Archive for July 26th, 2010
July 26th, 2010 | 
Author: changes in the U.S. prior art law implemented by PL 108-453 decrees 10th December 2004
by Richard Neifeld
I. Abstract
II amendments to 35 USC 103
III. Analysis
IV effects on the action “connected … The day of enactment of this Act”
V. Implications for the rights to an interference proceeding
VI. Broadening claims in pending applications
VII proactive actions and agreements relating to applications claiming similar issues
VIII Conclusion
On November 20, 2004, Congress passed S. 1292nd President Bush signed S. 1292 in public law as Law No: 108-453 (PL 108-453). It is a law reducing the scope of the prior art in the United States. The purpose of the Act is to some restrictions on the patentability of inventions resulting from the collaboration between different people, remove the payroll of more than one corporation. Specifically, PL 108-453 amends 35 USC 103 (c), as indicated below.
II amendments to 35 USC 103
The previous version of 35 USC 103 (c) are the following:
(C) the object of another person, which is considered state of the art in one or more sections (e) (f) and (g) of § 102 of this title shall not preclude patentability developed under this section, when the object and the claimed invention were made at the time the invention was owned by the same person or an obligation of assignment to the same person. (Amended November 8, 1984, Public Law 98-622, sec 103, 98 Stat 3384, November 1, 1995, Public Law 104-41, 1 sec, 109 Stat 3511.)
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The new version of 35 USC 103 (c) is consistent with PL 108-453, as follows:
(C) (1) is the subject of another person, which is considered state of the art in one or several stages of development (s), (f) and (g) of § 102 of this title n is not from patentability under this section in which the object and the invention claimed by both the claimed invention was made, owned by the same person or an obligation of assignment to the same person.
(2) developed for the purposes of this paragraph, the subject of another person and a claimed invention is considered to be the same person or an obligation of assignment to the same person if –
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(A) the claimed invention was made by or on behalf of parties to a joint research agreement was in force or have been incurred before the date of the claimed invention;
;
(B) the claimed invention was made as a result of activities under the joint research agreement commitments, and
(C) the patent for the claimed invention discloses or is amended to release the names of the parties to the mutual agreement of research.
(3) closed the purposes of paragraph (2), the term “joint research agreement is a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the implementation of experimental work, development or research in the field of the claimed invention.
The provision came into force in PL 108-453 as follows:
SEC. 3rd Effect.
(A) is generally made-The amendments made by this Act, every patent granted after the date of enactment of this Act sic [; from December 10, 2004].
(B) Special rules-The amendments made by this Act affect any final decision of a court or United States Patent and Trademark Office before the date of enactment of this Act [sic rendered December 10, 2004] and does not affect the right of each party in an action pending before the U.S. Patent and Trademark Office or a court on the date of enactment of this Act sic [10, December 2004] to its claims based on provisions identified Title 35, United States Code, the day before the date of enactment of this Act sic [10, December 2004].
III. Analysis
Secret prior art relates to a matter that is the state of the art under U.S. law, but it is not publicly known. It covers the subject of achieving the criteria in paragraphs (e) (f) and (g) of § 102 These criteria are filing a patent application for 102 (e), the derivative of a patentable invention by another person, for 102 (f), and secret invention by a third, for 102 (g).
The version of 35 USC 103 in effect until December 10, 2004, the definition of prior art does not provide for secret prior art as an anticipation excluded non secret was the state of the art subject to human activity by contract to sell its inventions, the same legal entity named as an inventor. The revised statute expanded the exclusion of the subject of the prior art secret for all non-anticipating the subject of the following conditions are met.
First existing agreements
The assignee of an invention claimed has been established prior to the invention claimed, a contract for the testing, development or research in the field of the claimed invention “(which is an agreement Collaborative Research).
Thus, an agreement to provide qualified immunity before the implementation of the legislation can be given.
2nd activities within the
The claimed invention was made as a result of activities under the joint research agreement commitments. “
If the agreement broadly define the activities within “the scope of the joint research agreement.” It will be necessary in some cases, competing interests, the parties to the agreement on the draft agreements narrow scope. In such situations, we can expect litigation over whether the 103 (c) (2) exclusion applies and the decision in such a procedure for constructing the meaning of terms in the Agreements of constellations different. In all cases, the terms of these agreements should be carefully and fully thought in the agreement the possibility of unexpected adverse effects minimized set.
