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USA Patent Reform

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A discussion of the new Patent Reform Law in the USA.

A discussion of the new Patent Reform Law in the USA.


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  • 1. THE AMERICA INVENTS ACT The Most Significant Patent Law ReformSince 1952 and How It Affects Your Clients 17 November 2011 Clark A. D. Wilson Patent & Trademark Attorney email: cwilson@gardnergroff.com phone: (770) 984-2300 www.gardnergroff.com © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 2. USA Patent Law History The Congress shall have power...To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries; -US Constitution, Art. 1, Sec. 8(8) (1789) © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 3. USA Patent Law History1790- First US Patent Act drafted in the US Constitution •First patent granted by Thomas Jefferson for the ―making of pot ash and pearl ash by a new apparatus and process‖ © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 4. USA Patent Law History1836- Patent number 1 issues •Traction Wheels © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 5. USA Patent Law History1946- In order to receive a patent, one had to be the ―first to invent‖ in the world; later amended to ―first to invent‖ in the USA. (Storage Battery v. Shimadzu)1952- The basic structure of the modern Patent Law laid out: • An inventor had to describe not only his invention, but also the basis for its infringement • An invention needed to be new and useful, as well as non- obvious1968- Patent Cooperation Treaty is signed1995- Uruguay Round Agreements Act adopted to align international patent regimesYET: USA remained ―First to Invent‖ and the rest of the world was ―First to File‖ © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 6. USA Patent Law HistoryAugust 16, 2011- Patent number 8,000,000 issues •Visual Prosthesis © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 7. USA Patent Law HistorySeptember 16, 2011-President Obama Signs Patent Reform Law •Signed at Thomas Jefferson High School for Science and Technology in Alexandria, Virginia © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 8. Key Changes• FIRST TO INVENT  FIRST INVENTOR TO FILE• INCREASE IN FEES + MICROENTITY DISCOUNT• ADDITIONAL PROSECUTION CHANGES• POST-GRANT PROCEDURES © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 9. First Inventor to File • 35 USC 102 establishes a First Inventor To File system. • On or after March 16, 2013, a claimed invention is not novel if: ―was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.‖ ―was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.‖ © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 10. First Inventor to FileExceptions under 35 USC 102 102(b)(1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if-- (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 102(b)(2) A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if- (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 11. First Inventor to File • Once the first-inventor-to-file provisions take effect on March 16, 2013, would someone who copies my idea and files a patent application on the subject matter before I do be entitled to a patent? • No. Only inventors are entitled to a patent. Someone who copies another’s idea cannot be the inventor. • My co-inventor disclosed our invention at a trade show one month before the filing date of our application. Will that disclosure prevent us from obtaining a patent? • No. Regardless of whether the application was filed before or after the first-inventor-to-file provisions take effect on March 16, 2013, disclosure one month prior to a filing date is not prior art to the claimed invention by virtue of a one year grace period. www.uspto.gov © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 12. First Inventor to FileGoing Forward • It is more important than ever for inventors to carefully determine whether or not they are going to seek patent protection or not. • If yes, then file ASAP • Provisional Patent Applications are a cheaper and quicker • If not, publish early and often to prevent 3rd party patents • If invention has already been published, 12 months to file © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 13. Fees• Nearly all PTO fees will be increased by 15%.• Are there any patent fees that will not be increasing by 15%? • Fees such as international stage PCT fees, certain petition fees, enrollment fees, and service fees will not be increasing by 15%.• On what date will I have to begin paying the 15% increase? • September 26, 2011. www.uspto.gov © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 14. Prioritized Examination • What is prioritized examination? • Expedited review of a patent application for an additional fee. The Office’s goal is to provide a final disposition within 12 months of prioritized status being granted. • What types of applications are eligible for Prioritized Examination? • Nonprovisional utility and plant patent applications with no more than 4 independent claims, 30 total claims, and no multiple dependent claims filed on or after September 26, 2011. Requests for Prioritized Examination of utility patent applications must be filed using EFS- Web. The request for prioritized examination must be present on filing of the utility or plant application. • What fees are required? • $4,800 fee ($2,400 small entity) • What is the effective date of prioritized examination? • September 26, 2011. www.uspto.gov © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 15. Micro Entity – 75% discount • ‗The term ‗micro entity‘ means an applicant who makes a certification that it— • ‗‗(1) qualifies as a small entity (includes universities). • ‗‗(2) has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under section 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid; • ‗‗(3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and • ‗‗(4) has not assigned, granted, or conveyed, and is not under an obligation by in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding 3 times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census • Effective September 16, 2011. © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 16. False Marking 292(b) FALSE MARKING.— (1) CIVIL PENALTY.—Section 292(a) of title 35, United States, Code, is amended by adding at the end the following: ‗‗Only the United States may sue for the penalty authorized by this subsection.‘‘. (2) CIVIL ACTION FOR DAMAGES.—Subsection (b) of section 292 of title 35, United States Code, is amended to read as follows: ‗‗(b) A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.‘‘. (3) EXPIRED PATENTS.—Section 292 of title 35, United States Code, is amended by adding at the end the following: ‗‗(c) The marking of a product, in a manner described in subsection (a), with matter relating to a patent that covered that product but has expired is not a violation of this section.