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Patenting Hi-Tech Software: Do More Than Manipulate Information

Recently, the Federal Circuit ruled on a software patent case that illustrates an application of last month’s U.S. Supreme Court decision in Alice v. CLS Bank on the patent eligibility of software in high-tech industries outside the financial services sector, including optics and photonics.    us5970479_fig1

The decision in Alice was acutely anticipated in the high-tech community because of its potential effect on the ability to patent software.  While the patents at issue were directed specifically to methods of using computers to carry out settlement risk mitigation in financial transactions and the computers so used, the broad question presented by the patentee Alice Corp. was whether computer-implemented inventions (e.g., software and computers running the software) in general are patentable subject matter under U.S. law.

While the Court did not directly address this broad question, the Court’s unanimous decision explained that to be eligible for patenting, such inventions had to be more than just an abstract idea or a generic computer applying the abstract idea.  The Court laid out a two-step test for a court to evaluate whether an invention is eligible for patenting.  This test was first enunciated by the Court in Mayo v. Prometheus, a 2012 case which found that a particular method of optimizing therapeutic efficacy of a drug was not eligible for patenting since it was merely an application of a law of nature using conventional steps.  Under this test, a court must first determine whether the patent claims are directed to a patent-ineligible concept (e.g., an abstract idea, a natural phenomenon, or a law of nature).  If so, the court must then determine whether the elements of the patent claims, considered both individually and as an ordered combination, transform the nature of the claim into something that is patent-eligible.

The Court applied this test to the patents at issue, and found that (i) the claims were directed to the abstract idea of “intermediated settlement,” which the Court said was “a fundamental economic practice long prevalent in our system of commerce” and (ii) the claims merely applied this abstract idea using a generic computer, and such conventional application did not transform the nature of the claims.  As a result, the patents were ruled invalid for being directed to patent-ineligible subject matter.

The claims in Alice were directed to the financial services industry, but those of us involved with high-tech industries cannot take solace in this fact to think that our software inventions are not subject to this test as well.  To illustrate, a recent Federal Circuit’s application of the two-part test of Alice and Mayo shows how we can expect it to be applied to all types of computer-implemented inventions.

us6128415_fig1In Digitech Image Tech. v. Electronics for Imaging, Inc. (EFI), the patent being asserted was originally issued to Polaroid Corp. in 2000 and after Polaroid’s bankruptcy in 2001 subsequently ended up in the hands of Digitech, a subsidiary of the non-practicing entity Acacia Research Corp.  In this case, Digitech was asserting the patent against EFI as well as EFI’s customers and various on-line retailers.  The claims of the patent were directed to “a device profile” which can be used to characterize and correct for distortions of an image’s color and spatial properties introduced by components of a digital image reproduction system, and a method of generating such a device profile.  Digitech was appealing the decision by the district court that all the claims were invalid for being directed to patent-ineligible subject matter.

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The Federal Circuit affirmed the district court’s ruling that the “device profile” was merely information in the form of “a collection of numerical data that lacks a physical component or physical manifestation.” For example, as shown on the right, Claim 1 recites that the device profile comprises “first data” regarding the color information of the image and “second data” regarding the spatial information of the image.  Since the claims were directed to information in its non-tangible form, these claims were deemed invalid for not falling within the categories of patent-eligible subject matter under U.S. law (a “process, machine, manufacture, or composition of matter”).

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With regard to the claims to the method of generating the device profile, the Federal Circuit applied the two-part test of Alice and Mayo and affirmed the district court here as well.  First, the court found that the method claims were directed to an abstract idea because they described “a process of organizing information through mathematical correlations and [are] not tied to a specific structure or machine.”  For example, as shown on the right, Claim 10 recites that the process comprises taking two data sets and combining them into a single data set, namely the device profile.  Therefore, the claim recites “an ineligible abstract process of gathering and combining data that does not require input from a physical device.”  The court then found that the method claims did not include anything further that would transform the nature of the claims into something that is patent-eligible.  For example, the court held that there was nothing in the claims that expressly tied the method to an image processor.  While the preamble of the claim mentions that the device profile can be used with a digital image reproduction system, the court found that this was merely an intended use of the device profile that did not limit the scope of the claim.  Therefore, the method claims recite “a process that merely employs mathematical algorithms to manipulate existing information to generate additional information” which is an abstract idea that is not patent-eligible.

