Intellectual Property Update/media/files/newsresources/...Property Update Volume 2, No. 6...
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An invention is only patentable when it is novel and not obvious over what others have invented before, called the “prior art.” Creating prior art citable against a competitor’s patent applications by filing your own patent application can prevent the competitor from obtaining a patent, or the full protection it desires. The U.S. Patent Office’s interpretation of changes in U.S. patent law made by the American Inventors Protection Act of 1999 (“AIPA”) provides a way to create prior art with an earlier effective date, and may be of particular interest for those filing in the U.S. based on a foreign or Patent Cooperation Treaty (“PCT”) application. An applicant’s goal is to achieve the earliest possible date at which the application will stand as prior art. If claiming priority to a foreign or a PCT application, an applicant can accomplish this goal by filing a 35 U.S.C. § 111(a) application in the U.S. When a PCT application provides the basis for a U.S. filing, the PCT filing should be in English and designate the U.S. Although this seems to be fairly simple, priority and prior art are complex areas of patent law. For more specific information or questions about using one’s own patent application to create the best prior art position, a patent applicant should consult a patent attorney. Generally, in pursuing patent protection, it is best to obtain the earliest possible filing date. The earlier an application is filed, the sooner it should issue as a patent. Secondly, filing as soon as possible may create prior art to prevent a competitor from obtaining a patent, or may narrow the scope of a competitor’s patent. One reason is that the U.S. Patent Office views the U.S. filing date as the constructive date of invention. To obtain a U.S. patent, an inventor must be the first inventor. In addition, other statutes address situations where patent rights may be lost even though an inventor may have been the first to invent. A U.S. patent application may be based on an earlier filed foreign patent application or PCT application. The actual U.S. application may be filed as a national application under § 111(a), claiming priority to a foreign filing or PCT application, or the U.S. application may be filed as a national stage application under § 371, claiming priority to a PCT application. The AIPA changed the prior art effect given to § 111(a) and § 371 applications and patents issuing from such applications. Prior to the enactment of the AIPA, U.S. law provided that a patent issuing from a § 111(a) application became a prior art reference against another pending application as of the date the application was filed in the U.S. If the same patent issued from a PCT national stage application filed under 35 U.S.C. § 371, then the patent became a prior art reference as of the date when the national stage requirements were fulfilled with the U.S. Patent Office, which could be months after the date of commencement of the U.S. national stage. For a U.S. patent application filed on or after November 29, 2000, the AIPA provides that, in most cases, the application will publish 18 months after being filed. Because a pending U.S. patent application may now become available to the public, U.S. law was changed to identify when pending applications and patents will be prior art references Volume 2, No. 6 1 Filing Based on Foreign Priority? Advantage Yours A Publication of Dorsey & Whitney’s Technology Group www.dorseylaw.com Intellectual Property Update
Transcript of Intellectual Property Update/media/files/newsresources/...Property Update Volume 2, No. 6...
An invention is only patentablewhen it is novel and not obviousover what others have inventedbefore, called the “prior art.”Creating prior art citable against acompetitor’s patent applicationsby filing your own patentapplication can prevent thecompetitor from obtaining apatent, or the full protection itdesires. The U.S. Patent Office’sinterpretation of changes in U.S.patent law made by the AmericanInventors Protection Act of 1999(“AIPA”) provides a way to createprior art with an earlier effectivedate, and may be of particularinterest for those filing in the U.S.based on a foreign or PatentCooperation Treaty (“PCT”)application.
An applicant’s goal is to achieve theearliest possible date at which theapplication will stand as prior art. Ifclaiming priority to a foreign or aPCT application, an applicant canaccomplish this goal by filing a 35U.S.C. § 111(a) application in theU.S. When a PCT applicationprovides the basis for a U.S. filing,the PCT filing should be in Englishand designate the U.S. Although thisseems to be fairly simple, priorityand prior art are complex areas of
patent law. For more specificinformation or questions aboutusing one’s own patent application tocreate the best prior art position, apatent applicant should consult apatent attorney.
