ILNews

Gallagher: Does USPTO favor an international model?

December 4, 2013
Back to TopCommentsE-mailPrint
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

facebook - twitter on Facebook & Twitter

Indiana State Bar Association

Indianapolis Bar Association

Evansville Bar Association

Allen County Bar Association

Indiana Lawyer on Facebook

facebook
ADVERTISEMENT
Subscribe to Indiana Lawyer
  1. Frankly, it is tragic that you are even considering going to an expensive, unaccredited "law school." It is extremely difficult to get a job with a degree from a real school. If you are going to make the investment of time, money, and tears into law school, it should not be to a place that won't actually enable you to practice law when you graduate.

  2. As a lawyer who grew up in Fort Wayne (but went to a real law school), it is not that hard to find a mentor in the legal community without your school's assistance. One does not need to pay tens of thousands of dollars to go to an unaccredited legal diploma mill to get a mentor. Having a mentor means precisely nothing if you cannot get a job upon graduation, and considering that the legal job market is utterly terrible, these students from Indiana Tech are going to be adrift after graduation.

  3. 700,000 to 800,000 Americans are arrested for marijuana possession each year in the US. Do we need a new justice center if we decriminalize marijuana by having the City Council enact a $100 fine for marijuana possession and have the money go towards road repair?

  4. I am sorry to hear this.

  5. I tried a case in Judge Barker's court many years ago and I recall it vividly as a highlight of my career. I don't get in federal court very often but found myself back there again last Summer. We had both aged a bit but I must say she was just as I had remembered her. Authoritative, organized and yes, human ...with a good sense of humor. I also appreciated that even though we were dealing with difficult criminal cases, she treated my clients with dignity and understanding. My clients certainly respected her. Thanks for this nice article. Congratulations to Judge Barker for reaching another milestone in a remarkable career.

ADVERTISEMENT