As illustrated by the Digitech case, applicants and patentees in high-tech industries outside the financial services industry should make sure that their method claims are able to traverse the two-part test for patent-eligible subject matter.  Both the Alice ruling and the Digitech ruling confirm that merely reciting an abstract idea does not doom a claim to patent ineligibility.  However, such method claims must be more than the conventional application of the abstract idea.

To be considered patent eligible, a claim to a computer-implemented process should recite more than merely “a process that employs mathematical algorithms to manipulate existing information to generate additional information.”  Even if such information or data represent physical parameters or variables, or even if such a manipulation of data had never been done before, it is possible that the claim would be deemed patent-ineligible for being directed to “a process of organizing information through mathematical correlations [that] is not tied to a specific structure or machine,” as in Digitech.

For example, explicitly reciting the acquisition of input data from the physical world (e.g., measuring a parameter using a sensor) may be helpful to tie the process to a specific structure or machine and to transform the nature of the computer-implemented process into “something that is patent-eligible.”  This is especially true if such measurements are not made conventionally.  As another example, explicitly using the resultant data in making a determination or in controlling a mechanism may also provide the additional elements that transform the nature of the claim from the abstract realm into the patent-eligible physical realm.  Such use can be an improvement to the physical system being utilized, including the functioning of the computer itself.  However, such recited use should be more than merely applying the resultant data on a computer, particularly if the process can be performed by a generic computer.

 

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Google’s glucose-sensing contact lenses: An informative case study in protecting innovation

Hand holding - zoomed inGoogle recently announced on its blog that its “Google-X” laboratory is testing a prototype “smart” contact lens that includes a miniaturized electronic sensor designed to measure glucose level in the wearer’s tears.  I thought it’d be interesting to review the relevant patents to see how the company has protected its interest in this innovation.  What I found was an instructive example of how to protect innovations that have been developed over the course of years.  The following discussion lists five lessons from Google’s example that can be emulated by start-ups as well as more mature companies. Read the rest of this entry »

 
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Posted by on January 20, 2014 in medical, mems, patent law, vision

 

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Hollow-core waveguide for high power lasers; Raydiance’s U.S. Pat. No. 8,554,037

Raydiance Inc. of Petaluma, CA received U.S. Patent No. 8,554,037 on October 8, 2013 for a hybrid waveguide with a hollow core having outer solid-web regions that are filled with gas to provide specific light transport characteristics for transmitting ultra-short, high-power laser pulses.

US8554037_fig5     US8554037_claim1

According to the ’037 patent, conventional solid core and cladding waveguides are not suitable for transporting high-energy and ultra-short pulse width laser beams (e.g., greater than 0.1 joule per square centimeter, shorter than 10 picoseconds) due to light-induced distortions and damage to the waveguide.  While a hollow core waveguide can be less sensitive to such powerful laser beams, conventional hollow core waveguides (e.g., Bragg fibers and photonic bandgap fibers) require particular materials and fabrication techniques, and have stringent dimensional constraints.  The ’037 patent discloses a hybrid waveguide having a multiple-region hollow core with a gas-filled center region and multiple gas-filled outer regions within a surrounding solid web material.  The gas species, pressures, and geometric distributions of the gases filling the center region and the outer regions are selected to tailor the refractive indices of these regions to provide the desired optical propagation.

According to the company’s website, Raydiance markets femtosecond lasers for precision micro-machining applications that can cut structures in metals, polymers, glass and other materials by laser ablation without introducing thermal damage to the remaining material.  The website also includes a few videos that show their lasers in action (one of which shows a laser machining the company logo in the head of a match without the match igniting), and a blog on laser-based precision manufacturing.

 

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Free-space optical coupling using a reflective beveled surface; Intel’s U.S. Pat. No. 8,530,818

Intel Corp. of Santa Clara, CA was awarded U.S. Patent No. 8,530,818 on September 10, 2013 for an optical coupler compatible with a wide range of optical signal wavelengths.

