On September 16th, 2011, President Obama signed the America Invents Act (“Act”) into law. A wave of blog posts, CLEs, and articles have sprung up to discuss the sweeping changes to the United States patent system brought forth through the changing laws. However, the full effects of the Act may not truly be realized for many months. Indeed, the Director of the United States Patent and Trademark Office (“USPTO”) is empowered through multiple provisions of the Act to create and implement regulations that actually define how the changes brought forth through the Act will look in practice.
For example, Section 18 of the Act provides for a transitional program for covered business method patents. This new program allows alleged infringers of covered business method patents to initiate a post-grant review process to have the USPTO review validity of one or more claims in such patents.
Clearly, it is unclear what patents fall under the definition of “covered business method patents”. The only guidance provided in the Act is that “the term ‘covered business method patent’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.”
Nevertheless, the Director of the USPTO is given regulatory authority in the Act to determine whether a patent is for a technological invention. In short, the Director will define what types of inventions will fall under this special program. Today, no one truly knows whether a patent is a covered business method patent or not. The Director’s regulations could be so broad as to include patents not intended to be included by Congress during the drafting of this specific section or so narrow as to exclude the exact patents Congress intended to include.
In another example, the Act allows patent owners to bolster their patents by submitting information to the USPTO after issuance to determine whether such information creates a substantial issue of patentability. This new process is provided for in Section 12 of the Act and is called supplemental examination. The benefits of supplemental examination is that it removes the risk of a patent being held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination for the information submitted during supplemental examination. Patent owners that failed to present known prior art to an examiner during prosecution may be able to use the supplemental examination process to cure such an error.
Under Section 12 of the Act, the Director is given regulatory authority to define requirements as to what information is allowed to be included in a request for supplemental examination: ” A patent owner may request supplemental examination of a patent in the [USPTO] to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish.” 35 U.S.C. 257(a) (new).
Today, it is unknown what information may be submitted during supplemental examination, and it is up to the Director through regulation to set these specifics. The Director may create regulations that allow for information that effectively acts as post-issuance Information Disclosure Statements or something even more broad.
The above are only two examples of how the Act has given regulatory authority to the Director of the USPTO to define vague areas of the changing laws. It should be noted that there are many other areas of the Act that could have been included. To learn more about how the America Invents Act is changing the United States patent system, visit Ice Miller’s website or email firstname.lastname@example.org.