Saturday, March 3, 2007

1999 American Inventors Protection Act

Substantial changes to U.S. patent practice took effect on May 29, 2000 to implement provisions of the American Inventors Protection Act of 1999. Provisions relating to a narrow first inventor defense with respect to business method patents were also put into place. Provisions relating to 18 month publication took effect on November 29, 2000. Exclusions of certain commonly owned prior art were applied to applications filed on or after November 29, 1999.

The act can be found at and is summarized below.

The changes provided requirements on invention promoters and called for the Commissioner of Patents to record complaints.

The changes provided for a procedure, called a Request for Continued Examination, to replace Continued Prosecution Applications; extended the pendency of a provisional application if a date that is twelve months after the filing date of the provisional falls on a Saturday, Sunday, or a federal holiday within the District of Columbia; provided for conversion of a provisional application to a non-provisional application; provided a prior art exclusion for certain commonly assigned patents; provided changes with respect to amendments after allowance and withdrawal from issue; and provided for term additions for patent office delays subject to reductions for applicant delays giving rise to potential dire consequences for those who are not diligent. These are discussed in greater detail below.

Requests For Continued Examination

A procedure was created to cover "requests for continued examination" (RCEs). This procedure, still in practice, is a procedure under which an applicant may obtain continued examination of an application by filing a "submission" and paying a specified fee, even if the application is under a final rejection, appeal, or has been allowed. If the subsequent rejection or action is made final or the application is allowed, the applicant may again obtain continued examination (i.e., consideration of a submission), upon filing of a submission and additional payment of the specified fee prior to abandonment of the application.

A proper "submission" may be, among other things, an information disclosure statement, an amendment to the written description, claims, drawings, new arguments, or new evidence in support of patentability.

Appeal briefs, reply briefs, and related submissions are expressly excluded from the list of possible submissions for the purpose of RCEs. The submission may, however, consist of the same arguments submitted as a reply to the final rejection or may simply consist of a submission that incorporates by reference the arguments in a previously filed appeal brief or reply brief.

The RCE procedure differs from the previous Continued Prosecution Application (CPA) procedure (which replaced the previous File Wrapper Continuation procedure) in that the mere payment of the fee for continued examination does not operate to toll the running of any time period set in the previous Office Action for reply to avoid abandonment of the application. Similarly, payment of the fee and filing of a submission in an allowed application without a petition to withdraw the application from issue will not operate to toll the period for payment of the issue fee.

The RCE procedure may not be used when claims are newly presented that are independent and distinct from the claims that were previously claimed and examined. A continuation or divisional application should instead be filed if presenting such claims.

It became impossible to file a CPA off of an application (other than a design patent application) filed on or after May 29, 2000. If an applicant files a request for a CPA of a utility or plant application that was filed on or after May 29, 2000, the U.S. Patent and Trademark Office will automatically treat the improper request for CPA as an RCE.

An applicant in a utility or plant application filed on or after June 8, 1995 but before May 29, 2000 could obtain further examination by filing either a CPA or an RCE. There are term adjustment provisions that apply to CPAs properly filed after May 29, 2000 but not to RCEs. The patent term adjustment provisions do not apply to applications filed before May 29, 2000. A request for continued examination (unlike a CPA) is NOT the filing of a new application.

An applicant cannot request continued examination of an application until after the U.S. Patent and Trademark Office acts on the application by mailing at least one of an Office Action or a Notice of Allowance.

There are other differences between RCEs and CPAs. For example, the fee for an RCE does not require additional claims fees; the fee for an RCE may not be deferred; a certificate of mailing under 37 C.F.R. 1.8 may be used with RCEs, as opposed to the more expensive Express Mail procedure used with CPAs; an applicant may not obtain examination of a different or non-elected invention; and any change of inventors must be via the procedure set forth in 37 C.F.R. 1.48.

Conversion of Provisionals Into Non-Provisionals

37 C.F.R. 1.53 was amended to provide for the conversion of a provisional application to a non-provisional application. However, the resulting non-provisional application would have the filing date of the original provisional application. Thus, the term of the application resulting from the conversion from a provisional to a non-provisional application would be measured from the original filing date.

I strongly cautioned applicants to consider the patent term implications of converting a provisional application into a non-provisional application rather than simply filing a non-provisional application within twelve months of the filing date of the provisional and claiming the benefit of that provisional application under 35 U.S.C. 119(e). By claiming priority under 35 U.S.C. 119(e) under the old process, instead of converting under the new process, up to one year of additional term is possible. The period during which the provisional application is pending is not counted towards the patent term of 20 years from the earliest filing date. Further, the conversion of a provisional application to a non-provisional application will not result in any savings in filing fees over filing a non-provisional application and claiming the benefit under 35 U.S.C. 119(e) of the earlier provisional application.

