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Gallagher: Does USPTO favor an international model?

December 4, 2013
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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.•

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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.

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  1. California Sex Offender Management Board (CASOMB) End of Year Report 2014. (page 13) Under the current system many local registering agencies are challenged just keeping up with registration paperwork. It takes an hour or more to process each registrant, the majority of whom are low risk offenders. As a result law enforcement cannot monitor higher risk offenders more intensively in the community due to the sheer numbers on the registry. Some of the consequences of lengthy and unnecessary registration requirements actually destabilize the life’s of registrants and those -such as families- whose lives are often substantially impacted. Such consequences are thought to raise levels of known risk factors while providing no discernible benefit in terms of community safety. The full report is available online at. http://www.casomb.org/index.cfm?pid=231 National Institute of Justice (NIJ) US Department of Justice Office of Justice Programs United States of America. The overall conclusion is that Megan’s law has had no demonstrated effect on sexual offenses in New Jersey, calling into question the justification for start-up and operational costs. Megan’s Law has had no effect on time to first rearrest for known sex offenders and has not reduced sexual reoffending. Neither has it had an impact on the type of sexual reoffense or first-time sexual offense. The study also found that the law had not reduced the number of victims of sexual offenses. The full report is available online at. https://www.ncjrs.gov/app/publications/abstract.aspx? ID=247350 The University of Chicago Press for The Booth School of Business of the University of Chicago and The University of Chicago Law School Article DOI: 10.1086/658483 Conclusion. The data in these three data sets do not strongly support the effectiveness of sex offender registries. The national panel data do not show a significant decrease in the rate of rape or the arrest rate for sexual abuse after implementation of a registry via the Internet. The BJS data that tracked individual sex offenders after their release in 1994 did not show that registration had a significantly negative effect on recidivism. And the D.C. crime data do not show that knowing the location of sex offenders by census block can help protect the locations of sexual abuse. This pattern of noneffectiveness across the data sets does not support the conclusion that sex offender registries are successful in meeting their objectives of increasing public safety and lowering recidivism rates. The full report is available online at. http://www.jstor.org/stable/full/10.1086/658483 These are not isolated conclusions but are the same outcomes in the majority of conclusions and reports on this subject from multiple government agencies and throughout the academic community. People, including the media and other organizations should not rely on and reiterate the statements and opinions of the legislators or other people as to the need for these laws because of the high recidivism rates and the high risk offenders pose to the public which simply is not true and is pure hyperbole and fiction. They should rely on facts and data collected and submitted in reports from the leading authorities and credible experts in the fields such as the following. California Sex Offender Management Board (CASOMB) Sex offender recidivism rate for a new sex offense is 0.8% (page 30) The full report is available online at http://www.cdcr.ca.gov/Adult_Research_Branch/Research_Documents/2014_Outcome_Evaluation_Report_7-6-2015.pdf California Sex Offender Management Board (CASOMB) (page 38) Sex offender recidivism rate for a new sex offense is 1.8% The full report is available online at. http://www.google.com/url?sa= t&source=web&cd=1&ved= 0CCEQFjAA&url=http%3A%2F% 2Fwww.cdcr.ca.gov%2FAdult_ Research_Branch%2FResearch_ documents%2FOutcome_ evaluation_Report_2013.pdf&ei= C9dSVePNF8HfoATX-IBo&usg=AFQjCNE9I6ueHz-o2mZUnuxLPTyiRdjDsQ Bureau of Justice Statistics 5 PERCENT OF SEX OFFENDERS REARRESTED FOR ANOTHER SEX CRIME WITHIN 3 YEARS OF PRISON RELEASE WASHINGTON, D.C. Within 3 years following their 1994 state prison release, 5.3 percent of sex offenders (men who had committed rape or sexual assault) were rearrested for another sex crime, the Justice Department’s Bureau of Justice Statistics (BJS) announced today. The full report is available online at. http://www.bjs.gov/content/pub/press/rsorp94pr.cfm Document title; A Model of Static and Dynamic Sex Offender Risk Assessment Author: Robert J. McGrath, Michael P. Lasher, Georgia F. Cumming Document No.: 236217 Date Received: October 2011 Award Number: 2008-DD-BX-0013 Findings: Study of 759 adult male offenders under community supervision Re-arrest rate: 4.6% after 3-year follow-up The sexual re-offense rates for the 746 released in 2005 are much lower than what many in