Four Things Every Inventor Should Do by March 15
by Max Stul Oppenheimer
Professor of Law, University of Baltimore School of Law
February 28, 2013
© 2013 Max Stul Oppenheimer
In 2011, Congress enacted a fundamental change to U.S. patent law,(1) changing the priority of the right to a patent from the first inventor to the first to file an application for a patent and redefining what can be used to deny a patent to an inventor.(2) A simple example will illustrate the changes that go into effect this March. Imagine two individuals: Inventor and Filer. Inventor comes up with a patentable invention on June 1, 2012, while Filer comes up with roughly the same invention on March 11, 2013. Both work diligently to perfect their inventions and each plans to seek patent protection. Filer has access to greater funding and moves more quickly, filing a patent application on March 14, 2013. If Inventor files an application on March 15, Inventor will get a patent; if Inventor files the same application on March 16, Inventor will be denied the patent. Therefore, March 15 is a critical date for inventors. Here are four things inventors should do now.
1. Circle March 15 in red on your calendar (or its electronic equivalent)
On March 16, 2013, the U.S. patent system will change dramatically. The most publicized of the changes is the switch from the first-to-invent system adopted in 1790(3) to a hybrid system which will generally award a patent to the first person to file a patent application.(4) Another equally significant change is the definition of prior art—those things which the patent office can use to deny a patent on the basis that someone else developed the invention (or something like it).(5) The first change will rarely help the small inventor;(6) the second change will never help any inventor.(7) Therefore, it is important to keep the transition date in mind and to plan to take action to put your invention under the old system or the new system—whichever is to your advantage.
2. Inventory everything that might be a patentable invention
March 15 is a never-to-be-repeated special offer.(8) This is the time to think through everything that might possibly be patentable so that you can evaluate it and make a reasoned decision. You might remove things from the inventory because they do not seem valuable, but anything that is not filed by the transition date (including things that were overlooked and did not make it onto your inventory) will automatically fall under the new rules and cannot be recharacterized.(9)
3. Talk to your patent lawyer (now, not on March 15)
In most cases, it will be better to fall under the current system than to fall under the new system.(10) The decision is based on specific facts and objectives, though, and the only way to evaluate which is best for a particular invention is to analyze the facts and objectives relating to that invention.(11) March 15 will be a busy day for most patent lawyers; now is the time to meet with your patent lawyer and develop a plan so that there is time to implement it by the transition date. If you don’t have a patent lawyer, the Patent Office maintains a list of registered patent agents on its website.(12) If you plan to act without a lawyer, at least familiarize yourself with the new statute and the new Patent Office guidelines, also on their website.
4. Consider filing applications on March 15
Only you and your patent lawyer can decide what is the correct strategy for your situation—a good place for a disclaimer: this is not legal advice, this is advice to get legal advice. One strategy to consider is filing the most current and complete disclosure possible on the last day to fall under the current rules.(13) To fall under the current rules, an application must be on file with the Patent Office by the transition date.(14) There is a special rule which considers an application on file if it is delivered to a post office, addressed to the Patent Office by Express Mail.(15) Note that Priority Mail does not work; Federal Express does not work; UPS does not work. If you use this rule, be sure to comply with all of its requirements or your filing date will be the date the Patent Office actually receives your application, (which will probably be too late).
A comparatively inexpensive option is to file one or more Provisional Applications.(16) Recently released Patent Office guidance indicates that an invention fully disclosed will fall under the current rules, even if the claims are added after the transition date (in a Non-Provisional Application).(17) More conservative inventors (or those with highly valuable inventions) may worry that the Patent Office rule is not the last word—the statute is—and prefer to file the more expensive Non-Provisional Application.(18) Even more conservative inventors might choose to file a series of Provisional and Non-Provisional Applications(19) in order to afford maximum flexibility as the courts begin interpreting the new statute (or in case Congress enacts additional clarifications). A simple strategy for inventors with unlimited resources would be to file a non-provisional application on March 15 and an identical non-provisional application on March 16, allowing maximum flexibility.(20)
We are facing a radical change in the patent system. It will take years to develop and test new strategies. At the moment, there is uncertainty and risk—the goal for the next month should be to put in place the framework that will minimize risk and afford maximum flexibility to deal with the uncertainty.
