Section 3. First Inventor to File
Summary
Amends 35 U.S.C. § 102 to redefine prior art as anything patented, published, on sale, or in public use before filing, or any patent application filed by another before the effective filing date of the claimed invention.
Eliminates most interference proceedings. (Derivation proceedings for allegedly copied remain available.)
Effective Date
18-months after the date of enactment, applying to any patent filed or claiming priority to a patent filed thereafter
Practice Notes
Clients have six months after enactment to educate inventors about the elimination of the 1-year grace period, and need to get a patent application on file.
Section 4. INVENTOR'S OATH OR DECLARATION
Summary
Amends 35 U.S.C. § 115 to permit applicants to make a "substitute statement" in lieu of an oath or declaration when an inventor is deceased, under legal incapacity, or cannot be found or reached after diligent effort."
Amends 35 U.S.C. § 118 to permit applicants to apply on behalf of inventors when "the inventor has assigned or is under an obligation to assign." Until now, applicants were permitted to apply on behalf of an inventor only when the inventor could not be found or reached after diligent effort.
Effective Date
One year after the date of enactment, applying to any patent application filed on or after that date
Practice Notes
Section 4 will streamline the process of obtaining oaths or declarations, a process which under the current rules has been a hassle, especially in locating former employees upon the filing of continuations or divisionals of an original application.
Section 5. Prior COMMERCIAL Use DEFENSE
Summary
This section expands the prior user defense under 35 U.S.C. § 173, currently is available only for business method patents, to all patents.
The prior user bears the burden of showing a prior use of the claimed invention more than a year before the priority date of the claimed invention. Such prior uses would be a valid defense even if kept confidential.
The defense is personal to the prior user and non-transferable except for transfers of an entire enterprise or line of business, and then only for prior uses at the same site.
The defense is unavailable to prior users when the invention was owned by or under obligation of assignment to a university at the time the invention was made. There is an exception to this exception for when federal funding was required to reduce the invention to practice.
Effective Date
Date of enactment, applying to any patent issued on or after.
Practice Notes
We expect the prior user defense could be valuable to defendants in software patent litigations, although the defense is available only to patents issuing after the date of enactment, and we have some concerns with how such a defense would fit within overall case strategy.
Section 6. POST-GRANT REVIEW PROCEEDINGS
Summary
Creates a European-style opposition proceeding, whereby third parties may challenge the patentability of an issued patent in an inter partes proceeding before the PTO within one year after a patent issues.
Like inter partes reexaminations, these post-grant review proceedings will have a preclusive effect on the party who brings them — i.e., that party may not assert either in a civil action or ITC action a defense of invalidity on any ground raised or that could have been raised during the post-grant review proceeding.
Effective Date
One-year after date of enactment, applying to any patents issued before, on, or after that date.
Practice Notes
Based on experience with inter partes reexamination proceedings, we do not expect post-grant review to provide much help for defendants in patent litigation. Many venues do not grant stays pending reexamination, and in general the PTO is more friendly to patentees than the district courts. Nonetheless the procedure may be useful in narrow circumstances, such as when a European counterpart has already been rejected in an Opposition proceeding and a U.S. patent issues.
Section 9. VENUE
Summary
Changes venue from appeals of PTO decisions that are now filed in the District of D.C. to the Eastern District of Virginia, which is closer to the new PTO headquarters.
Effective Date
Date of enactment, applying to any civil action filed on or after
Practice Notes
We generally recommend that appeals be made to the Federal Circuit when that alternative is available, and the PTO has recently taken the position that many issues that have been appealed to the D.D.C. (such as appeal of B.P.A.I. decisions in reexamination) are now subject only to appeal in the Federal Circuit.
Section 10. FEE SETTING AUTHORITY
Summary
Gives PTO fee-setting authority and control of fees subject to limited Congressional oversight. Please contact us for additional details if you would like to know more about these provisions.
Also gives universities micro-entity status and hence reduced filing fees.
Effective Date
Date of enactment
Practice Notes
Along with Section 22, this was one of the most contentious sections in the bill, since the House Appropriations Committee has never given plenary authority to an Executive agency to manage its own budget. H.R. 1249 represents a political compromise, which was approved by PTO Director David Kappos and the Obama Administration
Section 14. TAX STRATEGIES DEEMED WITHIN THE PRIOR ART
Summary
Deems tax strategies “insufficient to differentiate a claimed invention from the prior art,” and not indistinguishable from other information available to the public that is relevant to a patent’s claim of originality.
Software that enables individuals to file their income tax returns is specifically excluded from this section — i.e., such software patents would not be deemed invalid merely as a result of this section
H.R. 1249 would also permit the PTO to seek advice and assistance from the Department of Treasury and the Internal Revenue Service to ensure that patents to do not infringe on the ability of others to interpret the tax law and that implementing such interpretations remains in the public domain.
Effective Date
Date of enactment, applying to any patent application that is pending on, or filed on or after, that date, and to any patent that is issued on or after that date
Practice Notes
Clients should contact us if they have concerns about whether particular claims might be deemed invalid under this provision.
Section 15. BEST MODE REQUIREMENT
Summary
Removes as a defense to patent infringement the patentee’s failure to comply with the best mode requirement. (The “best mode” is currently required in patent applications to describe how an invention should be used)
Effective Date
Date of enactment, applying to proceedings commenced on or after that date.
Practice Notes
Best mode defenses are rarely successful, and this Section merely codifies the practical reality that has existed for some time under Federal Circuit common law.
Section 16. Marking
Summary
Allow a manufacturer to write the word “patent” or “pat.” on a product, along with a reference to an internet website that the public can access free of charge to learn more about the specific patent.
Eliminates most liability for false marking
Effective Date
Date of enactment, applying to all cases, without exception, that are pending on, or commenced on or after, the date of the enactment of this Act
Practice Notes
Gives statutory approval to a practice already common among patent owners. Puts a damper on cottage industry of qui tam litigation for false marking
Section 17. ADVICE OF COUNSEL
Summary
Codifies holding of In re Seagate Technology, LLC, 497 F. 3d 1360 (Fed. Cir. 2007), which held that failure to obtain advice of counsel may not be used to prove willful infringement.
Effective Date
Not clearly specified
Practice Notes
MWE represented Seagate in the appeal that resulted in this holding. Please contact us if you'd like additional details.
Section 19. JURISDICTION AND PROCEDURAL MATTERS
Summary
Includes general prohibition against joinder of multiple defendants in a single lawsuit for infringement of the same patent by different accused products
Effective Date
Date of enactment, applying to any lawsuits followed on or after that date.
Practice Notes
Could bring end to what is now a common practice by NPEs.
Section 23. SATELLITE OFFICES
Summary
Requires the Director to establish three or more satellite offices within a three-year window, subject to available resources, to carry out the responsibilities of the PTO
Section 26. PRIORITY EXAMINATION
Summary
Requires that the PTO establish regulations that prioritize examination of applications for products, processes, or technologies that are important to the national economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization
Creates a “Track I” fee of $4,800 that would allow an inventor to receive a “prioritized” examination of his or her patent
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