The third application shows Parties to the
The application … is known or can be modified to distribute the names of the parties to the joint research agreement. “
This post requires a change in demand, it is doubtful whether to request a certificate of correction of a patent issued. Preliminary work suggests that the certificate could be acceptable to grant post-correction. Contradicted, however, that the wording of the law. Thus, a party like the exclusion in a patent, particularly if litigation is contemplated, we may need to resort to filing a patent application for reissue and then modifies the application for reissue, of course, the exclusion applies.
In addition, it may be possible for applications for reissue patents currently issued for the addition of a 103 (c) (2) (c) Amendment and the requirement that the [Reissue] patent is issued once to meet the 10 files in December 2004 effective date of PL 108-453.
In general, with a party to such agreement shall immediately file 103 (c) (2) (c) changes in patent applications. Note that this change could prior art that could result from the discovery in litigation or a patent due diligence to remove. Therefore, it is worth a 103 dpi (c) (2) (c) change if the claimed invention, probably the other conditions of exclusion.
IV effects on the action “connected … The day of enactment of this Act”
PL 108-453 apply to patents issued on or after December 10, 2004. However, there is a special provision on existing processes, which means that the amendment is not in 35 USC 103 “the right of each party in an action pending before the U.S. Patent and Trademark Office or a court date of the text entitled to the rights of third parties are determined on the basis of the provisions of Title 35, United States Code, in which the day before the date of enactment of this Act. “
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There is a problem with this particular provision. Change 103 (c) can only help patent holders, patent holders would be exempt from the old version of USC 103rd 35 Thus, supply specific date is not likely to be claimed by patentee. The term “rights” usually refers to property, as the patent holder the exclusive right. Therefore, it is not clear should refer to this provision.
The statement “… each of the parties that the rights of others, suggests that this particular provision may apply to both or all parties in an action. How this provision will be interpreted, for example, if an individual licensed wants to apply new 103 vis-à-vis the accused to defense or defense of invalidity of no infringement under the doctrine of equivalents, and the accused wants to use the old 103 vis-à-vis its defense of invalidity and his defense of no infringement under the doctrine of equivalents? The patent holder meets any party to an action “criteria, such as the defendant. The patent owner responds to the “rights” on the basis of patent rights. If the activity of the defendant, the amounts of patent infringement for an object “right”. In such measures which version is true of 103, and “the parties’ rights are superior? If Congress wanted to ensure that the new law takes effect might violate patents in a patent litigation in progress, it says so clearly. The special provision to the effective date is not also a clear statement.
This law was clearly partly in response to a judicial interpretation of 35 USC 102 (g) to expand the scope of the state of the art products Oddzon, Inc. v. just toys, Inc., 122 F. 3d 1396 (Federal Law Gazette Cir. 1997) (Lourie, J.). However, just because S. 1292, PL 108-453 now, was in response to this situation does not mean that defendants are in dispute existing in the earlier version of 35 USC 103 and its interpretation in favor of products Oddzon, Inc.
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The particular provision of the rule would only hurt applicants, applicants should ignore and immediately files 103 (c) (2) (c) changes. However, it is an extremely rare case that does not want an applicant to file a 103 (c) (2) (c) change as a problem of interference with the applicant that a process of engagement, how resolve would be moot discussed below.
rights impact V. an interference proceeding
Note that the position of the USPTO interference proceedings is that their main objective is “to assist the examiner in the examination of a patent application.” JD v. SH, Paper No. 55, Interference 104,044 (Trial Division of the BPAI, November 11, 1999). Therefore, disorders of the procedure are needed only if the existence of a patent precludes the granting of a pending application. In this context, establishes that the party whose request has been made by a patent from the prior art by submitting a 103 (c) (2) (c) could change the discharge may cancel the bid rejected the103 (c) (2) (C) change. This has the potential to prevent a process to interfere with the patent, at least according to the reasoning of JD v. SH. However, there are situations in which the applicant intends to take to down to remove the blocking patent on it instead of the prior art, the situations in which the applicant may file a the103 (c) (2) (c) Amendment.