(1) See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat 284 (2011), amended by Technical Corrections—Leahy-Smith America Invents Act, Pub. L. No. 112-274, 126 Stat 2456 (2013).
(2) See generally Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 31, 11023, 31, 11024-25 (Feb. 14, 2013).
(3) Patent Act of 1790, 1 Cong. Ch. 7, 1 Stat. 109 (Apr. 10, 1790) (repealed 1793).
(4) The broad definition of patentability under § 102 will deny a patent if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention,” 35 U.S.C. § 102(a)(1), or if the claimed invention is an obvious variation of available prior art. See 35 U.S.C. § 103.
(5) See 35 U.S.C. §§ 102-03.
(6) Companies with significant resources can file multiple applications as an invention develops; small inventors will need to limit the number of filings because of cost concerns and therefore will be exposed to the risk of intervening filings. Congress provided a discount of $210 for the first 3 applications by small inventors. This discount pales by comparison to the total cost of preparing and filing an application, and the limited number of applications to which the discount applies precludes small inventors from using some of the safer strategies (e.g., filing a new application with every change in the inventor’s conception of the invention.)
(7) This change expands the definition of prior art. In other words, more things can be used to deny a patent. See generally U.S. PATENT AND TRADEMARK OFFICE, MANUAL OF PATENT EXAMINING PROCEDURE §§ 901-05 (8th ed., rev. 2012) available at http://www.uspto.gov/web/offices/pac/mpep/mpep-0900.html.
(8) Pursuant to the U.S. Patent and Trademark Office’s examination guidelines: "If an application (1) contains or contained at any time a claimed invention having an effective filing date that is before March 16, 2013 . . . and (2) also contains or contained at any time any claimed invention having an effective filing date that is on or after March 16, 2013 . . . then AIA 35 U.S.C. 102 and 103 apply to the application." Examination Guidelines to the First Investor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 31, 11059, 31, 11072 (Feb. 14, 2013).
(10) The advantage of being under the old system is that an inventor can antedate any prior art that was not available more than a year before the inventor’s application date. See 35 U.S.C. §§ 102-03.(11) There are limited circumstances in which the new system will be better, but they depend on the first inventor failing to file an application before the transition date.
(12) The U.S. Patent and Trademark Office website is located at http://www.uspto.gov.
(13) It is critical that the application be as complete as possible. Section 112 requires that: "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same." 35 U.S.C. § 112(a). If it is necessary to add critical details later, the application will fall under the new law.
(14) See U.S. PATENT AND TRADEMARK OFFICE, MANUAL OF PATENT EXAMINING PROCEDURE § 501 (8th ed., rev. 2012) available at http://www.uspto.gov/web/offices/pac/mpep/s501.html.
(15) See id. at § 513 available at http://www.uspto.gov/web/offices/pac/mpep/s513.html.
(16) Provisional applications do not require the drafting of formal claims and are less expensive to file. They are not, however, examined and cannot be issued as patents. They can only serve as the basis for filing a Non- Provisional Application. See 35 U.S.C. § 111(a).
(17) See Examination Guidelines to the First Investor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. at 31, 11032.
(18) See 35 U.S.C. § 111(b).
(19) Patent applications may now, and after the transition will be able to, claim the benefit of earlier applications. However, the patent office regulations would place an application under the new rules if any new matter is added to a later application in order to support the claimed invention. See Examination Guidelines to the First Investor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. at 31, 11072.
(20) This strategy offers the best of both systems—the applicant will beat any subsequent inventor (as under the pre-transition system) and also will beat even a prior inventor who fails to file before the transition. The strategy only fails against a prior inventor who files before the transition; there is no strategy which will (or should) succeed against such an inventor. Practitioners will recognize that under the “double-patenting” principle, both applications cannot issue as patents, so an election will eventually need to be made. See In re Lonardo, 119 F.3d 960, 965 (Fed. Cir. 1997) (discussing doctrine of double patenting); see also U.S. PATENT AND TRADEMARK OFFICE, MANUAL OF PATENT EXAMINING PROCEDURE § 804 (8th ed., rev. 2012) available at http://www.uspto.gov/web/offices/pac/mpep/s804.html (defining “double patenting”). A more sophisticated tactic, beyond the scope of this note, eliminates the double-patenting problem, but even this simple strategy allows the inventor to defer making the election until substantive examination which will probably be far enough in the future to allow the situation to be clarified by further regulatory, judicial and perhaps legislative developments. See 37 C.F.R. § 1.78(c) (2012).
