Summer/Fall 1999

On August 4, 1999, the House of Representatives passed the American Inventors Protection Act of 1999 (H.R. 1907).  This Bill may have an impact on how inventors protect their inventions through the patent application process.  The Bill now awaits action by the Senate.  The following is an outline of several of the sections present in the Bill, as passed:

1. Title I (Inventor’s Rights Act)

This section applies to companies providing invention development services.  People may recognize these businesses as the ones who advertise to inventors and claim that for a “modest” fee they will assist the inventor in successfully developing their invention and bringing it to market with the implied understanding that the inventor could well become rich with the company’s assistance.  The Bill requires that such companies provide a standard contract and disclosure statement from the entity promoting the invention.  Included within this section is the following provision:

The disclosure statement must provide a written disclosure of the percentage of their client’s whose earnings from their inventions has exceeded the money paid to the promotion company.  Failure to provide such a disclosure to a potential client may result in a voiding of the contract as well as monetary damages.

This language clearly intends to penalize companies from misleading potential clients from believing that a “modest” investment with this company will always return greater value than initially paid.  Accordingly, although this provision may not directly address all of the seemingly fraudulent and misleading activities perpetrated by some of these invention development companies or directly address the theft of intellectual property by unscrupulous individuals, this section does provide some protection to the individual inventor and small businesses with regard to invention development companies.

2. Title III (Patent Term Guarantee Act)

This provision provides limited circumstances under which the term of a U.S. patent may be extended beyond the standard patent term.  Currently, a utility patent resulting from a patent application filed on or after June 8, 1995, has a term of 20 years from the date of filing with the U.S. Patent and Trademark Office, and a design patent has a term of 14 years from the date of issuance of the patent.  Under this provision, a patent term may receive daily extensions under the following conditions:

        (1)    If the initial examination of the pending application exceeds 14 months from the date of filing; 
        (2)    If following a first office action, the Examiner exceeds 4 months in responding to any response or amendment filed by the applicant; or 
        (3)    If publication of the patent exceeds 4 months from the payment and submission of the Issue Fee.

Accordingly, should this provision be enacted, inventors and patent applicants may finally achieve some of the benefits of the 20 year patent term envisioned with the implementing provisions of the GATT Treaty.

3. Title IV (Publication of Foreign Filed Applications Act)

This provision directs the U.S. Patent and Trademark Office to publish pending U.S. patent application 18 months after their effective filing date.  The current policy of the U.S. Patent and Trademark Office is that all U.S. patent applications are confidential and not published until such time as they may be issued.  Generally, this results in abandoned applications being permanently sealed and beyond public review or examination.  This resulted in eliminating a major source of prior art which may directly affect the validity of future patents and limit the information in the public domain.  Under this provision, the U.S. Patent and Trademark Office still may not publish an application if the applicant requests that the pending application not be published and states in the request that the application has not been filed in another country or under an international agreement that requires publication of pending patent applications, such as the Patent Cooperation Treaty (PCT).  However, applicants should take note that if an applicant files for patent protection in the United States and later files the same application abroad or under the PCT, the applicant is required to notify the U.S. Patent and Trademark Office within 45 days of such a filing, or their patent application in the United States will become abandoned.  Therefore, this section only provides limited publication of pending patent applications, but provides an added filing and notification requirement on applicants with respect to pending patent applications.  Accordingly, patent applicants should take notice of this potential new law and its requirements or risk abandonment of their rights.

4. Title V (Patent Litigation Reduction Act)

This section provides that a third party filing a request for reexamination will now have the right to file a written response at each stage of the reexamination proceeding.  Current U.S. law provides that a third party filing a request for reexamination may only reply to a response by the patent owner to a notice from the U.S. Patent and Trademark Office informing the patent owner that a Reexamination has been instituted.  Therefore, if the patent owner elects not to file such a response and awaits an official action by the U.S. Patent and Trademark Office before responding, the third party will have lost their opportunity to further participate in the process.

In addition, the new provision also provides that a third party requester can appeal or participate in the patent owner’s appeal of the reexamination decision to the U.S. Court of Appeals for the Federal Circuit.  Accordingly, under this provision any third party will have the right to submit “prior art” and further legal arguments for consideration at all stages of a reexamination proceeding and may delay an action by a patent owner for infringement of the patent by further extending the litigation process through the reexamination procedure by as much as years.

