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People's Law Guide

 

Overview of the American Inventor’s Protection Act of 1999

03/05/08

By:  Fort Lauderdale Patent Attorney

        John Rizvi

 

 

          If life were like the popular board game Monopoly®, obtaining meaningful patent protection would be as simple as buying up Boardwalk and Park Place.  In the board game, you simply purchase the property you want, place houses or hotels on them over time, and eagerly collect a continual revenue stream from the successful venture.

 

The rules governing monopolies on ideas, however, are significantly more complex and have recently undergone one of the most far-reaching changes in history.  As you mull over the unique features of your newly discovered invention or method of doing business, it is important to consider recent changes in patent law and their particular importance to individual inventors.

 

PUBLISHING OF APPLICATIONS

 

If you are like most inventors, the thought of publicly disclosing the secret details of your invention before a patent has been issued is very unsettling.  Few inventors realize, however, that under the American Inventor’s Protection Act of 1999, the confidential details disclosed in their U.S. patent applications may be promptly published eighteen months from the earliest claimed filing date unless certain conditions are met.

 

This is exactly what American inventors face under recent changes in the patent law unless they fit under certain narrow exceptions to publication and take active steps to prevent their pending patent applications from being publicly disclosed.

 

The Way Things Were

 

Inventors have long regarded the United States Patent & Trademark Office as a safe haven for the disclosure of confidential and secret information in the course of applying for a patent.  Historically, the U.S. Patent Office maintained a patent application in complete secrecy.  If a patent issued from an application, the details of the invention were made public in exchange for the exclusive legal monopoly rights afforded by the patent.

 

If an application did not eventually issue into a patent, the inventor’s confidential information was never disclosed.  In either case, the decision to keep details of an invention confidential was completely in the hands of the inventor.  For over two hundred years, these features of the U.S. patent system have distinguished it from the patent systems of most other countries-where publication of an application is required prior to the patent grant.

 

United States Patent Applications Now Subject to Publication

 

The American Inventors Protection Act of 1999 became law on November 29, 2000, and dramatically changed the United States patent system.  It is now estimated that about 80% of all U.S. utility patent applications will be subject to publication.  The remaining patents fit within carefully crafted exceptions and will not be subject to publication. 

 

According to the new rules of practice in patent cases, utility patent applications filed after November 29, 2000, will be published promptly after the expiration of 18 months from the earliest claimed filing date.  Under the new rules, any information contained in a pending patent application will be accessible 18 months from its filing date.  If the application is claiming the benefit of the filing date of an earlier filed application, the application will be published 18 months from the date of the earlier filing date. 

 

Purposes of Publication

 

            What purpose would publication serve?  Firstly, by publishing pending applications, the submarine patent phenomenon is averted.  A “submarine patent” generally refers to a patent issued long after the filing date of an application, and to the surprise of industry players who had no idea that patent protection had been sought.

 

The classic and well-documented examples of submarine patenting were the “machine vision” patents granted in the early 1990’s to Jerome Lemelson based on patent applications he filed forty years ago.  Publishing pending applications after 18 months eliminates a patent from being secretly prosecuted for a long period without detection by industry.

 

The second reason for publishing patent applications is to bring United States patent practices in line with those of the rest of the world.  As previously mentioned, most foreign countries have required pre-grant publication of patents for years.

 

Finally, permitting the public to see details of a patent application before it issues, encourages competitors to submit prior art references to an examiner in an effort to defeat pending applications.

 

Exceptions to Publication

 

            Now that we have looked at the procedures and purposes of publishing, let us turn to the notable exceptions to the 18-month publication requirement.  Firstly, it should be remembered that the 18-month publication rules only apply to utility patent applications. Design patents and provisional patent applications are not subject to publication.  The filing of a provisional application, however, will start the clock on the 18-month period if the benefit of the filing date is later claimed in a non-provisional patent application.

 

            Additionally, publication is not mandatory where an inventor certifies that he has not filed for a patent abroad and does not intend to do so.  Finally, U.S. patent applications containing technical information deemed sensitive and detrimental to national security are not published.

 

Avoiding Publication Possible if Only Filing in the United States

 

            It is important to note that the early publication requirements do not apply if an applicant seeks patent protection only within the United States and does not intent to file abroad.  Applicants may avoid publication of their application by certifying that they have not and do not intent to file a foreign patent application.  This certification and request not to publish must be made at the time they file their U.S. patent application but may be rescinded at a later time.  The penalty for filing in a foreign jurisdiction that has 18-month publication without rescinding the certification is severe-abandonment of the U.S. application! 

