New inventors are often looking for a short overview of the patent process. Ordinarily sending inventors to the United States Patent and Trademark Office (USPTO) web site is like sending someone into a great quagmire.
But there is a nice flow cart with links directing viewers to pertinent information regarding each step of the process for getting a utility patent on the USPTO web page.
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The Patent Reform Act of 2010 was recently made public in the form of an (“Amendment to S. 515”). Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) spoke at an Executive Business meeting (webcast) February 25, 2010 about this amendment to the patent reform act.
Leahy stated, “When Senator Orrin Hatch (R-Utah) and I started this process several Congresses ago, along with Congress members John Conyers Jr., Howard L. Berman, Lamar Smith and others in the House, we wanted to improve patent quality and the operations at the PTO, and address runaway damage awards that were harming innovation. We are close to a compromise that will address these issues. No one will think this a perfect bill, but we are close to a comprehensive patent reform bill that benefits all corners of the patent community.”
The 2010 amendment of the "Patent Reform Act" proposes a number of so-called improvements that are the subject of other LoTempioLaw blog posts (See the list below). This post is directed at the proposed change regarding First-Inventor-to-File.
First-Inventor-to-File
The proposed change does not call for a “First To File” system as some people mistakenly believe; it proposes a “First Inventor To File” system. Remember you cannot file a patent application in either system unless you are the inventor. Because two people can independently invent the same thing at different times there may be a race to the patent office by two inventors.
The current US system awards a patent to the inventor who is the first to invent regardless of whether the application was the first to be filed in the patent office for that invention. The new system will reward the inventor who wins the race to the USPTO and files the first application.
In the current US system, when two inventors seek a patent on the same invention the fact finder must determine who invented it first (it doesn’t matter who filled it first). The proposed “First Inventor To File” system will minimize Issues such as
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People now question if a first-inventor-to-file system is put in place will big business always beat the independent inventor to the patent office to file a patent application? Under Secretary of Commerce and USPTO Director David Kappos, says that there is a big misconception regarding “First Inventor To File.”
With the “First Inventor To File” system there is no risk of business beating the independent inventor to the patent office to file a patent application because the interloper is not an inventor. All filers have to sign an oath and declaration under penalty of criminal sanctions.“This leaves only the issue of simultaneous, non-collaborative invention—what we call interferences. The chances that a patent will be subject to interference based on a first to invent claim—that’s our current system—is .01%. In 2007—the most recent year for which we have statistics. The total number of interference cases for all applicants of all sizes that were decided based on a priority claim was seven! Of those seven decisions, only one involved a small or medium sized entity, and not a single one was won by an independent inventor who was the second to file. That means we already essentially have a first inventor to file system.”
Is this a naive view of the world? Or will non-inventors race to the office to file applications and basically say, hey prove I didn’t invent this invention. Will more litigation result because of this proposed change in the patent law? Or will the independent inventor just lose out on his/her invention because they won't have the wherewithal to fight it out in court even if he/she is the only true inventor?
The Professional Inventors Alliance USA viewpoint is that this provision will not guarantee that the actual inventor will be granted the patent.
"It creates conditions for very poor prior art, which is the existing knowledge of a similar innovation known to the general public. It burdens examiners with questionable applications by non-inventors. It creates a new malpractice liability for patent practitioners who may not beat another party to the patent office, thereby increasing the potential for litigation.
Kappos thinks the benefits will be reaped in the cost savings when filling internationally,
"... all other countries in the world use a “First Inventor to File” system. The change in the Patent Reform Bill will streamline the process for you to acquire patent rights and reduce your costs in seeking rights outside of the United States as you consider entering the global marketplace. This change will make it easier for you to “go global” with your invention."
Personally, I think this argument is much to do about nothing. I haven't heard many inventors consciously say I know it is a "first inventor system" so I don't care if somebody else files before me. I think that even with the system as it is now, inventors still believe that it's vitally important to be the first to file. Being the first to file always has its advantages. Even the patent office recognizes a patent application as a "constructive reduction to practice." I'm sure that if inventor observes an application pending in the United States Patent and Trademark Office for their invention he/she is less likely to go forward and file a second in line application regardless as to whether it's a “First Inventor to File” or a "First Inventor to Invent" system.
