Now that the Goodlatte Innovation Act has passed the House, its provisions likely will be reconciled with the Patent Transparency and Improvements Act (S. 1720) that was introduced in the Senate by Senator Leahy (D-Vt.) on November 18, 2013. While much attention will be paid to the patent litigation and post grant review provisions, the bill includes several important changes that will have a more widespread impact on the patent application and prosecution process, including another effort to codify obviousness-type double patenting, more “technical” corrections to the America Invents Act, and an extension of the limitations period for commencing disciplinary proceedings. This article reviews the changes proposed in Sections 9 and Section 10 of the Leahy Patent Transparency and Improvements Act.

Obviousness-Type Double Patenting 

Section 9 of S. 1720 would create a statutory basis for obviousness-type double patenting for first-inventor-to-file patents in new 35 USC § 106. The proposed statute uses the same language as the corresponding proposal in the Goodlatte Act, and raises the same concerns as possibly going both too far and not far enough in codifying the doctrine of obviousness-type double patenting for first-inventor-to-file patents, as explained in this article.

Technical Correction To Inventor Oath/Declaration Requirements

Section 10 of S. 1720 would amend 35 USC § 115 to permit the use of a copy of an executed inventor oath/declaration from a priority application that satisfied the version of § 115 in effect at the time the inventor oath/declaration was filed in the priority application.

(g) EARLIER-FILED APPLICATION CONTAINING REQUIRED STATEMENTS OR SUBSTITUTE STATEMENT.—

(1) EXCEPTION.—The requirements under this section shall not apply to an individual with respect to an application for patent in which the individual is named as the inventor or a joint inventor and who claims the benefit is entitled, as to each invention claimed in the application, to the benefit under section 120, 121, or 365(c) of the filing of an earlier-filed application, if—

(A) an oath or declaration meeting the requirements of subsection (a) was executed by the individual and was filed in connection with the earlier-filed application executed by or on behalf of the individual was filed in connection with the earlier filed application and meets the requirements of this section as effective on the date such oath or declaration was filed ….

This change would eliminate the need to obtain a new executed inventor oath/declaration for continuing applications that straddle the September 16, 2012 effective date of the AIA changes to 35 USC § 115. If enacted, it would apply as if it were part of the original changes to § 115 embodied in the AIA.

Technical Correction To Grace Period Exception For Inventor’s Own Disclosure 

Section 10 of S. 1720 would amend 35 USC § 102(b)(1)(A) as follows:

(b) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or a joint inventor or

by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor ….

This correction may clarify that the exception can apply to disclosures made by only one joint inventor. If enacted, it would apply as if it were part of the original changes to § 102 embodied in the AIA.

Technical Correction To Right To Claim Priority For Applications Filed By Assignee 

Section 10 of S. 1720 would amend 35 USC § 119(e)(1) and 35 USC § 120 as follows:

35 USC § 119(e)(1)

An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112(a) (other than the requirement to disclose the best mode) of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors namedthat names the inventor or a joint inventor in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. ….

35 USC § 120

An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112(a) (other than the requirement to disclose the best mode) of this title in an application previously filed in the United States, or as provided by section 363 of this title, which names an inventor or a joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. ….

If enacted, these changes would apply to any patent application, and any patent issuing from such application, that is filed on or after September 16, 2012.

It is my understanding that the proposed changes to § 119(e)(1) are intended to harmonize its language with an assignee’s right to file an application (which came into effect with 35 USC § 118 on September 16, 2012). Thus, the changes remove the requirement that the second application be “filed … by an inventor” named in the first application, and require instead that the second application “name” an inventor named in the first application. (The USPTO long has interpreted the “filed … by” requirement as being satisfied when the same inventor is named, as reflected in 37 CFR § 1.78).

While the changes to  35 USC § 120 appear to simply clarify that priority can be claimed if the second application names only one joint inventor named in the earlier application, the effective date of the language at issue is tricky.

The AIA made two changes to 35 USC § 120:

An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112(a) (other than the requirement to disclose the best mode) of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors which names an inventor or joint inventor named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.

The first change, relating to the best mode requirement, was set forth in Section 15 of the AIA, took effect upon the date of enactment, and applies to “proceedings commenced on or after that date.”

The second change, which is similar to the newly proposed changes to  § 119(e)(1), was set forth in Section 3(f) of the AIA. Since Section 3(f) does not include its own effective date provisions, it appears to be governed by the complicated effective date provisions of Section 3(n), such that it applies only to “first-inventor-to-file”  applications/patents.

Thus, if my understanding is correct, the newly proposed changes to § 120 apply to amended language in § 120 that applies only to ”first-inventor-to-file”  applications/patents. If Senator Leahy intends to correct thattechnical error in the AIA and make the entire “

filed by … names” amendments to § 120 effective as of September 16, 2012, S. 1720 may need to reference both versions of the statute.

Technical Correction To Derivation Statute 

Section 10 of S. 1720 amends 35 USC § 291(b) as follows:

(b) FILING LIMITATION.—An action under this section may be filed only before the end of the 1-year period beginning on the date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or a joint inventor.

If enacted, this correction would apply as if it were part of the original changes to § 291(b) embodied in the AIA.

Clarification Of Effective Date Of Changes To 35 USC § 112 

Section 10 of S. 1720 clarifies the effective date of the AIA changes to 35 USC § 112:

(5) SPECIFICATION.—Notwithstanding section 4(e) of the Leahy-Smith America Invents Act (Public Law 112–29; 125 Stat. 297), the amendments made by subsections (c) and (d) of section 4 of such Act shall apply to any proceeding or matter, that is pending on, or filed on or after, the date of the enactment of this Act.

Section 4(e) of the AIA sets the September 16, 2012 effective date of the amendments contained in Section (4). Section 4(c) amended § 112 to label the subparagraphs as (a)-(f) and refer to an “inventor or joint inventor.” Section 4(d) made conforming amendments to other statutes.

Extension of the Limitations Period for Disciplinary Proceedings  

Section 10 of S. 1720 extends the limitations period for commencing a disciplinary proceeding under 35 USC § 32:

A proceeding under this section shall be commenced not later than the earlier of either the date that is 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or 1 year two years after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office as prescribed in the regulations established under section 2(b)(2)(D).

If enacted, this change “shall apply to any action in which the Office files a complaint on or after the date of enactment of this Act.”

Does that mean that the USPTO could commence proceedings where the 1 year period had run if the new two year period had not yet run?

Reconciling The Pending Legislation

As noted above, the next step in this new wave of patent reform is to reconcile the language of the Goodlatte Innovation Action with the Leahy Patent Transparency and Improvements Act (S. 1720), and other bills that may be pending or proposed in the Senate. Practitioners, stakeholders and other interested parties should make their views known to their representatives.