Generally, in pursuing patentprotection, it is best to obtain theearliest possible filing date. Theearlier an application is filed, thesooner it should issue as a patent.Secondly, filing as soon as possiblemay create prior art to prevent acompetitor from obtaining a patent,or may narrow the scope of acompetitor’s patent. One reason isthat the U.S. Patent Office views theU.S. filing date as the constructivedate of invention.
To obtain a U.S. patent, an inventormust be the first inventor. Inaddition, other statutes addresssituations where patent rights maybe lost even though an inventor mayhave been the first to invent.
A U.S. patent application may bebased on an earlier filed foreignpatent application or PCTapplication. The actual U.S.application may be filed as a nationalapplication under § 111(a), claimingpriority to a foreign filing or PCTapplication, or the U.S. application
may be filed as a national stageapplication under § 371, claimingpriority to a PCT application. TheAIPA changed the prior art effectgiven to § 111(a) and § 371applications and patents issuing fromsuch applications.
Prior to the enactment of the AIPA,U.S. law provided that a patentissuing from a § 111(a) applicationbecame a prior art reference againstanother pending application as ofthe date the application was filed inthe U.S. If the same patent issuedfrom a PCT national stageapplication filed under 35 U.S.C. § 371, then the patent became aprior art reference as of the datewhen the national stagerequirements were fulfilled with theU.S. Patent Office, which could bemonths after the date ofcommencement of the U.S. nationalstage.
For a U.S. patent application filed onor after November 29, 2000, theAIPA provides that, in most cases,the application will publish 18months after being filed. Because apending U.S. patent application maynow become available to the public,U.S. law was changed to identifywhen pending applications andpatents will be prior art references
Volume 2, No. 61
Filing Based on Foreign Priority?Advantage Yours
A Publication of Dorsey & Whitney’s Technology Group
www.dorseylaw.com
Intellectual Property Update
www.dorseylaw.com Volume 2, No. 6
Minneapolis
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Washington, D.C.
Denver
San Francisco
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Southern California
Fargo
Palo Alto
Northern Virginia
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Rochester
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Dorsey & Whitney LLPSuite 1500 50 South Sixth StreetMinneapolis, MN 55402-1498
www.dorseylaw.com
Dorsey & Whitney is a full-service international law firmwith core practices in the areas of intellectual property,corporate securities and finance, M&A, international law and complex litigation.
© 2002 Dorsey & Whitney LLP. This newsletter is publishedfor general information purposes only. Views herein aredeemed of general interest and should not necessarily beattributed to Dorsey & Whitney LLP or its clients. Thisnewsletter does not establish or continue an attorney-clientrelationship with Dorsey & Whitney LLP. The contentsshould not be construed as legal advice or opinion. If youhave any questions, you are urged to contact a lawyerconcerning your specific legal situation. For furtherinformation, please contact one of the lawyers listed on this page.
The determination of the need for legal services and thechoice of a lawyer are extremely important decisions andshould not be based solely upon advertisements of self-proclaimed expertise. This disclosure is required by rule ofthe Supreme Court of Iowa.
Intellectual Property Update
www.dorseylaw.com3
Contact one of our practice group representatives at 800.759.4929
Trademark & Copyright Group
Liz Buckingham, [email protected]
Pamela Deese, Washington, [email protected]
Lile Deinard, New [email protected]
Patent Group
Aldo Noto, Northern [email protected]
Edward Bulchis, [email protected]
Lee Osman, [email protected]
Internet & E-Commerce Group
Nelson Dong, [email protected]
David Mathus, New [email protected]
Lance Vietzke, [email protected]
Franchise & Distribution Group
Nancy Smith Pearson, [email protected]
James Hermsen, [email protected]
IP Litigation Group
Peter Lancaster, [email protected]
Ralph Taylor, Washington, [email protected]
Additional Offices OfferingIntellectual Property Services
Brian Laurenzo, Des [email protected]
Shane Coleman, [email protected]
Ian Craig, [email protected]
Donald Kaul, Southern [email protected]
David Brezner, San [email protected]
For change of address or subscription:
Toni Byard, [email protected]
against another inventor’sapplication.
