Mark-Up and Commentary on the Patent Law Treaties Implementation Act of 2012

By Dennis Crouch

I have posted a draft Mark-Up and Commentary on the Patent Law Treaties Implementation Act of 2012.

Download it here: patentlyo.com/PLT.pdf.

At this point, the mark-up is very much a draft. I will release a more final version once the bill is enacted. President Obama is expected to sign the bill into law at least by December 21, 2012.

The following is my introduction to the document:

* * * * *

On December ___, 2012, President Obama enacted the Patent Law Treaties Implementation Act of 2012, Public Law No 112-___ (S. 3486).

The new law is designed to implement two patent law treaties:

(1) The Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva on July 2, 1999 (“Hague Agreement”) and

(2) The Patent Law Treaty (“PLT”).

Both treaties were ratified by the Senate without opposition in 2006, and both are intended to simplify the formal obligations and reduce costs for American rights-holders when seeking patent protection outside the United States. A corollary result is that that treaty implementation also eases the obligations of foreign rights-holders when seeking patent protection within the United States.

The Hague Agreement

Implementation of the Hague Agreement creates an international design application that can serve as the basis for filing industrial design applications in countries around the world. The new provisions are codified in ten new sections of the Patent Act and a handful of amendments within the statute. See 35 U.S.C. §§ 381 – 390. In addition to the added statutory language, the USPTO is also required to “perform all acts connected with the discharge of its duties under the treaty.” 35 U.S.C. 382. One such obligation is to forward any international application to the International Bureau of WIPO who would then publish the application. Currently, most international design applications are filed directly with WIPO. However, it seems that the US structure will likely encourage applicants to file the international application in the US first.

The international design application is roughly the design parallel to the international utility patent application known as the PCT application. This should significantly reduce the cost of obtaining design protection in additional countries. Although the Hague Agreement is an important step, global industrial design laws vary widely. The next relatively small step toward harmonization would be to rationalize the various rules and laws regarding drawings in design patent applications. Drawings are especially important for design rights because those drawings typically define the scope of rights being claimed. At this point, harmonization on this front does not necessarily require further negotiations within the Hague Agreement but could instead be accomplished through bilateral and multilateral agreement between the various offices administering the design rights.

For domestic applicants, the new law extends the term of design patents by an extra year to 15-years as calculated from the design patent’s date of issuance. In the US, no maintenance fees are due and so design patents tend to remain in force for their entire 15-years unless subject to any terminal disclaimers.

International design patent applications are published soon after filing. However, an applicant can delay the publication for up to 30-months. Upon publication, those design applications will be considered prior art as of the application filing date. The publication will also create the prospect of provisional rights under 35 U.S.C. 154(d)(1) to allow a patentee to collect back-damages against unauthorized pre-issuance usage of the design by someone with actual knowledge of the pending application. For several reasons, provisional rights been only marginally useful for utility patent holders. However, there is some expectation that provisional rights will be more useful for design patent holders because (1) the patents more often cover products released on the market during the application period; (2) design inventions are more often copied but those copies easier to identify; and (3) design patents are more rarely amended during prosecution.

Patent Law Treaty

The Patent Law Treaty is a procedural treaty that is designed to limit formal and procedural requirements that countries can place on patent applicants and patentees. The Patent Law Treaty also provides a particular filing date standard.

The key change is that a utility application will now be given a filing date even if filed without claims. 35 U.S.C. 111. The quasi-requirement of drawings is also removed from the filing date requirement. Thus, the filing date requirement will now read as follows: “The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.” Id. Some applicants will rely upon this change to reduce the immediate transaction costs of moving from a provisional application filed without claims to a non-provisional application that previously required claims.

Purpose

This volume is intended to serve as helpful tool in understanding implementation of the new provisions of the law and should be especially helpful for those wanting to understand how the law has changed.

40 thoughts on “Mark-Up and Commentary on the Patent Law Treaties Implementation Act of 2012

  1. Dennis is right about this. I wrote too soon. I looked again and the Act amends Section 154(d) to include a reference to ” the treaty defined in section 381(a)(1) designating the United States under Article 5 of such treaty”. And the Act provides a brand-new Section 381 which defines that Treaty as “the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva on July 2, 1999″. So yes the provisional rights are there.

    Sorry about that, Dennis!

    Carl

  2. The article says “The publication will also create the prospect of provisional rights under 35 U.S.C. 154(d)(1) to allow a patentee to collect back-damages against unauthorized pre-issuance usage of the design by someone with actual knowledge of the pending application.” But 35 USC § 154(d) says that if the publication of an international application is to give rise to provisional rights, the IA must be “filed under the treaty defined in section 351(a)”. 35 USC § 351(a) says “the term ‘treaty’ means the Patent Cooperation Treaty done at Washington, on June 19, 1970.” So I don’t think the US accession to Hague gives rise to provisional rights under Section 154(b).

  3. (1) Very likely none, and almost certainly none if the communications link does nothing more than connect the device to the Internet. But, I’d have to see the claim.

