IP Law Bulletin

The American Invents Act (AIA) represents the most significant overhaul of the U.S. patent system in more than half a century. Several provisions of the AIA took effect upon enactment in September 2011, and many more became effective in September 2012. However, some of the most significant changes are scheduled to take effect on March 16, 2013. Included among these are the provisions of the AIA that will switch the U.S. patent system from a "first to invent" system to a "first inventor to file" system. These provisions include amendments to 35 U.S.C. §§ 102 and 103, among others, and will be accompanied by several changes to the rules and regulations of the U.S. Patent and Trademark Office (PTO). In July 2012, the PTO published a proposed rulemaking of changes necessary to implement the first inventor to file provisions of the AIA, and a final rulemaking is expected in the coming weeks.

Yesterday, January 14, 2013, President Obama signed into law a technical amendment bill aimed at making mostly technical corrections to the AIA. The bill was passed by both houses of the 112th Congress just before completing their terms. The provisions of the law likely to have the most significant impact on practitioners relate to the timing for filing an inventor's oath or declaration and the elimination of a nine month "dead zone" period for filing inter partes reviews for certain patent applications. The law allows an inventor's oath or declaration to be filed through the date the application's issue fee is paid. The law also allows inter partes reviews to be filed against a patent immediately after the patent issues if the corresponding application only claims subject matter filed with the United States Patent and Trademark Office before March 16, 2013, i.e., the patent is ineligible to be challenged using the newly created post-grant review. A similar "dead zone" was also eliminated for certain reissue patents. Two more controversial issues initially raised in the technical amendment bill pertaining to the treatment of "pre-GATT" patent applications that have been pending since 1995 and estoppel for post-grant review challenges extending to "any ground that the petitioner raised or reasonably could have raised during that post-grant review," (emphasis added) were eliminated from the bill before it was passed and signed into law, but may be addressed by the 113th Congress.

In the United States, where an inventor must assign ownership of patent rights to his or her employer or another company, he or she signs an assignment document that can be recorded at the United States Patent and Trademark Office. This document is often executed early in the pendency of the application and can control ownership rights of the U.S. application, any later-filed "children" U.S. applications, and foreign applications such as Patent Cooperation Treaty (PCT) applications. However, due to differences between U.S. and European law, the assignment may not be sufficient in Europe—and errors cannot be fixed retroactively.

OK, let's go over it again—just because you hire and pay someone to write something for you, or to design a logo or a website, or to paint a portrait of the family dog, it does NOT mean that you own the copyright in the writing, logo, or canine portrait. You DO OWN the physical object you paid for, but you CANNOT make copies of it.

In Deere and Co. v. Bush Hog, LLC, the Federal Circuit recently revisited a district court's claim construction and reviewed the court's failure to apply the doctrine of equivalents. In doing so, the Federal Circuit provided additional guidance on how courts should apply the doctrine of equivalents and claim vitiation. Some have opined that decisions like those in Deere potentially breathe new life into the doctrine of equivalents.

The Supreme Court unanimously affirmed the dismissal of a challenge to the validity of a trademark in view of the mark owner's unilaterally issued "Covenant Not to Sue." In Already, L.L.C. v. Nike, Inc., Nike accused Already of infringing a trademark on its Air Force 1 sneakers, to which Already responded by alleging Nike's mark was invalid. Nike decided to drop its claims in conjunction with unilaterally issuing a "Covenant Not to Sue," promising not to raise any trademark or unfair competition claims against Already or any affiliated entity based on any of Already's existing footwear designs, or any future Already designs that constituted a "colorable imitation" of Already's current products. Nike relied on its "Covenant Not to Sue" to request that Already’s validity counterclaim also be dismissed because the covenant extinguished any case or controversy; Already desired to maintain its counterclaim of invalidity. The Supreme Court agreed with Nike, affirming the lower court's decision to dismiss Already's counterclaim. The Court ruled that there was no reasonable chance a dispute could ever arise related to the rights at issue between the parties in view of Nike's issued covenant. As a result, the Court concluded that Already lacked standing to challenge the validity of Nike's mark. Practitioners and clients should look to the text of Nike's covenant not to sue for guidance in crafting similar covenants to prevent later attacks against their intellectual property rights.

In the wake of the United States falling in line with the rest of the world by changing to a "first inventor to file" system on March 16, Europe has made significant progress in establishing both a unified European patent and a unified patent court. Recently, the European Parliament voted to create a Unified Patent that can be enforced in any of the 25 member states without requiring patent owners to register in each individual country. Thus, the system would save patent applicants from having to validate a patent granted by the European Patent Office (EPO) in each member state, thereby eliminating local fees and translation costs. Additionally, the European Parliament voted to create a Unified Patent Court to help enforce the Unified Patent, and to help provide greater consistency in proceedings and judgments across the member states. While the Unified Patent and Unified Patent Court are not law yet, it is anticipated that the necessary member state approval process can begin as early as February 18, 2013. In particular, 13 European Union (EU) member states must ratify the Unified Patent and Unified Patent Court, and those 13 member states must include France, Germany, and the United Kingdom. Member states may opt out of the system. The EPO anticipates validating the first Unified Patent in 2014.