Exclusion of Certain Commonly Owned Prior Art

35 U.S.C. 103 was amended to exclude subject matter developed by another person which qualifies as prior art only under one or more of 35 U.S.C. 102(e), (f), or (g) as prior art under 35 U.S.C. 103 against a claimed invention, provided that the subject matter and the claimed invention were commonly owned by the same person or organization or subject to an obligation of assignment to the same person or organization at the time the claimed invention was made.

This change applied to any application for patent filed on or after November 29, 1999. Applicants could file continuations or CPAs to remove such commonly owned prior art from consideration. Filing an RCE was not effective to remove such prior art from consideration.

Amendments after Allowance

The rules provided that no amendment could be made as a matter of right in an application after the mailing of a notice of allowance and required that any amendment after allowance be filed before or with the payment of the issue fee. Such amendment could be entered on the recommendation of the primary examiner, approved by the Commissioner, without withdrawing the application from issue.

The rules provided that after the issue fee was paid, the application would not be withdrawn from issue upon petition by the applicant for any reason except unpatentability of one or more of the claims, for consideration of a (RCE) submission pursuant to 37 C.F.R. 1.114, or express abandonment of the application. The express abandonment could be in favor of a continuing application.

The rules provided that a petition to withdraw from issue had to be accompanied by an unequivocal statement that one or more claims are unpatentable, an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. A petition to withdraw from issue would not be effective unless actually received and granted by the appropriate officials before the date of issue. Withdrawal from issue after payment of the issue fee may not be effective to avoid publication of application information. I have seen patents issue as quickly as 2 months after payment of the issue fee (I have also seen them issue as late as 8 months after payment of the issue fee).

Patent Term Guarantees

35 U.S.C. 154(b) provided a day-for-day restoration of patent term lost due to delay caused by the U.S. Patent and Trademark Office when the Office fails to:

  • issue a rejection, objection or requirement, or give a written notice of allowance, within 14 months after the date of filing of the non-provisional application.
  • respond to a reply or to an appeal by an applicant within four months after the reply filing date or the appeal was taken act on the application within four months after a decision by the board of appeals or an interference proceeding or a decision by a federal court; or
  • issue a patent within four months after the date on which the issue fee was paid and all outstanding requirements were satisfied.

The statute further provided a day-for-day restoration of patent term if the U.S. Patent and Trademark Office has not issued a patent within three years after the actual date of filing the application in the United States. Periods of time not considered a delay by the U.S. Patent and Trademark Office and not counted for determining whether the patent issued within three years of the filing date included time:

  • during the continued examination of the application under new 35 U.S.C. 132(b).
  • lost due to an interference, a secrecy order, or appellate review by the Board of Appeals or by a Federal Court;
  • incurred at the request of an applicant in excess of the three months to respond to a notice from the U.S. Patent and Trademark Office unless the applicant could not respond within three months in spite of all due care.

Note that, though the three year pendency guarantee does not apply, day-for-day patent term adjustments were provided for delays due to interference proceedings, secrecy orders, and appellate review by the Board of Appeals or a federal court in a case in which a patent was issued pursuant to a decision reversing an adverse determination of patentability.

The term adjustments are subject to any terminal disclaimer filed.

The term adjustments are reduced by a period of time equal to the time in which the applicant failed to exercise reasonable efforts to conclude patent prosecution as determined by regulations developed by the U.S. Patent and Trademark Office. The U.S. Patent and Trademark Office's proposed rules list a variety of acts as failing to constitute reasonable efforts, including:

  • suspension of action or requesting a deferral of action;
  • abandoning an application or failing to timely request withdrawal of a notice of abandonment;
  • conversion of a provisional to a non-provisional application;
  • failure in PCT applications to pay processing fees upon entry into the national stage;
  • failure to file a declaration or pay fees with the application;
  • failure to supply the specification, drawings, etc., in condition for 18 month publication;
  • submitting preliminary amendments or other papers requiring remailing of actions;
  • submitting incomplete or supplemental replies;
  • submitting amendments or other papers after allowance; and
  • submitting amendments or other papers reopening prosecution.

Note that filing a continuation application results in a loss of all patent term additions accrued, while filing an RCE tolls the three year pendency patent term addition. Filing an RCE cuts off additional patent term additions against the 3 year pendency period, but does not otherwise affect patent term additions.

The applicant has an opportunity to request reconsideration of the patent term adjustment determination made by the director. Payment of the issue fee ends the period for filing reconsideration requests for allegedly miscalculated patent term adjustments and for due care showings where extensions of time were filed. An appeal of the final determination of a patent term adjustment must be taken to federal court within 180 days after the patent is granted.

