The Disappearance of Deceptive Intent in S. 23

By Kevin E. Noonan --

Nestled unobtrusively in a section of S. 23 called "Technical Amendments," S. 23 (the "America Invents Act") has done something that neither Congress nor any court has been able to do for 80 years:  remove (or at least blunt) the duty of candor owed by an applicant to the U.S. Patent and Trademark Office during prosecution of a patent application.  This bit of legerdemain is accomplished by removing, in almost every instance in which it appears, the requirement that an applicant act "without deceptive intent."

These instances include:

35 U.S.C. § 116 regarding joint inventorship (amended in Section 16(a))

35 U.S.C. §116 Inventors.

(a) Joint Inventions - When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.

(b) Omitted Inventor - If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omit- ted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.

(c) Correction of Errors in an Application - Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Director may permit the application to be amended accordingly, under such terms as he prescribes.

35 U.S.C. § 184 regarding filing of an application in foreign country (Section 16(b)):

35 U.S.C. §184 Filing of application in foreign country

(a) Filing in Foreign Country - Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 of this title without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and without deceptive intent and the application does not disclose an invention within the scope of section 181 of this title.

(b) Application - The term "application" when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.

(c) Subsequent Modifications, Amendments, and Supplements - The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181 of this title and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States application was not required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such section 181.

35 U.S.C. §§ 251 and 253 regarding reissue (Section 16(d) & (e)):

35 U.S.C. §251 Reissue of defective patents.

(a) In General - Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

(b) Multiple Reissued Patents - The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.

(c) Applicability of This Title - The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.

(d) Reissue Patent Enlarging Scope of Claims - No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.

35 U.S.C. §253 Disclaimer.

(a) In General - Whenever, without any deceptive intention, a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing and recorded in the Patent and Trademark Office, and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.

(b) Additional Disclaimer or Dedication - In like manner any patentee or applicant may dis- claim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.

35 U.S.C. § 256 regarding correcting inventorship (Section 16(f)):

35 U.S.C. §256 Correction of named inventor.

(a) Correction - Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

(b) Patent Valid if Error Corrected - The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

35 U.S.C. § 288 regarding infringement litigation of a patent containing n invalid claim (Section 16(h):

35 U.S.C. §288 Action for infringement of a patent containing an invalid claim.

Whenever, without deceptive intention, a claim of a patent is invalid, an action may be maintained for the infringement of a claim of the patent which may be valid. The patentee shall recover no costs unless a disclaimer of the invalid claim has been entered at the Patent and Trademark Office before the commencement of the suit.

(The remaining subsection, 16(g), amends 35 U.S.C. § 282(a) to remove reference to obviousness under 35 U.S.C. § 103(b).)

Most of these changes may not have any effect under circumstances where any of the actions proscribed in these sections of the statute are performed with deceptive intent, since that intent is likely to preclude enforceability of any such claims obtained by deceit.  It is ironic, however, that Congress has scrupulously avoided addressing inequitable conduct by statutory change in any of the various permutations of "patent reform" legislation passed in recent Congresses, while in this bill eliminating the requirement for no deceptive intent in so many statutory provisions.  It may be that the intention was to "harmonize" these portions of the statute with other sections that make it an applicant, rather than an inventor, who applies for a U.S. patent.  However, taken together this is in many ways a more fundamental philosophical shift than even first-inventor-to-file.  In addition to focusing the statutory language on applicants rather than inventors, and granting assignees the right to file applications without the consent or perhaps even knowledge of the inventors, S. 23 changes in many ways the basis for Congressional power to grant patents:  while it may be that the patent statute will still "promote the progress . . . of the Useful Arts," the grant may no longer be to the Constitutionally intended recipients:  inventors.  While it may be that functionally in many if not most instances this will not be a significant change (most corporate inventors are obligated to assign to their employers, for example, and the Bayh-Dole Act vests ownership to academic inventions to the university and imposes an assignment obligation on professors, students and others engaged in research), these parts of S. 23 can also be viewed as a diminution of the public's reliance interests in the patent system.  Reform, indeed.

For additional information regarding thisand other related topics, please see:

• "'Reform' at the U.S. Patent and Trademark Office," March 22, 2011
• "Few 'Reform' Provisions Remain in S. 23 Relating to the Judiciary," Marech 21, 2011
• "Additional Opportunities for Pre- and Post-grant Review, and Brand New Patent Trial and Appeal Board in S. 23," March 17, 2011
• "Post-grant Review Provisions of S. 23," March 16, 2011
• "Inventor's Interests, If Not Rights, Limited by S. 23," March 15, 2011
• "What Are the Provisions of the Proposed "First-Inventor-to-File" System in S. 23?" March 14, 2011
• "Obama Administration Supports S. 23," March 9, 2011
• "Reaction to Senate Passage of S. 23," March 8, 2011
• "Senate Passes S. 23," March 8, 2011

Comments

[Skeptical]

Post after post, the more I see the less I like.

My Congressmen (and Senators) will hear from me AGAIN.

[6]

Good that you pointed this out Kev, I'll contact my rep in the house immediately, we'll get this bit of shinanigans taken care of quick as your uncle.

[Kevin E. Noonan]

Counting on you, 6

[Patrick]

Kevin -

Great catch. I am also troubled by the philosophical shift towards applicants and away from inventors. I shared my opinion on that previously, here:

http://gametimeip.com/2011/02/23/patent-reformers-favor-corporate-interests-over-inventors-rights/

and here:

http://gametimeip.com/2011/02/15/new-patent-reform-counterattack-dont-be-like-the-french/