United States Pre-Grant Publications On Dialog
The United States Patent and Trademark Office (USPTO) published the first patent applications on March 15, 2001. A total of 47 U.S. published applications were available for the first printing. The USPTO expects the volume will steadily increase until the standard 18-month publication period begins for all U.S. patent applications in May 2002. Patent applications will be published on Thursdays, and granted U.S. patents will continue to be issued on Tuesdays.
What does all this mean legally and how will it affect Dialog patent searches? This article supplies a bit of background to help you understand the legal ramifications of pre-grant publications (PGPs), and how the applications are being incorporated into the Dialog patent databases.
The legal framework
The American Inventors Protection Act of 1999 (AIPA) requires the publication of United States patent applications filed on or after November 29, 2000. Under this act, United States patent applications will be published eighteen months after the effective filing date of the application. This new provision in United States patent procedure brings the United States in closer alignment with international patent practice since most applications filed in international countries and under the Patent Cooperation Treaty (PCT) are published eighteen months after filing.
There are four types of published U.S. patent applications:
The first is a voluntary publication requested by the applicant for those patent applications filed prior to November 29, 2000. The second type of publication is an early publication requested by the applicant before the standard eighteen-month time for publication. The third type of publication is republication requested by the applicant if the claims change during prosecution. The voluntary publication, early publication and republication of the patent application can provide the applicant with provisional rights if the subsequently issued patent is infringed.
Prior to AIPA, infringement damages began accruing on the date the patent issued. Currently, under AIPA, the patent owner's rights begin accruing on the date the patent application is published, if the claims of the issued patent are substantially the same as the claims of the published application. Therefore, if the claims change significantly during prosecution, the applicant may decide to republish the application with amended claims to establish an earlier date from which infringement damages may be collected.
The fourth type of publication is a redacted publication. A redacted application does not contain subject matter that is not disclosed in a related foreign application that is subject to an eighteen-month publication under the PCT. Finally, if the applicant does not intend to file a foreign patent application corresponding to a United States patent application, a request to not publish the United States application may be made since there will be no equivalent foreign application published under the PCT.
Beginning on January 2, 2001, the USPTO began printing the World Intellectual Property Organization (WIPO) Standard ST. 16 kind codes that are now used on every printed document, which includes published applications, granted patents, and reissued patents. The codes are used to determine the kind of patent document (utility, plant, or design patent), and the level of publication (e.g., first publication, second publication, issued patent).
As a result of the U.S. publishing applications, some existing USPTO kind codes were changed, and some new ones were added. See below for a table that summarizes the new USPTO kind codes.
Table 1: Summary of USPTO Kind Codes
Under the new rules, published U.S. patent applications will be numbered on an annual basis beginning with publication number 0000001 starting on January 1 each year. The new published U.S. patent application numbers will be in the following format on the front page of the patent document:
CC YYYY/NNNNNNN KK (E.G. US 2003/1234567 A1)
where CC is the country code, YYYY is the publication year; NNNNNNN is the serial number and KK is the kind code.
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