Update on the Patent Reform Act of 2011 - Robert Bahr, USPTO


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Robert W. Bahr - USPTO, Speaker at the marcus evans IP Law Summit Fall 2011, delivers his presentation entitled Update on the Patent Reform Act of 2011

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Update on the Patent Reform Act of 2011 - Robert Bahr, USPTO

  1. 1. USPTO Implementation of the America Invents Act Robert W. Bahr Associate Commissioner for Patent Examination Policy, Acting USPTO IP Law Summit Sept. 15-17, 2011
  2. 2. Organization Task Force Core TeamPatent BPAI FinanceWorking Working WorkingGroup Group Group 2
  3. 3. Group 1 Rulemakings and Other Actions (60-Day and Under Effective Dates) (a.k.a. G1 Rulemakings) Date of Enactment 10 Days After 60 Days After October 1, Date of Enactment Date of 2011 Enactment • Reexamination transition for • Prioritized Electronic filing Reserve fund threshold examination incentive • Tax strategies are deemed within the prior art • Best mode • 15% transition • Human organism prohibition surcharge • Patent term extension for drugs • Virtual and false marking • Venue change from DDC to EDVA for suits brought under 35 U.S.C. §§ 32, 145, 146, 154 (b)(4)(A), and 293 • OED Statute of Limitations • Fee Setting Authority • Establishment of micro-entity10/19/2011 3
  4. 4. Group 1 Rulemakings• Reexamination Transition for Threshold – Threshold for initiating an inter partes reexamination is elevated from “substantial new question of patentability to “reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged”• Tax Strategies are Deemed Within the Prior Art – Any strategy for reducing, avoiding, deferring tax liability, whether known or unknown at the time of invention or application for patent, is insufficient to differentiate an invention from the prior art 4
  5. 5. Group 1 Rulemakings• Best Mode – Failure to disclose best mode is no longer a basis on which a claim may be cancelled or held invalid or otherwise unenforceable• Human Organism Prohibition – Codifies “Weldon Amendment” to prohibit issuance of a patent on “a claim directed to or encompassing a human organism” 5
  6. 6. Group 1 Rulemakings• Patent Term Extension for Drugs – Applies to any application for extension that is pending, filed after, or which a decision regarding the application is subject to judicial review on the date of enactment• Virtual and False Markings – Provides for virtual markings by posting information on Internet – Applies to all future infringement cases – Civil suits re false markings limited to persons who suffer a competitive injury 6
  7. 7. Group 1 Rulemakings• Fee Setting Authority – Authority for Director to set or adjust by rule any fee established, authorized or charged under Title 35 – Authority is subject to 7-year sunset clause – Defines micro-entity – Provides for input by USPTO’s advisory committees, public comment and a Congressional comment period – Requires additional $400 fee (50% reduction to small entities) for patent applications not filed electronically 7
  8. 8. Group 1 Rulemakings• Establishment of Micro-entity – Director defines micro-entity – sets income limits, annual income limits and any other limits – Includes universities – Provides for 75% reduction of fees 8
  9. 9. Group 2 Rulemakings (12-Month Effective Date) (a.k.a. G2 Rulemakings) • Inventor’s oath/declaration • Third party submission of prior art for patent application • Supplemental examination • Citation of prior art in a patent file • Priority examination for important technologies • Inter partes review • Post-grant review • Transitional post-grant review program for covered business method patents10/19/2011 9
  10. 10. Group 2 Rulemakings• Inventor Oath or Declaration – Provides for assignee filing when the inventor is unable or unwilling to do so – Removes the requirement for statements of lack of deceptive intent for reissues – Eliminates citizenship requirement• Third Party Submission of Prior Art – Third party submission of printed publications – Must be made before the earlier of (i) a notice of allowance or (ii) the later of six months after publication of the application or the date of first rejection – Must be accompanied by fee and a concise description of asserted relevance of the submitted document 10
  11. 11. Group 2 Rulemakings• Supplemental Examination – Process for patent owner to request supplemental examination of a patent – If determination of “substantial new question of patentability” raised, the Director must order an ex parte reexamination proceeding – Patent shall not be held unenforceable in litigation on the basis of conduct relating to information in a supplemental examination if such is concluded before the date an action is brought – If the Director becomes aware of fraud during a supplemental examination, the Director may take appropriate action and must refer the matter to the Attorney General 11
  12. 12. Group 2 Rulemakings• Citation of Prior Art in a Patent File – Expands 35 U.S.C. § 301 and allows a patent owner to file written statements in a proceeding before a Federal Court or the Office taking a position on the scope of a claim• Priority Examination for Important Technologies – Authorizes Director to provide for prioritized examination of patent applications for products, processes, or technologies that are important to the national economy or national competitiveness 12