    (2) It could make a difference, but I’d have to see the claim. The difference over the prior art would have to be more than merely the information content, of course. But the availability of a different type of information could conceivably drive a new/non-obvious process for selection of and/or presentation of that advertisement. At this point in time, however, the bar should be pretty darn high.

    Serious answer. Have at it.

  4. LOL – talking about paying attention:

    Malcolm Mooney said…
    “Obviously someone wasn’t paying attention in quantum mechanics class. ALL mater appears to behave as either ”

    Zzzzzzzzzzzzzzzzzzzz

    LOL

  5. Point of novelty is the claim as a whole…. D’oh!

    All you CAFC clerks…” you forgot to mention Breyer’s clerks who did not get your oldstep claptrap memo and instead went with the integration memo.

  6. Must have been some alternate universe of yours, MM.

    Nope.

    link to patentlyo.com

    See, e.g., Sept 20 3:18 pm comment from “metoo”. Took all of 30 seconds to find that.

    Also, just fyi, note this comment:

    the point of novelty in a method claim can’t be a recited “mental step.” — Sep 20, 2007 at 08:19 PM

    Thank you. Thank you very much. Beat the Supremes to it by at least 4 1/2 years. Please pay attention, all you CAFC clerks. Don’t embarass yourselves again.

  7. She has a tendency to ask the wrong questions

    Because the most important news in the world of IP is the record number of claims that were rejected this year.

    Too bad The Onion doesn’t have a regular column on patents. They could use you, man.

  8. Must have been some alternate universe of yours, MM.

    Maybe the same one those d@mm Diehrbiots were crushed by the Bilski decision.

    Where do you buy those nice shiny hats you wear?

  9. I doubt her natural biases and inclinations as has been exposed on previous articles that she has written.

    She has a tendency to ask the wrong questions and gather the wrong data in order to support positions already made up firmly in mind. It is results-driven “academia” at its worst.

  10. Here’s a question: for the purposes of examining a broad claim to a method of analyzing information on a device for determining an advertisement to be presented to a user of that device, what possible patentable difference could it make (1) whether the device in question is mobile or immobile and (2) what type of information is used?

    Assume the application was filed after the invention of the portable phone and the computer.

    It’s a serious question. I know the answer but I’m curious to see how many people don’t know the answer and how much kool-aid you have to drink to be so incredibly wrong about basic aspects of patent law.

  11. Those twinkles in the night sky are “transitory” but have been “transitory” longer than mankind has been in existence.

    That’s interesting. I seem to recall that silly “argument” being floated here back in the day when Nutjen was still alive and kicking. I remember predicting that it was a non-starter.

    I was right.

  12. try to understand what the canard is that my fillings told me that you are trying to peddle

    Fixed.

    Please see your dentist, anon. Oh wait: he’s probably a communist from outer space, too!

  13. They do. They have.

    This all feeds the line I have been saying all along – do the quality examination right the first time. All additional examinations will take reducing amounts of time because the applicant cannot add new matter after the initial filing.

    And yet, we have true apologists making noise that for some unnamed reason this would be too difficult to do.

  14. Leo, Chico Gholz once said, if a patent is involved in an interference, it is an important invention.  I am thinking we need a further rule of thumb, that for any patent that is held up in the patent office for close to twenty years, the invention must be important.  

    Still, if all the applicant is doing is repeating himself and filing RCE after RCE, I am sure the PTO has the authority to call a halt at some point.  

  15. MM, regarding the entrench pirating the designs of the startups, think Netscape just for starters.  i4i was not alone.  And MS is not the only company that meets the incipient competition with ruthless business practices.

    Regarding the problem of software patents:  I think there are two problems.  One, the subject matter they are claiming is often not eligible subject matter.  But more often than that, the claims are gobbledygook.   Almost no one can understand what is being claimed.  We recently saw a few good example of that from David Stein.  I hope you share my views that we really need improvement here more than anything else.  Both the PTO and the courts need to get serious.

  16. And the publication on Tuesday has nothing to do with the canard that “trolls” like these silly patents.

    C’mon MM, at least try to understand what the canard is that you are trying to peddle and why that canard was actually retired.

    Try to sound just a little intelligent and not on one of your anti-patent benders.

  17. “Riggt, because most of the trolling is in the “computer-implemented” patent space, where quality control is non-existent and one can “invent” all kinds of awesome stuff while relaxing on one’s porcelain throne.”

    This canard was retired a long time ago…

    LOL. And every Tuesday this “canard” springs back to life, in the form of claims to computer-implemented methods of identifying squirrel species or a computer-implemented method of avoiding traffic (it uses real information!!1!).

  18. “most of the trolling is in the ‘computer-implemented’ patent space” because that is where the money is at.

    Much more product, more players, and more “transactions costs” than pharma. MM bet on the wrong horse … and he has been bitc’n about it ever since.

  19. every non-transitory thing in it

    LOL’s on the whole “transitory” argument. Those twinkles in the night sky are “transitory” but have been “transitory” longer than mankind has been in existence.

