The Mirror Has Two Faces: America Invents Act 1

Many business persons wonder how certain entities obtain United States patents for devices which are clearly not novel to their particular industries. The America Invents Act will assist you in this regard: Beginning September 16, 2012, third persons may submit evidence to a patent examiner that is relevant to a particular application’s patentability.

There are several wrinkles of which you should be aware before sending documents to the examiner under this new law. The documents must be patents, patent applications, or printed publications. The key here is the word ‘publication.’ If a document is not otherwise distributed, then it does not qualify for this pre-issuance submission process. Patents are necessarily publicly available, while most patent applications are publicly available at the patent office website, uspto.gov.

Other wrinkles include deadlines for submitting the above described evidence. The documents described above must be submitted prior to the earlier of (1) the patent office mailing of a notice of allowance for the patent application, or (2) the later of (i) six months after the date on which this particular application was initially published by the patent office, or (ii) the date of the initial rejection of a portion of the application. Although the person with the actual motivation for submitting the documents need not reveal a true identity, someone must sign the submission. A copy of each document or portions of a longer document such as a book, as well as a list of the documents must be included in the submission. There must also be a brief description of each document’s content and why this content is relevant to the patentability of the invention described in a particular pending application. There is a government fee for submission, and the patent applicant need not respond to the evidence submitted to the examiner. However, the examiner must (i) consider the evidence and (ii) thereafter document the patent office record that he or she has done so.

What about the plight of the patent applicant who is vulnerable because his application does not enjoy the legal presumption of validity of an actual patent? The good news is that an applicant may circumvent a possible deluge of third party submissions with a strategy initiated prior to filing the application. As part of that strategy the applicant must forfeit filing patent applications internationally, and upon a timely request the patent office will not publish the application. If the patent application is not published at uspto.gov, then there is no easy manner by which competitors may monitor pending patent applications for inventions that might interfere with their own products and methods. Furthermore, unpublished patent applications have confidential patent office histories. Consequently, it is almost impossible for competitors to determine filing deadlines from documents previously filed in the case, such as the initial rejection of at least one portion of a targeted application. On the other hand, if your application is published, then the public has access to all the documents in that case and can easily determine when to file adverse submissions.

If your business is a start-up or even medium sized, for an initial application on a product or method the best strategy is to file solely in the United States while your protection process is most fragile. In other words, the business persons should ask these questions. First, must the business scrape together funds to file a utility patent application in the United States? Secondly, can your business afford to defend a patent infringement lawsuit in the United States? If the answer to the first question is yes, and the second answer is no, then you should not invest in overseas filings in any event. Unfortunately, this is true even if there is a market for the products and methodologies in other countries.
© 2012 Adrienne B. Naumann
Ms. Naumann does not sponsor or endorse the advertisements at adriennebnaumann.wordpress.com.

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