Gallagher: Does USPTO favor an international model?

December 4, 2013
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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 The opinions expressed are those of the author.


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  1. I have an open CHINS case I failed a urine screen I have since got clean completed IOP classes now in after care passed home inspection my x sister in law has my children I still don't even have unsupervised when I have been clean for over 4 months my x sister wants to keep the lids for good n has my case working with her I just discovered n have proof that at one of my hearing dcs case worker stated in court to the judge that a screen was dirty which caused me not to have unsupervised this was at the beginning two weeks after my initial screen I thought the weed could have still been in my system was upset because they were suppose to check levels n see if it was going down since this was only a few weeks after initial instead they said dirty I recently requested all of my screens from redwood because I take prescriptions that will show up n I was having my doctor look at levels to verify that matched what I was prescripted because dcs case worker accused me of abuseing when I got my screens I found out that screen I took that dcs case worker stated in court to judge that caused me to not get granted unsupervised was actually negative what can I do about this this is a serious issue saying a parent failed a screen in court to judge when they didn't please advise

  2. I have a degree at law, recent MS in regulatory studies. Licensed in KS, admitted b4 S& 7th circuit, but not to Indiana bar due to political correctness. Blacklisted, nearly unemployable due to hostile state action. Big Idea: Headwinds can overcome, esp for those not within the contours of the bell curve, the Lego Movie happiness set forth above. That said, even without the blacklisting for holding ideas unacceptable to the Glorious State, I think the idea presented above that a law degree open many vistas other than being a galley slave to elitist lawyers is pretty much laughable. (Did the law professors of Indiana pay for this to be published?)

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  5. I had a hospital and dcs caseworker falsify reports that my child was born with drugs in her system. I filed a complaint with the Indiana department of health....and they found that the hospital falsified drug screens in their investigation. Then I filed a complaint with human health services in Washington DC...dcs drug Testing is unregulated and is indicating false positives...they are currently being investigated by human health services. Then I located an attorney and signed contracts one month ago to sue dcs and Anderson community hospital. Once the suit is filed I am taking out a loan against the suit and paying a law firm to file a writ of mandamus challenging the courts jurisdiction to invoke chins case against me. I also forwarded evidence to a u.s. senator who contacted hhs to push an investigation faster. Once the lawsuit is filed local news stations will be running coverage on the situation. Easy day....people will be losing their jobs soon...and judge pancol...who has attempted to cover up what has happened will also be in trouble. The drug testing is a kids for cash and federal funding situation.