As the 1-year expiration term since the enactment of the Leahy-SmithAmerica Invents Act (hereinafter
referred to as AIA) is coming to an end, several other provisions of AIA
are ready to get their life. One of the most important amendments which are going
to take effect is the one which has been looked upon dearly by most of the companies,
universities and institutions and which will bring the US practice at par with
the rest of the world in this context. Section 4 of AIA which shall come into
force on September 16, 2012, allows the assignees of the inventors to file and
prosecute a patent application at USPTO in their own name. This will bring US practice
at par with the rest of the world.
In particular, this will primarily effect an
amendment in section 118 of U.S. Patent Law, 35 U.S.C. As the section presently
stands, it permits the filing and prosecution of patent applications by assignees
of the inventors only in cases under the narrow exceptions of death,
incapacity, absence or refusal. In other cases, although a person to whom the inventor
had assigned an invention could file and prosecute an application for patent,
but the inventor is considered the applicant. The existing Section 118 is
provided as below:
35 U.S.C. 118
Filing by other than inventor.
Whenever an inventor refuses to execute an
application for patent, or cannot be found or reached after diligent effort, a
person to whom the inventor has assigned or agreed in writing to assign the
invention or who otherwise shows
sufficient proprietary interest in the matter justifying such action, may make
application for patent on behalf of and as agent for the inventor on proof of
the pertinent facts and a showing that such action is necessary to preserve the
rights of the parties or to prevent irreparable damage; and the Director may
grant a patent to such inventor upon such notice to him as the Director deems
sufficient, and on compliance with such regulations as he prescribes.
This
amendment broadens the scope of ‘fling by other than inventors’ by permitting (a)
a person to whom the inventor has assigned or is under an obligation to assign
the invention; or (b) who otherwise shows sufficient proprietary interest in
the matter, to file and prosecute the application for patent. The amended
section 118, as would be in effect post September 16, 2012, reads as below:
35 U.S.C. 118. Filing by other than inventor.
A person to whom the inventor has
assigned or is under an obligation to assign the invention may make an
application for patent. A person who otherwise shows sufficient proprietary
interest in the matter may make an application for patent on behalf of and as
agent for the inventor on proof of the pertinent facts and a showing that such
action is appropriate to preserve the rights of the parties. If the Director
grants a patent on an application filed under this section by a person other
than the inventor, the patent shall be granted to the real party in interest
and upon such notice to the inventor as the Director considers to be
sufficient.
This amendment would certainly streamline the practice at all
levels including the PCT applications, which till now almost invariably found mention
of the inventors being the applicant for US whiles assignees for the rest of
the designated states. The companies can now do away with this practice. It
must be noted, however, that for PCT national phase, this provision shall be
applicable only for those cases where the PCT applications will be filed after
September 16, 2012. Which means, the PCT national phase applications which are
entered in US after September 16, 2012, but for which the PCT application was
filed before the September 16, 2012, will still be filed and prosecuted in the
name of the inventors only.
Recently the Federal Register rules for
effectuating and implementing this Section 118 amendment were also released on
August 14, 2012, which can be found here. The amendment has necessitated
respective amendments in several rules under Rules of Practice in Patent Cases,
37 C.F.R. 1, mostly the rules pertaining to oath and declarations which were
required to be filed by the inventors. Many such requirements have now been relaxed.
The rules governing applicants for international applications (§§ 1.421, 1.422,
and 1.424) have been amended consistent with the AIA to no longer require that
an inventor be an applicant in the United States. Some of the other amendments sound
regular ones, such as: (a) the power of attorney should be executed on behalf
of the assignee, not by the inventors; (b) the assignee organization (a
juristic entity) is to be represented by a patent practitioner. In fact some
new forms have been prescribed by USPTO in light of these amendments and have
been hosted here.
