U.S. PATENT LAW AMENDMENTS

December 8, 2000
HARAKENZO World Patent & Trademark
(Takamasa ARAI)

On November 29, 1999, the amendment act of the U.S. patent law was enacted. With the enactment of the amendment act, early publication system is introduced. This amendment of the U.S. patent law makes it possible to prevent problems such as duplicate investment and the occurrence of submarine patents (17 years´ f patent term from the date of issue). The following will explain the early publication system.

I. EARLY PUBLICATION SYSTEM
In principle, all the patent applications are published after the expiration of 18-month period from their effective filing date (international filing date and their earliest filing date claiming the convention priority). The system applies to all the patent applications filed on or after November 29, 2000. If an applicant so requests, a patent application may be published earlier than the end of such 18-month period (Amended 35 U.S.C. §122(b)(1)(A)).

II. EXCEPTIONS OF PUBLICATION (Amended 35 U.S.C. 122(b)-(d))
Early publication does not apply to (1) applications no longer pending, (2) applications subject to a secrecy order, (3) provisional applications, (4) design applications, and (5) RCE.

An applicant may request that an application not be published by explaining, upon filing the application, that the application has not been, and will not be the subject of a patent application filed in another country, and under a multilateral international agreement (such as PCT), that adopts “ the system of 18 month publication of applications ”.

An applicant may limit the scope of the publication to the same scope of the corresponding foreign filed applications. In such a case, the applicant must submit to the USPTO a copy of the redacted (revised) version of the U.S. patent application within 16 months of the earliest filing date. In case where the published U.S. application as redacted (revised) does not enable a person skilled in the art to use the claimed invention, the applicant cannot secure provisional rights.

If a copy of an amended specification is not submitted to the USPTO, Preliminary Amendment is not regarded as a part of a published patent application. III. Notes on the publication of applications

The contents of the published application are available for viewing via the electronic search system of the USPTO. The contents of application to be published can be limited to the same contents of the corresponding foreign patent application, and subject matters added to the U.S. patent application can be nonpublic (See amended 35 U.S.C.
§122(b)(2)(b)(v)). In case where the U.S. patent application includes subject matters added to the contents of the corresponding foreign patent application, the applicant can submit to the USPTO a redacted version of the application eliminating those subject matters that are not included in the corresponding foreign patent application within 16 months from the filing date so that the applicant can request the redacted version
of the U.S. application be published.
The electronic search system includes EAST (Examiner Automated Search Tool) and WEST (Web-based Examiner Search Tool). Provision of official gazettes is not planed. However, paper copies will be provided by the USPTO to any requesting party for a fee. Voluntary publication, early publication, and re-publication are required for a
publication fee (besides, a processing fee of $130 must be paid for each procedure).

Without agreement of an applicant, not permitted are a protest procedure and any other opposition procedures before the grant of patent against any applications after their publication.

In case where an applicant proceeds with a foreign filing after having made the request for non-publication of the U.S. application, the applicant must notify the USPTO within 45 days after such foreign filing. Failure to do so will result in the U.S. application being deemed to be abandoned, excepting if a delay in notifying was unintentional (See amended 35 U.S.C. §122(b)(2)(c)(iii)).

According to the publication of applications, an applicant must claim a priority/continuity within 16 months/4 months from the filing date of the earliest prior application/the current application.
Unintentional delay in claiming a priority/continuity can be covered by the way of paying an additional fee.

IV. Provisional Rights
Provisional rights extend to the publication of applications (See amended 35 U.S.C. §154(d)). Provision of the provisional right applies to the patent applications that are pending as of November 29, 2000 and the patent applications that are voluntarily published by the applicant.
An applicant can claim a “ greasonable royalty ” within 6 years of the grant of the patent from those who make, use, offer for sale, or import her invention in the published application in the U.S. in the period between the date of a patent application's publication and the date of the patent’s issuance (See amended 35 U.S.C. §154(d)(3)).
Incidentally, the published claimed invention which is covered by provisional rights must be substantially identical to the claimed invention of the issued patent.
Upon enforcement of the provisional right, an infringer must receive actual notice of the published patent application (explaining what acts are regarded as giving rise to provisional rights).
Furthermore, in case where an international patent application is published in a language other than English, its provisional right can be enforced from the date on which the USPTO receives an English translation of the international patent application, or the date on which the USPTO receives the PCT publication from the International Bureau of WIPO.
The claim of Treble Damages is not permitted.

