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‘Technical Amendment' Goes Beyond Corrections to America Invents Act

Wednesday, December 5, 2012

A “technical amendment” to the Leahy-Smith America Invents Act, H.R. 6621, introduced in the House of Representatives Nov. 30 would go beyond the scope of the AIA to force pre-1995 patent applications to a final decision.

Patents issuing more than a year after the bill's enactment would end up with few if any years of protection.

Modifications to the AIA provisions themselves would be minor for the most part and appear to be based on ambiguities and conflicts in the text that would burden the Patent and Trademark Office.

However, one change worth noting would address “dead zones” created by conflicts in AIA timing. These are periods when neither of the new post-grant review (PGR) or inter partes review (IPR) procedures could be used. The amendment would eliminate the dead zones.

AIA champion Rep. Lamar S. Smith (R-Texas) introduced H.R. 6621 without remarks and his office did not respond to requests for comment.

No Sweeping Changes.

The possibility of a further technical amendment to the patent reform legislation has been rumored virtually since the AIA was enacted Sept. 16, 2011. That possibility was discussed in detail during Senate and House Judiciary Committee hearings on AIA implementation this summer.

Several Senate Judiciary Committee members expressed opposition to rumored amendments that would not really be technical in nature, but would rather modify substantive areas that took six years of debate to resolve.

H.R. 6621 contains none of the changes to AIA provisions that were mentioned in those committee meetings. At least two of the sections of the bill would merely correct typographical errors. Two others clarify that Congress meant the AIA provisions--Section 298, Advice of Counsel, which disallows as evidence of willfulness a failure to seek advice of counsel, and “Travel Expenses and Payment of Administrative Judges”--to become effective Sept. 16, 2011, rather than on the “default” effective date one year later.

Other changes of some note:

• The institution of “derivation proceedings,” as described in a new 35 U.S.C. §135(a), was minimally described in the AIA. Section 1(k) of H.R. 6621 fills in the gaps. Also, as to settlements agreed to under Section 135(e), the AIA allowed a settlement to correct “inventors” in the plural, and the amendment makes that singular. The settling parties would thus have to choose only one inventor and the PTO would not allow a joint inventorship resolution.

• Section 154(b), Patent Term Adjustments, would be modified. The changes are only peripherally related to AIA provisions on foreign applications and venue for challenging PTO decisions. The “A” and “B” delay adjustments for the PTO's failure to meet certain deadlines, as they apply to applications first filed overseas, would use “commencement of the national stage” as the start date. The amendment further would make clear that an appeal of a PTA calculation must be made exclusively to the U.S. District Court for the Eastern District of Virginia, but the appeal, which now must wait until after the patent issues, could be made after “the date of the Director's decision on the applicant's request for reconsideration.”

Dead Zones Eliminated.

The issue related to dead zones in IPR and PGR filings arose from comments submitted by attorneys at Oblon Spivak McClelland Maier and Neustadt, Alexandria, Va., in response to the PTO's draft rules for implementing the procedures, a spokesperson for the House Judiciary Committee told BNA Dec. 3.

A PGR petition can be filed challenging only those patents issued on applications filed on or after March 16, 2013. An IPR challenge must wait at least nine months to allow a PGR challenge to go first.

The Oblon Spivak attorneys identified the dead zone as to patents on applications filed before March 16, for which there would thus be no PGR challenge possible and a delay before a nine-month delay IPR challenge could be filed. “The effect of this dead zone may be to encourage patentees to initiate lawsuits within days of issuance and thereby force third parties into less effective ex parte reexamination proceedings,” they argued.

The technical amendment eliminates the dead zone by allowing IPR petitions to be filed immediately after a patent issues if its corresponding application “only claims subject matter filed before March 16, 2013,” the House committee aide said.

A second dead zone addressed by the amendment occurs as a result of the IPR time limit under 35 U.S.C. §315, which states, “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”

However, if a PGR proceeding has been initiated on the same patent, the IPR would have to wait until the PGR reached its final decision. Thus, in many cases, the one-year limit on filing an IPR would lapse when it never could have been filed.

Forcing Old Applications to a Conclusion.

The change suggested as to pre-1995 patent applications would affect possible future patent holders' term of protection.

As part of the United States' agreement under the General Agreement on Tariffs and Trade (GATT) agreement, the Uruguay Round Agreements Act of 1994 (URAA) changed the term of patent protection from 17 years from issue to 20 years from the date the application is filed. Patents ensuing from applications filed before June 7, 1995, get the former term; patents issuing based on applications filed on or after that date have 20 years from issue, per 35 U.S.C. 154(a).

Several pre-URAA applications are still being prosecuted at the PTO, with no decision yet on whether they will be granted. So, for example, a patent application filed June 1, 1995, could be granted Dec. 31, 2012, and with 17 years of protection, be still enforceable 35 years after it was filed.

This was, for example, at least one incentive for Gilbert P. Hyatt to pursue his patent application in litigation that eventually reached the Supreme Court. Hyatt v. Kappos, 132 S. Ct. 1690, 102 USPQ2d 1337 (2012) (75 PTD, 4/19/12). Hyatt's patents on computer architecture are, theoretically at least, substantially more valuable now than they would have been when originally filed, given the explosion in computer sales.

The PTO would undoubtedly like to dispose of these old applications one way or another, and H.R. 6621 would do just that. It would eliminate the 17-years-from-issuance option for any patent that is “pending on a date that is 1 year or more after the date of the enactment of this Act.”

Thus, the pre-URAA applicant would have to refrain from any further delay tactics in prosecuting the application, and the PTO would have to act expeditiously. Any pre-URAA application issued as a patent after that one-year cutoff would have, at best, a June 6, 2015, termination date--20 years from the last date on which a pre-URAA application could have been filed.

If H.R. 6621 is enacted Jan. 2, 2013, for example, the one-year deadline for patent issuance would mean that a Jan. 3, 2014, patent issued on an application filed Jan. 2, 1994, or earlier would have zero patent term.

By Tony Dutra  


H.R. 6621 at http://pub.bna.com/ptcj/HR6621intro12Nov30.pdf

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