Changes to the Patent Laws

AuthorElizabeth Rodriguez - Sean Solberg
Pages1-32
Richard Brandon and Sean D. Solberg1
With the Leahy-Smith America Invents Act of 2011 (AIA),2 Congress instituted the most
sweeping changes to our patent laws in more than 50 years. There has been a lot of
commentary and many articles covering the new and revised rules under which we now
pursue patent protection, but very little of that discourse has focused on universities and
technology transfer ofces (TTOs).
This chapter will examine the key changes in the AIA from the university/tech transfer
perspective. The goal is to focus on the major changes that will have the greatest impact
on universities and the pursuit of patent protection by TTOs, rather than covering all the
changes ushered in by the AIA.
We will examine the new, more relaxed rules for naming an entity an “applicant” in a
patent application, the related changes in declaration requirements, and the substantially
smaller fees available to universities under the new “micro entity” status. In addition, we
will also discuss the benets of the new rules on joint development for universities, along
with the impact of the new derivation procedure and the new grace period.
1. Richard Brandon is Associate General Counsel at the University of Michigan. Sean D. Solberg is Special
Counsel with Davis Brown Law Firm. This chapter reects the personal views and thoughts of Brandon and
Solberg and is not to be construed as representing in any way the views or advice of the University of Michigan
or Davis Brown Law Firm, respectively. The content is solely for purposes of discussion and illustration, and is
not to be considered legal advice.
2. Pub. L. No. 112-29 (Sept. 16, 2011).
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Chapter 1
Changes to the Patent Laws
The Impact of the AIA on University Technology Transfer
I. Filing Patent Applications Naming University Assignees as the “Applicant”
Every patent application, both in the United States and abroad, requires an identication
of the patent “applicant. U.S. patent laws have been unique in requiring that inventors
must be the nominal “applicant” of applications, even when the application is owned by
an employer or other assignee. Consistent with the greater objectivity of our new rst-to-
le system, the AIA attempted to make it easier for legal entities, such as universities, to
le patent applications in their own names—that is, to name the assignee as “applicant.
A. Summary
While the AIA instituted various changes to inventor declarations and other ling proce-
dures, the primary change in this regard—that an assignee may be designated the “applicant”
even when all the inventors agree to sign an oath—is relatively minor in practice. Not-
withstanding, universities that do not work closely with patent counsel to ensure proper
handling of ling procedures under the AIA may experience certain pitfalls, as described
at the end of this section.
Because issues involving ling as an “assignee-applicant” are intertwined with oath/
declaration practice, it will be helpful to rst discuss the new declaration practice under
the AIA.
B. Declarations and Assignee-Applicants bef ore the AIA
The inventor’s oath or declaration is familiar to most patent applicants. Prior to the AIA,
35 U.S.C. § 115 required each inventor to execute an oath or declaration
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averring (1) that
he or she believes himself or herself to be the “original” inventor or joint inventor of a
claimed invention (retained in the AIA); (2) that the inventor believes himself or herself
to be the “rst inventor” (removed by AIA); and (3) the inventor’s country of citizenship
(removed by AIA).
4
Prior to the AIA, inventor declarations had to be led either with the
application, or relatively soon thereafter (with additional fees in response to a U.S. Pat-
ent and Trademark Ofce (USPTO) Notice to File Missing Parts).
In the vast majority of cases, inventors simply reviewed and executed declarations
with no complications, and most applicants will have this same experience under the AIA.
However, when an inventor or inventors refused to sign a declaration, 35 U.S.C. § 118
of the pre-AIA statute provided:
3. The difference between an oath and a declaration is that an oath must be sworn before a person empowered
to take oaths (typically a notary public), while a declaration will simply include a statement that the inventor
knows the consequences of lying. Most applicants le with a declaration, as opposed to an oath, so in general,
the discussion herein will refer to a declaration.
4. See 37 C.F.R. § 1.63.
RICHARD BRANDON AND SEAN D. SOLBERG2
Whenever an inventor refuses to execute an application for patent, or cannot be
found or reached after diligent effort, a person to whom the inventor has assigned
or agreed in writing to assign the invention or who otherwise shows sufcient
proprietary interest in the matter justifying such action, may make application for
patent on behalf of and as agent for the inventor on proof of the pertinent facts
and a showing that such action is necessary to preserve the rights of the parties or
to prevent irreparable damage.
Thus, prior to the AIA, the assignee could le the application as the “applicant” only
when an inventor refused to execute a declaration. Pre-AIA Rule 47 (37 C.F.R. § 1.47)
expounded upon Section 118 of the Patent Act.5 Rule 47 required an applicant, in such
instances, to submit a formal petition, a declaration as to “the pertinent facts,” the last-
known address of the inventors, and a fee. Typically, this meant that patent prosecution
counsel would have to make one or more attempts to have a hesitant inventor either sign
the declaration or refuse to do so. (When an inventor refused to respond, the attorney
would advise the inventor in writing that a nonresponse would be taken as a refusal to
sign.) The attorney was then required to attest (in the declaration as to the “pertinent
facts”) to the failed attempt(s) to have the inventor sign a standard inventor’s declaration.
This process would result in the application’s assignee being the “applicant.
Assignees taking advantage of former Section 118 were issued patents that appeared
exactly the same on their faces as a patent that did not make use of Section 118. For
example, all patents on their face name (1) all of the inventors as a primary identier and
(2) the assignee’s name (assuming the assignee’s name was properly indicated by the appli-
cant in the issue fee transmittal to the USPTO)6 in a somewhat less prominent manner.
C. AIA: Inventor Declara tions Are Still Required
The AIA retained the requirement of inventor declarations for all non-provisional appli-
cations. (The retention of the declaration was unfortunate in the minds of some, but not
all, frequent lers.
7
) Under the AIA, Section 115 and related Rule 63 now require an
5. 35 U.S.C. § 118. All references to “Section” in this chapter that are not otherwise designated are references
to that section of the Patent Act.
6. The recording of an assignment does not cause the assignee’s name to appear on the face of an issued patent.
Paragraph 3 of the USPTO’s issue fee transmittal form (PTOL-85) provides: “ASSIGNEE NAME AND RESI-
DENCE DATA TO BE PRINTED ON THE PATENT (print or type) . . . PLEASE NOTE: Unless an assignee
is identied below, no assignee data will appear on the patent. If an assignee is identied below, the document
has been led for recordation as set forth in 37 C.F.R. § 3.11. Completion of this form is NOT a substitute for
ling an assignment.” Located at http:// www .uspto .gov /forms /ptol85b .pdf.
7. There was at least some thought during the discussion of the various bills that resulted in the AIA that an
oath or declaration remains important because it emphasizes to the inventor that he or she may only le an
application if he or she did not derive the invention from another person.
3CHANGES TO THE PATENT LAWS

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