The Shadows of Social Networking
By Kyle Gregory February 19, 2013
In a new age where of lawyering technology allows distinct advantages. Many people fail to protect their information adequately. Attorneys, seeking to gain every possible advantage, have started to seek out information on social networking websites for witnesses and the opposition, while praying that their own client has not used social networking websites to vent about their legal issue. This new age of technology has raised new ethical issues on the usage of information gained over these websites. With these new issues falls the shadow, where the line between zealously advocating for a client and an ethical violation is blurred.
In Philadelphia, an attorney sought out a third-party to gather information on an opposing party's witness for purposes of impeachment. The witness’s Facebook page was set to private. The third-party, who was helping the attorney, used all real information in the Facebook friend request, but did not disclose that the purpose of the proposed “friendship” was to gather information and report it back to the opposing lawyer.
An article from the Philadelphia Bar(1) offered an advisory opinion that discusses whether the use of information gained through this method is permissible under the Pennsylvania Rules of Conduct and if it is, if that information is usable in an action. The first discussion was quickly resolved and the principle of it should be nationally applicable: the third party is acting on behalf of the attorney and therefore the attorney is responsible for the actions on his behalf. The real controversy stems from whether the friend request and subsequent reporting back of information would an ethical violation that would disallow the use of information in court.
The Philadelphia Bar argued that the openness of the page by friends, or the amount of information shared to everyone on the friends list, does not make the action any more ethical. The Philadelphia Bar would go on to suggest that this action by the third-party on behalf of the lawyer was a covert activity that by its very nature a false statement, which violated Pennsylvania's “Truthfulness in Statements to Others” rule (Rule 4.1). The actual text reads as follows
In the course of representing a client a lawyer shall not knowingly:
(a) make a false statement of material fact or law to a third person.
I disagree with the advisory opinion. With no false profile being an issue here, the witness's openness to adding friends and failure to safe guard the information on her account is a reflection that the witness was volunteering the information for anyone who wished to send a friend request. There was no coercion or trickery, even when the ultimate purpose of the friendship addition was to report information back to the lawyer.
Another issue stems from this when a “fictitious profile” is created. The government has admitted that it uses fake profiles in an attempt to gather information on individuals.(2) The process often includes adding friends of that person first, in a direct attempt to show mutual friends and then uses a picture from an attractive member of the sex to which the person is attracted. The mutual friendships that are shown often ease the fears of the person on the other end of the government espionage. The person may get a false sense of security and think that they knew the person from a bar, convention, or even school (which is often listed as the same high school or college in invitations). This is a clear example of action, which if it were performed by lawyers, would be in clear violation of the “Truthfulness in Statements to Others” rule. This is an example of an action that should be declared clearly unethical. Without a fake profile, fake information, or the like the original scenario discussed in the Philadelphia Bar article should not be seen as a violation of Rule 4.1. In the clear letter of the code, there was no false statement made, only a friend-request suggested.
As it has been discussed, no direct violation of the words of the statute has occurred, but the intents and spirit of the code must be discussed. The intent of the lawyer was to gather information that was openly available to everyone on the list. The situation in the article suggests (although does not prove) that the witness in question, like many others, accepts friend requests from anyone. It took no deceit to be added. In this same sense, in the Rules of Evidence which controls what evidence may be admitted by police action, can help shed light on this topic. There is an exception in criminal law that allows evidence to be used which was available in plain view. For example, if a police officer sees an illegal narcotic through a window with open curtains from outside the house, that police officer is in a permissible place. Along with two unrelated prongs, this satisfied the requirement of permissibility to be used in court and is not seen as an unethical action by the officer (Horton v. California, 496 U.S. 128, (1990).) In the same manner, the person who is open to every friend request and does not hide their information is “opening the curtains” to that information. To send someone to view that information and to report back should not a violation of ethics due to the same principles used that allows police to observe things when they are in permissible locations. The case for the “Philadelphia scenario” involved the witness having to explicitly “accept” a friend request from the third-party who was acting on the attorney's behalf, which granted and arguably encouraged the postings to be viewed by the third-party. Because of the muddled line between zealous advocacy and an ethical violation, if there is no direct deceit, using data gained from a social network page should be permissible.