Regarding the potential for intervention in situations of both parties must have an agreement for joint research in their patent applications and 103 (c) (2) (c) changes, a procedure is inadmissible still possible. It is with the law 35 USC Section 135 (a) is granted, the USPTO discretion to declare, during the unrest. In addition, 35 USC 135 (a) provide an independent basis for a verdict against a party to withdraw in particular the lack of priority for an invention patentable, the claims of the party. See “The viability of the Hilmer doctrine” Neifeld, 81 JPTOS 544, Section III. B (July 1999) () and In re McKellin, 529 F. 2d 1324, 1327, 188 USPQ 428, 432 (CCPA 1976) (“A candidate that an intervention is not lost for the claims to be the counts of the fault corresponds to the line. A determination of the priority of invention unfavorable to a candidate, the final rejection by the Patent and Trademark Office claims 35. USC 135th “italics in original.) Therefore, it is possible that the USPTO would intervene in a situation where no party inventive activities are prior art against the other party to explain.
The 103 (c) the exclusion of prior art is only for non-anticipatory prior art. In other words, does not mean the exclusion of a claim for part of the first paragraph apply to joint research, provided that the inventive step of the second party to the joint research agreement should be defined by the claims. Thus, it is still impossible for a 103 (c) (2) (c) alter, remove the issue of closing state of the art in inventive activities of parties to a joint research agreement is based. In such situations, the facts of who first invented the claimed subject matter you may have a disorder, or if the parties agree to cooperate to specify a private investigation and presentation of art relevant to visitors to the USPTO.
In fact, as the USPTO, the question of interference between patents and applications will be submitted to address 103 (c) (2) (C) rights is a legal question open. As this is an open question of law, and since 103 (c) nor desirable block exemption of debts, despite a joint research agreement that could be considered by the parties to these agreements by both the question interference and blocking 103 (c) Status of technology in their joint research agreements. When this situation could arise? For example, consider a university trying to license revenues by technology value can be obtained only if the partner companies in the related areas of collaborative research agreement has also patented technology to block only its implementation in commercial favor of an alternative technology. Another example of a first party to a joint research agreement, which makes so large, the results of joint research, a claim was provided by the inventive work employs only the inventor of the other party, and the other party for any reason fails, claim to be the object. It is certainly much easier to experience these types of situations in advance at the address listed in a joint research agreement as if it.
VI. Broadening claims in pending applications
Remember that the amendment of the Act is extended to pending applications, if the above conditions have been the joint research agreement, if the inventions have been disclosed in the application. If pending applications are limited to avoid the subject which was filed at the time of application was 103 (c) the state of the art and can now be removed, 103 (c) state of the art by submitting a 103 (c) (2) (c) Amendment consider filing a 103 (c) (2) (c) Amendment and presented in an appropriate manner the broader claims.
VII proactive actions and agreements relating to applications claiming similar questions
A new series of questions to be raised by the amendment filed by the law, the impact on applications claiming a subject matter by the different parties to a joint research agreement. The PTO is
that obligations of disclosure and open communication to the auditor, if the applicant is aware that similar requests from different applications to choose the auditor may decide whether a double patenting rejection impose extended. The questions concern both the obligation of disclosure and double patenting.
The obligation to disclose applies obviously to similar claims in the applications of different sides, belongs to the extent that each party knows the other party applications. Therefore, if the patent application information, parties to the joint agreement, law enforcement must be equipped with a patent attorney of this information, which meet 37 CFR 56 Obligations of first disclosure and candor to the USPTO.
Another question is how companies should act to minimize the risk of damage double patenting rejection of their patent portfolios.
For example, if each agency, a joint research agreement, filed a patent application, and one or two applications are subject to double patenting of releases on other than to circumvent the two units, the situation? Note that there is currently no regulation allows both companies to eliminate the rejection by filing a terminal disclaimer, because applications can not co-ownership! First 37 CFR 321 (c) (3) requires common ownership of two patents or applications for terminal disclaimer to be effective to eliminate a double patenting rejection. Accordingly, the parties should be considered now to take steps to avoid this problem.
