This week I review the significant changes in United States patent law within the past twenty years. Business people should be aware of these changes because they affect the validity of patents they own or may subsequently acquire. Knowledge of these changes may also significantly affect your business’ strategic intellectual property strategy.
A relatively recent change is prohibition of certain method patents in the United States. Patent eligible methods must now include technology that is generally in the format of a machine relationship or transformation of tangible subject matter. However, other subject matter may be eligible even if it dos not follow this particular format. For example, patents are now longer valid if what they purport to protect are methods accomplished solely ‘with pencil and paper.’
Although a paper and pencil method is relatively straightforward, evaluations become trickier for applications that describe, for example, varying degrees of applied computer technology. For this reason patent eligibility for methods continues to develop and is extremely complex. Consequently, be sure that your patent attorney is knowledgeable of the most recent legal developments so your applications qualify as patent-eligible subject matter.
Another important change is the enforceable lifetime of your original filed patent application and certain subsequent related applications. Previously, the enforceable lifetime of a patent was seventeen years from the issue date, where the issue date is the date that the application became that patent. Now the enforceable lifetime is twenty years from the filing date of the application. The practical effect is that the effective patent lifetime is considerably shorter than twenty years, and under certain circumstances may be less than seventeen years. It also means that for certain subsequently filed related applicants, the lifetime of later applications become progressively shorter because the effective filing date remains the original filing date of the first application in the series.
Another relatively recent change is implementation of United States provisional patent applications. We have addressed provisional patent applications in previous articles. Still another significant change is the publication of United States patent applications. Patent applications are automatically published at uspto.gov approximately eighteen months after filing, unless the applicant requests non-publication upon initial filing of the application. If the applicant requests non–publication, then there is forfeiture of the right to file for patent protection in most foreign countries. However, if there is no timely affirmative non–publication request, the applicant forfeits confidentiality of the application that is published globally whether or not a patent issues in the United States. Any trade secrets in the published application are also dissipated at this time. The remedy for infringement during the application is retroactive upon obtaining a patent, but circumstances under which this remedy is actionable are extremely limited.
Business people should also be aware of a likely fundamental change in the priority of the right to patent in the United States in near future. There is pending Congressional legislation by which the first inventor to file an application would be entitled to the patent for the invention. Currently the law requires that the first inventor to invent the invention is entitled to the patented invention, even if the first inventor is not first to file the application (with, however, several important exceptions).
© 2011 Adrienne B. Naumann
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