The IP Lawyer, with Stan Baker
(INOV8 welcomes Stan Baker, the IP Lawyer, to its roll of contributors. Stan is a partner in the law firm of FSB FisherBroyles, LLP.)
On Sept. 15, 2011, President Obama signed the America Invents Act (AIA), arguably one of the most important pieces of economic legislation in the past 75 years.
There have been many philosophically tinged articles about how the AIA will either restore/maintain America’s technological preeminence or mark the beginning of the end of the independent inventor. This article does not seek to explain the intricacies of the AIA. Instead, it addresses an aspect of the AIA that might come in handy for any business with a competitor – the ability to potentially scuttle a competitor’s patent application.
Currently, most US patent applications remain secret for 18 months after which they are open for public inspection. Competitors often use this information to monitor each other’s research activity.
However, having access to data and acting on that data are two different things. Suppose Company A discovers that Company B is attempting to patent a widget that could seriously damage Company A’s widget market share. Suppose further that Company A believes that Company B is not entitled to a patent because the “invention” is an obvious combination of publicly available components. What can Company A do to stop this threat to its business?
Under current Patent Office rules, the answer is “not much.” Company A can submit to the Patent Office a list of documents as evidence of why Company B is not entitled to a patent. Currently, that is all that it can do. Company A cannot explain why those documents preclude Company B from obtaining a patent. Just as a map with no legend is little more than a collection of dots, a list of technical manuals or patents is nothing more than a bibliography. Most of the time one needs a guide – a legal brief – to explain why documents are relevant. Under current Patent Office rules, Company A cannot provide that guide.
Even worse, under current Patent Office rules, Company A might shoot itself in the foot by submitting those documents. If Company A submits a list of documents and Company B later gets the patent, under current rules it is presumed that a patent examiner considered those documents in issuing the patent. If Company B later sues Company A for patent infringement there is a presumption that the invention was patentable despite the content of those documents.
So what is Company A to do? Before the enactment of the AIA, there were only two options. Company A could either submit all of its documents while Company B’s patent application is pending (a very inexpensive thing to do), or hold on to its documents for use in a potential infringement lawsuit if and when Company B’s patent issues (a very expensive thing to do).
The AIA takes a substantial step forward in relieving Company A’s quandary. Starting in September 2012 competitors will have the ability to challenge the issuance of a patent within the Patent Office and potentially avoid the debilitating costs of a patent lawsuit. Competitors can submit (anonymously if desired) documentation AND argument challenging the patentability of an invention while a patent application is pending. The risk of patent allowance and a presumption of patentability over the submitted documents remain. However, the ability to provide a guidebook to a patent examiner in the form of legal argument explaining exactly why an invention is not patentable mitigates that risk.
Alternatively, under the AIA, a competitor will be able to challenge a patent within the Patent Office after it issues under certain conditions and time frames. The patent community is currently awaiting the Patent Office’s final rules that implement these provisions of the AIA and much more will be known in the coming months. However, it is anticipated that a challenge under these provisions will be far less expensive than a traditional lawsuit.
The bottom line is that, starting in September 2012 there will be much more reason for competitors to keep an eye on each other’s patent application portfolio. For the first time, competitors will have the opportunity to become active participants in each other’s patent examination proceedings. It is likely that your competitors are formulating a strategy to keep abreast of your patent activity and intervene accordingly. Are you developing your own strategy?
(Stan Baker, DVM, is a partner in the law firm FSB FisherBroyles, LLP. He is a graduate of the University of Arkansas, chemical engineering and law, and the University of Georgia, veterinary medicine. Contact him at firstname.lastname@example.org.)