Applicants’ understanding of thechanges is still evolving, but thePatent Office has interpreted thechanges1. This interpretation mayprovide a competitive edge byshowing an applicant how toestablish the earliest prior art date tobe cited against a competitor alsoseeking a patent.
Generally, an application with aforeign priority claim has three pathsto enter the U.S. patent system:
1. Start with a complying2 PCTapplication, i.e., a PCTapplication in English anddesignating the U.S.
2. Start with a non-complying PCTapplication, i.e., a PCTapplication in a language otherthan English or not designatingthe U.S.
3. Enter the U.S. within one yearfrom the earliest foreign priorityfiling date.
An example of each of these threefiling paths is represented andnumbered On the following page.The paths show the dates when theapplication or resulting patent will
be a prior art reference againstanother application or patent3. Inpaths 1 and 2, the applicant has thestrategy choice of proceeding with a§ 111(a) application, path 1a and2a, (claiming priority to the firstfiled foreign application or a PCTapplication) or a § 371 application,path 1b and 2b, (claiming priority toa PCT application). In path 3, theapplicant proceeds with a § 111(a)application (claiming priority to thefirst filed foreign application).
From these scenarios, it is apparentthat the Patent Office is no longergiving prior art effect to patentsissuing from § 371 applications and,in some circumstances, to § 371applications. Therefore, for anapplication and a patent to become aprior art reference against anotherapplication as early as possible, theU.S. application should be filedunder § 111(a). If the PCT is used,then the PCT application should bein English and designate the U.S.Two exemplary recommendedprocedures for establishing the priorart position most likely to affectcompetitors’ applications follow:
• File a provisional application in theU.S. as soon as possible.Provisional applications do notneed to be in English, so a U.S.
provisional could be filed at thesame time as, or shortly after, theforeign priority application is filed.Then, within one year, file a U.S.non-provisional application under§ 111(a), claiming priority to theprovisional, and provide an Englishtranslation of the provisional.Under this procedure, the prior artdate for the U.S. application andthe resulting patent should be thefiling date of the provisionalapplication.
• File a PCT application in Englishdesignating the U.S. and thenenter the U.S. by filing a § 111(a)application on or before the PCTdeadline. This way, the prior artdate for the U.S. application willbe the filing date of the complyingPCT. However, the prior art datefor the patent will be the date the §111(a) application was filed (or, ifapplicable, the date a U.S.provisional application was filed).
1 Manual of Patent Examining Procedure,Sec. 1896 “Effective Date as a Reference”(8th Ed. Aug. 2001).
2 As used herein, complying or non-complying does not refer to the validity orviability of a PCT application.
3 When there is a printed publication, such asa PCT publication, then the publicationwill be a reference against another’sapplication as of the date of the publication.
Volume 2, No. 62
Intellectual Property Update
Stuart R. Hemphill(612) [email protected]
A partner with the Patent group, Stuartpractices in the areas of patent, trademark,copyright and trade secret rights, licensing.
About the Authors
Trisha Adamson(612) [email protected]
A research clerk in the Patent group, Trishaperforms patent prosecution and legalresearch for patent litigation.
David E. Bruhn(612) [email protected]
A senior attorney in the Patent group, Daviddrafts and prosecutes patent applicationsand assists in IP litigation and transactions.
Path 1a.
Path 3.
Path 2b.
Path 2a.
Path 1b.
www.dorseylaw.com3
Contact one of our practice group representatives at 800.759.4929
Trademark & Copyright Group
Liz Buckingham, [email protected]
Pamela Deese, Washington, [email protected]
Lile Deinard, New [email protected]
Patent Group
Aldo Noto, Northern [email protected]
Edward Bulchis, [email protected]
Lee Osman, [email protected]
Internet & E-Commerce Group
Nelson Dong, [email protected]
David Mathus, New [email protected]
Lance Vietzke, [email protected]
Franchise & Distribution Group
Nancy Smith Pearson, [email protected]
James Hermsen, [email protected]
IP Litigation Group
Peter Lancaster, [email protected]
Ralph Taylor, Washington, [email protected]
Additional Offices OfferingIntellectual Property Services
Brian Laurenzo, Des [email protected]
Shane Coleman, [email protected]
Ian Craig, [email protected]
Donald Kaul, Southern [email protected]
David Brezner, San [email protected]
For change of address or subscription:
Toni Byard, [email protected]
against another inventor’sapplication.