 

Benefits of Publication

 

            There are a variety of new opportunities and substantial risks created by the 18-month publication system in the United States. 

 

One advantage of publication is that the applicant becomes entitled to provisional rights effective in the period between publication and the grant of a patent.  If a patent eventually issues from an application, for example, the applicant can be entitled to royalty payments from the date of publication if his patent rights are violated.  Another advantage of publication is that publication of a patent application triggers a prior art date that may be used to prevent others from obtaining patent rights on your invention.

 

For a nominal fee, an inventor can choose to have their patent application published before the standard 18-month publication period.

 

Decisions, Decisions, and More Decisions

 

            The publication of U.S. applications is one of the most fundamental and significant changes to the American patent system in this century.  Many applicants will be in a position to decide whether or not they will file for patent rights outside the United States.

 

If they decide not to file outside the United States, the applicant can choose whether or not to have their pending U.S. patent applications published.  Moreover, for a nominal fee, applicants can have their patent applications published before the standard 18-month publication period.

 

These decisions should be made very carefully after considering the benefits and disadvantages that publication offers in your particular circumstances.  It is always advisable to consult with a Registered Patent Attorney before deciding on a course of action. 

 

THE INVENTOR’S RIGHTS ACT

 

            This subtitle is an attempt to protect inventors from deceptive practices associated with some inventor marketing companies.  Specifically, an invention promoter must disclose certain information in writing to an inventor concerning their success ratios.  The information disclosed must include:

 

1)  The number of inventions evaluated by the promoter for commercial potential in the past five years, with a breakout of the number which received positive evaluations and the number which received negative evaluations;

 

            2)  The number of customers who have contracted with the promoter within the past five years;

 

            3)  The number of customers known to have received a net financial profit as a direct result of the promoter’s services; and

           

            4)  The names and addresses of all previous invention promotion companies with which the promoter or its officers have been affiliated in the previous 10 years.

 

            Failure to provide a customer with this required information permits the customer to bring a civil action to recover statutory damages and reasonable costs, attorney fees, and actual damages.

 

         

PATENT TERM GUARANTEE

            A patent expires 20 years after the initial application is filed.  As such, the longer it takes for an application to issue (i.e., the longer an application is pending), the shorter the term of the resulting patent. The “patent term guarantee” provisions of the Inventor’s Protection Act extend the term of patents for certain Patent Office processing delays and for delays in the prosecution of applications pending more than three years.  The legislative history makes it clear that the objective is to ensure that no applicant diligently seeking to obtain a patent will receive a term of less than seventeen years.

The "patent term guarantee" set forth in the American Inventors Protection Act of 1999 establishes three main bases for adjusting the term of a utility or plant patent: (1) if the USPTO fails to take certain actions within specified time frames; (2) if the USPTO fails to issue a patent within three years of the actual filing date of the application; or (3) for delays due to interference, secrecy order, or successful appellate review.

 

 

OPTIONAL INTER PARTES REEXAMINATION PROCEDURE

 

            U.S. law provides that a third party may file a request for a reexamination of an issued patent.  Under the new changes, however, the participation of third parties in the reexamination process has been greatly expanded by permitting the third party to submit a written response each time the patent owner files a response to the PTO. 

 

            The purpose of the new inter partes reexamination procedure is to encourage third parties to use reexamination procedures for determination of patent validity issues and so reduce the volume of patent litigation in the district courts.

 

 

FIRST INVENTOR DEFENSE

 

            One of the most well-known portions of the American Inventor’s Protection Act of 1999 pertain to the prior inventor defense.  This defense applies when a business method patent is asserted against someone who actually reduced the same invention to practice at least one year before the patent’s filing date, and then commercially used the invention in the United States before the effective date of the patent.

 

            This defense was enacted in response to significant public consensus that patents for business methods were being unfairly applied to companies that have been using those methods for years without obtaining patent protection.

 

            Establishing the defense does not invalidate the patent but provides for a limited license for companies that can prove prior use.

 

John Rizvi is a Registered Florida Patent Attorney at the Fort Lauderdale patent law firm of Gold & Rizvi, P.A. ( http://www.FloridaPatentLawyers.com  ) and the author of the Florida Intellectual Property Law Blog ( http://www.FloridaIPBlog.com ). He is also an Adjunct Professor of Intellectual Property Law at Nova Southeastern University where he teaches Florida patent, trademark, and copyright matters. He can be reached at (954) 452-0033 or via email at JohnRizvi@IdeaAttorneys.com

 

 

 

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