In an attempt to make the late submission of IDSes less costly, the Patent Office is instituting a pilot program to extend the ability to submit an Information Disclosure Statement under 37 C.F.R. 1.97(d) to after the payment of the issue fee.  The pilot program starts on Wednesday, March 16, 2012, and is slated to end September 30, 2012.  However, the process is somewhat complex, and unlikely to be much used.

The Patent Office issued a Press Release, and published the Federal Register Notice that includes all the rules.

Submission of such an IDS will require:

1.  New transmittal form PTO/SB/09 which will be made available as a PTO form. (currently not there, I will update the link when it is added)

2.  IDS including IDS submission fee ($180)

3.  Declaration under 1.97(e)(1) or (2) that:

• That each item of information contained in the information disclosure statement was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the information disclosure statement; or
• That no item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the information disclosure statement was known to any individual designated in § 1.56(c) more than three months prior to the filing of the information disclosure statement.

4.  A Petition to Withdraw from issue after payment of issue under 37 CFR 1.313(c)(2), including fee ($130)

5.  A Request for Continued Examination (RCE) form, including fee ($930/$465)

The Examiner will, upon review of the IDS, determine whether prosecution needs to be reopened.  If so, the RCE will be entered, and prosecution will be reopened.  However, the IDS fee will not be refunded.

If the Examiner determines that the IDS does not raise new issues, the Examiner will issue a Corrected Notice of Allowability, indicating that the IDS has been considered.  The RCE fee will be refunded.  There will be no need to respond to the corrected Notice of Allowability, the case will automatically progress to issue.

So the new policy effectively requires exactly the same process as you would use now, upon receiving a late reference, except that the Patent Office will treat the RCE request as conditional, and will refund the RCE fee if they determine that the references do not raise new issues.

As a general policy, we do not recommend the use of declarations under 1.97(e)(2) because it requires “reasonable inquiry” that no one associated with the case was aware of any of the references.  There is a real risk that someone, maybe an inventor who is no longer with the assignee, was aware of a reference.  However, a declaration under 1.97(e)(1) only requires is a reference from a foreign patent office in a computerpart foreign application.  Unfortunately, that does not include related patent applications, whether U.S. or foreign, only references from  foreign counterpart applications.

There are two potential advantages to this procedure.  First, there is the savings of the RCE fee, a savings of between $750 and $285, since the IDS fee is now required).  Second, any such submission will be placed on the examiner’s “expedited” stack. Currently the wait for RCE responses has been increasing drastically, due to the pressure on Examiners to reduce wait time for the first office action.  Thus, being on the expedited stack may be a significant time advantage.  Despite these advantages I don’t think this procedure will significantly change existing practice, or help with the excessive RCEs.

I will update this post after the hearing, or potentially during the hearing if network is accessible. I expect that my opinions will not get much traction, since the Patent Office isn’t a big fan of small inventors, but I do intend to express my dislike of the huge increases in RCE fees & Appeal fees.

I would much rather have the fees shifted to either larger patents (e.g. patent size fees increased by a lot more) or shifted to maintenance fees. If you have opinions about the fees, and want to have input, attend a hearing, or write to the Patent Office. Let your voice be heard.

The first challenge to the America Invents Act is against the termination of the private right to enforce false marking. The end to false marking, providing that the only private litigants with a claim are competitors who can show actual harm, became effective immediately after President Obama signed the America Invents Act. It applied to all cases, including those pending. Since then, numerous cases have been dismissed, including some sua sponte.

Ken Brooks had a pending case against Dunlop Manufacturing, in the Northern District of California, San Francisco for false marking, filed back in 2010. In response to Dunlop’s Motion to Dismiss, under the new America Invents Act rules, Mr. Brooks brings a constitutional challenge to the AIA. In his memorandum Mr. Brooks states that he relied upon the statutory right which existed prior to the passage of the AIA, and that this destroyed an existing property interest. He cites to U.S. ex re. Stevens v. State of Vermont Agency of Natural Resources (162 F.3d 195, 2nd Circuit 1998) which held that qui tam plaintiffs have a private property interest in the outcome of such cases.

While the brief is written rather flamboyantly, and likely to appeal to lay readers not the judge, the point is interesting. Mr. Brooks did in fact invest some amount of money in pursuing this case, in the clear expectation of recovery, if he could prove a violation of the false marking act.

Of course, the Supreme Court held unanimously in the United States v. Carlton that retroactive tax laws were constitutional, thus making it unlikely that Brooks would succeed in his claim.

Furthermore, there are at least two cases that held that qui tam actions for false marking are unconstitutional, prior to the passage of the America Invents Act. This may mean that the court would find the act a mere clarification of an existing standard.

The more interesting question is whether, if any challenge is successful, the entire statute would be thrown out, since the America Invents Act does not include a severability clause.

Via Greg Aharonian‘s eponymous newsletter.

I’m trying to figure out corner cases under the new America Invents Act rules. In most cases, people won’t be directly affected by the rule change, but I can see the below four scenarios coming up.