  20. Riggt, because most of the trolling is in the “computer-implemented” patent space, where quality control is non-existent and one can “invent” all kinds of awesome stuff while relaxing on one’s porcelain throne.

    This canard was retired a long time ago by Peter Zura.

  21. How all this relates to the still pending 17-year from issue applications is not know. I hardly think anyone would prosecute a patent application so long just for its holdup value. But, I might be wrong.

    I suspect you’re right, Ned. There are way too many crappy patents available at flea market prices. If I’m picking the optimal patent for trolling, I don’t want one with a 17-year file history in any case.

  22. i4i’s patents are exactly the sort of patents that should never, ever have been granted by any patent office, anywhere.

    Considering the source, this means absolutely nothing (again).

  23. Ned, I think you’re missing a key finding of Professor Chien’s study which is the near-tripling in NPE lawsuits over the last five years.

    the entrenched pirate their designs

    I’m sure this happens but I would not be the least bit surprised to find that the “entrenched” engage in “design piracy” less often than “startups”. If you have evidence to support a substantial difference in the rates of “design piracy” between the “entrenched” and “startups”, please share.

    What seems rarer are battles between two companies in the same product market. The phone wars and the constant battle between brand drug makers and the generics seem to be an exception.

    Riggt, because most of the trolling is in the “computer-implemented” patent space, where quality control is non-existent and one can “invent” all kinds of awesome stuff while relaxing on one’s porcelain throne.

    As we saw in i4i, many times the reason the startup failed is because the entrenched player pulled the rug out from under the startup

    i4i’s patents are exactly the sort of patents that should never, ever have been granted by any patent office, anywhere.

  24. MM, I would think the startups are sued by entrenched players protecting markets, while the entrenched players are sued by startups, particularly failed startups or their assignees, when the entrenched pirate their designs. Think i4i.

    What seems rarer are battles between two companies in the same product market. The phone wars and the constant battle between brand drug makers and the generics seem to be an exception.

    All of the above are using patents for legitimate purposes. The term trolls, IMHO, should limited to those companies who use the high cost of litigation to extract less than litigation cost settlements because their claims or patents are borderline laughable.

    But the big entrenched want to include in the term troll patents owned by failed startups. As we saw in i4i, many times the reason the startup failed is because the entrenched player pulled the rug out from under the startup, causing the startup to fail, leaving only their patents as an asset. I think we should all recognize what the entrenched players are trying to do with their aphorisms.

    How all this relates to the still pending 17-year from issue applications is not know. I hardly think anyone would prosecute a patent application so long just for its holdup value. But, I might be wrong.

  25. What percentage of the pre-GATT apps are owned by NPE troll types?

    link to bizjournals.com

    This year, about 61 percent of all patent lawsuits filed through Dec. 1 were brought by non-practicing patent-assertion entities, or companies that don’t make products, according to a paper by Colleen Chien, an assistant law professor at Santa Clara University. That compares with 45 percent in 2011 and 23 percent five years ago, she found….

    About 35 percent of startups that have raised $50 million to $100 million have been sued on a patent, Chien said, as have 20 percent of the companies that have raised $20 million to $50 million

    So awesome.

  26. Your legal articles are always so informative and useful! I wish to publish your new articles on Attorney Online, especially in rubric of business law articles link to attorney-online.info There is also an attorney directory where you can submit contacts of all good attorneys you know. They can post to Attorney Blog or legal news regarding their practice.

  27. Claim 1: The world and everything in it.

    Except for those things in Nature’s Warehouse?

    Plus, we need to exclude signals. So, I suggest:

    1. The world and every non-transitory thing in it, excluding items available for purchase from Nature’s Warehouse(tm).

  28. Can the claim be: 1. Anything that may be disclosed that is inventive.

    I think even less than that is required.

    Claim 1: The world and everything in it.

    would be suitable. Maybe some ethical issues with that claim, but nobody really cares about that stuff anymore. Besides, if anyone objected, you could use Judge Lourie’s claim construction theory to argue that the terms should be limited to what was actually described as the invention in the specification.

  29. I sure hope that claims will be required before publication.

    Look at the mark-up of section 111. You’ll still have to file a claim as a missing part, along with the usual fee.

  30. No claims? So third parties are left to guess at what will be claimed from what’s in the “specification”? I sure hope that claims will be required before publication.

  31. The 15-years-from-grant provisions apply even if the design registration is a plain vanilla, US-only, never-published-before-grant design patent rather than the result of a Hague Agreement application. So now the US is not only enabling design registrants to obtain $1B judgements on crappy design patents that shouldn’t have been granted in the first place, and the infringement of which isn’t worth anywhere near that figure. The US is also increasing the likelihood of ensnaring more unwary parties by facilitating design patent applicants’ ability to engage in submarine behavior. You’d have thought the US would have learned from the past. How many years until the term is amended from 15 years from grant to 15 from earliest effective filing date?

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