The Remaining “To Do” List on Patent Reform: Consolidation and Optimization

Vol. 4 No. 5

By

Robert A. Armitage is chair of the ABA Section of Intellectual Property Law. He serves as senior vice president and general counsel at Eli Lilly and Company in Indianapolis, Indiana. He can be reached at armitage_robert_a@lilly.com.

The United States Patent and Trademark Office (USPTO) is marching along with the immense efforts needed to complete regulations to implement the Leahy-Smith America Invents Act (AIA). Within the patent profession—notably within the Patent Division of the ABA Section of Intellectual Property Law—there have  been prolific and heroic efforts to assist the USPTO in the rule writing needed to bring the AIA to life.

If there is one oft-expressed hope of many participants in the AIA’s legislative and regulatory phases, it is that successful conclusion of these efforts will yield a sustained period of reflection. “No New Patent Laws!”—at least not until the new law now on the books is digested and its impacts, for better or worse, are more fully understood.

I would offer a dissenting view—or perhaps a more nuanced one. There are, I believe, some near-term opportunities for further legislative intervention in the patent statute that would not require either rethinking or retreating from the reforms already enacted into law. Rather, they represent areas for further change that could consolidate the many achievements of the AIA and, indeed, optimize their potential for greater transparency, objectivity, predictability, and simplicity in the operation of the U.S. patent system.

Let’s start with a very simple proposal for refining legislation that cannot possibly be controversial in light of what the AIA has already achieved: eliminate altogether the required statement of the inventor under the new 35 U.S.C. 
§ 115 (the so-called “oath or declaration” requirement). In place of this archaic provision, augment the explicit requirement (already in new § 115) that the patent applicant must name the inventor by incorporating a further requirement that the patent applicant itself, if not the inventor, must provide an applicant’s express statement that it has obtained the right to file the application for patent from the inventor named in the application for patent. Since, for over 99 percent of patents filed, there is no real dispute over either the inventorship or the ownership, there is no real justification for any formality beyond a statutory requirement that the patent application identify both inventor and applicant.

Next, allow me to move to what should be regarded as a mere correction: remedying an oversight in the implementation of the AIA’s new first-inventor-to-file principle. The AIA failed to eliminate the option for a patent applicant to opt out of mandatory publication of pending application for patent at 18 months from the initial application filing. Congress should now do so. The soon-to-be-extinct first-to-invent system exposed the inventor of a patent application, once published, to the specter of a later-filing patent applicant, having been spurred by the publication, to seek to muscle its way into a patent interference with the published patent application by alleging an earlier invention date. All that nonsense in U.S. patent law will now end. With the new law now on the books, the 18-month publication of all pending patent filings benefits all patent applicants. In particular, it assures the patent application of any subsequently-filing inventor can be rejected by a patent examiner based upon the earlier-filed application, but only once that earlier application has published. Having ended any risk to the inventor of early publishing, keeping the option in place merely diminishes the transparency of the new law, without any policy justification for so doing.

“Patent term adjustment” is another feature of U.S. patent law whose policy justification has been mooted by virtue of the improvements in the patent examination process under the AIA. If, by 2013/2014, it is clear that patent applicants have access in the USPTO to an effective system for accelerating the examination of their patent applications, then electing the new “priority examination” option will better serve the interests of both patent applicants and the public than the belated remedy, for a slow-to-issue patent, of tacking time on to the end of the 20-year patent term.  For applicants electing a more leisurely approach to securing their patents, there is little policy justification for adding extra patent term. For applicants eager to get a patent to issue and wanting at least a 17-year post-issuance patent term, “priority examination” represents a mechanism that should be able to guarantee such eager applicants a route to issuance consuming no more than three years of that 20-year statutory term.

As the USPTO has moved forward with its new fee-setting responsibilities, it is clear that patent maintenance fees will remain one of its sustaining revenue sources. However, unlike many other countries in which maintaining a patent in force can be achieved through the annual payment of a modest fee, U.S. law has, since the inception of maintenance fees in 1979, required “pre-payment” of these fees. For example, at 11 years, six months after patent grant, a lump-sum fee must be paid to keep the patent in force for the remaining term of the patent. Fee-setting authority now gives the USPTO the flexibility it needs to move to annual maintenance fees on patents. Like the current fees, they can be progressive as the 20-year term runs, but without the 3-, 7-, and 11-year “choke points” of current law.

Another area of compromise along the AIA’s legislative journey that may now have matured into an area of consensus for further improvement relates to the “best mode” requirement. Congress nullified this requirement in the patent enforcement context, but left it untouched in the patent procurement context. This anomaly makes no sense and, indeed, there are hopeful signs that an emerging consensus on this point can lead to outright repeal through relatively swift legislative action.

The new law provided a grand compromise on the prior-user defense, putting the United States in greater alignment with the laws of other countries that protect a prior domestic commercialization of new technology from allegations of infringement of subsequently sought patents. The key feature of the compromise, which enabled universities to lend support for the AIA, was the exclusion of university-owned patents from the assertion of the defense. However, as the recent USPTO study of the use of this defense has now confirmed, U.S. law still falls short of international norms in three respects: (1) not recognizing completion of substantial efforts to commercialize as sufficient to trigger the defense, (2) the one-year hold-back provision after commercialization before the defense can be asserted, and (3) a limitation on the type of patent claims to which the defense applies. A new dialogue with the university community may yet produce a path forward to the consensus required to get these improvements enacted into law, perhaps forthwith.

Finally, it may be that the next Congress can make more explicit the implicit provisions of the AIA by enacting an express and categorical statutory bar to unenforceability pleadings based upon “inequitable conduct” allegations. In the patenting process dictated under the AIA—one that is open to the public, with public participation before and after the patent issues, and with the standards for determining patentability and patent validity turning almost entirely on information available to the public—a misconduct-based unenforceability doctrine imposed on otherwise valid and enforceable patent claims makes sense only if the misconduct in question infects the enforcement of the patent, i.e., is misconduct before the court perpetrated by an “unclean litigant.”

The sum and substance of the above changes plays on themes familiar to those involved in the six-year journey that produced the AIA: the best patent system is one that is the most transparent, most objective, most predictable, and most simple. If that be the case, nothing says that Congress needs to wait to make what is now the world’s best patent law even better. So, I would ask, “Why wait?”

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