IP Law Bulletin

On May 19, 2013, the USPTO launched the After Final Consideration Pilot 2.0 (AFCP), thereby extending and revising the original After Final Consideration Pilot that was implemented in March, 2012. Designed to further the goal of compact prosecution, the AFCP 2.0 provides examiners with additional time to consider applicant responses after a final rejection. Under the new version of the program, examiners will utilize the additional time to interview and discuss their thinking with applicants even if a response does not place an application in condition for allowance. Applicants and practitioners can use this program to avoid filing a Request for Continued Examination to have amendments considered and allowed. To do so, applicants must submit a response under 37 C.F.R. § 1.116 that includes a non-broadening amendment to at least one independent claim, along with a request under the pilot program. The AFCP 2.0 will run until September 30, 2013, and further details are available at the links below.

Industry standards can lower costs and increase interoperability between related technologies. These standards are developed by standard setting organizations (SSOs), which are voluntary membership groups that often include leaders in the particular field. Given the individual development efforts that precede the establishment of an industry standard, individual SSO members often have patents covering one or more aspects of the standard. If an SSO member has a patent covering an essential aspect of an industry standard, the SSO will require either licensing assurance or a disclaimer that the claims of the so-called standard essential patent (SEP) will not be enforced. Such a licensing assurance must be on terms that are described as “reasonable and non-discriminatory,” or RAND. The equally non-enlightening term “fair” is often added to this description, making the acronym FRAND. The purpose of the RAND guarantee is to encourage widespread adoption of the standard because once a standard is adopted, patents covering the standard can have greatly increased market power.

Although the provisions of the Leahy-Smith American Invents Act creating the micro entity status went into effect on September 16, 2011, patent applicants poised to benefit from the newly created status could not obtain the 75% discount because fee schedules including the reduced rates had not been issued by the United States Patent and Trademark Office. Starting March 19, 2013, however, applicants qualifying as micro entities can pay reduced fees for many filings, including: prioritized examinations, utility application filing fees, requests for continued examination, notices of appeal, ex parte reexaminations, supplemental examinations, issue fees, maintenance fees, excess claim fees, and extension fees.

In response to growing litigation costs, overseas manufacturing centers, and growing jurisdictional challenges to patent suits, the United States International Trade Commission (ITC) provides an attractive alternative to district court litigation for patent infringement cases. But to bring a complaint in the ITC, a complainant cannot be a true non-practicing entity. Rather, they must meet the Domestic Industry requirement of §337 of the Tariff Act of 1930 (as amended). Generally, in this world of patent enforcement entities, or companies formed solely for the purpose of enforcing patents, the Domestic Industry requirement can be a gating issue to an attractive enforcement strategy.

There are two main types of marital property regimes in the United States: “separate property” (followed by most common law countries and the majority of states in the U.S.) and “community property” (followed by most civil law countries and currently followed by nine states in the U.S.¹). In “separate property” states, property acquired by a spouse during marriage is that person’s own separate property. In “community property” states, on the other hand, each spouse has a present, vested, one-half ownership interest in all property acquired by either spouse during the marriage. Patent ownership is governed by state law, and in community property states, patents acquired during marriage are owned equally by both spouses. Each state’s law, however, is different, with some states recognizing the property at the time of conception, and others recognizing it some time later, perhaps not until filing or not until the patent issues.

Claiming an apparatus in terms of what it does, referred to as “functional claim language,” rather than the structure of the apparatus itself, is a common and useful claim drafting technique. The way the functional language is recited, however, can determine whether the claim covers any device capable of performing the function, or only devices designed or made to perform the function.

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.

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.