“obvious variants” technical trap for the unwary...“obvious variants” technical trap for the...
TRANSCRIPT
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The AIA Grace Period: “Obvious Variants” Technical
Trap for the Unwary
Harold C. Wegner Foley & Lardner LLP
March 4, 2013
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• The Safe Approach 3 A Conservative Patent Management Approach
• Patent Office “Guidelines” 5 There is no Grace Period for Obvious Variants
• “Legislative History” Argument 12 There is a Grace Period for Obvious Variants
• The Ultimate Outcome 26
• About the Author 28
The Safe Approach
Until the Federal Circuit speaks (see slide 26):
(1) Prospectively, applicants should publish only after filing the patent application.
(2) But, where a pre-filing publication is discovered to have occurred, a patent application should be filed immediately to minimize chances of an otherwise patent-defeating publication by a third party.
The Safe Approach
• Immediate patent filing after publication minimizes the possibility that a third party will disclose an obvious modification of the disclosed invention that would defeat the possibility to rely upon the grace period if the filing takes place after such third party publication.
The Patent Office has issued “Guidelines” to interpret the scope of the grace period that denies broad grace period protection:
Examination Guidelines for Implementing the First Inventor To File Provisions of the Leahy-Smith America Invents Act, 78 Federal Register 11059 (Feb. 14, 2013).
Robert A. Armitage, the chief lobbyist for the legislation, strongly endorses the Patent Office viewpoint; he dubs the opposition “fudge factor” proponents.
Patent Office “Guidelines”
• The Patent Office interprets “the subject matter disclosed” as the identical disclosure, i.e., the grace period applies only if the identical disclosure is the subject matter of the intervening publication.
• “The[ ] examination guidelines maintain the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B).”
Examination Guidelines , 78 Federal Register 11059
Patent Office “Guidelines”
• “[T]he single instance of the phrase ‘the subject matter’ in subparagraph (B) of each of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) cannot reasonably be interpreted as including variations within its ambit.”
Id.
Patent Office “Guidelines”
The Office emphasizes the narrow scope of the grace period:
• “[T]he subparagraph (B) provisions … do[ ] not require that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening disclosure.”
Id.
Patent Office “Guidelines”
Or, without the Latin…
“[T]he subparagraph (B) provisions … do[ ] not require that the disclosure by the inventor or a joint inventor be a verbatim or word for word disclosure of the intervening disclosure.”
Id. (translating ipsissimis verbis as shown in red)
Patent Office “Guidelines”
Patent Office “Guidelines”
The Grace Period Statute for a Third Party Intervening Publication:
• “A [third party] disclosure …before the … filing date … shall not be prior art … if the subject matter disclosed [by the third party] had, before such disclosure, been publicly disclosed by the inventor ….”
35 USC § 102(b)(1)(B)
Patent Office “Guidelines”
• Does the “subject matter disclosed” by the third party refer to the same subject matter as the earlier “public[ ] disclos[ure] by the inventor[.]”
• If “subject matter disclosed” can only be interpreted as meaning the same subject matter as the earlier “public[ ] disclos[ure] by the inventor”, then the grace period does not apply.
“Legislative History” Argument
• Universities, the IPO and others in disagreement with the Patent Office have argued that the legislative history supports a broad grace period that trumps the arguments of the Patent Office:
“Legislative History” Argument
Two-fold argument is made against the Patent Office viewpoint:
• First, the statutory wording is said to be unclear.
• Second, to interpret such an ambiguous statute, the legislative history must be considered.
“Legislative History” Argument
A first hurdle is that with unambiguous statutory language, legislative history is irrelevant:
“If the statute is clear and unambiguous, then the plain meaning of the statute is generally conclusive, and we give effect to the unambiguously expressed intent of Congress. Sullivan v. Stroop, 496 U.S. 478, 482 (1990).
“Legislative History” Argument
When the statutory language is ambiguous, legislative history can be useful in determining Congressional intent. See In re Swanson, 540 F.3d 1368, 1376 (Fed.Cir.2008).”
Indian Harbor Ins. Co. v. U.S., 704 F.3d 949, 954
(Fed. Cir. 2013)(O’Malley, J.)(emphasis added)
“Legislative History” Argument
• Only if the language of the statute is considered ambiguous, then legislative history may be brought into the picture.