Therefore, consider whether you would like to incur the expense of independently calculating whether any term adjustment should be granted and comparing that calculation to the U.S. Patent Trademark Office's calculation on a routine basis or case-by-case basis.

Also, it would be wise to endeavor to ensure that Declarations are promptly executed by inventors, and that Office Actions are promptly reviewed by inventors and that procedures are streamlined to ensure that Office Action responses are prepared and filed as quickly as possible.

Optional Inter Partes Re-examination Procedure

The new procedure provided a third party with an opportunity to participate throughout the inter partes re-examination procedure. The determination of whether a new question of patentability is raised is the responsibility of the director, who will often likely delegate the responsibility to the examiner who prosecuted the patent application.

The statute explicitly estops a third party from further litigating issues that were or could have been addressed during re-examination if the third party participates in an appeal to the Federal Circuit. The statute denied a third party from requesting an inter partes re-examination upon a final decision of a civil action. The statute further precludes a third party from initiating multiple concurrent re-examinations or from initiating a second re-examination on the same issues resolved in an earlier re-examination proceeding initiated by the same third party. Further, any party who requests inter partes re-examination is estopped from challenging in a civil action any fact determined during the re-examination proceeding, except for a fact determination later proved to be erroneous based on information not available at the time. Under the new procedure, the third party cannot remain anonymous. In view of the risk of estoppel, it may not be wise for third parties to use this procedure instead of litigating patent invalidity in the federal courts.

Note that the old ex-parte re-examination procedure was not eliminated by the enactment of this statute.

First Inventor Defense against Business Method Patents

In the past, if an inventor had been using a method as a trade secret, that prior use did not provide a defense against another inventor who later obtained a patent covering the method. 35 U.S.C. 273 provides a narrow prior user defense for prior users of patented methods for doing or conducting business. This defense requires actual reduction to practice of the subject matter at least one year before the effective filing date of the patent and commercial use of the subject matter at least one day before the effective filing date, established by clear and convincing evidence. Success of the defense does not invalidate the patent. The defense fails if the party asserting it derived the subject matter from the patentee. Also, the defense must be considered claim by claim. The defense is not generally applicable to the patent as a whole.

In view of this defense, I recommended seeking at least one set of apparatus claims in patent applications that could be construed as relating to business methods.

The provisions establishing this new defense took effect on November 29, 1999.

Additional changes took effect on November 29, 2000 relating to early publication of U.S.

Domestic Publication of Foreign Filed Patent Applications

The act provided that eighteen (18) months from the earliest filing date to which a patent application claims benefit, the U.S. Patent and Trademark Office would publish the application unless it is abandoned, a provisional application, a design application, or subject to a secrecy order or a request not to publish.

An applicant may avoid publication by certifying upon filing of the application that the invention has not been and will not be the subject of an application filed in another country or under an international agreement that requires publication 18 months after filing (e.g., a PCT application).

The request may be rescinded, after which the U.S. Patent and Trademark Office will proceed to publish the application after 18 months. If the applicant files an application that would be published in another country or under an international agreement, the applicant must notify the U.S. Patent and Trademark Office of the filing within 45 days or the application shall be regarded as abandoned unless the applicant can show that the failure to notify was unintentional.

If the filing in another country or under international agreement is less extensive than the U.S. specification, the applicant may submit a redacted copy of the U.S. application, eliminating any part that will not be found in the foreign or international application.

The act provided that a patent owner has the provisional right to obtain a reasonable royalty for the period beginning on the date of publication to the date of issue of the patent. The provisional right matures only upon issuance of a patent. The provisional right is also extended to publication of a PCT application designating the U.S. The right to a reasonable royalty is limited by the requirement that the invention as claimed in the patent be "substantially identical" to the invention as claimed in the published patent application, and the requirement that an action for reasonable royalty be brought within a certain time period. The published applicant must give actual notice of the published application to an accused infringer and explain what acts are regarded as giving rise to provisional rights. In view of this, applicants should consider filing a range of claims including more narrow claims to increase the chance of obtaining allowance of claims that are substantially identical to the published claims.

Published applications have prior art effect as of their earliest effective U.S. filing date. PCT international applications published in English and designating the U.S. are given prior art effect as of the international filing date.

For applications that may be entitled to the benefit of foreign priority, 35 U.S.C. 119(b) is amended to permit the U.S. Patent and Trademark Office to set a deadline for claiming such benefit. The current proposal is to require that priority claims be made within 16 months from the claimed priority date or within four months from the application filing date, whichever is later.