Full speed ahead and d— the torpedos: Patent Reform Act

Pending Congressional legislation will substantially alter the manner in which patents are obtained and owned in the United States. Because of this Patent Reform Act, business owners should be aware of important changes that will affect their inventions in the near future.

As most persons are aware, only one person (or entity) is entitled to the single patent for a specific invention. This is true even if several persons invented the same subject matter in a particular time frame. For many years, first to invent disputes were resolved in the patent office by an administrative proceeding known as interference. During an interference the decision makers resolve who was actually first to invent, and y that person was entitled to the patent; this was generally the result, even if a person was not the first to file an application. However, under the Patent Reform Act interferences are no longer necessary, because the presumption becomes that the first inventor to file an application is entitled to the patent.

This change will bring the United States patent system into conformity with patent law of all other nations, because now the first person to file is presumed to be the first person to invent. Any contention to the contrary must be resolved in what is newly designated as a derivation proceeding. In this proceeding, the patent office resolves contentions about the bona fides of inventorship of the first person to file an application.

Another important change applies to the one year grace period prior to filing United States applications under certain circumstances. Under these circumstances specific kinds of events immediately trigger a one year filing deadline for filing an application in the patent office. Suppose an inventor initially offers to sell a new kind of orthopedic walker on April 6, 2010. That inventor has exactly one year to file the application or otherwise forfeit rights to the invention, because a qualifying offer for sale triggers the one year filing deadline.

This example assumes that no other earlier deadlines were triggered by: public use, printed publications, sales, disclosure in printed publications, filing for patent protection in other countries or other public availability. This example also assumes that third persons, legally unrelated to the inventor, have not engaged in any of the above activities earlier than the inventor’s initial offer for sale date.

Prior to the Patent Reform Act, what is the result if a journal article describing the identical walker appears in 2008, and the article is written by someone other than the inventor? Assuming sufficient disclosure of the walker, this article will bar a patent because there was a printed publication more than one year prior to an application filing date of April 7, 2011. However, if the article was published within the one year period, the inventor/applicant may submit evidence to the patent office that the walker was invented prior to the article’s publication date.

Under the Patent Reform Act, disclosures by the inventor/applicant within the one year period still will not bar an application for the same walker. However, this is no longer the result when the same invention is disclosed by an unrelated third person during this one year period. Instead, disclosures of third persons, such as the article about a walker, will now bar the inventor’s application. This means that the one year period for filing the application will no longer protect the inventor/applicant from disclosures by unrelated persons that occur (i) during that one year period and (ii) prior to the inventor’s own disclosure of the walker.

© 2011 Adrienne B. Naumann
Ms. Naumann does not endorse or sponsor the advertisements at adriennebnaumann.wordpress.com.

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