• The Best Source of “Legislative History” is a Committee Report:
“Legislative History” Argument
• “In surveying legislative history we have repeatedly stated that the authoritative source for finding the Legislature's intent lies in the Committee Reports on the bill, which ‘represen[t] the considered and collective understanding of those [Members of Congress] involved in drafting and studying proposed legislation.’ ”
Eldred v. Ashcroft, 537 U.S. 186, 209 n.16 (2003)(Ginsburg, J.)(quoting Garcia v. United States, 469 U.S. 70, 76 (1984), quoting
Zuber v. Allen, 396 U.S. 168, 186 (1969))(emphasis added)
“Legislative History” Argument
• “Resort to legislative history is only justified where the [wording of the law] is inescapably ambiguous, and then I think we should not go beyond Committee reports, which presumably are well considered and carefully prepared.”
Schwegmann Bros. v. Calvert Distillers Corp., 341 U.S. 384,395 (1951)
(Jackson, J., joined by Minton, J., concurring)(emphasis added)
“Legislative History” Argument
What precisely does any Committee Report say on this issue?
• Nothing, at least insofar as the opponents of the Patent Office interpretation have not provided any relevant citations.
“Legislative History” Argument
• The next best source of legislative history is from floor leaders’ comments during a debate preceding passage by the House or Senate:
What relevant floor debate took place?
There was no floor debate on this point, at least insofar as none is cited by opponents of the Patent Office viewpoint.
“Legislative History” Argument
There is no relevant legislative history before enactment of any kind that has been cited by those seeking a broader interpretation of the grace period.
According to a first hand witness to the entire legislative process there is none.
This witness is now an Associate Solicitor of the Patent Office who was a senior Senate staff member deeply involved with the legislative process throughout the nearly five year gestation of the new law:
“Legislative History” Argument
“Unfortunately, the issue of whether [the grace period of] § 102(b)(1)(B) protects against disclosures that are obvious variants of the inventor's initial public disclosure was never contemplated by Congress during the four-and-a-half years that iterations of the first-to-disclose grace period appeared in successive patent-reform bills.”
Joe Matal, A Guide to the Legislative History of the America Invents Act: Part I of II, 21 Fed. Circuit B.J. 435, 485 n.326 (2011-2012)(emphasis added).
“Legislative History” Argument
Testimony after enactment is not relevant: • “Real (pre-enactment) legislative history is
persuasive to some because it is thought to shed light on what legislators understood an ambiguous statutory text to mean when they voted to enact it into law. See Exxon Mobil Corp. v. Allapattah Services, Inc., 545 U.S. 546, 568 (2005). But post-enactment legislative history by definition ‘could have had no effect on the congressional vote[.]’”
Bruesewitz v. Wyeth LLC, 131 S.Ct. 1068, 1081-82 (2011)(Scalia, J.)(quoting District of Columbia v. Heller, 554 U.S. 570, 605 (2008)).
“Legislative History” Argument
• IPO quotes nearly two full pages of what it purports to be legislative history in its letter of October 5, 2012: Comments on Proposed Rules and Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy Smith America Invents Act, 77 Fed. Reg. 43742 and 43759 (July 26, 2012), Letter of the President of IPO to the Under Secretary of Commerce.
“Legislative History” Argument
• This “legislative history” was not a part of a Congressional floor debate; it was merely a lobbying group’s statement added to the Congressional Record:
• “Mr. President, I rise to submit for the [Congressional] Record some of the materials … produced … by the 21st Century Coalition for Patent Reform, an industry group that has been the leading advocate for the bill.…I ask unanimous consent that the following materials be printed in the [Congressional] Record.”
Statement of Senator Kyl, March 2, 2011, 157 Cong. Rec. S1208 (March 3, 2011).
The Ultimate Outcome
• Undoubtedly, there will be a test case at the Federal Circuit to determine whether the literal wording does control.
• If the literal wording is not controlling, is there any legislative history to show a contrary intent?
• The final Federal Circuit outcome may not occur for several years.
Disclaimer
This presentation represents the
personal views of the writer
and does not necessarily
reflect the views of any
colleague, organization
or client thereof.
HAROLD C. WEGNER continues his patent practice as a partner at Foley & Lardner LLP. Professor Wegner retains his affiliation with the George Washington University Law School where he had been Director of the Intellectual Property Law Program and Professor of Law. His involvement with other academic institutions has included service as a Visiting Professor at Tokyo University.
Prof. Wegner’s patent career commenced with service at the U.S. Department of Commerce as a Patent Examiner. He spent three years at the Max-Planck-Institut für Geistiges Eigentum in Munich where he was a Wissenschaftliche Mitarbeiter. He then became a Kenshuin at the Kyoto University Law Faculty under Dr. Kitagawa.
contact: [email protected]