephone number or home address). If you add a comment to a blog, be aware that your email address will be apparent.

    5. IP Watch will not be liable for any loss including but not limited to the following (whether such losses are foreseen, known or otherwise): loss of data, loss of revenue or anticipated profit, loss of business, loss of opportunity, loss of goodwill or injury to reputation, losses suffered by third parties, any indirect, consequential or exemplary damages.

    6. You understand and agree that the discussion forums are to be used only for non-commercial purposes. You may not solicit funds, promote commercial entities or otherwise engage in commercial activity in our discussion forums.

    7. You acknowledge and agree that you use and/or rely on any information obtained through the discussion forums at your own risk.

    8. For any content that you post, you hereby grant to IP Watch the royalty-free, irrevocable, perpetual, exclusive and fully sub-licensable license to use, reproduce, modify, adapt, publish, translate, create derivative works from, distribute, perform and display such content in whole or in part, world-wide and to incorporate it in other works, in any form, media or technology now known or later developed.

    9. These terms and your posts and contributions shall be governed and interpreted in accordance with the laws of Switzerland (without giving effect to conflict of laws principles thereof) and any dispute exclusively settled by the Courts of the Canton of Geneva.

     

     
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