     US8530818_claim1     US8530818_fig4

According to the ’818 patent, the high optical absorption of planar silicon waveguides at smaller wavelengths (e.g., 850 nm) restricts their use to longer wavelengths (e.g., 1350 nm) where the optical absorption is much less (by about 8.5 orders of magnitude).  However, to achieve high bandwidth performance at these longer wavelengths, the use of normal incidence photodetectors (NIPDs) has required small active areas and difficult-to-achieve alignment precision among the various optical components.  The ’818 patent discloses an optical coupler that avoids using planar silicon waveguides, instead using a reflector die with an optical-quality facet that reflects optical signals propagating in free space to an underlying NIPD and alignment grooves that precisely position the reflector die relative to the NIPD.

Over the past decade, Intel’s silicon photonics research group has been working on the components needed to replace existing systems using electrical signals with high-speed optical networking systems that have the potential of providing data transmission rates greater than 1 Terabit per second.  As explained in this company video, Intel has developed an integrated silicon photonics module that achieves 100 Gigabits per second (100Gbps) by utilizing hybrid silicon lasers, modulators, waveguides, and detectors and that is fabricated using standard CMOS wafer fab techniques.  At the upcoming 2014 SPIE Photonics West conference, Intel’s Dr. Mario J. Paniccia, Intel Fellow and general manager of its Silicon Photonics Operations Organization (and co-inventor of the ’818 patent), will be among the panelists discussing the state of “Silicon Photonics and Photonic Integrated Circuits.”

 
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Posted by on September 30, 2013 in optical network, pic

 

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Optics for sorting spermatozoa; Sexing Technologies’ U.S. Pat. No. 8,502,976

Here’s an application of optics that I didn’t know existed: sex sorting of semen for artificial insemination. That is the motivation behind U.S. Patent No. 8,502,976 which was awarded on August 6, 2013 to Inguram LLC (dba Sexing Technologies) of Navasota, TX for its “UV Diode Laser Excitation in Flow Cytometry” invention.

                 US8502976_fig2          US8502976_claim1

The ’976 patent describes a use of flow cytometry in which a pulsed stream of liquid containing suspended  sperm cells is irradiated by a laser beam at a wavelength chosen to cause fluorescence, e.g., by a fluorochrome dye bound to the genetic material.

According to the ’976 patent, “[b]ecause X-chromosome bearing spermatozoa contain more DNA than Y-chromosome bearing spermatozoa, the X-chromosome bearing spermatozoa can bind a greater amount of fluorochrome than Y-chromosome bearing spermatozoa.”  Depending on the measured amount of fluorescence emitted by a droplet, the droplet can be deflected (e.g., by applying a charge on the droplet and then having the droplet fall through an electric field) into one selected container or another.  For cattle, the difference in DNA is only 3.8%, but that is enough to distinguish X-chromosome bearing cells (for producing cows) from Y-chromosome bearing cells (for producing bulls).  According to the company’s website, “[t]he sorting technique is proven to be routinely 93% gender accurate,” and the purified sperm can then be frozen for later artificial insemination.

 
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Posted by on September 23, 2013 in detector, fluorescence, laser, medical, sorting

 

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Plenoptic photography by a smartphone; Pelican Imaging’s U.S. Pat. No. 8,514,491

Pelican Imaging Corp. of Mountain View, CA was awarded U.S. Pat. No. 8,514,491 on August 20, 2013 for its “Lens Stack Array.”

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As described by the ’491 patent, the lens stack array includes multiple optical channels spaced from one another, each channel containing an aperture, a lens, and a spectral filter, with some of the lenses having different surfaces based on the specific spectral band of light passed by the spectral filter of the optical channel. The lens stack array can be used in a plenoptic or light-field camera.  In my previous blogpost, I described how such cameras produce images that can be post-processed to achieve various effects, such as focusing on different parts of the imaged scene.

