WEB PATENT NEWS - July, 2003

by Robert M. Hunter, Registered Patent Agent

News about patents, licensing and seed capital sources for inventors and innovating organizations.

CONTENTS

I. THE IMPORTANCE OF BEING EARNEST - In the U.S., it is important for an inventor to be able to prove when conception happened and that diligence in reducing the invention to practice has occurred.

II. USPTO CONTINUES ITS ASSAULT ON SMALL ENTITIES - Independent inventors, small businesses and universities will be hurt if the USPTO 21st Century Strategic Plan is implemented in its current form.

I. THE IMPORTANCE OF BEING EARNEST

In the U.S., the rewards of inventing are earned by being the first person(s) to complete the thinking (conception) step of the inventing process and by being diligent thereafter. This article explains why it is important for an inventor to be able to prove when conception happened and that diligence in reducing the invention to practice has occurred.

Conception is "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice" (MPEP 2138.04). There must be contemporaneous recognition and appreciation of the invention by the inventor for there to be conception. If the question of who was the first to think up an invention occurs (and it does more often than you would assume), the inventor must be able to prove when conception occurred with corroborating evidence.

A common (and sometimes fatal) mistake that inventors make is to fail to document when conception of an invention has occurred. Because a mind is an awfully hard thing to read, documentation involves permanently fixing in tangible form (e.g., writing, sketching, etc.) a description of how to make and how to use the invention. Traditionally, this part of the inventive act has been accomplished by writing in ink the description on laboratory notebook pages that are bound (e.g., sewn in) into the notebook and sequentially numbered. At intervals, each page is witnessed (signed and dated) by a non-inventor who also states that he has "read, discussed and understood" description of the invention under an agreement of confidentiality. The notebooks, which can be purchased in bulk, are stored under lock and key to establish a chain of custody should they become court documents. Experimental electronic versions are also available.

Internet-based services are being developed that will digitally date stamp such a document, thus proving when it was created. While these services can be useful, care must be taken that the description is adequate, that is, it is sufficiently specific and detailed to allow a person having ordinary skill in the field to make and use the invention based solely on the description and his knowledge of the field. (If you can't do that, your invention is not complete and may not even be possible.)

If conception of your invention was not documented at the time it occurred, it should be documented RIGHT NOW. Not being able to prove an earlier conception date can be fatal to patentability, so do not delay.

As it is in the other parts of life, in inventing, diligence is characterized by steady, earnest and energetic attention and effort. To earn inventorship, the person who thought up the invention must be diligent first in reducing the invention to practice and then in making the invention publicly known. (While diligence in marketing the invention is not a requirement of earning inventorship (and does not count as diligence as far as the USPTO is concerned), it is definitely a requirement of creating wealth with an invention.)

Reducing an invention to practice can occur in either of two ways: actual reduction to practice or constructive reduction to practice. Actual reduction to practice involves building and testing a physical embodiment of the invention (not just a drawing) that contains all of the features listed in a future patent claim. The testing must provide evidence that the invention will work for its intended purpose, unless mere construction of the invention is sufficient to demonstrate workability. A process invention is actually reduced to practice when it is successfully performed. Actual reduction to practice may be accomplished by a party other than the inventor, but if testing is by another, the inventor must have had an expectation that the tested embodiment would work for the stated intended purpose and must have submitted the invention for testing of that hypothesis. Moreover, it is the inventor who must recognize and appreciate that the results of the testing show that the invention works. Recognition of an unexpected purpose of an invention by a testing party who is not an inventor and who does not communicate this recognition to the inventor does not benefit the inventor.

Constructive reduction to practice occurs when a patent application is filed on the invention. For technology inventions, the patent application can be a provisional, regular or international application designating at least the U.S. The patent application must contain an adequate written description of the invention (as it is later claimed) and must enable a person with ordinary skill in the field to make and to use the invention. The purpose of the written description requirement is "to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him" (MPEP 2138.05). Abandonment of a patent application results in abandonment of the benefit of constructive reduction to practice (but may still provide evidence of conception).

