Patent Issues in the 2012 Lame Duck Session of Congress

By Dennis Crouch

Congress began its "lame duck" session this week and the session can potentially last until January 3, 2013 when the new Congress is sworn in. The primary focus of this session will be resolving budget issues and the pending "fiscal cliff" that would significantly reduce government spending (including USPTO spending). We can also expect that some patent reforms will be pushed in the session. Traditionally, Congress has used mega-bills (such the expected fiscal cliff fix) as carriers for small but potentially controversial rider bills. This approach is especially effective in a lame duck session such as this because of the time pressure and lack of accountability over some of the members of Congress who are permanently leaving town. Most governments have created rules that largely limit the effectiveness of riders. However, the U.S. Government has not taken that approach.

There are several patent issues that are likely to make their way into the lame duck session. The most likely is implementation of two patent law treaties.

Patent Law Treaties Implementation Act of 2012: Earlier this year, the Senate passed the Patent Law Treaties Implementation Act by unanimous consent. S. 3486. The House version (H.R. 6432) is jointly sponsored by the bipartisan leaders of the House Judiciary Committee, including Representative Lamar Smith who chairs that important committee. The USPTO has lobbied for passage of this bill and provided the original draft legislation. The bill has two main parts: (1) implementation of the provisions of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) and (2) implementation of the provisions of the procedural Patent Law Treaty. These treaties have both been signed by a president and ratified by the Senate. However, both require implementation legislation in order to become effective. The idea behind both of these agreements is to streamline the filing of international applications.

On the industrial design front, the two the most substantive elements of the changed law would be (1) an extension of the design patent term by an additional year with the resulting term being fifteen years from issuance; and (2) allowing applicants to include up to 100 different design inventions within a single international design application. About 45 countries, including virtually all of Europe have signed-on to the Hague Agreement (Geneva Act).

The major change with regard to the patent law treaty is that the law would now allow for revival of unintentionally abandoned international applications.

Foley's Hal Wegner has written on the bill with relation to design patents and explains his view that US Design law is in violation of the TRIPS agreement that mandates protection for industrial designs based upon novelty alone. Wegner writes:

Enactment of the new law will have two major consequences for the United States intellectual property community:

First, of immediate interest, once the Geneva Act becomes effective, American industry will be better able to attack knockoff products at their source in overseas producing countries of Asia while also being able to attack such knockoffs in the upper end consumer countries such as Japan, Korea and China and the several states of the European Union.

Second, the apparent violation of the TRIPS coupled with the inadequacies of the design protection law in the United States will refocus domestic debate on the question whether it is time for the United States to implement a better system to protect industrial designs.

Read Wegner's Paper "The New Industrial Design Law, a TRIPS Trap?Download Wegner industrial designs nov12

Technical Amendment to the AIA: A second likely push in the lame duck session will be a "technical amendment" to the AIA. There are currently no official proposed texts and neither the USPTO, the IPO, nor the AIPLA were willing to provide any draft language of what is being discussed. Topics being discussed are (1) reducing the estoppel associated with PGR filings; (2) expanding the scope of prior-user rights to include prior non-commercial users; (3) defining the meaning of "otherwise publicly available" and "disclosure" in redefined Section 102; and (4) allowing IPR during the first-nine-months after issuance for pre-AIA patents. The USPTO does not appear to be pushing for any of these reforms, but other parties are doing so.

USPTO Spending: Assuming that the "fiscal cliff" debate results in across-the-board spending cuts, the USPTO would look to be treated as an exceptional case because it is fully user-fee funded rather than taxpayer funded.

Other Potential Patent Reforms: Fee shifting in software and computer hardware lawsuits (H.R. 6245); Protecting Consumer Access to Generic Drugs (H.R. 3995); Infringement exception for automotive repair parts (H.R. 3889); Research Works Act allowing publication of federally funded research (H.R. 3699); Enhanced Penalties for Counterfeit Drugs (H.R. 3468); Design Rights for Fashion under the copyright laws (S. 3523); Federal civil cause of action for trade secret theft involving interstate or international commerce (S. 3389).

11 thoughts on “Patent Issues in the 2012 Lame Duck Session of Congress

  1. Actually, the most substantive change to US design patents under the new law will be extension of provisional rights to the publication date of the international application, which will occur within weeks of filing. US design patents do not currently enjoy provisional rights, and since the originally filed design claim rarely changes during prosecution, these provisional rights could be significant.