Continue Reading...Tweet of the week
Thanks to Peter Black @PeterBlackQUT for tweeting this week about the importance of teaching children to respect the intellectual property rights of others.
Ben Child, Guardian film writer and blogger wrote that Lord David Puttnam the president of the Film Distributors' Association voiced his concern of the need for new methods to stop copyright infringement of films through internet piracy.
In a recent keynote speech as president of the FDA Puttnam said that:
"young people needed to be educated at an early age that it was wrong to illegally download copyrighted material"...."The concept of intellectual property and its value needs to be embedded inextricably into the school curriculum."
Guest Blogger: Brendan S. Lillis, Registered Patent Attorney
These days, with the average waiting period to hear back from the patent office regarding a new application exceeding three years, the patent office needs all the help it can get. As such, filers of patents are required to disclose all relevant information about prior art that they know of to the patent office. This is known as the “duty to disclose,” and is governed by 37 CFR §1.56.
This not only saves the patent examiner time otherwise spent searching for this information, but it also gives the patentee the chance to distinguish the new invention from prior art right off the bat.
But how can we be sure that the information disclosed by the patentee is accurate? How do we know some piece of information will purposely not be disclosed, in the hopes it will never be found?
Enter the Doctrine of Inequitable Conduct. This doctrine attempts to set the law, and asks two questions:
According to the Manual of Patent Examining Procedure (MPEP), the USPTO wants nothing to do with answering these questions. This leaves it up to the Federal Circuit, which has been all over the board in recent years in determining the levels of intent and materiality required to violate the doctrine. An in-depth look at the Federal Circuit’s handling of this matter can be found in a Marquette Intellectual Property Law Review (.PDF) article.
There are some real problems with the system as is it currently operates. For one, the Federal Circuit’s desire for flexibility in interpreting the rules on a per-case basis is at odds with the Patent Office’s desire to
clearly state what is expected of patentees. This is due in large part to the fact that there is no statutory standard on which the rule is based. For instance, how do you determine whether certain information is “material” or not? So many different standards have been used that you don’t know which one to go by.
Also, the doctrine asserts that the best way to police patent fraud is for competitors (not the patent office or interested third parties) to raise the issue as a defense, as opposed to an independent action.
With so much recent talk of patent reform one would think this issue is sure to be brought up. I spoke with Kali Murray, Assistant Professor of Law at Marquette University Law School and co-author of the aforementioned Marquette Law Review article and she said it's not that simple. She notes that, while this issue was in the Congressional spotlight a few years back, reform never came, and now false marking grabs all the attention.
“Reform in Congress over the last 10 years has been very reactive as opposed to thoughtful and systematic. They see the trees but not the forest.”
Murray also sees this as a basis for larger questions about the foundation of our patent system.
“Congress first needs to figure out what type of patent system we should be working towards, only then can they can determine how fraud prevention fits into the system, including false marking and the doctrine of inequitable conduct.”
At this point, I wonder whether it would be best for Congress to attempt to clarify the standards, or to scrap the Doctrine of Inequitable Conduct and start from scratch. The feeling here is that the rule’s “heart” is in the right place, but there’s work to be done on its substantive language, and even that requires attention in the first place.
Related Post:
What inventors need to know…
Inventors Eye is a new electronic publication by the United States Patent and Trademark Office for and about America’s independent and small entity inventor community.
Inventors can find information about working with the USPTO; events, organizations and meetings of interest to the community; issues that impact independent and small entity inventors; and stories about successful inventors.
The first issue had a few great articles and links under the titles Advice, Events and Network:
ss Communities from Under Secretary of Commerce and USPTO Director David KapposInventors Eye will appear every other month on the USPTO web page.
The latest edition of the proposed patent reform legislation was announced by the leaders of the Senate Judiciary Committee on legislation for patent reform. The act is now called the "Patent Reform Act of 2010" and is memorialized in the form of the Manager's Amendment (“Amendment to S. 515”).