In the instance of constructive reduction to practice, diligence must be practiced both by the inventor and by the registered patent practitioner (attorney or agent) he has retained to prepare his patent application. The law does not require that "an inventor or his attorney . . . drop all other work and concentrate on the particular invention involved . . ." (MPEP 2138.06) but the parties must be reasonably diligent from just before another party independently conceives the same invention until reduction to practice by the first party to conceive.

The period during which diligence is required must be accounted for (in your laboratory notebook) by either affirmative acts or acceptable excuses (e.g., vacation, ill health, daily job demands, research and procurement activities, work on a closely related invention, preparation of an application in the U.S. for foreign filing, etc.). In one instance, a two-day period of inactivity was held to be fatal; in another, less than a month of inactivity was. Efforts to exploit an invention commercially do not constitute diligence and lack of university funding is not an acceptable excuse. It is sufficient for a patent practitioner with a reasonable backlog of unrelated cases to take up an application in chronological order and carry it out expeditiously. Reasonable diligence is established if the inventor and practitioner work reasonably hard on an application during the entire critical period.

In a priority contest in which the USPTO or a court is asked to determine who the true inventor is (which can happen to any applicant), a third action is required of the inventor: making the invention publicly known. The courts have consistently held that an invention, though completed, is deemed abandoned, suppressed or concealed if, within a reasonable time after completion (conception plus reduction to practice), no steps are taken to make the invention publicly known. Making an invention known to the public can be accomplished by filing a patent application that issues as a patent, describing the invention in a publicly disseminated document or using the invention publicly (MPEP 2138.03). In a priority contest, an inventor who did not conceal the invention in question (but who was the later inventor) is treated as the first to invent. However, the inventor whose date of invention is actually earlier, who suppresses or conceals the invention, loses the right to rely on his actual date of invention not only for priority purposes, but also for the purpose of avoiding (being able to "swear behind") prior art. Of course, making an invention public without filing a patent application on it within 12 months of the disclosure is fatal to patentability in the U.S. and making an invention public anytime before filing can be fatal to patentability in many other countries, so filing a patent application is necessary in all cases.

In a priority contest, the location where the inventive acts occurred is important. Only acts that occur in the U.S. or in a North American Free Trade Agreement (NAFTA) or World Trade Organization (WTO) country count in a priority contest. While knowledge of conception can be imported into this country (and provide evidence of a date of conception), the diligent efforts culminating in actual reduction to practice must occur or be repeated here (or in a NFTA or WTO member country) to be effective. This is one of the many xenophobic aspects of U.S. patent law. Filing of a non-U.S. patent application has a similar effect (under the Paris Convention) to the filing of a U.S. patent application (i.e., constructive reduction to practice) but only if a subsequent U.S. application is filed claiming priority in the non-U.S. application within a 12 month period (under U.S.C. 119) and a certified copy of the non-U.S. application is supplied to the USPTO during the pendency of the subsequent U.S. application.

I hope this article has convinced you that not documenting conception of a completed invention or "sitting on" (e.g., not filing a timely patent application on) a completed invention can be fatal to patentability in the U.S. Successful inventors, like I hope you are, understand the importance of being earnest.

II. USPTO CONTINUES ITS ASSAULT ON SMALL ENTITIES

A major lobbying effort by the inventing community was able to prevent the imposition of unbelievably large increases in filing fees by U.S. Patent and Trademark Office (USPTO) in an ill-advised attempt at "behavior modification" by the USPTO. Recently, however, proposed changes in the USPTO 21st Century Strategic Plan have made it clear that small entities (independent inventors, small businesses and universities) will still be disadvantaged compared to large corporations, if Congress allows the revised plan to be implemented by passing the proposed USPTO Fee Modernization Act of 2003.

