Section 17 of the March 5, 2010 version of S. 515 (the Patent Reform Act of 2010) makes certain curious changes to Sections 116 (Joint Inventions), 184 (Filing in a Foreign Country), 185 (Foreign Filing Without a License), 251 (Reissue of Defective Patents), and 253 (Disclaimer) that would eliminate the “without deceptive intent” eligibility proscription. The effect of these changes would be to eliminate the prohibition against gaining access to these statutory provisions where the applicant had committed fraud on the Patent Office.
If these so called technical amendments were enacted into law applicants could add or delete named inventors to correct an error in inventorship that was made with deceptive intent. That is, even where the applicants filed the patent application with the deceptive intent to exclude an inventor, who should have rightfully been named as an inventor in the patent application or where the application was intentionally and deceptively filed naming individuals as inventors who could not qualify as joint inventors, such error may be corrected.
U.S applicants are forbidden from filing a patent application in a foreign country prior to six months after filing in the U.S., unless they have obtained a foreign filing license. If they fail to obtain a foreign filing license in such circumstance, they are barred from obtaining a U.S. patent. However, by statute, applicants in such circumstances can apply for and obtain a retroactive foreign filing license. The revisions to Sections 184 and 185 would, if passed into law, permit the grant of such foreign filing license, even where the premature foreign filing was done with through error and with deceptive intent. Thus, applicants could deceptively attempt to circumvent the prohibition against foreign filing without a license and still be able to obtain a retroactive foreign filing license. One might be concerned by the national security threat implications of this change, especially where the foreign filing relates to subject matter that may be export controlled. This is especially true, if the foreign filing occurs prior to the applicants’ U.S. filing and the application has not been subjected to a security review by a defense agency, NASA or the Department of Energy.
If enacted into law, reissue applications will be eligible for filing to correct substantive errors in the original patent even where such errors arose with deceptive intent. Furthermore, if the patent is litigated and a claim is found invalid because of a finding of deceptive intent, the remaining claims would not be rendered “invalid”. The effect of such changes would seem not only to provide for curing of inequitable conduct through the filing of a reissue application, but also, perhaps, affecting the enforceability of the patent by insulating the claims of the patent that were not infected by the deceptive intent in relation to other patent claims found to be invalid. It appears, by implication, that the change to Section 253 would create a “but for” standard for materiality as a basis for unenforceability of only the affected claims of the patent.
The bill is unclear on these points since, unlike the new Section 10 introducing Supplemental Examination as a means to cure inequitable conduct, the proposed changes to Sections 116, 184, 185, 251 and 253 do not have corresponding amendments that address the question of patent enforceability, where there was deceptive intent involved in the procurement of the original patent. Only time will tell as to whether these sections of the bill will need to be clarified or whether they will be stricken, because they seem to encourage and reward fraudulent conduct in the procurement of patents.