These measures could affect an agreement on all patent rights to one of two entities, or only those patents that are unique double rejection of patents, assign a unit at an appropriate time, with an appropriate license Back to the assignee. Another useful measure would be to determine in advance which assign patent applications (with appropriate license again) and that each party to avoid claims in the applications or to minimize the possibility of a double patenting rejection. Note that even if the patent applicant, a double patenting rejection by filing a terminal disclaimer to overcome appropriate, elimination of all patent liability adjustment potential long-term. The effect of truncating the patent term is generally more harmful to the underlying basic research, because the more the underlying basis of the research, which occurs later in time to market.
PL 108-453 reduced the level of technical skill against the claimed invention. Corporations can take advantage of PL 108-453 with appropriate measures, and that these institutions may want to check out research in the framework of agreements and take appropriate action.
If you have questions or need more information, please do not hesitate to contact us by e-mail to www. neifeld. com.
Richard Neifeld,
Neifeld IP Law, PC < / a>
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Nevada New Corporate Laws, you must
____________< br /> Bearer Shares Outlawed know
____________< br /> Owner inform Disclosure Procedure < br /> ____________<, br /> Building Asset Protection for Enterprise
The Nevada legislature significant changes to Nevada Corporation Code in its last meeting. You need to know these new rules.
. As is often the case, the rules and regulations for the implementation of new laws will be implemented over time, and we will keep you informed of them as they arise. (If you or your friends a free subscription to the Corporate Direct would like to report please click here.)
For now, there are three major changes and some other new rules you need to know about immediately.
1 Bearer Shares Outlawed
Bearer shares are share certificates in lieu of the owners list their names, the list owner only as “the bearer . The advantage of this was supposed to maintain the confidentiality of the property. The owner was, that the certificate, if the shares could be transferred from one person to another without notice to any person or entry everywhere.
I’ve never really liked the idea of bearer shares. If someone comes to me with the bearer, how do I know if the certificate was not stolen or fake? The idea of simply giving a certificate from one person to another may seem simple and friendly (and a little more intelligent), but such a transfer can create all sorts of tax problems. If you hand a certificate of a company millions of dollars is more than your friend you have a substantial gift for the gift tax due are made. And if, by preparing the certificate back to you to give it to another taxable event. Worse what if your “friend only”, you return the certificate?
Bearer shares are allowed major reason to do with fraud. Less ethical business leaders and developers would sell fewer their ethical corporate clients on the idea that simply passing the bearer certificate of a friend, she could be a creditor (refusal to grant the Court of Appeal) have access to the business or other assets. Of course, such a transfer a fraudulent conveyance means that the court could cancel the transfer, if someone is aware. The problem is that it might be very difficult to know was to find out. Therefore the bearer activated a particular class of persons to commit fraud. The Nevada legislature was right to prohibit bearer shares.
2 The new owners Disclosure procedures
The use of Nevada corporations and other organizations to commit fraud is the reason for this next big change. It is unfortunate that the privacy of individual property is now somewhat reduced, but if you still want to abuse the system to give something in general.
Apparently, federal authorities and law enforcement push these changes have played the terrorist card, where people were terribly wrong in the privacy of Nevada corporations ultimately hurt significantly. Although my opinion is that this card is played on red a little too often these days, he can not deny that domestic bad guys, the average American fraudster , Nevada used for nefarious purposes of privacy.
But the new law for corporations, LLC, LP’s business trusts and other not as bad as you might expect. The rule for companies
1 also takes place all necessary files on the seat 78 to NRS 105, a company not a listed company must keep at its registered office or principal place of business to enter this state: a. include
An updated list of its owners, or
b. A statement indicating whether this list is maintained.
2 The Company shall: a. Give />
b. A written notification to the Secretary within 10 days after each change of data in the list in paragraph 1 contain.
3 At the request of an agency application of the law in a criminal investigation, the Secretary of State to require a company:
a. submit to the Secretary of State within three working days, a copy of the list in paragraph 1, or
b. Response provided that all examinations of the Secretary of State, which will assist in criminal investigations.
4 If a carrier is not a requirement under paragraph 3, according to Secretary of State may all necessary measures, including the taking, without limitation, suspension or revocation of the charter
5 The Secretary of State no is not to revive or a charter that was revoked or suspended pursuant to subsection 4 unless: A.
The company meets the requirements of paragraph 3 or
b. The organization of law enforcement conducting the investigation advises the Secretary of State for the restoration or replacement of the company charter.
sixth Secretary of State may administer the regulations concerning the provisions of this section.