When will this bill become law? This is a good question because it is a follow-up to the Patent Reform Act of 2009, the Patent Reform Act of 2008, the Patent Reform Act of 2007, the Patent Reform Act of 2006 etc. etc. etc.
Among the provisions of this proposed legislation is a modification of the false marking statute. Presently, 35 U.S.C. 292(b) provides that any private citizen can bring a qui tam action on the government’s behalf against an entity that falsely marks unpatented products. However the proposed legislation amends 292(b) to read as follows:
"A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury."
The Senate bill, if enacted, would have retroactive effect even for still-pending but earlier-filed actions as it states the amendment would "apply to all cases, without exception, pending on or after the date of the enactment of this Act."
Is this another way to protect big business at the cost of the little guy? Or is it just a way stop the onslaught of potential litigation? A list of 75 false marking lawsuits filed in the last two months against over 100 companies can be found on the Gray on Claims law blog. Many of these lawsuits have been filed by qui tam plaintiffs who are individuals or entities specifically formed to litigate such false marking suits and presumably have no claim of "competitive injury." Will they have to find an injured party?
If the patent reform amendment becomes law, qui tam plaintiffs who have filed or intend to file false marking suits for expired patent numbers will have another element to prove to win the case. How will the court define a "person who has suffered a competitive injury?"
Will something that a person would have done if not for the false marking be admissible?
Related posts:
Patent Marking Police" Looking for the Big Jackpot
"Patent Trolls" Search for Falsely Marked Products
Continue Reading...Since my recent blog post entitled "Patent Trolls" Search for Falsely Marked Products the ad hoc “patent marking police” have filed at least 17 lawsuits alleging false marking against 33 different companies. This number is an approximation because False Marking suits are not consistently categorized within the federal court system. To see a list of False Marking suits filed in the last 2 months, go to Justin Gray’s blog, Gray on Claims.
The law allows any private citizen to bring a qui tam action on the government’s behalf against an entity that falsely marks unpatented products. A court can levy a fine for up to $500 for every product that is falsely marked. The final award is split evenly between the government and the person that brought suit.
What will happen if one person wins a huge damages award in one of these cases? How many more would be “Patent Police” will come out of the woodwork? In a blog post on IPWATCHDOG.com you can read A Fanciful False Marking Fiction By a Cottage Industrialist where the author daydreams about how “I just made 42 bajillion dollars today. And it’s not even 9 am.”
How easy is it to file a Patent False Marking complaint? Take a look at this complaint (PDF). Maybe you can be the next bajillionaire.
The two elements of a 35 U.S.C. § 292 false marking claim are:
It will be interesting to see if the courts will find the necessary intent or mens rea to find false marking and what the courts will do in the “exercise of their discretion” as to the size of damage awards. Some argue that if you are marking a product with a patent number you should know when it expires and what it covers. Intent to deceive should be easy to prove. (See comment #7 by "Noise above Law"on IPWATCHDOG's post)
Now what about the damages award? The Federal Circuit held in the case of Forest Group, Inc. v. Bon Tool Co., No. 2009-1044, that the plain language of the false patent marking statute, requires courts to impose penalties for false patent marking on a “per article” basis.
The §292 statute provides a fine of “not more than $500 for every such offense. This does not mean that a court must fine those guilty of false marking $500 per article marked, even though it can. The statute provides district courts the discretion to strike a balance between encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities.
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means a court has the discretion to determine that a fraction of a penny per article is a proper penalty. The court's exercise of discretion is a balance between the chilling effect of false marking and imposing a mind boggling 42 bajillion dollars to be shared between the government and a brilliant member of the “patent marking police."
What is the chilling effect of a patent whose number has been falsely marked upon a product?
I think the chilling effect of False Marking may be a serious consideration but I don’t think courts are going to start printing money. I have learned that what seems too good to be true, usually is. So don’t buy an armored truck to carry away your billions of dollars just yet.
Before taking my first law school exam Joe Walsh, a fellow law student, said to me that his attorney father gave him this advice: "If you don’t know what the answer to a question is, make pretend you are the judge and come up with a fair resolution."
Okay, you are the judge, what do you think is fair?
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