‘‘. © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 17. Advice of Counsel ‗‗The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.‘‘. © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 18. Derivation Proceedings • What is a Derivation proceeding? • A proceeding to prove that a third-party applicant derived the subject matter for its application from the Petitioner. A petitioner must claim the same or substantially the same invention as the earlier application’s claimed invention. The petition must be supported by substantial evidence that the earlier claimed invention was derived from petitioner, and filed without authorization. • Who may file a petition for a Derivation proceeding and when should the petitioner file? • An applicant for patent may file a petition for a derivation proceeding. The petition must be filed within one year of first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. • What is the effective date of the Derivation provision? • September 16, 2012. www.uspto.gov © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 19. Pre-issuance Submissions by Third Parties • Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of— ‗‗(A) the date a notice of allowance is given or mailed; or • ‗(B) the later of— (i) 6 months after the date on which the application for patent is first published by the Office, or (ii) the date of the first rejection of any claim by the examiner during the examination. • ‗‗(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall— (A) set forth a concise description of the asserted relevance of each submitted document; ‗(B) be accompanied by such fee as the Director may prescribe; and ‗(C) include a statement by the person making such submission that the submission was made in compliance with this section. • Effective Date: September 16, 2012 © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 20. Inter Partes Reexamination • The AIA change the standard for inter partes reexamination. • Section 6 of the AIA elevates the standard for granting a request for inter partes reexamination. Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. • What is inter partes review and when is it available? • Inter partes review replaces inter partes reexamination as an avenue for a third party’s patentability challenge and the provision in the AIA for inter partes review is effective on September 16, 2012. www.uspto.gov © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 21. Inter Partes Review • What is an inter partes Review proceeding? • A petitioner may request to cancel as unpatentable 1 or more claims of a patent based on 102, 103 using patents or printed publications. • Who may file a petition for an inter partes Review and when should the petitioner file? • A person who (a) is not the owner of the patent and (b) has not previously filed a civil action challenging the validity of a claim of the patent may file, accompanied by payment of the required fee, a petition to institute an inter partes The petition must demonstrate a reasonable likelihood that the petitioner will prevail on at least one claim challenged. The petition cannot be filed until after the later of: 1) 9 months after the grant of a patent or issuance of a reissue of a patent, or 2) the date of termination of any post grant review of the patent. www.uspto.gov © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 22. Post Grant Review • What is a Post Grant Review proceeding? • A petitioner may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b). A Post Grant Review is generally limited to patents issuing from an application filed under the first-inventor-to file system. • Who may file a petition for a Post Grant Review and when should the petitioner file? • Within 9 months from grant or issue of reissue,a person who (a) is not the owner of the patent and (b) has not previously filed a civil action challenging the validity of a claim of the patent may file, accompanied by payment of the required fee. The petition must demonstrate that it is more likely than not that the petitioner will prevail on at least one claim challenged or raises a novel question that is important to other patents or publications. • What is the effective date of the provisions for Post Grant Review? • September 16, 2012. www.uspto.gov © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 23. Supplemental Examination toConsider, Reconsider, or Correct Information • A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent. • Within 3 months after the request is received, the Director shall conduct the supplemental examination and shall issue a certificate indicating whether the information presented in the request raises a substantial new question of patentability. • If the certificate indicates that a substantial new question of patentability is raised by 1 or more items of information in the request the Director shall order reexamination of the patent. • A patent shall not be held unenforceable based on information considered in supplemental examination • Eliminates defense of inequitable conduct • Effective September 16, 2012 © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 24. 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.‘‘. © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 25. Defense to Infringement Based on PriorCommercial Use • ‗‗(a) IN GENERAL.—A person shall be entitled to a defense under section 282(b) with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted against the person if— • ‗‗(1) such person, acting in good faith, commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm‘s length sale or other arm‘s length commercial transfer of a useful end result of such commercial use; and • ‗‗(2) such commercial use occurred at least 1 year before the earlier of either— • ‗‗(A) the effective filing date of the claimed invention; • or • ‗‗(B) the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b). © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 26. Best Mode • What is the impact of AIA‘s amendment concerning Best Mode? • The failure to disclose the best mode shall no longer be a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. • Does AIA‘s amendment to 35 U.S.C. 282(a)(3) impact current patent examination practice regarding evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112? • No. As this change is applicable only in patent validity or infringement proceedings, it does not change current patent examination practices set forth in MPEP 2165. • What is the effective date for the Best Mode provision in the AIA? • September 16, 2011. www.uspto.gov © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 27. Big Corporation or Little Guy? • Who does it benefit? • First inventor to file makes it cleaner. • But Best Mode might benefit those with deep pockets. • Post Grant Review might benefit deep pockets. • What do you think? © 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved
  • 28. Thank You! Clark A. D. Wilson Patent & Trademark Attorneyemail: cwilson@gardnergroff.com phone: (770) 984-2300 www.GardnerGroff.com© 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved