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The landmark U.S. patent reform legislation, the Intellectual Property and Communications Omnibus Reform Act of 1999 was passed by the U.S. congress on November 29, 1999. Officially cited as Public Law No. 106-113, the new law contains, among other provisions, Title IV, the American Inventors Protection Act of 1999. Since many of the changes will affect Canadian patent practitioners, a summary of the new law is provided below.

American Inventors Protection Act of 1999 will come into effect in stages, depending on the specific provision, and addresses a variety of topics through the following five Subsections.

1. Inventors' Rights (took effect Jan. 28, 2000)

This Subsection is intended to provide a policing mechanism for regulating the sometimes unscrupulous invention promotion services industry in the United States.

An "invention promoter" is defined to include any entity that performs invention promotion services and holds itself out through advertising in any mass media as providing such services. Under the new law, an invention promoter must enter into a written contract with an inventor. Before contracting, an invention promoter must provide to the inventor written information about the company and its success and failure records with previous clients.

2. First Inventor Defence (took effect Nov. 29, 1999)

The new legislation creates an affirmative defence for prior users, but only for methods of doing or conducting business that otherwise would infringe a patented method claim.

The new law now protects an accused infringer who in good faith reduces to practise a "method" falling within the statute at least one year before the effective filing date of the patent and commercially uses the invention before that date. The "effective filing date" is defined as the earliest filing date the patentee can assert under the U.S. patent laws and includes reliance upon earlier-filed foreign applications under the relevant U.S. patent statutes.

3. Patent-Term Guarantee (took effect May 29, 2000)

Under the old law, the twenty-years-from-filing patent term could be extended for up to five years for delays caused by PTO procedures, including delay from an interference, secrecy order, and successful appellate review of patentability. The new law substantially expands these opportunities for term extension by removing the five-year limit and creating a new category of PTO delays that may give rise to a term extension.

The law adds an extension of patent term for certain delayed PTO responses. For example, it guarantees that the PTO will make a rejection, obligation, or issue a written notice of allowance, within fourteen months of the filing date of the application. A response to an appeal or a reply to an office action must be provided within four months. It also guarantees issuance of a patent within four months after the payment of the issue fee.

However, an award of an extension must be reduced by the number of days the applicant failed to engage in "reasonable efforts" to conclude prosecution, which failure is presumed to include the cumulative total of any periods of time in excess of three months to respond to PTO actions.

This Subsection of the new law applies to any patent issued on an application (other than design applications) filed on or after May 29, 2000.

4. Domestic Publication of Patent Applications Published Abroad (took effect Nov. 29, 2000)

The new law requires publication of all U.S. utility applications that are also foreign filed and are published abroad. Publication will occur eighteen months from the earliest filing date for which benefit is sought. Publication costs are to be covered by a separate publication fee to be collected after the claims are allowed. Utility applications not filed abroad will not be published if a timely request is made. Applications that are no longer pending or that are subject to a secrecy order, as well as design or provisional applications also are not subject to publication.

If an applicant makes a request not to publish, and then later files in another country, the applicant mustnotify the PTO not later than forty-five days after the filing of such application. Failure to timely notify will result in the abandonment of the U.S. application, unless the applicant can show that the delay was unintentional.

For those applicants who choose to publish their U.S. applications, upon issued, they may obtain a reasonable royalty. Such benefit accrues for the period of time after publication to the time the patent is granted and are assessed against a third party who makes, uses, sells, or imports the invention in the United States.

Unlike publication in Canada, publication in the United States will not trigger opportunities for protest or pre-issuance opposition, unless an applicant consents in writing.

5. Patent & Trademark Office (took effect Apr. 29, 2000)

Under this Subsection, the PTO is defined as an agency within the Department of Consumer and under the "policy direction" of the Secretary of Commerce. The Act provides for the appointment of an Under Secretary of Commerce for Intellectual Property and Director of the PTO to provide policy direction and management supervision for the PTO. In addition to the Director, a Deputy Director, a Commissioner of Patents, and a Commissioner of Trademarks will be appointed.

Three other Subsections deal with patent and trade-mark fee fairness (Subsection 2), inter partes reexamination procedure (Subsection 6) and miscellaneous matters, such as treating provisional applications as regular applications and electronic filing (Subsection 8).

The foregoing amendments of the U.S. patent statutes bridge the long standing gap of patent practices between the United States and Canada and, for that matter most of the industrial countries. It seems, for the time being, Canadian practitioners may be able to dance closer in harmony with our neighbouring counterparts.

© 2002, Wing T. Yan. is a partner with Nelligan O'Brien Payne LLP in Ottawa and heads the firm's Intellectual Property Practice Group.


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This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2021 Nelligan O’Brien Payne LLP.

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