Applicants’ understanding of thechanges is still evolving, but thePatent Office has interpreted thechanges1. This interpretation mayprovide a competitive edge byshowing an applicant how toestablish the earliest prior art date tobe cited against a competitor alsoseeking a patent.
Generally, an application with aforeign priority claim has three pathsto enter the U.S. patent system:
1. Start with a complying2 PCTapplication, i.e., a PCTapplication in English anddesignating the U.S.
2. Start with a non-complying PCTapplication, i.e., a PCTapplication in a language otherthan English or not designatingthe U.S.
3. Enter the U.S. within one yearfrom the earliest foreign priorityfiling date.
An example of each of these threefiling paths is represented andnumbered On the following page.The paths show the dates when theapplication or resulting patent will
be a prior art reference againstanother application or patent3. Inpaths 1 and 2, the applicant has thestrategy choice of proceeding with a§ 111(a) application, path 1a and2a, (claiming priority to the firstfiled foreign application or a PCTapplication) or a § 371 application,path 1b and 2b, (claiming priority toa PCT application). In path 3, theapplicant proceeds with a § 111(a)application (claiming priority to thefirst filed foreign application).
From these scenarios, it is apparentthat the Patent Office is no longergiving prior art effect to patentsissuing from § 371 applications and,in some circumstances, to § 371applications. Therefore, for anapplication and a patent to become aprior art reference against anotherapplication as early as possible, theU.S. application should be filedunder § 111(a). If the PCT is used,then the PCT application should bein English and designate the U.S.Two exemplary recommendedprocedures for establishing the priorart position most likely to affectcompetitors’ applications follow:
• File a provisional application in theU.S. as soon as possible.Provisional applications do notneed to be in English, so a U.S.
provisional could be filed at thesame time as, or shortly after, theforeign priority application is filed.Then, within one year, file a U.S.non-provisional application under§ 111(a), claiming priority to theprovisional, and provide an Englishtranslation of the provisional.Under this procedure, the prior artdate for the U.S. application andthe resulting patent should be thefiling date of the provisionalapplication.
• File a PCT application in Englishdesignating the U.S. and thenenter the U.S. by filing a § 111(a)application on or before the PCTdeadline. This way, the prior artdate for the U.S. application willbe the filing date of the complyingPCT. However, the prior art datefor the patent will be the date the §111(a) application was filed (or, ifapplicable, the date a U.S.provisional application was filed).
1 Manual of Patent Examining Procedure,Sec. 1896 “Effective Date as a Reference”(8th Ed. Aug. 2001).
2 As used herein, complying or non-complying does not refer to the validity orviability of a PCT application.
3 When there is a printed publication, such asa PCT publication, then the publicationwill be a reference against another’sapplication as of the date of the publication.
Volume 2, No. 62
Intellectual Property Update
Stuart R. Hemphill(612) [email protected]
A partner with the Patent group, Stuartpractices in the areas of patent, trademark,copyright and trade secret rights, licensing.
About the Authors
Trisha Adamson(612) [email protected]
A research clerk in the Patent group, Trishaperforms patent prosecution and legalresearch for patent litigation.
David E. Bruhn(612) [email protected]
A senior attorney in the Patent group, Daviddrafts and prosecutes patent applicationsand assists in IP litigation and transactions.
Path 1a.
Path 3.
Path 2b.
Path 2a.
Path 1b.
An invention is only patentablewhen it is novel and not obviousover what others have inventedbefore, called the “prior art.”Creating prior art citable against acompetitor’s patent applicationsby filing your own patentapplication can prevent thecompetitor from obtaining apatent, or the full protection itdesires. The U.S. Patent Office’sinterpretation of changes in U.S.patent law made by the AmericanInventors Protection Act of 1999(“AIPA”) provides a way to createprior art with an earlier effectivedate, and may be of particularinterest for those filing in the U.S.based on a foreign or PatentCooperation Treaty (“PCT”)application.
