H.R. 3309 is More Than Just Litigation Changes: Patent Prosecution Issues in the Innovation Act
By Michael A. Koptiw and Ryan Peddle // January 2, 2014
The U.S. House of Representatives passed the Innovation Act, “The Goodlatte” Bill, on December 5, 2013. The Senate is expected to pass the Innovation Act, or a similar bill. The Innovation Act focuses on patent litigation reform. But patent prosecution professionals should be aware of the few provisions that may directly affect their work—provisions related to obviousness-type double patenting, patent term adjustment, declarations, assignments, and PCT applications.
Obviousness-Type Double Patenting. The Innovation Act would codify, as new 35 U.S.C. §106, the judicial doctrine of obviousness-type double patenting as it applies to first-inventor-to-file patents. This doctrine prevents patentees from using subsequent patents on obvious, minor variants of an invention to improperly lengthen the duration of the effective patent protection.
For example, when a patent application claims subject matter close enough to one of the patentee’s earlier patents, the claims may be rejected for obviousness-type double patenting. In practice, the patentee will often disclaim any “extended” term and tie the patents together with a Terminal Disclaimer filed with the Patent Office to overcome the rejection. And this practice will likely continue under the new statute, if it becomes law. However, the proposed new statute takes an interesting approach to codifying this longstanding judicial doctrine.
The new section operates to make a “claimed invention” of a first patent prior art to that of a second patent when it otherwise would not have been prior art. For this to happen, three conditions have to be met. In general, first, the first patent is earlier filed. Second, either the inventorship is the same or a prior art exception under section 102(b)(2) is being applied. And third, a Terminal Disclaimer has not yet been filed.
Because the statute refers to the earlier “claimed invention” as prior art, it will be interesting to see if, in practice, this framework develops a broader application of double patenting, which has traditionally considered whether two sets of claims were patentably distinct.
Nothing in the bill would change statutory double patenting under 35 U.S.C. §101—which applies when two patents are directed to the same invention.
Exclude RCE request from Patent Term Adjustment. The Innovation Act would attempt to resolve the controversy in the interpretation of 35 U.S.C. §154(b)(1)(B), which guarantees no more than 3-year application pendency. The Innovation Act would effectively codify the holding of the United States District Court for the Eastern District of Virginia in Exelixis, Inc. v. Kappos, 919 F. Supp. 2d 689 (E.D. Va. 2013) [“Exelixis II”]. In Exelixis II, the court held that “any time consumed by continued examination of the application requested by the applicant under section 132(b) does not count toward the three-year period.” The court afforded greater deference to the USPTO interpretation of 35 U.S.C. §154(b)(1)(B). The Exelixis II holding conflicts with the Eastern District of Virginia’s holding in Exelixis, Inc. v. Kappos, 906 F. Supp. 2d 474 (E.D. Va. 2012) [“Exelixis I”]. In Exelixis I, the court held that “the time devoted to an RCE tolls the running of the three year clock if the RCE is filed within the three year period.” Both Exelixis I and Exelixis II are on appeal at the Federal Circuit.
Inventor Oath/Declaration Change. The Innovation Act would remove unnecessary paperwork form the patent examination process by removing redundant requirements. AIA 35 U.S.C. §115 requires that an oath or declaration be filed before payment of the issue fee. However, the Innovation Act would eliminate the section 115 requirement for applications filed by the inventor’s assignee. The filing of the assignment would render any additional section 115 requirement redundant.
Assignee Filers. The Innovation Act would make a change to 35 U.S.C. §119(e)(1) to explicitly allow an assignee filer to claim the benefit of the filing date of an earlier provisional application. The Innovation Act would also make changes to the AIA effective dates of edits to 35 U.S.C. §120 (e.g., apply to first-inventor-to-file patents) could prevent assignee filers from claiming the benefit of a parent application in a continuation application between September 16, 2012 and March 16, 2013. Although Courts may overlook these legislative mistakes, the bill’s sponsors seized an opportunity to be explicit with their intent.
International Applications. The Innovation Act would relieve the USPTO from reviewing PCT applications for errors and process requests for incorporation by reference in a language other than English by repealing PLTIA §202(b)(7)’s amendments to 35 U.S.C. §361(c).
A copy of H.R. 3309 – Innovation Act may be found here.