Pelican Imaging has developed a 4×4 array camera which the company touts as “a smart camera for your smartphone.”  A video shows the capabilities of such a system, for example, allowing the user to select a subject to refocus on, to have multiple focal points, and to combine images.  Pelican Imaging has grabbed the attention, and investments from Nokia, Qualcomm, and Panasonic.  Recently, the company demonstrated its technology’s capabilities in 3D imaging and video capture at the Qualcomm Uplinq™ 2013 Mobile Developers Conference.  For example, another company video shows that the technology can potentially be used with a 3D printer to create copies of a photographed subject.  According to an Engadget article, Pelican Imaging’s CEO, Chris Pickett, confirmed that the company’s camera technology is scheduled to be included in at least one new smartphone in 2014.

 
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Posted by on September 16, 2013 in imaging, plenoptic

 

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Patenting Movie Magic: Pixar’s “Super Light-Field Lens”

Pixar Animation Studios of Emeryville, CA was awarded U.S. Pat. No. 8,502,909 on August 6, 2013 for a “Super Light-Field Lens.”  The claimed invention is designed to be mated with a variety of conventional cameras and to produce light field data that can be used to produce 2D or 3D images, to move the camera angle, to provide depth of field adjustments by refocusing foreground and background images (together or separately), and to be used in a computer graphics rendering engine, such as Pixar’s RenderMan®.

us8502909_fig3      us8502909_claim1

A plenoptic camera (also called a light-field camera) contains an array of microlenses and the summed information from the various microlenses can be stored and later manipulated via computer (e.g., to refocus on different portions of the image).  According to the ’909 patent, previous plenoptic imaging systems had the sensor positioned a few millimeters from the focal plane of the microlens array, and this small distance made such systems incompatible with conventional cameras.  The plenoptic imaging system recited by the ’909 patent includes adjustable relay optics designed to collimate and focus light from the microlens array onto a sensor which can be 30 mm or more from the microlens array.

 
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Posted by on September 6, 2013 in imaging, plenoptic

 

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Nokero wins “Patents for Humanity” award from the USPTO

nokero_lampIn a previous blogpost, I described the “Patents for Humanity” program run by the US Patent and Trademark Office to bestow awards to patent holders that are innovating to solve humanitarian issues.  Earlier this year, the 2013 results were announced with two winners in each of five fields: (i) medicine and vaccines, (ii) medical diagnostics and devices, (iii) food and nutrition, (iv) cleantech, and (v) information technology.

One of the 2013 winners in the “cleantech” field is Nokero, a company that develops and manufactures “safe, affordable, and environmentally friendly solar-based technologies,” particularly solar-powered lights and battery chargers.  As explained by Nokero’s submission to the “Patents for Humanity” program, its products are intended to bring renewable energy to the developing world.  1.3 billion people live in third-world villages without electricity, where the combustion of kerosene, candles, and wood is widely used for lighting, creating fire hazards as well as dangerous indoor air pollution from toxic smoke and fumes.  Nokero (short for “no kerosene”) seeks to replace these open flames with solar-powered lights, and Nokero maintains a blog which provides updated information on their successes.

Each of the award winners, including Nokero, received a non-transferable “Acceleration Certificate” from the USPTO, which can be redeemed by the award winner for expedited attention by the USPTO of a patent application.  Such certificates are rarely awarded, and they can drastically shorten the time it takes to get a patent issued, potentially shaving years off the patenting process.

 

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Crowdsourcing: Inciting a Mob to Battle Patent Trolls

trollhookThe onslaught of non-practicing entities, or “patent trolls,” that aggressively leverage the high price of defending a patent infringement action in order to extract licensing fees, cost defendants and licensees $29 billion in 2011.  The number of such lawsuits rose to 62% of all patent infringement cases filed in 2012.  The economic drain on the targets of these troll lawsuits, U.S. companies that are actually marketing products and services, has focused attention on the inability of the U.S. Patent and Trademark Office (USPTO) to weed out overly broad patents, and it has bolstered criticism of the patent system for stifling innovation by granting improper exclusivity for less-than-inventive concepts.

