ILNews

Gallagher: Does USPTO favor an international model?

December 4, 2013
Back to TopCommentsE-mailPrintBookmark and Share
gallagher Gallagher

Those who have been paying attention to United States patent law have noticed considerable changes over the past two years. These changes have even become interesting enough to periodically appear on mainstream news and media programs.

Changes abound under 2011 America Invents Act

During the last one to two years, Title 35 – the portion of the U.S. code governing patent law – has undergone its most substantial overhaul in almost 60 years (and arguably since its inception) with the implementation of the 2011 Leahy-Smith America Invents Act (also known as the AIA). Amendments to fundamental portions of U.S. patent law have changed the ability of inventors to obtain patent protection for their inventions. In many ways, these changes can be seen as a movement away from the traditional and more equity-focused U.S. model toward a more rule-based international/European model. Many of the new provisions reflect this movement.

The most notable of these new provisions changes U.S. patent law from a “first-to-invent” system to a “first-to-file” system. In the prior first-to-invent system, if two people made the same invention around the same time, the person who made the invention first would receive the benefit of getting the 20-year monopoly provided under U.S. patent law. In the new first-to-file system, the person who filed a patent application first would receive the benefit of getting the 20-year monopoly. However, there appear to be more subtle changes geared toward an international/European model that could substantially affect an inventor’s ability to obtain a patent in the United States, although these changes could be limited in duration.

Obtaining a patent

To obtain a patent, an inventor must file an application with the U.S. Patent and Trademark Office. The patent includes two parts: the description and the claims. The description uses relatively common language to describe the objects that make up at least one version of the invention. The claims are the relatively obtuse, numbered sentences that appear on the last pages of a printed patent and are what define the metes and bounds of a granted patent, much like the text that describes the borders of real property. Examiners at the USPTO read the patent, search through old patents and other printed materials for similar technology, and make a determination whether the invention is merely an obvious advance over existing technology. If the invention is an obvious advance, a patent will not be granted. However, the inventor will be given an opportunity to amend the claims – the metes and bounds of the invention – to describe something that is more than an obvious advance over existing technology.

Changing the claims of a patent

The inventor’s ability to change the claims is limited by how the invention was described in the rest of the patent application. Claim amendments cannot introduce something that was not described in the original application. Under traditional U.S. patent law (35 U.S.C. § 112), changes to the claims of a patent are allowed if a person of ordinary skill in the field of the invention would have understood that the inventor had invented the material now being included in the patent claim. In contrast, European law (Article 123(2) of the European Patent Code) requires explicit, almost verbatim support for any claim amendments, which results in a reduced ability for the inventor to change the claims after filing when compared to the U.S. system. While there does not appear to have been any specific law or rule change, there nevertheless appears to be a shift underway moving the procedures governing examination of patents at the USPTO toward the more restrictive international/European model.

The 4-legged chair: an example

Imagine that a person invented a chair with four legs, and the patent application describes two versions of the four-legged chair: a four-legged chair with a back, and a four-legged chair with armrests. If the inventor wanted to change the claims because the patent office said that both a four-legged chair with a back and a four-legged chair with armrests were obvious advancements over prior technology, the inventor would have a different result depending on whether the U.S. or the international/European model was used. In this example there is no explicit support in the description for a four-legged chair with a back and armrests, so this change to the claims would likely be denied under the international/European model resulting in the inventor being unable to obtain a patent for the invention. However, since an ordinary person reading the description would likely believe the inventor had invented a four-legged chair with a back and armrests, this change to the claims would likely be allowed under the U.S. model, enabling the inventor to obtain a patent for the invention.

The statute governing this portion of U.S. law was not substantively changed with the AIA, so the courts will likely resist shifts away from the traditional U.S. model for determining whether support exists in the specification for the claims. Moreover, many of the recent U.S. Supreme Court decisions related to patent law appear to prefer a more holistic approach to applying patent law instead of the more structured international/European model. The U.S. Supreme Court’s 2007 KSR v. Teleflex decision is a good example in which a more bright-line formula developed by the Federal Circuit for determining whether a claimed invention was obvious was overruled in favor of a standard that relies more on the totality of evidence. However, there is also an undercurrent in U.S. politics that appears to believe U.S. patent law is somehow broken (a viewpoint to which I do not subscribe), so this section of U.S. patent law could potentially be modified by Congress at some point.

While there has been a definite shift toward a more international/European model in certain aspects of U.S. patent law, it appears that some of the old ways of U.S. law, which include a fair dose of equity and fairness, may not wholeheartedly embrace the more formulaic approach of the international/European model. Only time will tell how this plays out.•

__________

Douglas Gallagher is an attorney with Bingham Greenebaum Doll LLP. A registered patent attorney with degrees in physics and aerospace engineering, he focuses his practice on assisting new and established businesses with protecting their intellectual property assets while avoiding the intellectual property rights of others. He can be reached at 317-968-5543 or at dgallagher@bgdlegal.com. The opinions expressed are those of the author.

ADVERTISEMENT

Post a comment to this story

COMMENTS POLICY
We reserve the right to remove any post that we feel is obscene, profane, vulgar, racist, sexually explicit, abusive, or hateful.
 
You are legally responsible for what you post and your anonymity is not guaranteed.
 
Posts that insult, defame, threaten, harass or abuse other readers or people mentioned in Indiana Lawyer editorial content are also subject to removal. Please respect the privacy of individuals and refrain from posting personal information.
 
No solicitations, spamming or advertisements are allowed. Readers may post links to other informational websites that are relevant to the topic at hand, but please do not link to objectionable material.
 
We may remove messages that are unrelated to the topic, encourage illegal activity, use all capital letters or are unreadable.
 

Messages that are flagged by readers as objectionable will be reviewed and may or may not be removed. Please do not flag a post simply because you disagree with it.

Sponsored by
ADVERTISEMENT
Subscribe to Indiana Lawyer
  1. Im very happy for you, getting ready to go down that dirt road myself, and im praying for the same outcome, because it IS sometimes in the childs best interest to have visitation with grandparents. Thanks for sharing, needed to hear some positive posts for once.

  2. Been there 4 months with 1 paycheck what can i do

  3. our hoa has not communicated any thing that takes place in their "executive meetings" not executive session. They make decisions in these meetings, do not have an agenda, do not notify association memebers and do not keep general meetings minutes. They do not communicate info of any kind to the member, except annual meeting, nobody attends or votes because they think the board is self serving. They keep a deposit fee from club house rental for inspection after someone uses it, there is no inspection I know becausee I rented it, they did not disclose to members that board memebers would be keeping this money, I know it is only 10 dollars but still it is not their money, they hire from within the board for paid positions, no advertising and no request for bids from anyone else, I atteended last annual meeting, went into executive session to elect officers in that session the president brought up the motion to give the secretary a raise of course they all agreed they hired her in, then the minutes stated that a diffeerent board member motioned to give this raise. This board is very clickish and has done things anyway they pleased for over 5 years, what recourse to members have to make changes in the boards conduct

  4. Where may I find an attorney working Pro Bono? Many issues with divorce, my Disability, distribution of IRA's, property, money's and pressured into agreement by my attorney. Leaving me far less than 5% of all after 15 years of marriage. No money to appeal, disabled living on disability income. Attorney's decision brought forward to judge, no evidence ever to finalize divorce. Just 2 weeks ago. Please help.

  5. For the record no one could answer the equal protection / substantive due process challenge I issued in the first post below. The lawless and accountable only to power bureaucrats never did either. All who interface with the Indiana law examiners or JLAP be warned.

ADVERTISEMENT