• Scenario #1: Inventor A invents and immediately discloses (by publishing in obscure journal). Inventor B invents, and files a patent application, but does not disclose. Inventor A files a patent application, after Inventor B. Who if anyone gets a patent?
• Scenario #2: If Inventor A and Inventor B both disclose at the same conference. Both then file a patent, Inventor A files before Inventor B. Who if anyone gets a patent?
• Scenario #3: Inventor A discloses X. Inventor B files a patent for X+Y. Subsequently, Inventor A files a patent for X+Y. Who, if anyone, gets a patent, on X, Y, and X+Y.
• Scenario #4: Inventor A has a non-enabling disclosure. A third party C publishes an enabling disclosure. Inventor B files a patent on the invention. Subsequently, Inventor A files a patent. (Timing is A disclosure, C publication, B filing, A filing). Who, if anyone, can get a patent?

I’ve pulled together a list of each change, and categorized it in terms of timing.  I highlighted those items that will likely change the way we practice.

Effective immediately

• Prior commercial use defense (any patent issued on or after date of enactment)
• Venue moved to District Court for Eastern District of Virginia
• Funding agreements of government with non-profit organizations
• Tax strategies are part of the prior art (all patents issued after the effective date)
• Best mode may not be the basis for canceling or holding invalid a patent (all proceedings commenced on or after date)
• Marking statutory damages only available to US, actual damages suits available to competitors.  (to all cases, including those pending)
• Joinder:  Restriction of joint litigation only if it’s the same product (all civil actions commenced after date)
• Prohibition against human organism patents (for all pending or later filed applications)
• +1 day for extension of patent term (Wilmer-Hale Act, for applications for extension of time pending, filed after, or subject to judicial review)
• Inter partes review update (applicable to all patents, regardless of filing date)

Effective one year from the enactment

• Post-grant review (applies to all patents, regardless of filing date)
• Pre-issuance submissions to the patent office (applies to all patent applications)
• Supplemental Examination (applies to all patents)
• Lack of Advice of Counsel cannot be used to prove willfulness
• Business Method patents available for post-grant review (valid for 8 years only)

Effective 18 months from the enactment

• First inventor to file
• Change in grace period (requires inventor disclosure)
• Inventor’s oath and declaration changes, changes allowing entity having sufficient proprietary interest to file without inventor
• Derivation proceedings
• Repeal of statutory invention registration

If you see any mistakes, or items missing, please let me know so I can correct it.

The act now goes to the President, who has said he will sign it.  Some of the changes of the law will go into effect immediately, while some will be delayed by up to 18 months after the President signs it into law.  I will be posting a detailed analysis of the law, and what changes will be effective now, and later.

You can find the final version of the law, as passed by the Senate at Thomas.gov.

If you look at the pictures you will see why Zynga said “ it is one thing to be inspired by Zynga games, but it is entirely different to copy all of our key product features…”

Vostu’s purpose, according to Zynga is to copy literally every feature of every Zynga game.

Zynga sued Vostu in District Court in California, on June 16th.

Then, they filed another lawsuit on August 2nd in Brazil, Vostu’s home country. The Brazilian judge granted an injunction quickly, telling Vostu it had to shut down its games within 48 hours.

The U.S. District Judge, Edward Davila was not amused. He issued an order restraining Zynga from enfordcing the Brazilian decision. In particular, he noted “Zynga—which chose the U.S. forum first—now seeks to enforce an injunction it obtained abroad that would paralyze this Court’s ability to decide this case.”

So, while Zynga won a round in Brazil, their decision to file the case initially in the U.S. prevents them from enforcing the Brazilian court’s decision.

Lesson learned: Choose your jurisdiction carefully. Especially when looking for an injunction, consider finding a fast jurisdiction, and filing there first. U.S. judges will not look kindly upon a later suit impacting their jurisdiction.

David Kappos, Director of the USPTO recently participated in an hour and a half of Q&A with Eileen McDermott of Managing IP (webcast available here) , discussing how implementing the new patent rules will change Patent Office practice.

He was overall quite positive about the changes.  Below I summarize some the aspects of his comments that I thought were particularly relevant.  My comments are in italics.

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Congress has tried to amend the Patent Act for the last decade, introducing ever more complex versions of legislation which is designed to change the U.S. to first to file, and serve numerous interested parties.

This year’s version has passed the Senate, by a large margin, and has been passed from the House Committee.

The current major hold-up is that the Senate version ends fee diversion, leaving all funds the Patent Office collects with the Patent Office. The House wants that money under Congressional control. In addition to this big issue, there are also now numerous differences between the version of the bill passed by the Senate, and the one currently pending in the House. In particular, Lamar Smith has made a manager’s amendment to the act, which appears to make a large set of (mostly minor changes). Here is a list of these changes, courtesy of Greg Aharonian of PATNEWS.  I have bolded the more significant changes:

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In their first case since the Supreme Court’s KSR v. Teleflex (2007) decision, the Federal Circuit strongly re-affirmed the rule that obviousness cannot be based on references from non-analogous art in the precedential opinion of In re Arnold G. Klein.  Surprisingly, the opinion did not even mention KSR.

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