An applicant’s goal is to achieve theearliest possible date at which theapplication will stand as prior art. Ifclaiming priority to a foreign or aPCT application, an applicant canaccomplish this goal by filing a 35U.S.C. § 111(a) application in theU.S. When a PCT applicationprovides the basis for a U.S. filing,the PCT filing should be in Englishand designate the U.S. Although thisseems to be fairly simple, priorityand prior art are complex areas of
patent law. For more specificinformation or questions aboutusing one’s own patent application tocreate the best prior art position, apatent applicant should consult apatent attorney.
Generally, in pursuing patentprotection, it is best to obtain theearliest possible filing date. Theearlier an application is filed, thesooner it should issue as a patent.Secondly, filing as soon as possiblemay create prior art to prevent acompetitor from obtaining a patent,or may narrow the scope of acompetitor’s patent. One reason isthat the U.S. Patent Office views theU.S. filing date as the constructivedate of invention.
To obtain a U.S. patent, an inventormust be the first inventor. Inaddition, other statutes addresssituations where patent rights maybe lost even though an inventor mayhave been the first to invent.
A U.S. patent application may bebased on an earlier filed foreignpatent application or PCTapplication. The actual U.S.application may be filed as a nationalapplication under § 111(a), claimingpriority to a foreign filing or PCTapplication, or the U.S. application
may be filed as a national stageapplication under § 371, claimingpriority to a PCT application. TheAIPA changed the prior art effectgiven to § 111(a) and § 371applications and patents issuing fromsuch applications.
Prior to the enactment of the AIPA,U.S. law provided that a patentissuing from a § 111(a) applicationbecame a prior art reference againstanother pending application as ofthe date the application was filed inthe U.S. If the same patent issuedfrom a PCT national stageapplication filed under 35 U.S.C. § 371, then the patent became aprior art reference as of the datewhen the national stagerequirements were fulfilled with theU.S. Patent Office, which could bemonths after the date ofcommencement of the U.S. nationalstage.
For a U.S. patent application filed onor after November 29, 2000, theAIPA provides that, in most cases,the application will publish 18months after being filed. Because apending U.S. patent application maynow become available to the public,U.S. law was changed to identifywhen pending applications andpatents will be prior art references
Volume 2, No. 61
Filing Based on Foreign Priority?Advantage Yours
A Publication of Dorsey & Whitney’s Technology Group
www.dorseylaw.com
Intellectual Property Update
www.dorseylaw.com Volume 2, No. 6
Minneapolis
Seattle
New York
Washington, D.C.
Denver
San Francisco
London
Brussels
Hong Kong
Tokyo
Shanghai
Toronto
Vancouver
Anchorage
Des Moines
Salt Lake City
Southern California
Fargo
Palo Alto
Northern Virginia
Great Falls
Rochester
Missoula
Dorsey & Whitney LLPSuite 1500 50 South Sixth StreetMinneapolis, MN 55402-1498
www.dorseylaw.com
Dorsey & Whitney is a full-service international law firmwith core practices in the areas of intellectual property,corporate securities and finance, M&A, international law and complex litigation.
© 2002 Dorsey & Whitney LLP. This newsletter is publishedfor general information purposes only. Views herein aredeemed of general interest and should not necessarily beattributed to Dorsey & Whitney LLP or its clients. Thisnewsletter does not establish or continue an attorney-clientrelationship with Dorsey & Whitney LLP. The contentsshould not be construed as legal advice or opinion. If youhave any questions, you are urged to contact a lawyerconcerning your specific legal situation. For furtherinformation, please contact one of the lawyers listed on this page.
The determination of the need for legal services and thechoice of a lawyer are extremely important decisions andshould not be based solely upon advertisements of self-proclaimed expertise. This disclosure is required by rule ofthe Supreme Court of Iowa.
Intellectual Property Update
