Smith Hopen IP Weblog

Very Interesting History of IBM Video

Standing for False Patent Marking

35 U.S.C. §292 permits members of the public to sue (on the behalf of the United States) an entity that falsely affixes the word “patent” to an unpatented article with the purpose of deceiving the public.  A $500 penalty is imposed for each falsely marked article causing concern for manufacturers that produce goods in high volumes.  Any person may sue for the penalty, in which event one-half goes to the person suing and the other to the United States.

The Federal Circuit held in Stauffer v. Brooks Brothers, Inc., 619 F.3d 1321 (Fed. Cir. 2010) confers standing (i.e., the right to sue) on an individual as long as the individual alleges that the U.S. suffered an injury in fact causally connected to the defendant’s conduct that is likely to be redressed by the court.  The Federal Circuit found that violation of the act alone is sufficient injury in fact to confer standing.

Interestingly there is a constitutional challenge to §292 arguing that the delegation of the enforcement of patent laws was an impermissible encroachment on the executive branch by Congress.  However, this argument was not taken up by the Federal Circuit in Stauffer.

2-Year Provisional Patent Application?

In its December 8, 2010 Federal Register notice the USPTO advised it would effectively permit 2-year provisional patent applications by extending the time period to reply to a notice to file missing parts.  It has implemented this through a 12-month pilot program. The idea is that inventors would be able to save money and determine whether they should pay to have the patent application actually examined.  Another benefit is that if some of these “extended” provisional applications are not subject to examination then the workload on the PTO examiners will lighten up.  Early last year there were rumblings of a 2-year provisional application which were greeted with enthusiasm by many (particularly at university tech transfer offices). 

However, in reading the details of the pilot program, the cost/benefits seem to weigh against it.  Let’s consider a typical scenario:

1. Faculty researcher brings tech transfer office a new therapeutic compound with some promising (but very preliminary) testing data.
2. Tech transfer has us file a provisional application January 1, 2011.
3. December, 2011 tech transfer does not have a licensee nor is there further test data for the compound.  Tech transfer decides instead of having a complete non-provisional drafted they should take part in the pilot program.
4. We then file the same application as a non-provisional with a form requesting participation in the pilot program with the basic filing fee (currently $82 for small entity e-filing). 

PROS:

·  Money Savings: The initial fees are substantially reduced: from $462 (typically for a small entity e-filing without extra claims) to $82.  Total savings are $380 if the application is ultimately abandoned.  If the missing parts are filed to keep the application alive then deduct another $65 (small entity) for the missing parts surcharge.  Total savings now down to $315.

CONS:

·  Shorter Patent Term: If the full 12-months are taken under the pilot program then 9 of the 12 months will be considered “applicant delay” and will be deducted from any patent term extension that the patent would otherwise have.
·  Delayed Examination:  Since the application would having missing parts for up to an entire year it would not get into the queue for patent examination.  Thus, even additional patent term may be gone.
·  No Free Ride for Foreign Rights:  The pilot program does nothing about your requirement to enter PCT or Paris Convention within one year of the priority filing.

OUR RECOMMENDATIONS

If you have a one-year provisional application coming up and the technology’s worth is dubious then file a non-provisional application which the same single, very broad claim we had in the provisional paying the full $462 filing, search and examination government fees.  This application will get into the patent queue and will likely be pending at least fourteen (14) months.  That will buy time for further research, study and licensing.  If the technology has legs then file a continuation in part (CIP) because you’ll have new data anyway and revisions to the initial claim.  Although the actual filing date of a CIP is used for docketing purposes the patent examiner may act on a CIP by using the effective filing date (provisional or at least the first non-provisional) (MPEP 708).