For patent law, 2013 was an excited year in many ways. By my count, some 279,900 utility patents issued (last–first). Many of those issued under the old First-to-Invent rules which were in effect for applications filed prior to March 16, 2013. Which is one of many of the major changes in Patent Law in 2013.
7. You can sue your attorney for patent law malpractice in state court.
The Supreme Court ruled in Gunn v. Minton that state courts have subject matter jurisdiction over a state law claim alleging legal malpractice in a patent case. In this case, Vernon Minton obtained a patent and sued the National Association of Securities Dealers, Inc. and the NASDAQ Stock Market, Inc. for infringing it. The trial court ruled that the patent was invalid as a result of the item in question being sold more than a year before a patent application was filed (the on-sale bar). Mr. Minton thought that, under patent law, his use was not a sale, but rather was an experimental use, which does not trigger the on-sale bar to patentability. Nonetheless, his attorney failed to raise that argument and Mr. Minton sued for malpractice.
Jerry Gunn and others were the attorneys for Mr. Minton at trial and they were sued in state court. Mr. Gunn won, Mr. Minton on appeal, raised that the trial court lacked jurisdiction to hear the case and the case should be dismissed. He reasoned that patent cases should only be heard in Federal Court. The Texas appellate courts struggled with the issue until the U.S. Supreme Court found that state courts had jurisdiction to hear malpractice cases, even those involving patent law issues.
6. If you want to plant seeds protected by patent law you need a license.
In Bowman v. Monsanto, Vernon Bowman is a farmer in Indiana who grew two crops of soybeans a year. For the first crop, he purchased seed protected under patent law from a seed dealer who had a license from Monsanto (the patent owner) to sell the seed for growing purposes. For the second crop, he purchased the same patented seed from a grain elevator who had no license to sell the seed for growing purposes and merely was selling the crop for human or animal consumption. Obviously, the second crop was much less expensive. Monstanto sued Mr. Bowman for patent infringement for failing to obtain a license to plant the seed.
Mr. Bowman defended saying that under the patent law doctrine of patent exhaustion. That is, Monsanto gets one royalty per patented seed. Here Monsanto received a royalty for the seed when it was first planted and that exhausted the patent before the seed ever made it to the grain elevator. Monsanto countered that seed is a “self replicating technology” which is exhausted only for that seed when first sold, if another seed comes into being after the fact the second seed is now an infringing seed. The Supreme Court agreed with Monsanto.
5. A naturally existing strand of DNA cannot be protected under patent law, but a process for isolating it and a modified gene are patentable.
Myriad Genetics is a company formed by scientists at the University of Utah to locate genes that indicate a higher risk for cancer. It succeeded in locating the BRCA-1 and BRCA-2 genes and created a diagnostic process for locating those genes. Myriad received protection under patent law on the isolated genes, themselves (DNA), and modified versions of these genes (cDNA).
The Association for Molecular Pathology, sued, alleging that these patents were should not have been granted by the U.S. Patent and Trademark Office because they were naturally existing compositions of matter, and therefore no patent should have been granted. Myriad disagreed stating that removing a DNA strand necessarily requires changing it a bit and this slightly modified strand is patent eligible.
The U.S. Supreme court in Ass’n for Molecular Pathology v. Myriad split the difference. The Court pointed out, “Myriad’s principal contribution was uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes within chromosomes 17 and 13.” The Court concluded, “but that discovery, by itself, does not render the BRCA genes ‘new … composition[s] of matter,’ § 101, that are patent eligible.” However, “a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring” and is therefore patent eligible under the patent law.
4. The patent law changed when First-Inventor-to-File rules went into effect on March 15, 2013.
The Leahy Smith America Invents Act changed the patent law in the United States from a “First-to-Invent” to a “First-Inventor-to-File” scheme in 2011. However, the change did not go into effect until March 15, 2013. I had some reservations about how the “First-Inventor-to-File” system would encourage those, who are not inventors, to patent the inventions of others in a law review article in 2011.
Under the change in the patent law, filing a patent application quickly becomes extremely important. If someone else files a patent application before you on your invention, that person will get the patent (assuming the invention is patentable). Typically, I recommend filing a provisional patent application shortly after conceiving an invention while you test the invention in the marketplace. I would be happy to discuss that with you in more detail.
3. Fees for filing are now substantially reduced for micro entities.
On March 19, 2013, USPTO rules went into affect clarifying the patent law requirements that allow a 75% fee reduction for inventive entities that meet certain requirements. Briefly those requirements are: 1) employ less than 50 people 2) Not be named on more than four previously filed applications (unless those applications are assigned to someone else) 3) Not have a gross income more than three times the median household income in the previous year from when the fee(s) is paid. 4) Not be under an obligation to assign, grant, or convey a license or other ownership to another entity that does not meet the same income requirements as the inventor. If there are multiple inventors, each inventor must individually meet this criteria.
I realize that this is a bit confusing, one of my colleagues has created a calculator to resolve these issues. Feel free to try it out and enter my email address (mobrien@lawyer.com) and we will talk about the results.
2. Provisional rights under patent law are now extended to International Design Patent Applications under the Hague Agreement Concerning International Registration of Industrial Designs.
Under the patent laws, a utility patent protects the useful features of an invention whereas a design patent protects the ornamental features of an invention. Utility patents have substantial claims that normally undergo at least some changes as a result of prior art located during prosecution. Design patent applications have a single claim that does not change during prosecution. However, the drawings can sometimes change. Provisional rights under 35 USC 154 permit recovery of damages for a claim that is “substantially identical” to a claim in a published patent application provided the claim does not change during prosecution. While utility patent application claims change, almost always destroying provisional rights, design applications frequently do not meaningfully change, making provisional rights more valuable.
Once again, getting to the patent office quickly is importation. The Law Office of Michael O’Brien is committed to providing you this quick and valuable service.
1. You can have two more months under patent law to obtain priority from a provisional patent application or international application.
In patent law, a provisional patent application is like a bookmark, it saves your place in line. If the application is enabling under Section 112 of the Patent Act, then a timely filed non-provisional application gets the filing date of the provisional patent application for the portions of the provisional patent application which exist in the non-provisional patent application. Now, a provisional application only lives for twelve months, and then it dies a death of abandonment, so you need to file a non-provisional patent application within a year of the provisional patent application to get the filing date of the provisional patent application.
Likewise, if you file a patent application in another country, you have 12 months to file a patent application in the United States, or the right is lost forever.
Well, what if you forget? Previously under patent law, you would have been out of luck, but because of the Patent Law Treaties Implementation Act of 2012 you now get an extra two months to file a non-provisional patent application if you blow the priority application date, if and only if, the reason that the date was missed was unintentional.
So, what’s unintentional abandonment? Basically, if you made a business decision not to proceed with the application and then changed your mind, then that’s intentional abandonment. However, these situations are fact dependent, feel free to contact me and we can go over your particular situation.