One way in which the plan will impact small entities to a significantly greater extent than large entities is in USPTO fee increases. Under the plan, for basic applications (3 or fewer independent claims, 20 or fewer total claims and 100 or fewer sheets of paper), large entity fees for filing, search and examination will increase by about 33 percent (to $1,000). For the same application, small entity fees will increase by about 100 percent (to $750), because the search fee is not reduced for small entities (as other fees are) under the plan. (Editor's Note: This problem is eliminated in the version of the bill passed by the House, H.R. 1561.)

For applications concerning more complex inventions (which tend to be larger and contain more claims), the fee for each independent claim over three will be increased by 138 percent and the fee for total claims over 20 will increase by about 177 percent. Applicant filing applications exceeding 100 pages in length (specification, abstract and drawings) will be required to pay an additional $250 for each 50 pages or fraction thereof.

Paradoxically, the plan still calls for hiring 2,400 fewer Examiners (Federal employees who examine patent applications) through fiscal year 2008 when compared to 2003 Business Plan projections, even as average pendencies in some high tech fields are currently exceeding 37 months. Theoretically, if everything works according to plan, applicants with deeper pockets will eventually be able to pay more for accelerated examination and priority processing, with a promised pendency time of no longer than 12 months.

Some of the more onerous aspects of the plan subtly shift power from small entities to large corporations. For example, the plan proposes to eliminate the right of applicants to request non-publication of their applications at 18 months after the priority date. This exception was hard fought for by small entities. Because the inventions of small entities are often less developed when the first patent application is filed, publication can expose small entity technologies to those with the capital to "patent around" the embryonic inventions. Publication also currently adds $300 to patenting costs (paid at the time of patent issue), an amount that is likely to increase.

Another power-shifting aspect of the plan is the adoption of the European post-issue opposition not only within a year of issue (as is the case in Europe) but whenever anyone is "threatened" with a patent infringement suit (i.e., when the alleged infringer has "some substantial apprehension of being sued"). This change would allow infringers with lots of money to invest in lawyers to subject small entities to multiple hearings challenging one or more claims in their issued patents. The USPTO has not explained how its procedure would differ from opposition procedures now followed in Europe which the USPTO admits "are perceived as expensive and allowing for vexatious litigation." (While patent infringement litigtion is expensive for both sides, at least it is the patentee who decides to initiate it and benefits financially if he prevails in court. With post-issue opposition, the only benefit that accrues to the patentee is an expensive second USPTO opinion as to whether his patent is valid.) In fact, this aspect of the European patent system is thought by many to be one of the primary reasons so few European patent applications are filed by small entities. With such a blind desire to copy the ineffective processes of other patent offices in the name of "global harmonization," is the first-to-file system that has been fought off by small entities successfully for years again in our future?

A particularly worrying part of the plan is being proposed with a "carrot" and "stick" approach. The "carrot" is that plan proposes that the U.S. adopt the Patent Cooperation Treaty (PCT) "unity of invention" standard. This change would be welcomed by many as it would allow related inventions to be examined in a single application. The "stick" is that it appears that the USPTO would like this change to be coupled with a rule that would limit the number of independent claims in an application to one per category of invention (e.g., product, process, apparatus or use). This would be even more limiting than the actual EPO rule from which the concept is purportedly derived. In that the value of a patent has been shown to be a function of the number of independent claims, this change would adopt another failed approach from Europe. By the way, comments on this aspect of the plan must be submitted by July 21, 2003.

The USPTO claims that the proposed 21st Century Strategic Plan is supported by "nearly 100 of the largest American companies and intellectual property groups." Given the benefits large corporations will receive, that support is understandable (even though it has been conditioned on the complete termination of the diversion of user fees into the general fund, something the plan does not call for). If you have an opinion on specific aspects of the plan or the act and regulations that will implement it, please express that opinion both to the USPTO and to Congress (Senate and House). Hopefully, the voices of small entity inventors can once again prevent weakening of a patent system that has served the U.S. well for over 200 years.

Aloha,

Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
65-1116 Hoku'ula Rd.
P.O. Box 2709
Kamuela, HI 96743
tel (808) 885-4194
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