On September 16, 2012, the America Invents Act is slated to change who is entitled to the title of “applicant” in U.S. national patent applications, removing the requirement that inventors be named as applicants solely for the purposes of US designation. This impacts applicants who have filed under the Patent Cooperation Treaty (PCT) and brings the US patent system further into alignment with those of the rest of the PCT signatory nations.
Congratulations to the new USPTO Law School Pilot Program participants! The newly selected schools are:
- Arizona State University School of Law (Patents and Trademarks)
- California Western School of Law (Trademarks)
- Case Western Reserve University School of Law (Patents)
- Fordham School of Law (Patents and Trademarks)
- Michigan State University School of Law (Trademarks)
- North Carolina Central University School of Law (Patents)
- University of Notre Dame (Patents and Trademarks)
- University of San Francisco School of Law (Trademarks)
- South Texas College of Law (Trademarks)
- Thomas Jefferson School of Law (Patents and Trademarks)
- Wayne State University School of Law (Patents), and
- University of Washington School of Law (Patents and Trademarks).
These schools join the law schools that are current members of the program. These existing schools are:
- American University, Washington College of Law (Trademarks)
- Howard University School of Law (Trademarks)
- North Carolina Central University School of Law (Trademarks)
- Rutgers Law School – Newark (Trademarks)
- The George Washington University School of Law (Trademarks)
- The John Marshall School of Law (Patents)
- University of Akron School of Law (Trademarks)
- University of Connecticut School of Law (Patents and Trademarks)
- University of Maine School of Law (Patents and Trademarks)
- University of Maryland School of Law (Patents and Trademarks)
- University of New Hampshire School of Law (Trademarks)
- University of Puerto Rico School of Law (Patents and Trademarks)
- University of Richmond – Richmond School of Law (Trademarks)
- Vanderbilt Law School (Trademarks)
- West Virginia University School of Law (Trademarks), and
- William Mitchell College of Law (Patents and Trademarks).
The law school pilot program promotes affordable intellectual property (IP) legal services to individuals and small businesses. Law schools participating in the program provide IP legal services to clients on a pro bono basis.
The USPTO accepts law schools into the program that demonstrate strong clinic programs. Overall the schools must possess solid IP curricula supporting a participating student’s hands-on learning in the program; a commitment to networking in the community; comprehensive pro bono services; and excellent case management systems. Students in the IP programs can expect to draft and file patent and trademark applications and respond to Office Actions. Each law school clinic program must meet and maintain the requirements for USPTO certification in order for student practitioners to practice before the USPTO.
America Invents Act Presentation
I can’t do a better job of dissecting this complex new patent legislation, the first overhaul of the patent code since the early 1950s, than does Professor Jeff Hawley, who teaches at my alma mater, the former Franklin Pierce Law Center (now University of New Hampshire School of Law). His video and presentation slides are definitely worth a look.
From the American Intellectual Property Law Association’s website:
“Section 112, first paragraph of the Patent Act requires that a patent specification not only describe the manner of making and using a claimed invention, but also separately requires a written description of the claimed invention itself, the en banc Federal Circuit held March 22, 2010, in a 9-2 decision.”
“The Court rejected the argument that the required written description of the invention is only for purposes of identifying what is to be enabled, concluding that the statutory phrase “to enable” pertains only to the required description of making and using the invention. If Congress meant to require only a description of enablement, the statute would have been written differently, Judge Lourie pointed out. He added that the Patent Act has always required a description of the invention as a basic element of the quid pro quo bargain for exclusive rights.”
I’ve been writing patent applications to include a written description of the invention itself since I started writing patents. It’s just common sense: a patent, which is an exercise in disclosure, requires that the inventor disclose not only what the invention is but also the best mode of making and using the invention. How do you do that without providing a written description of the invention?
Read the slip opinion here.
It hasn’t even been added to the list on the internet as of this writing, but Chile has deposited its instrument of accession to the Patent Cooperation Treaty (PCT) with the World Intellectual Property Organization (WIPO), the administrator of the PCT, and will become the 140th PCT Contracting State. The PCT will enter into force in Chile on June 2, 2009.
Welcome, Chile, to the Wonderful World of the PCT!
The map, btw, is from GOOGLE Maps. Chile is that long, narrow strip of a country along the western shore of South America. Just west of Argentina. Argentina, btw, is currently in the process of signing the PCT, but has not yet deposited its instrument of accession with WIPO.