the public have been led to expect or believe. These low re-offense rates appear to contradict a conventional wisdom that sex offenders have very high sexual re-offense rates. The full report is available online at. https://www.ncjrs.gov/pdffiles1/nij/grants/236217.pdf Document Title: SEX OFFENDER SENTENCING IN WASHINGTON STATE: RECIDIVISM RATES BY: Washington State Institute For Public Policy. A study of 4,091 sex offenders either released from prison or community supervision form 1994 to 1998 and examined for 5 years Findings: Sex Crime Recidivism Rate: 2.7% Link to Report: http://www.oncefallen.com/files/Washington_SO_Recid_2005.pdf Document Title: Indiana’s Recidivism Rates Decline for Third Consecutive Year BY: Indiana Department of Correction 2009. The recidivism rate for sex offenders returning on a new sex offense was 1.05%, one of the lowest in the nation. In a time when sex offenders continue to face additional post-release requirements that often result in their return to prison for violating technical rules such as registration and residency restrictions, the instances of sex offenders returning to prison due to the commitment of a new sex crime is extremely low. Findings: sex offenders returning on a new sex offense was 1.05% Link to Report: http://www.in.gov/idoc/files/RecidivismRelease.pdf Once again, These are not isolated conclusions but are the same outcomes in the majority of reports on this subject from multiple government agencies and throughout the academic community. No one can doubt that child sexual abuse is traumatic and devastating. The question is not whether the state has an interest in preventing such harm, but whether current laws are effective in doing so. Megan’s law is a failure and is destroying families and their children’s lives and is costing tax payers millions upon millions of dollars. The following is just one example of the estimated cost just to implement SORNA which many states refused to do. From Justice Policy Institute. Estimated cost to implement SORNA Here are some of the estimates made in 2009 expressed in 2014 current dollars: California, $66M; Florida, $34M; Illinois, $24M; New York, $35M; Pennsylvania, $22M; Texas, $44M. In 2014 dollars, Virginia’s estimate for implementation was $14M, and the annual operating cost after that would be $10M. For the US, the total is $547M. That’s over half a billion dollars – every year – for something that doesn’t work. http://www.justicepolicy.org/images/upload/08-08_FAC_SORNACosts_JJ.pdf. Attempting to use under-reporting to justify the existence of the registry is another myth, or a lie. This is another form of misinformation perpetrated by those who either have a fiduciary interest in continuing the unconstitutional treatment of a disfavored group or are seeking to justify their need for punishment for people who have already paid for their crime by loss of their freedom through incarceration and are now attempting to reenter society as honest citizens. When this information is placed into the public’s attention by naive media then you have to wonder if the media also falls into one of these two groups that are not truly interested in reporting the truth. Both of these groups of people that have that type of mentality can be classified as vigilantes, bullies, or sociopaths, and are responsible for the destruction of our constitutional values and the erosion of personal freedoms in this country. I think the media or other organizations need to do a in depth investigation into the false assumptions and false data that has been used to further these laws and to research all the collateral damages being caused by these laws and the unconstitutional injustices that are occurring across the country. They should include these injustices in their report so the public can be better informed on what is truly happening in this country on this subject. Thank you for your time.

  2. Freedom as granted in the Constitution cannot be summarily disallowed without Due Process. Unable to to to the gym, church, bowling alley? What is this 1984 level nonsense? Congrats to Brian for having the courage to say that this was enough! and Congrats to the ACLU on the win!

  3. America's hyper-phobia about convicted sex offenders must end! Politicians must stop pandering to knee-jerk public hysteria. And the public needs to learn the facts. Research by the California Sex Offender Management Board as shown a recidivism rate for convicted sex offenders of less than 1%. Less than 1%! Furthermore, research shows that by year 17 after their conviction, a convicted sex offender is no more likely to commit a new sex offense than any other member of the public. Put away your torches and pitchforks. Get the facts. Stop hysteria.

  4. He was convicted 23 years ago. How old was he then? He probably was a juvenile. People do stupid things, especially before their brain is fully developed. Why are we continuing to punish him in 2016? If he hasn't re-offended by now, it's very, very unlikely he ever will. He paid for his mistake sufficiently. Let him live his life in peace.

  5. This year, Notre Dame actually enrolled an equal amount of male and female students.

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