Spring 1999

When inventors consider how to protect their rights in a new invention, they often do not consider or fully appreciate the options available to them.  Under U.S. Patent Law there are three different types of patents which are granted by the U.S. Patent & Trademark Office (PTO).  They are Utility, Design and Plant Patents.  Of interest to the vast majority of inventors are utility and design patents, as plant patents apply to the invention of different plants (as in that which grows in your back yard).   Accordingly, this article will address the embodiments and differences between utility and design patents in the United States.

Utility Patents

Utility Patents are the most common form of patent protection available for an invention and are the type of patent most people think of when they consider filing for patent protection.  Since June 8, 1995, the term of a utility patent has been fixed at twenty years from the date the patent application was first filed with the PTO.  Utility patent applications filed prior to June 8, 1995 are enforceable for seventeen years from the date of issue by the PTO.  Once a patent is granted, owners of utility patents are also required to pay periodic maintenance fees to the PTO in order to retain their rights in the patent.  There are currently between five and six million utility patents issued by the PTO from the inception of our patent system although most have long since fallen into the public domain (available for use by anyone).  Once a patent expires, either because it has reached the end of its valid term or for failure to pay maintenance fees, it enters the public domain and its owner no longer has exclusive rights to the limited monopoly granted to them in the patent.  Utility patents are generally available for inventions which perform a function, although other elements of the invention may be covered by design patents or copyrights.  Among the general scientific fields covered by utility patent protection are mechanical, electrical, chemical, biotechnology and computer software disciplines.  Accordingly, when someone generally refers to a patent they usually are referring to a utility patent.

In addition to the patent protection provided under U.S. law, an Applicant (for foreign purposes this may be the inventor(s) and/or owners of the rights in the subject matter of the patent application) may seek protection of their invention under the auspices of the Patent Cooperation Treaty (PCT).  The PCT provides an international framework for seeking and acquiring utility patent protection in the member states of the treaty.  (You should note that this does not apply to Design patents as they are not a part of the treaty.)  Alternatively, or if the subject country is not a member of the PCT, an Applicant may seek patent protection directly in individual countries.  Under a number of international treaties, including the PCT, an Applicant is generally granted a 12 month window from when they file for utility patent protection in the U.S. to file for utility patent protection in most, but not all, foreign countries.  Accordingly, international patent protection is available for one’s inventions although one should consult with an experienced patent attorney for particulars on specific countries and their filing requirements.

Design Patents

Unlike a utility patent, a design patent applies to the ornamental features of an invention, and does not protect the functional elements of the invention.  This occasionally necessitates the filing of both design and utility patent applications to more fully protect a particular invention.  There are currently over 400,000 design patents in the U.S.  Also unlike utility patents, design patents are not covered under the PCT.  Accordingly, design patents differ greatly from utility patents.

In general, the invention(s) which is the subject matter of a design patent is the ornamental features contained in the drawing figures of the patent.  As a practical matter, this necessitates the need for accurate and precise drawing figures in design patent applications, as even the slightest variation from the actual item may result in the failure of the patent to provide rights in the intended item.  Furthermore, as the design patent process is different from the utility patent process, the consequences of a failure to provide accurate and precise drawings at the initial filing stage may result in one’s difficulty in obtaining a design patent or in abandonment of their rights to a design patent.  Therefor, one must take great care in retaining a qualified and experienced draftsman when drafting drawing figures intended to represent the subject matter of a design patent.  Accordingly, one should consult with an attorney experienced in design patent prosecution prior to seeking design patent protection as this may greatly aid the applicant in successfully acquiring enforceable rights in a design patent and ensuring that the design patent actually will be applicable to the intended item.

If an Applicant is interested in seeking design patent protection in any foreign countries, the Applicant is generally granted a six month window from their filing date in the U.S. to file for design patent protection in individual foreign countries in which design patents are available.  Not all countries have design patent protection.  However, for those that do, the Applicant must file directly in each country since an international application under the PCT is not available for design patents.  Accordingly, if the invention has new, useful and non-obvious ornamental features, a design patent may be a wise form of protection.

In conclusion, these are different forms of patent protection available for different aspects of an invention.  Design and utility patents are two forms of patent rights which are intended to provide patent protection to differing inventions.  Accordingly, one should consult with an experienced patent attorney when considering seeking patent protection for one’s invention as alternative methods and forms of protection may be available to an Applicant depending upon the subject matter of the invention.