Publications
(Patents) Patent Reform Legislation Passes Muster
Long-awaited patent reform legislation was signed into law in November
1999. Some of the reforms are non-contentious. For example, the patent
term extension provisions provide a time extension to a patent’s term as
recompense for delays arising in the Patent Office prior to grant of the
U.S. patent. The provision regarding invention promoters attempts to
provide remedies against fraudulent promotions. Automatic publication
eighteen months after a patent application’s filing date harmonizes U.S.
practice with analogous procedures elsewhere in the world (for example,
in Europe and Japan.) In an apparent accommodation to independent
inventors, automatic publication will not take place, however, for
applicants who object to their applications being published if they have
not filed their applications abroad.
Inclusion of a prior user defense was more controversial. Specifically,
it was feared by some that the prior user defense would diminish the
motivation of inventors to patent their technology if their competitors
could claim prior user rights. Those opposed to this defense are
concerned that the prior users could effectively “have their cake and
eat it too” by avoiding publication of their technology in a patent and
preserving it as a trade secret, while at the same time establishing a
prior user defense by commercializing the methodology embodying the
invention at least one year before the filing date of the patent in
question. On the other hand, the need for this defense for both small
and large businesses alike is underscored by the Federal Circuit’s
decision in State Street Bank & Trust v. Signature Financial Group , 149
F.2d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998) supporting the patentability
of business methods. This decision signaled an urgent need for prior
user legislation to protect prior users from being held hostage by a
later inventor’s patent claiming “bread and butter” business protocols.
As passed, the prior user defense is limited to an entitlement for
methods of doing or conducting business.
it was feared by some that the prior user defense would diminish the
motivation of inventors to patent their technology if their competitors
could claim prior user rights. Those opposed to this defense are
concerned that the prior users could effectively “have their cake and
eat it too” by avoiding publication of their technology in a patent and
preserving it as a trade secret, while at the same time establishing a
prior user defense by commercializing the methodology embodying the
invention at least one year before the filing date of the patent in
question. On the other hand, the need for this defense for both small
and large businesses alike is underscored by the Federal Circuit’s
decision in State Street Bank & Trust v. Signature Financial Group , 149
F.2d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998) supporting the patentability
of business methods. This decision signaled an urgent need for prior
user legislation to protect prior users from being held hostage by a
later inventor’s patent claiming “bread and butter” business protocols.
As passed, the prior user defense is limited to an entitlement for
methods of doing or conducting business.
Independent inventors also feared the expanded reexamination provision,
inasmuch as it might afford larger companies an opportunity to “harass”
individuals and smaller companies. At the same time, the larger
companies feared the estoppel effect of the expanded reexamination
opportunity, which precluded subsequent litigation of arguments that
were, or could have been, raised during the reexamination. In view of
these broad-based concerns, eleventh hour changes to the bill left the
currently existing “ex parte” reexamination protocol in place, and
merely added an option of expanded inter partes reexamination.
inasmuch as it might afford larger companies an opportunity to “harass”
individuals and smaller companies. At the same time, the larger
companies feared the estoppel effect of the expanded reexamination
opportunity, which precluded subsequent litigation of arguments that
were, or could have been, raised during the reexamination. In view of
these broad-based concerns, eleventh hour changes to the bill left the
currently existing “ex parte” reexamination protocol in place, and
merely added an option of expanded inter partes reexamination.
For further information contact Dale L. Carlson 203-498-4385, dcarlson@wiggin.com