  13. 13. Group 2 Rulemakings• Inter Partes Review – Replaces “optional inter partes reexamination” – Conducted by Patent Trial and Appeal Board within 1 year (with possible 6-month extension for good cause) – Available for life of patent after later of 9 months from grant or termination of post-grant review – Not available if filed more than 1 year after service of infringement complaint or if petitioner previously filed DJ action alleging invalidity – Basis limited to patents or printed publications – Provides for intervening rights regarding any new or amended claims – Threshold showing is “reasonable likelihood” that the petitioner will prevail – Estoppel standard is “raised or reasonably could have raised” before the USPTO and the courts – Director may limit number of proceedings in first 4 years. 13
  14. 14. Group 2 Rulemakings• Post Grant Review – Board of Appeals to review validity of issued patents within 9 months of grant – Not available if petitioner filed DJ action alleging invalidity – Review completed within 1 year (with possible extension of 6 months) – Provides intervening rights re any new or amended claims – Threshold showing “more likely than not” that at least 1 of the claims is unpatentable – Estoppel standard is “raised or reasonably could have raised” before USPTO or courts. – Director may limit number of proceeding in first 4 years. 14
  15. 15. Group 2 Rulemakings• Transitional post-grant review program for covered business method patents – 8 year post-grant review proceeding for certain business method patents – Petitioner for review must have been sued for, or charged with, infringement of the subject patent – Provides that an ATM is not a “regular and established place of business” for purpose of venue 15
  16. 16. Group 3 Rulemakings and Other Actions (18-Month Effective Date) (a.k.a. G3 Rulemakings) • First-Inventor-to-File • Derivation proceedings • Repeal of Statutory Invention Registration10/19/2011 16
  17. 17. Group 3 Rulemakings• First-Inventor-To-File – Transitions the U.S. from a first-to-invent system while maintaining a 1-year grace period for disclosures – Establishes a “derivation” proceeding rather than interference – Clarified statute of limitations for disciplinary actions against practitioners – Requires USPTO Director, in consultation with USTR, State Dept. and DOJ to prepare and submit to Judiciary Committee a report on the operation of prior user rights in selected countries – Includes Sense of Congress provisions regarding benefits of FITF 17
  18. 18. Group 3 Rulemakings• Derivation Proceedings – Applies only to applications subject to first-to-file provisions – Petition requirements • Must show basis for finding derivation • Must be filed within one year of first publication of a claim to an invention that is the same or substantially the same invention as earlier application’s claim to the invention • Applicant may file petition 18
  19. 19. Studies: USPTO as Lead Agency Topic Objective Due Date from EnactmentInternational Report on how to help small businesses with international 4 monthsProtection for Small patent protection, including a revolving fund loan or grantBusinesses program to defray costsPrior User Rights Report on the operation of prior user rights in other 4 months industrialized countriesGenetic Testing Report on providing second opinion genetic diagnostic 9 months testingMisconduct Before Report on impact of new statute of limitations provisions Every 2 yearsthe Office barring disciplinary action in response to substantial evidence of misconduct before the OfficeSatellite Offices Report on the rationale for selecting the location of satellite 3 years offices, progress in establishment, and achieving identified purposesVirtual Marking Report on the effectiveness of the virtual marking as an 3 years alternative to physical marking articlesImplementation of Report on how AIA is being implemented by the USPTO and 4 yearsAIA its effect on innovation, competitiveness, and small business access to capital 19 19
  20. 20. Studies: USPTO as Consultant Topic Section Lead Objective Due Date of AIA Agency from Enactment Effects of First- §3 Small Report on effects of 1 year Inventor-to-File Business small businesses on Small Administration switching to a first- Business inventor-to-file system Patent § 29 General Report on impact of 1 year Litigation Accountability patent infringement Office litigation by non- practicing entities10/19/2011 20
  21. 21. Programs: USPTO to Establish Topic Objective Due Date from Enactment Pro Bono Directs USPTO to work with IP law Immediately associations to establish pro bono programs to assist financially under- sourced independent inventors and small businesses Diversity of Requires USPTO to establish methods for 6 months Applicants studying diversity of patent applicants Patent Requires USPTO to establish and 12 months Ombudsman maintain a Patent Ombudsman Program for Small to provide support and services to small Businesses business concerns and independent inventors Satellite Offices Requires USPTO to establish 3 or more 3 years satellite offices in the U.S.10/19/2011 21
  22. 22. Timeline: Major Milestones10/19/2011 22
  23. 23. Opportunities for Public Input • Pre-enactment stakeholder meetings – Two sessions held in August 2011 • Notice-and-comment rulemaking – Formal comments • Public roundtables • Email: aia_implementation@uspto.gov – Informal comments • AIA Microsite – https://www.uspto.gov/americainventsact10/19/2011 23
  24. 24. AIA MicroSite http://www.uspto.gov/americainventsact• One-stop shopping for public regarding AIA implementation• Regularly updated• Preparing for phase II to release upon AIA enactment 10/19/2011 24
  25. 25. Thank You