People's Law Guide
If life were like the popular board game Monopoly®, obtaining meaningful patent protection would be as simple as buying up Boardwalk and
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
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
The American Inventors Protection Act of 1999 became law on
According to the new rules of practice in patent cases, utility patent applications filed after
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
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,
Avoiding Publication Possible if Only Filing in the
It is important to note that the early publication requirements do not apply if an applicant seeks patent protection only within the
Benefits of Publication
There are a variety of new opportunities and substantial risks created by the 18-month publication system in the
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
If they decide not to file outside the
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
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
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