As this issue is discussed nationally, it will bring forth other issues dealing with social networking as lawyers continue to attempt to get an edge on their opposition.
TEXTING & DRIVING LAWS MAY STIFFEN IN WAKE OF COURT CASE
By Chris Lind June 8, 2012
Bad news for texting and driving offenders: Most people agree text messaging on your cell phone while driving is dangerous. Unfortunately, this doesn't seem to deter many people, especially young drivers. All of that may be about to change ...
A teenager was recently convicted of vehicular homicide and negligent operation of a motor vehicle as a result of texting while driving. In February of 2011, Aaron Deveau's car crossed the centerline on a street in the northeast part of Massachusetts. Deveau's car slammed into the vehicle driven by fifty-five-year-old Donald Bowley. Bowley suffered severe injuries and eventually passed away. Bowley's girlfriend, aged fifty-nine, was also in the car with him and suffered serious injuries.
Eighteen-year-old Aaron Deveau was sentenced to two-and-a-half years on the vehicular homicide charge and two years on the texting and causing injury charge. As long has he abides by the rules of his probation, he will only end up serving one year in prison. His license will also be suspended for fifteen years.
This landmark case illustrates the potentially impending shift among courts to severely stiffen penalties for negligent and reckless driving involving cell phone use. The Massachusetts District Attorney in this case acknowledged "there are no winners today." However, the goal is to deter future injuries and deaths from texting related auto accidents.
News of this case is not going unnoticed. Oklahoma lawmakers are not sitting still with regard to driver safety and cell phones. While this Massachusetts court decision does not technically bind Oklahoma court rulings, it can certainly be used by prosecutors to increase penalties.
RIGHT TO PRIVACY GETS A LITTLE WEAKER
By Chris Lind March 8, 2012
A ruling came down from the Federal Appeals Court for the 7th Circuit Wednesday, February 29, 2012, creating a new law that police can now search your cell phone for phone numbers without a warrant. The courts' reasoning heavily relied upon the premise that the invasion of privacy in most cases will be very slight compared to the risk of law enforcement potentially losing access to this information. In his opin-ion, Judge Posner compared a cell phone to a diary, saying "Just as police are entitled to open a pocket diary to copy an owner's address, they should be able to turn on a cell phone to learn its number, he wrote. But just as they're forbidden from examining love letters tucked between the pages of an address book, so are they forbidden from exploring letters in the files of a phone."
The prosecution pushed for the ability to search all cell phone information and argued that in this digital age, there is a high risk that suspects could erase their cell phone information remotely. The court rejected that argument in the case but still ended up leaning in that direction. The court limited the warrantless search capability to phone numbers only. "Lurking behind this issue is the question whether and when a laptop or desktop computer, tablet, or other type of computer (whether called a 'computer' or not) can be searched without a warrant," Judge Richard Posner wrote for the three-judge panel. In raising this limitation, he gave the example of the iCam, which is a device that allows a person to wirelessly connect a phone to a computer and utilize the webcam. An iCam, or similar device, would allow a cell phone user to instantanesouly view the interior of a home. "At the touch of a button, a cell phone search becomes a house search," the judge wrote.
These are the two main things you need to know about this new law: First, even though police officers may not need a warrant to execute a search for numbers in your cell phone, this act still constitutes a "search" under the Constitution. Therefore, according to the 4th Amendment and subsequent cases, probable cause is still required for the search to be legal. Second, as was stated earlier, this search is extremely limited. A smart phone can contain e-mails, pictures and all kinds of personal information. Under the new ruling, the warrantless search must be limited to phone numbers only. While it may be practically impossible for a searching officer to only see the numbers, the search must be reasonably tailored to achieve for this purpose.