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Patent Developments in the U.S. and Europe

Client Advisory

February 6, 2013

U.S. Patent System

Change in Filing System:  Beginning March 16, 2013, the first applicant to file a patent application in the U.S. Patent and Trademark Office (USPTO) will have the right to pursue patent protection on that invention. This new system is appropriately called a First-to-File system. The upcoming First-to-File system contrasts with the current one, the First-to-Invent system.  Under the current First-to-Invent system, it does not matter that the inventor did not file the application in the USPTO first; rights to pursue patent protection are given to the first inventor to conceive and reduce the invention to practice.

The move to the First-to-File system requires changes to U.S. patent laws, which until now were tailored to the current First-to-Invent system. With the First-to-File system, the scope of prior art will be expanded. After March 16, 2013, the USPTO will treat a U.S. patent or U.S. application publication reference as prior art as of its earliest effective filing date irrespective of the country in which it is filed. Prior art will also be expanded to capture public use or sale anywhere in the world. In addition, under the First-to-File system, the USPTO will consider commonly owned or joint research agreement patents or patent application publications to be of the same inventive entity for novelty and obviousness reasons.

Inventors will lose some opportunities available under the First-to-Invent system. For instance, inventors will no longer have the ability to swear behind a reference in an attempt to demonstrate they had conceived and reduced the invention to practice before an earlier filed patent application. Also, prior art will no longer be limited to the earliest effective U.S. filing date of a reference. Likewise, prior art acts such as public use or sale will no longer be limited to activities within the U.S.

Applicants who have complete inventions should take advantage of the current First-to-Invent system before the March 16, 2013 deadline. We expect many inventors will seize this opportunity. Please contact us immediately if you hope to file under this soon to be defunct system. 

Reduced Fees for Micro Entities: Currently the USPTO offers a 50% reduction in patent fees for an applicant who qualifies as a Small Entity.[1]  However, starting March 18, 2013[2], the USPTO will offer a 75% discount on patent office fees to a new applicant class called a Micro Entity. Applicants may qualify as a Micro Entity in two ways. In general, the first way is to be an individual or an organization with fewer than 500 employees, comply with gross income limits[3], not be named on more than four previously filed patent applications and not have assigned the application to an entity that exceeds the gross income limits. The second way is to be employed by a higher educational institution or convey ownership in the application to a higher educational institution.

Standardized Design Application Filing: Today, applicants must meet numerous conditions to file foreign design applications. These applicants must file one design patent application directly in each country of interest, provide translations and amend drawings, where necessary, and pay filing and related legal fees multiplied by the number of filings. A more simplified filing process will be available for design applicants under the Patent Law Treaties Implementation Act of 2012, however this law will not go into effect until about December 18, 2013.[4]

Under the Patent Law Treaties Implementation Act of 2012 a U.S. applicant[5] seeking foreign design patent protection need only pay one fee and file a single international design application designating the U.S. and the certain foreign countries of interest. For example, if an applicant files an international design application in the USPTO, the USPTO checks the application to ensure it meets formalities and then sends it to the selected jurisdictions for examination and, if appropriate, registration. Applicants stand to receive additional benefits under the new law.  For instance, publication of the international design patent application gives applicants the right to make damages claims as of the application publication date.  Also under the new law, a design patent granted from an international design patent application will have a 15 year patent term compared to the 14 year patent term currently available.

European Patent System

At present there are two ways to seek patent protection in Europe: 1) by filing a European Patent application in the European Patent Office (EPO) or 2) by filing an application directly in a European country.  Starting in 2014 a cheaper third option will be available called a European patent with unitary effect (“Unitary Patent”). By filing a patent application for a Unitary Patent, applicants avoid having to pay costs to translate or validate a patent in individual European countries. Under this third option applicants need only file an application in English, German or French and once the patent issues from the EPO it will automatically be enforced in the 25 countries that accept the Unitary Patent.  Notably, Italy and Spain are not party to the new system for language reasons. The European Union will also create a Unified Patent Court in hopes of providing uniformity in interpretation of patent laws and fostering patent enforcement in Europe as a whole.


For more information concerning the matters discussed in this publication, please contact the authors, Libby Babu Varghese (212-238-8727, varghese@clm.com) or Keith D. Nowak (212-238-8610, nowak@clm.com), or your regular CL&M attorney.


 

Endnotes


[1] In short, the USPTO grants Small Entity status to a person or organization with fewer than 500 employees.

[2] The Micro Entity fee goes into effect two days after the change in filing system, thus applicants cannot take advantage of both the First-to-Invent system and reduced fees as a Micro Entity.

[3] The applicant must certify they did not have a gross income exceeding three time the median household income for the calendar year preceding the year in which the application is filed. Thus, an applicant filing a patent application in 2013 would have to meet the gross income limit based on the 2012 median household income.

[4]The Patent Law Treaties Implementation Act of 2012 states the law shall take effect the later of December 18, 2013 or the date of entry into force of the treaty with respect to the United States.

[5] U.S. national, domicile, resident or an industrial or commercial establishment in the US.



Carter Ledyard & Milburn LLP uses Client Advisories to inform clients and other interested parties of noteworthy issues, decisions and legislation which may affect them or their businesses. A Client Advisory does not constitute legal advice or an opinion. This document was not intended or written to be used, and cannot be used, for the purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to another party any transaction or matter addressed herein. © 2017 Carter Ledyard & Milburn LLP.
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