  2. permit appeals of interferences as if they were derivations

    While the may be OK procedurally, this is inapposite substantively.

  3. P.S. The above AIPLA note does not fully discuss the AIA 3(n)(2) transitional provisions, which makes the presence of a claim with an effective filing date prior to March 16, 2013 (or a priority claim to an application* with such a claim) make an application* subject to the current “interference” versions of 35 USC §§ 102(g), 135 and 291.

    That would seem to allow new interferences to be declared long after March 16, 2013 as long as the parties have interfering claims with effecive dates before then?

    *or a patent issued therefrom, presumably

  4. Another widely admitted clear mistake in the AIA needing to be in a “technical amendment” bill is noted in the 8/1/12:
    “AIPLA Direct” headliner:

    “AIA Drops CAFC Review of Interference Cases Filed on or after September 16, 2012″
    “Under the America Invents Act, Federal Circuit judicial review of USPTO interference decisions will not be available for cases filed on or after September 16, 2012, even though interference cases may be filed up until March 16, 2013.[??} For cases filed between those dates, it appears that a party disappointed with an Office decision can only seek district court review in the Eastern District of Virginia under the amended 35 U.S.C. §146.
    Federal Circuit review of interference decisions, currently provided in the fourth sentence of 35 U.S.C. §141, was eliminated by Section 7(c) of the AIA with a revision of Section 141 that provides instead for review of derivation decisions. The effective date of this revision is September 16, 2012 (see Section 7(e) of the AIA).
    District Court review of interference decisions, currently provided in 35 U.S.C. §146 and available only in the District Court for the District of Columbia, was eliminated by Section 3(j)(2)(A) of the AIA, which replaces the word “interferences” in Section 146 with the phrase “derivation proceedings.” The effective date of this revision is March 16, 2013 (see Section 3(n) of the AIA). However, Section 9(a) of the AIA changed the venue provided in Section 146 to the Eastern District of Virginia, and that revision went into effect on September 16, 2011, the date of enactment (see Section 9(b) of the AIA).
    Section 3(i) of the AIA converted the statute for filing interference cases (35 U.S.C. §135) into a statute for filing derivation cases. The effective date of this revision is March 16, 2013, which is when other first-inventor-to-file amendments go into effect (see Section 3(n) of the AIA).
    Section 6(f) of the AIA tasks the Director of the USPTO with issuing implementing regulations for the legislation’s revisions, and Sections 6(f)(3)(A)-(C) apply to pending interferences. Specifically, under Section 6(f)(3)(A), the Director is to develop transition rules for deciding whether an interference:
    (i) is to be dismissed without prejudice to the filing of a petition for a post-grant review; or
    (ii) is to proceed as if the AIA was never enacted.
    Subsections (B) and (C) permit the new Patent Trial and Appeal Board to continue hearing interferences and permit appeals of interferences as if they were derivations (either to the Federal Circuit under Section 141 or to the district court under Section 146). However, subsections (A)-(C) of Section 6(f)(3) apply only to interferences filed before September 16, 2012, and new interferences may continue to be declared after that date until March 16, 2013, the effective date of the new derivation provisions of Section 135.”

  5. Not to mention the fact that it would be impossible for Congress or the USPTO to change much of anything concerning PCT fees. At most, the USPTO could cut its transmittal and search fees, but then they’re going to lose money since they would still have to do a search for PCT applications designating the USPTO as the ISA. And their transmittal fee is only $240.

  6. $4,000+??? Good grief, you can file a PCT application for less than $2,000 in filing fees (assuming no fees for >30 pages).

  7. I’d also add a cheaper PCT option for those just seeking to postpone national filing and don’t need a search report or opinion.

    $4000+ for simply an extension way too expensive for individuals and small businesses.

  8. AIA “technical amendment” (4), allowing IPR during the first-nine-months after issuance for pre-AIA patents, makes a lot of sense. Why should third parties have to wait 9 months before they are able to challenge a patent issuing from an application filed before March 16, 2013? (other than via ex parte reexam) Without this change, we’ve gone backwards rather than forward in terms of challenging vailidity at the PTO.

Comments are closed.