Intellectual Property - Laurence Colton

• Publication year: 2012

Intellectual Property

by Laurence P. Colton*

I. Introduction

This Article surveys legal developments in the area of intellectual property relevant to the Eleventh Circuit during the 2011 calendar year. This year, the developments will be presented in a different manner. In recent years, national and state case law has been the primary driver of the developments. However, in 2011, the more interesting and more pertinent drivers have been statutory and practical in nature, both national and international, yet all equally pertinent to the practice of intellectual property law in the State of Georgia.

Intellectual property law comprises several discrete yet overlapping areas of law. The four primary areas of intellectual property law historically are patent law, trademark law, copyright law, and trade secret law.¹ As the basis for patent law and copyright law are provided for in the United States Constitution,² these statutes and cases are based in federal law and are for the most part litigated in federal courts. As trademark law and trade secret law have both federal³ and state aspects, the statutes and cases regarding these areas are based on

* Partner in the firm of Smith Risley Tempel Santos LLC, Atlanta, Georgia. Tufts University (B.S.Ch.E., 1982); Emory University (J.D., 1987). Member, State Bar of Georgia. Registered to practice before the United States Patent and Trademark Office.

1. Some secondary areas that will not be surveyed in this Article include trade dress and know-how. Further, as most precedential decisions are under federal law, this Article will not include cases from the state courts.

2. Article 1, Section 8, Clause 8 of the United States Constitution provides that "The Congress shall have Power . . . [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. CONST. art. I, § 8, cl. 8. Authors/Writings refers to copyright, and Inventors/Discoveries refers to patent.

3. Article 1, Section 8, Clause 3 of the United States Constitution is the Commerce Clause, which forms the constitutional basis for federal trademark and unfair competition legislation, and provides that "The Congress shall have Power . . . [t]o regulate Commerce with foreign Nations, and among the several States . . . ." U.S. CONST. art. I, § 8, cl. 3.

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federal or state law, and these statutes and cases are litigated in federal and state courts. All statutes, cases, and events that touch upon intellectual property are not included, but instead, selected drivers that are of more significance or interest or that may indicate a particular direction in the relevant areas of law are covered. While the drivers discussed often have multiple issues, only the more relevant or interesting intellectual property issues are discussed.

II. The America Invents Act

The America Invents Act (AIA)⁴ contains the most comprehensive and significant changes made to Title 35 of the United States Code since 1952, and was the primary driver for intellectual property in 2011. Signed into law by President Barack Obama on September 16, 2011, the AIA has thirty-seven sections containing changes to many aspects ofthe U.S. Patent Laws, all of which are of great interest to patent practitioners, many of which have an interest to inventors, and about half a dozen of which should have an interest to the legal world in general.⁵ The AIA contains a general effective date provision in Section 35, which states that except as otherwise provided, the provisions of the AIA "take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act[, September 16, 2011,] and apply to any patent issued on or after that effective date."⁶

The AIA includes significant changes to the U.S. Patent Laws, including bringing the U.S. Patent Laws more in line with the patent laws of other countries. The practice of patent law has long been international in nature, much more so than many other areas of law. However, the U.S. Patent Laws have remained relatively stagnant when compared to the patent laws of other countries, many or most of which have constantly evolved to cooperate with each other, ifnot parallel each other. Portions of the AIA help to bring the United States more into the international community of patent laws.⁷

Several of the most interesting changes include (a) changing from the first to invent to the first inventor to file, (b) broadening the scope of prior art, (c) broadening prior user rights, (d) changing the best mode requirement, (e) adding a post-grant opposition procedure, (f) eliminating some types of false marking lawsuits, and (g) prohibiting patents from

4. Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (to be codified at 35 U.S.C.).

5. See generally id.

6. Id. § 35, 125 Stat. at 341.

7. See, e.g., id. § 3(a), 125 Stat. at 285 (to be codified at 35 U.S.C. § 100).

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issuing on a human organism.⁸ Although there are many other changes to the U.S. Patent Laws in the AIA, most would likely be ofinterest only to the patent practitioner or to the academic.

