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Unlike the vast majority of the world, until March 15, 2001, proceedings in the U.S. Patent and Trademark Office (PTO) were completely confidential because U.S. patent applications were not published by the PTO. The first publication occurred when the application issued as a patent. In actuality, any U.S. Patent application that was filed under the Patent Cooperation Treaty (PCT) or with the European Patent Office (EPO) or in almost any other foreign country was published. So, in some respects, when the U.S. patent system came into alignment with most other patent systems and began publishing patent applications, the effect on learning about the competition was not very dramatic. However, some of the changes in the law that went along with the decision to publish patent applications will have dramatic effects in a number of different areas, and particularly in interference practice, provisional patent rights and public access to applications. INTERFERENCE PRACTICE An interference is a proceeding before the U.S. PTO where a determination has been made that a first patent application and at least one other patent application (or an issued patent) are claiming the same invention. The purpose of the interference is to determine which party is ultimately entitled to the patent. There are a number of ways that interferences can occur. One is that two (or more) patent applications as filed contain claims to the same invention and either the PTO or one of the applicants seeks to provoke an interference. Another way that an interference can be declared is if one party becomes aware of another party’s patent. Prior to March 15, 2001, there was a one-year period after a patent was issued in which a third party could copy any claims of the patentee in order to provoke an interference. This timing has now changed as a result of the publication of U.S. patent applications. Now, the publication of the patent application will trigger the commencement of the one-year period. Thus, a party may lose its right to contest priority with respect to an invention claimed in a published patent application unless it has a claim to substantially the same subject matter in its application within one year after the application is published. This change puts a substantially greater burden on patent applicants to follow the content of published applications, especially applications from competitors than previously existed, to avoid waiver of their rights. The reason is that there are many more patent applications filed than patents issued. Moreover, the language of claims evolves during the course of patent prosecution. Thus, a claim that you might not have recognized as claiming the same patentable invention in a patent application could evolve over the course of prosecution to a claim that was of concern and where you might seek to provoke an interference. Accordingly, now, particular attention must be allotted to the changes in the claims from how they appear when initially published to how they ultimately issue. Of course, if the published claim differs so substantially from the issued claim as to constitute a different patentable invention, the one-year period may not start until that claim publishes. This is a judgment call and the PTO will have the benefit of hindsight to review a claim’s evolution and decide if the change was that substantial. The consequence of that decision would affect the ability to provoke an interference and leave the decision to the whims of the PTO. This places a real burden on waiting. The reality is that the change in application of the one-year-to-copy rule now places a substantial burden on companies, particularly in highly competitive areas, to monitor these published applications or risk losing their right to provoke an interference. PROVISIONAL PATENT RIGHTS Under the new law, the publication of a patent application in the U.S. can create provisional rights contingent on the grant of a patent. Specifically, the law provides that once a patent is granted, the patentee is entitled to reasonable royalty from anyone who infringed a claimed invention during the period beginning on the date of publication and ending on the date the patent issues. Enforcement of these provisional rights is not solely based upon publication, but also depends upon the patent holder meeting a number of conditions. First, the right to a reasonable royalty is only available if the invention claimed in the issued patent is substantially identical to the invention claimed in the published application. As discussed above, patent claims are frequently amended during patent prosecution. Thus, enforcing provisional rights will likely turn on the interpretation of the differences between the published application claims and the issued patent claims. If the claims were substantially amended during prosecution, a patent applicant should consider having the application republished to preserve any provisional rights. Second, in order to be entitled to a reasonable royalty from an accused infringer, the infringer must receive actual notice of the published patent application in English. Appearance of the published application in a database is not sufficient. Finally, the patent owner has six years from the date of patent grant to recover under the provisional rights created by the published application. While the patent applicant needs to keep a lookout for potentially infringing products or acts to take advantage of provisional rights, the third party also must take steps to avoid getting caught by surprise. If infringing products or acts are uncovered before publication, the law provides for publication before 18 months if certain format requirements are met. Thus, the safe harbor that previously existed until a patent issued is no longer absolute and companies may need to consider looking more carefully at pending applications. PUBLIC ACCESS TO APPLICATIONS As noted above, before March 15, 2001, proceedings in the U.S. PTO were completely confidential. Now, the U.S. PTO, as part of the change in the law, plans to permit any member of the public to obtain a copy of the complete file wrapper and contents of any paper in a published application or to inspect the file of an abandoned published application. Additionally, publication will provide access to an application file history throughout its pendency in the PTO. This change in law is extremely valuable because one now has an opportunity to follow a competitor’s patent prosecution. Accordingly, in light of the changes in the law, there are significant reasons to be monitoring published patent applications. Numerous commercial services are available that can assist in monitoring published patent applications as well as the PTO’s Web page — http://www.uspto.gov. Ronald I. Eisenstein and David S. Resnick are partners at Nixon Peabody,( [email protected]; [email protected]). Eisenstein is the co-chair of the firm’s interference practice subgroup.

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