V. Interferences
In case where a patent application 2 is filed after a patent application 1 has been published, the applicant of the application 2 can copy claims from the application 1 published only within one year of that application 1’s publication. Of course, the applicant of the application 2 is not necessary to copy claims if the claims of both applications are substantially identical.
If such a published claim is not copied within one year, it is impossible to copy after the time frame.

VI. Effective Date as Prior Art
With introduction of an application publication system, when a published application is cited as a reference under 35 U.S.C. § 102(e)(1), its actual earliest U. S. filing date is regarded as a basis. In the case of an international application, it is required to designate the U.S. and to be published in English (In case where the international patent application is published in non-English language, the published international patent application cannot obtain “ the status of prior art under 102(e)”). This applies to the patent applications that are pending as of November 29, 2000 and are voluntarily published by an applicant.
The U.S. unexamined patent publication and the unexamined international patent publication become prior art as of their published date under 35 U.S.C.
§102(a)(b). 35 U.S.C. §102(a) applies to all the U.S. patent applications filed on or after November 29, 2000, and 35 U.S.C. §102(b) applies to all the national stages of international patent applications designating the U.S., filed on or after November 29, 2000.

VII. Access to Published Applications by Third Party
A direct, physical access to a published application is not permitted. The USPTO supplies copies of the file wrapper and contents of the published application, or copies of one or more specific documents in the file of the published application (37 C.F.R. §1.14(C)(2)).
It costs $200 for copies of 400 pages or less. Access to a redacted application is permitted.
As long as an applicant timely submits to the USPTO copies of correspondence documents with the USPTO and filing documents by the applicant, which are appropriately redacted, the file wrapper and contents of those documents are redacted.

VIII. Involvement of Third Party After Application Publications
Not permitted is a third party submission of patent publications and printed papers for a protest, an opposition, or any acts.
The submission must be served on the applicant. The number of documents which may be submitted is 10 or less. Not permitted is a discussion of printed papers and claimed inventions. Such a third party submission must be filed within 2 months from the date of the publication of the application or prior to the mailing of a notice of allowance.

IX. Extension of Examination Period
Extension of examination period of an application shall be 3 years from the earliest filing date, except for CPA.

Cautions in Practice
The measures and cautions, corresponding to the application publication system, are described as follows.

A. Measures Corresponding to Introduction of Application Publication System
a-1) On or after November 29, 1999, in the case of the U.S. patent application of which the actual filing date is before May 29, 2000, an applicant is advised to use CPA for securing a provisional right.
Incidentally, in the case of the U.S. patent application of which the actual filing date is on or after May 29, 2000, an applicant can no longer use CPA procedure.
a-2) Preferably, an applicant drafts broad claims and narrow claims at the stage of filing to enforce provisional
rights.
a-3) In the case of the U.S. application filed before November 29, 2000, an applicant is advised to take either of the following two measures:
To use CPA procedure (only for applications filed before May 29, 2000) so as to avoid the publication of an application and keep the application secret; or To file a § 111(a) continuation application and make it published, or to submit a request for voluntary publication of the application that is pending as of November 29, 2000, so as to secure provisional rights. a-4) An application having the same assignee can overcome an Office Action based on &;sect;102(e). In accordance with the fact, a patent application filed before November 29, 2000 can overcome the rejection similarly if re-filed on or after November 29, 2000.
a-5) To enforce provisional rights, in the case of a PCT application, an applicant needs to file in English. If a PCT application is filed in non-English language, an applicant needs to file to the USPTO an English translation of the application.

B. Cautions Associated with 35 U.S.C. § 102(e)(1)
b-1) Prior art status is not affected by a later abandonment of the application after its publication and before its issuance of the patent.
b-2) The published application whose owner is an inventor is not cited as prior art (However, it is cited as prior art if it satisfies§102(b)).
b-3) Applications whose assignee is the same can be excluded from prior art, and all the patent applications filed on or after November 29, 1999 are subject to such exclusion.