A. Changing from the First to Invent to the First Inventor to File

Section 3 of the AIA changes the U.S. Patent Laws to allow the granting of a patent to the "first inventor to file" a patent application on an invention, rather than the historic "first to invent" the invention.⁹ The AIA does not change the underlying definition of what an inventor is, in that one must still be an inventor in order to apply for and receive a U.S. patent. Therefore, the AIA does not change the U.S. to a "first to file" system, thus satisfying the language of the U.S. Constitution. In a "first to file" system, which a number of other countries have, the first person to file a patent application, whether or not the inventor, can obtain the patent.

Replacing the "first to invent" criteria with the "first inventor to file" criteria should have little to no practical effect on inventorship. Of all of the patent interferences¹⁰ filed each year in the United States Patent and Trademark Office (USPTO), fewer than twenty are decided in favor of the second inventor to file.¹¹ To put this into perspective, over 200,000 patent applications now are filed each year with the USPTO, and over 100,000 patents are issued.¹² Thus for all practical purposes, this section of the AIA essentially codifies what already exists.

B. Broadening the Scope of Prior Art

Section 3 of the AIA also simplifies the definitions of what counts as prior art.¹³ In effect, by eliminating several exceptions as to what

8. See discussion infra Parts II.A.-II.G.

9. Leahy-Smith America Invents Act § 3(a), 125 Stat. at 285.

10. A patent interference is a process conducted by the Board of Patent Appeals and Interferences (BPAI or Board) of the United States Patent and Trademark Office (USPTO) to determine priority of inventorship when two different applicants have filed patent applications with conflicting (identical or patentably indistinct) claims. 35 U.S.C. § 135 (2006), amended by Leahy-Smith America Invents Act § 3(i), 125 Stat. at 289.

11. See generally James Yang, First Inventor to File System Under the America Invents Act, OC PATENT LAWYER (Oct. 21, 2011), http://ocpatentlawyer.com/first-inventor-to-file-system-under-the-america-invents-act/.

12. See U.S. Patent Statistics Report, USPTO.GOV, http://www.uspto.gov/web/offices/ac/-ido/oeip/taf/us_stat.pdf (last visited Feb. 10, 2012).

13. See Leahy-Smith America Invents Act § 3(a)-(c), 125 Stat. 285-87 (to be codified at 35 U.S.C. §§ 102-03). "Prior art" is the body of knowledge currently in existence, and is applied by the USPTO examiners when examining a patent application for patentability. As two of the criteria for patentability are that the invention must be "new" and "non-

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constitutes prior art, most prior art now will be a bar to patentability. For example, the AIA expands the scope of materials that may be considered prior art by eliminating from 35 U.S.C. § 102¹⁴ the "in this country" limit on prior art, resulting in the ability to attack any patent or patent application by evidence of prior public use of the invention anywhere in the world.¹⁵ As a practical matter, it will become increasingly important to conduct prior art searches, and to conduct broader prior art searches, by both the patent applicant and accused infringers as a result of this change.

Rather than having a number of exceptions to what constitutes prior art, the AIA has simplified this section of the U.S. Patent Laws: the effective filing date of a patent application now will include the filing date of any prior foreign application on which the applicant relies, any prior public disclosure of the invention more than one year before the effective filing date of a patent application will continue to be a statutory bar to obtaining a patent, and prior public use or sale anywhere in the world, rather than just in the United States, will be a statutory bar to obtaining a patent.¹⁶

However, there are two important exceptions to the prior art rule. First, prior art disclosures made publicly available one year or less before the effective filing date of the patent application can be overcome by a showing that the prior art disclosure was by a person who obtained the subject matter from the applicant,¹⁷ or the applicant publicly disclosed the subject matter before the date of the prior art disclosure.¹⁸ Also, applicants can now rely on common ownership or joint research agreement provisions to overcome prior art rejections.¹⁹

C. Broadening Prior User Rights

Section 5 of the AIA broadens prior user rights in defending patent infringement claims.²⁰ Historically, prior user rights have been a defense to patent infringement that prevents people who have previously used the patented...