In part to combat the scourge of patent trolls, the recently enacted America Invents Act (AIA) increases the number of avenues available for parties to direct the USPTO’s attention to more relevant references and to challenge the validity of a US patent at the USPTO without incurring the high cost of litigation.

In the new AIA post-grant proceedings (i.e., post-grant review, inter partes review, and covered business method review), the USPTO reevaluates the validity of an issued patent.  The challenger (e.g., the patent troll’s intended prey) presents new references, arguments, or both for the USPTO to consider in revisiting the validity of the previously-issued patent.  The challenger participates throughout the post-grant proceeding by countering the patent owner’s arguments of validity.  Based on past experience with the previously available post-grant procedures (i.e., ex parte and inter partes reexamination), many practitioners expect these new proceedings to be generally favorable to the challenger’s goal of either invalidating the patent or at least narrowing the patent’s scope, thus improving the challenger’s odds to avoid liability.  However, while these proceedings are significantly less expensive than litigation, they are not cheap, owing to the large filing fees (upwards of $23,000) and to their adversarial nature.

Another new AIA avenue, called “Preissuance Submissions,” allows anyone to submit references to the USPTO, along with a concise description of the relevance of those references, during the initial prosecution of a patent application.  “Preissuance Submissions” thus have the potential to kill or to hobble significantly a patent application before it ever issues as an overly broad U.S. patent.  In contrast to the post-grant proceedings, “Preissuance Submissions” do not allow the submitting party to participate in the evaluation of the patent application after the initial filing, but the procedure is quite inexpensive.  Thus, “Preissuance Submissions” can be an attractive option for individuals or groups seeking to protect a technological space from overly broad grants of exclusivity.

The successful use of these new procedures depends on the relevance of the references under consideration.  In long-established technologies, relevant references are generally accessible on existing databases used by the USPTO and by the public at large.  However, in newer and/or fast-changing fields, such as optics, software, and business methods, many of the most relevant public references are not easily retrievable using conventional means.  For example, product manuals, marketing materials, foreign language references, and more obscure documents that have not been digitized are typically not in the available keyword-searchable databases.  Without these relevant references, the USPTO has a limited basis for rejecting such patent applications, resulting in the issuance of patents of questionable validity.

Crowdsourcing holds the promise of finding these elusive references.  The term “crowdsourcing” refers to the process of outsourcing tasks to the public at large, thereby accessing “the wisdom of the crowd” by presumably bringing to bear a more varied and wider range of information than would otherwise be available.  As applied to patent validity, crowdsourcing the search for relevant references has the potential of accessing the collective memories and archives of many people to uncover references that are not normally catalogued in the databases used in conventional patent validity searches.  In addition, since the relevance of references is based on how they are understood by people skilled in the relevant technology (often referred to as “people having ordinary skill in the art”), participation by such individuals in the crowdsourcing process may provide a better sense of a reference’s contents and its relevance to the patent or patent application at hand.

The USPTO is encouraging “crowdsourcing” social media initiatives.  For example, the USPTO publicly touts the “Ask Patents” social network hosted by Stack Exchange as a means in which “subject-matter experts volunteer to suggest prior art for given applications, as well as to offer their input on the proposed value of those suggestions from others.”  On the “Ask Patents” website, users can anonymously post calls for prior references relevant to the patentability of a patent or patent application, and anyone can anonymously contribute candidate references.  The participants vote on the relevance of a contribution, and the most-relevant contributions rise to the top.  Participants do not receive any money for their contributions, but they are awarded “badges” for increasing levels of participation.  “Badge” reward systems have previously been used in various activities such as online gaming, in businesses such as Foursquare, and, of course, in well-known organizations such as the Boy and Girl Scouts.  The calls on “Ask Patents” are primarily in the software field; the patent applications of Microsoft and Apple are the most frequent targets.

