On November 29, 1999, a new law entitled the "American Inventors Protection Act of 1999" was enacted, making a number of dramatic changes to U.S. Patent and Trademark law. These changes cover a wide variety of subject matter. A brief summary of the main provisions is presented below. For detailed explanations of how a particular change may affect your practice, please contact our office.
Patent and Trademark Fee Changes
Basic filing fees and maintenance fees for patent applications are reduced as of December 29, 1999. However, trademark fees are going up dramatically. The new fees are set forth below:
Patent Fees
| 1.16(a) | Basic filing fee - Utility | ||
| 1.16(a) | Basic filing fee - Utility (Small Entity) | ||
| 1.16(a) | Basic filing fee - Utility (CPA) | ||
| 1.16(a) | Basic filing fee - Utility (CPA) (Small Entity) | ||
| 1.16(h) | Reissue filing fee | ||
| 1.16(h) | Reissue filing fee (Small Entity) | ||
| 1.16(h) | Reissue filing fee (CPA) | ||
| 1.16(h) | Reissue filing fee (CPA) (Small Entity) | ||
| 1.20(e) | Maintenance fee - due at 3.5 years | ||
| 1.20(e) | Maintenance fee - due at 3.5 years (Small Entity) | ||
| 1.492(a)(2) | ISA - U.S. | ||
| 1.492(a)(2) | ISA - U.S. (Small Entity) |
Patent Fees
| 1.17(r) | Filing a submission after final rejection (1.129(a)) | ||
| 1.17(r) | Filing a submission after final rejection (1.129(a)) (Small Entity) | ||
| 1.17(s) | Per additional invention to be examined (1.129(b)) | ||
| 1.17(s) | Per additional invention to be examined (1.129(b)) (Small Entity) |
Trademark Fees
| 2.6(a)(1) | Application for registration, per class | ||
| 2.6(a)(4) | Extension for filing Statement of Use, per class | ||
| 2.6(a)(5) | Application for renewal, per class | ||
| 2.6(a)(13) | Filing section 15 affidavit, per class | ||
| 2.6(a)(16) | Petition for cancellation, per class | ||
| 2.6(a)(17) | Notice of opposition, per class |
Patent Term Guarantee
Section 154(b) of 35 U.S.C. has been amended to change the patent term extension provisions previously provided under this section. Called a patent term guarantee, this section provides for term extensions due to delays in the U.S. Patent and Trademark Office. The delays for which the term may be adjusted include failure to: issue a first Office Action on the merits within fourteen months after the filing date or completion of the national phase requirements, responding to a reply or an appeal within four months, acting in an application within four months after decision by the Board of Patent Appeals and Interferences or decision by a federal court, or issue a patent within four months after the date in which the issue fee was paid and all other outstanding requirements were satisfied.
This section also now "guarantees" no more than three-year application pendency by extending the patent term for the period that the application is pending beyond three years, making adjustments however for special patent office proceedings and applicant's delays.
The changes further guarantee adjustments for delays due to interferences, secrecy orders and appeals.
However, term adjustments are subject to certain limitations and reductions, for example when applicant fails to engage in reasonable efforts to conclude prosecution.
Patent term adjustments are to be determined by the U.S. Patent and Trademark Office, who will notify applicants of the determination. Applicants can request reconsideration of and appeal the determination.
These new patent term adjustments go into effect May 29, 2000 and apply to any application filed on or after May 29, 2000.
Continued Examination of Applications
The patent statutes have been amended to allow the office to continue examination of applications (for example, after issuance of a final office action) at the request of the applicant and upon payment of a fee as set by the office. This practice will take effect on May 29, 2000, and will apply to all applications filed on or after June 8, 1995 and all national phase applications resulting from international applications filed on or after June 8, 1995. They do not apply to design patents. This appears to be an attempt to reduce the necessity for the continued prosecution application procedure.