It is important to note that Nevada is not a matter for the owners of the business forward. The requirement is that the agent is registered A list of owners or the name of a contact person who has a list of owners. The Secretary of State requests the list of goods if an enforcement of the law, which for a criminal investigation. Not a spirit civil case, but only for a criminal case.
This means that if your business plans and asset protection are higher and your privacy is protected. Or in other words, if you are involved in fraud and other crimes, our company will be happy to comply with these new rules. You can even take your business elsewhere bad to begin with. But for the good guys, you will still get your privacy.
Two points are worthy of attention. First, for limited partnerships the only owners of the new legislation are the objectives for the partners in general. While the generals were in fact controlled by a limited partnership, often they are only 2% or less of the company and are usually one or the Management Corporation LLC. Sponsors will own 98% of the Partnership and, with the exception of management, are beneficial to society.
If the new law intentionally just wanted information on the general partners or corrections will be extended to sponsors of identity remains to be seen. But for now, people want very concerned about the privacy of partnerships Nevada limited use.
The second point has to do with Wyoming. The Company Law Wyoming has no such property to the notification procedure. Yes. ” br /> Apparently the federal authorities are working on similar laws in other states, including Wyoming approval. We provide information on such developments. Until then, again, those who are very concerned Privacy of Wyoming want to use units.
3 Stronger Asset Protection equities Nevada
One of the most important laws on the protection of assets on the books at the store. This law stipulates that a decision by the creditor to acquire a member of an LLC or partner of a limited partnership does not use these interests directly and control to a sale of assets of the force. Instead, they receive only the rights of an assignee of the membership or partnership interest, ie they are only entitled to distributions of the company. You can not vote to sell assets to meet their claims. They can not even vote to increase distributions. They are firm expects future distributions, which may come or not. The charge order is a very effective deterrent to frivolous litigation, particularly in the Nevada and Wyoming LLC and LP’s, where the load is in exclusive mode.
Up to now, had never used the store by the company’s shares. was not covered, eg When John died in a car accident and her insurance, the victim was able to go against his assets. If John is 75% of a profitable business of the victim was able to take control actions and voting to sell the company to get the right justice. This is certainly not fair to Jane, owns 25% of the company, worked hard to build, just to see it marketed under the .
With the new law, Nevada has ordered the shop now applies to equities. is an excellent development.
Publish to emphasize some important rules. Protection the charge order applies only to companies that have more than one and less than 75 shareholders. If you are 100% owner of a profitable business, you can also consider to earn exposure for a nominal amount of shares to a relative or friend to a better protection. In addition, the new law does not apply to subsidiaries of listed companies or professional firms.
Pricing order protection for actions not in all cases before the first Rank in July 2007, and it does not replace a private agreement between a shareholder and creditor. The new law puts Nevada at the head of state asset protection. Although the Wyoming is likely to take until the state of Nevada to take up the slack. Although the initial registration fee Nevada and Wyoming Annual slightly higher than the fees, the best protection pays off additional.
4 Various new rules /
The new law covers in detail the behavior of agents restricted. A new category was created to ensure that the agent registered, registered with the government . Registered agents that do not respect the rules can be established by the Secretary of State office will be banished from the company. In accordance with the rules of disclosure must be recorded to keep a register of agents of social the company for three years after registration or termination of the supplier or the dissolution of society.
The new law allows the professional LLC. Many wanted to have doctors, lawyers, accountants and others, that flexibility operating practices as an LLC, but he was forbidden to him. The new law follows the trend of many states now allow professionals LLC.
The importance of the election of directors companies has been highlighted in the new law. Company, the directors in 18 months does not select guard. The owners of 15% of the company’s shares may go to court to force such a choice.
; The reintroduction of the facilities has been made more efficient. A corporation, LLC or LP, which may be paid his annual dues to the State to exercise its right to lose customers. Re up to pay a royalty to the company the current state to make. The new law provides for the automatic reinstatement of the company to do business as the company has been restored along the stream.
As we have already noted, Law is a dynamic and constantly changing environment. Nevada’s new laws to prove the point. Again, if you or a friend would like updates on changes to the law firm to receive please click here.
We will keep you informed. If you have questions or concerns about this new legislation, please contact us at www. Sutlaw. Com>