The co-founder and CEO of Stack Exchange, Joel Spolsky, recently bragged about the website’s first “confirmed kill” of a pending patent application.  In that instance, the USPTO rejected a Microsoft patent application filed in 2011 using a reference that was uncovered via “Ask Patents.”  The reference was a document that Microsoft published in 2008 and that Mr. Spolsky himself uncovered and submitted to the “Ask Patents” website in response to an anonymous query for references.  The record does not reveal how the reference came to the patent examiner’s attention, since it was not submitted by Microsoft nor by a third-party in a “Preissuance Submission.”  The patent examiner may have found the reference through his own independent searching, or … perhaps he was the anonymous user that submitted the query for references on “Ask Patents.”  Given the USPTO’s backing, it is no surprise that patent examiners are utilizing “Ask Patents” to supplement their conventional database searches.

Describing this example as a “confirmed kill” is a bit of hyperbole.  In fact, the rejection was merely a first “non-final” office action, and Microsoft has since responded by filing amendments that narrow the claims in a way that Microsoft argues is patentable over the cited reference.  Microsoft may eventually convince the examiner to grant the patent, albeit with a narrower scope of exclusivity than if the USPTO did not have the 2008 document.  Paradoxically, rather than lamenting the use of crowdsourcing, Microsoft probably welcomes this development, since the issued patent will arguably be stronger (and thus more immune to later challenges of validity) because Microsoft has already responded to the 2008 document during prosecution.  If the 2008 document were first discovered after the patent issued, it could have been the patent’s “Achilles’ heel.”

The non-monetary motivation for the “Ask Patents” contributors (i.e., earning badges while contributing to the greater good) would seem to attract “do-gooders” who seek to snuff out patent applications that appear especially egregious to the technological community.  Organizations such as the Electronic Frontier Foundation (EFF) are beginning to see the value of crowdsourcing.  For example, EFF enlists volunteers to protect developing technologies by identifying potentially overbroad patent applications that deserve to be targets of “Preissuance Submissions” and by providing references to challenge these applications.  Recently, the EFF has partnered with “Ask Patents,” law schools, and various public-service organizations to establish “Trolling Effects,” described as “a crowdsourced database of patent demand letters and a clearinghouse for information on the troll epidemic” to expose the activities and tactics of patent trolls.

A more mercenary take on crowdsourcing may be more effective in battling patent trolls.  For example, the website “Article One Partners” provides a platform for its clients to present target patents and applications to an online community of 27,000 registered researchers.  The researchers are motivated to embark on “an Intellectual Treasure Hunt” by monetary bounties (e.g., $5,000) shared among the researchers identifying the most relevant references to the target patent or patent application.  The clients of “Article One” include Philips Electronics, Microsoft, and Sony, and, to date, “Article One” has paid out more than $4 million to its researchers.  A large fraction of the targets on the “Article One” website are in the software field, but a significant number are in other technologies as well, such as medical devices and semiconductor fabrication.  The targets listed on “Article One” are primarily issued patents, and many of its clients appear to be seeking ammunition to invalidate a patent asserted by a troll.

Coupling the new AIA procedures with the power of crowdsourcing to uncover previously unavailable references will likely be quite effective in selected individual cases.  However, it remains to be seen whether either volunteer-based crowdsourcing, such as “Ask Patents,” or bounty-based crowdsourcing, such as “Article One,” will fulfill the potential to improve the overall quality of issued patents and to reduce the impact of patent trolls.

(This blogpost is based on an article of mine that was originally published in the “General Counsel Awards” supplement of the Orange County Business Journal on August 26, 2013.)

 

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Expanding universe of “prior art”: Patent applications will be more vulnerable to attack if filed after March 16, 2013

HR1249U.S. patent law is scheduled to soon experience major changes under the America Invents Act (AIA) that will make it harder to get a patent granted and that will make it easier to challenge an issued patent.  Therefore, if contemplating filing a patent application in the near future, it’s wise for applicants to do so before March 16, 2013, the day these changes take effect.

One major change is that the “prior art” universe is expanding on March 16, 2013.  “Prior art” is the term used for references or activities that can be cited against the patentability of a patent application or the validity of an issued patent.  Under current law, for a sale, offer for sale, or public use of a product to qualify as “prior art,” this activity had to (i) occur in the U.S. and (ii) be earlier than one year before the patent application’s filing date.  Under the new law, being on sale or in public use anywhere in the world can be cited.