Domestic Publication of Patent Applications Published Abroad
Provisions have been enacted for eighteen month publication of U.S. patent applications. In general, each application for a patent will be published promptly after expiration of the period of eighteen months from the earliest filing date for which benefit is sought.
However, applications that have become abandoned, are subject to a secrecy order, are provisional, or are for a design will not be published.
Publication can be avoided by an applicant if the applicant so requests and certifies that the invention disclosed in the application has not and will not be the subject of an application filed in another country or under a multi-lateral international agreement that requires publication of the application eighteen months after filing.
If such a request is made, it can later be recinded; if a subsequent foreign application is filed in a country where publication would take place, notification must be made to the Director or the application may be regarded as abandoned; recision of the request will result in publication of the application.
A domestic application containing more information than its corresponding foreign application may have a redacted copy of the application (i.e. corresponding to the abbreviated foreign application) become the published document.
These changes also provide that the office will not entertain protests or other forms of pre-issuance opposition to the grant of a patent in an application after publication of the application without the express written consent of the applicant.
The provisions for claiming priority to a foreign application, a provisional application or an earlier U.S. application are also being amended to allow the office more discretion in making rules as to how and when the claim must be made. These changes have likely been made to allow the PTO to ensure that it can quickly determine the eighteen month publication period.
The changes accompanying the provisions for eighteen month publication also grant the right to a patentee to collect a reasonable royalty from any person who, during the period beginning on the date of publication of the application and ending on the date the patent is issued, makes, uses, offers for sale or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States, or who uses, offers for sale or sells in the United States or imports into the United States products made by a patented process as claimed in the published application. However, reasonable royalties can only be obtained from the person if that person had actual notice of the published patent application and, in case this right is based upon an international application designating the United States and was published in a language other than English, also had a translation of the international application into English.
The right to obtain a reasonable royalty is also not available unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application. Any action to obtain such reasonable royalty is available only in an action brought not later than six years after the issuance of the patent. The right to receive a reasonable royalty based upon an international application designating the United States commences on the date on which the PTO receives a copy of the publication under the treaty of the international application, or, if the publication is not in English, the date on which the PTO receives an English translation.
Applications published under these provisions will have prior art effect under new 35 U.S.C. §102(e)(1) as of their filing date. However, international applications have this effect only if designating the United States and published in the English language.
35 U.S.C. § 102(e) has been changed to remove reference to the completion of requirements under paragraphs 1, 2 and 4 of Section 371(c) for U.S. patents granted on international applications, and instead now states in section 102(e)(2) that a U.S. patent will not be deemed filed in the United States for purposes of the subsection based on the filing of an international application filed under the patent cooperation treaty. Commentary suggests that this amendment was intended to make no changes to the law in giving prior art effect to U.S. patents as of their filing date. The PTO does not yet have an official position on the legal interpretation of this change.
Costs of publication are to be recovered by the PTO charging an additional publication fee after the notice of allowance.
It is noted that the interference provisions are changed so that a claim that is the same or substantially the same as a claim of an issued patent or a published application may only be made if made before one year after the date on which the patent is issued or the application is published, respectively.
The publication provisions discussed in this section take effect on November 29, 2000. They apply to all applications filed under Section 111 on or after that date, and all applications complying with Section 371 (national phase applications) resulting from international applications filed on or after November 29, 2000. The provisional rights and the prior art effect of published applications apply to any such application voluntarily published by applicants under these procedures that is pending on November 29, 2000.
Optional Inter Partes Reexamination Procedure
An additional reexamination procedure has been enacted in addition to the reexamination procedure currently in the U.S. Patent and Trademark Office. In other words, the new reexamination procedure does not replace the current reexamination procedure, but is an additional and optional reexamination procedure for third party requesters.
The new reexamination procedures allow for a greater participation for a third party requester during reexamination. Reexamination will still primarily be carried out between the PTO and the patent owner after determination of whether a substantial new question of patentability exists. Each time the patent owner files a response to an action on the merits from the PTO, the third party requester has one opportunity to file written comments addressing issues raised by the action of the PTO or the patent owners' response. The third party requester may appeal any final decision favorable to patentability of any original or proposed amended or new claim of the patent, and may be a party to any appeal taken by the patent owner to the PTO Board of Patent Appeals and Interferences. While the patent owner may appeal to the courts in a civil action, the third party requester may not appeal to the courts.
Further, the third party requester will be estopped from asserting, at a later time, the invalidity of any claim finally determined to be valid and patentable on any ground which the third party requester raised or could have raised during the inter partes reexamination proceedings. This does not prevent the assertion of invalidity based on newly discovered prior art that was unavailable to the third party requester and the PTO at the time of the inter partes reexamination proceedings.
In such inter partes reexamination, the patent owner may seek a stay of pending litigation that involves similar patentability issues.
These new provisions also limit appeals in reexaminations from the PTO Board of Patent Appeals and Interferences to the Court of Appeals for the Federal Circuit.
Inter partes reexamination provisions take effect as of November 29, 1999 and may apply to any patent that issues from an original application filed in the United States on or after November 29, 1999.
U.S. Patent and Trademark Office Reorganization
A large number of provisions have been enacted so as to reorganize the U.S. Patent and Trademark Office within the overall structure of the U.S. government. These provisions have been enacted so as to give the U.S. Patent and Trademark Office greater autonomy toward the goals of greater efficiency in carrying out its mission. These changes include renaming the Commissioner of the PTO as the "Director" and take effect on April 29, 2000.
Changes Regarding Provisional Applications
Section 111 has been amended to allow a provisional application to be converted to a utility application upon the filing of a timely request, even if there is no claim in the provisional application.
The period of pendency of a provisional application has been extended to the next succeeding business day if the twelve month period after the filing date of the provisional application falls on a Saturday, Sunday or federal holiday within the District of Columbia.
These changes to provisional application practice are effective as of November 29, 1999 and apply to any provisional application filed on or after June 8, 1995 except with respect to patents which are the subject of litigation in actions commenced before November 29, 1999.
Changes in Prior Art Activity and Interference Practice
35 U.S.C. § 102(g) has been amended to allow a party in an interference to establish a date of invention in a NAFTA or WTO member country, and such date of invention will have prior art effect in the interference if the invention was not abandoned, suppressed or concealed. This change essentially conforms the language of this section to the changes effected to 35 USC 104 as a result of GATT. Although not specifically indicated, we believe that this provision is effective for any interference declared on or after November 29, 1999.
Section 103(c) has been amended so that prior art which qualifies as prior art only under Subsection (e), as well as (f) or (g), of § 102 will not preclude patentability under § 103 if the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject of an obligation of assignment to the same person. In other words, if a reference is only a reference under 35 U.S.C. § 102(e), (f) or (g), and was commonly owned at the time of invention, it may no longer be used in an obviousness-type rejection under 35 U.S.C. § 103. This change applies to any application filed on or after November 29, 1999.
New First Inventor Defense
An additional defense to an accusation of infringement has been created. It is a defense in an action for infringement under § 271 of 35 U.S.C. if a person who, acting in good faith, would otherwise infringe one or more claims for a method of doing or conducting business had actually reduced the subject matter to practice at least one year before the effective filing date of the patent, and commercially used the subject matter before the effective filing date of the patent. However, please note that there are various additional limitations and qualifications on the defense. Nor does the defense create any additional categories of prior art for general use against such claims directed to a method of doing or conducting business. This provision has become effective as of November 29, 1999, exclusive of pending infringement actions and prior infringement adjudications.
The above are highlights of the various provisions that have been enacted. There are various additional provisions and technical details of the topics discussed above that are not specifically discussed or clarified herein. Please let us know if you need further information concerning any of the above subjects or the changes to the U.S. patent law in general. We expect that the U.S. Patent and Trademark Office will be issuing new rules in the future to implement the above provisions.