In addition, under current law, for a foreign patent application to qualify as “prior art” against your U.S. patent application, it has to satisfy at least one of the following conditions:

  1. published before your conception date,
  2. published more than one year before your filing date, or
  3. filed before your conception date as an international patent application under the Patent Cooperation Treaty (“a PCT application”), that was published in English, designated the U.S., and resulted in a granted patent.

Under the new law, conditions (1) and (3) of the current law disappear since the conception date no longer matters (as discussed below).  Condition (2) of the current law excludes all foreign patent applications that published less than one year before your filing date, but under the new law, condition (2) is modified to only exclude foreign patent applications by the inventors (or obtained from the inventors) that are published less than one year before your filing date. 

A second major change in U.S. patent law, receiving the bulk of the buzz regarding the new law, is that the U.S. is changing from a “first to invent” standard to a “first to file” standard.  It’s always been beneficial to file patent applications as soon as possible, but under the old “first to invent” standard, even if you filed your patent application after someone else did for the same invention, you could be awarded the patent instead of them by proving that you were the “first to invent,” i.e., you invented the claimed invention before they did.  However, under the new “first to file” standard, the first party filing their patent application is awarded the patent, regardless of who was the “first to invent.”  

(Rigorously speaking, the new law is actually a “first inventor to file” standard, since it prevents someone from obtaining the invention from the inventors, and then racing to the patent office to file an application first for something this someone didn’t actually invent.)

It’s rare that two entities separately conceive and file patent applications for the same invention.  But this change to a “first to file” standard makes an important contribution that further expands the “prior art” universe.  Under the current “first to invent” standard, the date that you conceived of the claimed invention could be used to exclude a certain category of references that were available to the public before your filing date from being considered “prior art” against your patent application.  But under the “first to file” standard, applicants can no longer rely on their earlier date of conceiving the claimed invention to overcome any cited references.  In other words, conception date will no longer matter; only the application’s filing date will control.

Besides expanding the “prior art” universe, the new law also introduces a new “post-grant review” (PGR) mechanism for challenging the validity of U.S. patents within nine months of issuance before the Patent Trial and Appeal Board.  This mechanism became available to challenge so-called “business method” patents in September 2012, but on March 16, 2013, it will be available to challenge all U.S. patents with filing dates after this date.  In conjunction with the other mechanisms for challenging issued patents (e.g., ex parte reexamination and inter partes review), each with its own requirements and pros and cons, PGR opens up a new way for competitors to invalidate your patent.

Finally, the new law includes language that has not yet been interpreted by the federal courts, so the full effects of the new law are uncertain at present. 

For one example, with regard to the activities anywhere in the world being “prior art,” as discussed above, the new law states that the application can be rejected if the claimed invention is “in public use, on sale, or otherwise available to the public” before the application’s filing date.  So does “otherwise available to the public” mean that a private sale of the invention would not qualify as “prior art” under the new law?  Under existing law, any sale or offer for sale in the U.S.would qualify as “prior art,” public or private.  Until the courts weigh in, it’s probably prudent to make the conservative assumption that any sales or offers for sale, public or private, would qualify as “prior art” and to strive to not enter into such activity unless a patent application is already on file.

For another example, the new law excludes “disclosures” made by the inventors (or obtained from the inventors) within one year before the application’s filing date from being considered as “prior art” against the application.  But are being “on sale” or “in public use” considered to be “disclosures” under the new law?  Under existing law, sales, offers for sale, and public uses are excluded from being “prior art” if within one year before the application’s filing date.  Here, until the courts weigh in, the conservative assumption to make is that this one-year grace period does not apply to these activities.  In other words, don’t do anything that might be considered to be a disclosure of the invention until you first have a patent application filed.

In summary, under the new regime of the AIA, patent applications filed after March 16, 2013 will have to overcome a larger universe of “prior art” references to be granted as a U.S. patent, there will be more options for competitors to challenge the validity of such patents, and there will be uncertainty in how the law applies to various situations.  Therefore, potential applicants should consider filing their patent applications before March 16, 2013, to avoid this new regime.

 
 

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