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Dealing Strategically with the America Invents Act
 

Dealing Strategically with the America Invents Act

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On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, ...

On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Mr. Chen joined Knobbe Martens attorneys Gerard von Hoffmann, Brent Babcock and Scott Smith and presented on "Dealing Strategically with the America Invents Act", one of three presentations given during the seminar.

The America Invents Act (AIA), enacted in September 2011, made significant changes to patent law that go into effect September 2012 and March 2013. The U.S. Patent and Trademark Office recently published over a thousand pages of rules dealing with the AIA . View this presentation to learn what hightech companies need to know about the AIA and what you should be doing to implement the right IP strategy at your company.

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    Dealing Strategically with the America Invents Act Dealing Strategically with the America Invents Act Presentation Transcript

    • Dealing Strategically with the Panel: Ray Chen, Gerard von Hoffmann, America Invents Act Brent Babcock Moderator: Scott SmithThe recipient may only view this work. No other right or license is granted.
    • Topics • Brief Overview • First Inventor to File • Third-Party Submissions • Post-Grant Proceedings – Post-Grant and Inter Partes Review – Derivation Proceedings • Supplemental Examination© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2
    • America Invents Act© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3
    • America Invents Act (AIA) • Signed into law September 16, 2011 • General Themes – “Harmonization” – Simplify and reduce cost of patent litigation – Reduce influence of non-practicing entities – Varying effective dates – Some uncertainty© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4
    • September 2011 Prosecution-Focused Provisions • Prioritized examination • Inter partes reexam threshold – $4800 fee for request – Reasonable likelihood that requester would prevail with – Any new, non-national phase respect to 1 claim application – Must be complete at filing • Patentable subject matter – < 10,000 apps/year – No tax strategies – No human organisms • Micro-entity status – 75% fee reduction • Virtual marking – Small entity; less than 4 – Mark using website unassigned previously filed US nonprovisional applications; revenue in previous year < 3 times median household income – Employee of or assigned to institution of higher learning© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 5
    • Accelerated Exam v. Prioritized Exam • Accelerated Exam (old) • Prioritized Exam (new) – Petition + $130 fee + search – Petition + $4,800 fee + $130 and support documentation fee + all application formalities at time of filling – Maximum 20 claims with 3 independent – Maximum 30 claims with 4 independent – 1 month OA response period and abandonment if not met – 3 month OA response period; kicked back to regular – Average pendency: 186 days docket if not met – No plant applications – Expected pendency: 12 – No limit to number months – No design, reissue or provisional applications – 10,000 applications per fiscal year (852 filed 2011)© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 6
    • September 2011 Litigation-Focused Provisions • No invalidation based upon • Prior user rights failure to disclose best mode – Personal to accused infringer • False marking lawsuits – Not just business methods – Plaintiff must suffer competitive – Defense to infringement based injury on earlier commercial use – Marking with expired patent no – Must be >1 year from effective filing date or patentee’s longer basis disclosure date – Applies to all lawsuits pending – Any patent issuing after or filed on or after September 16, September 16, 2011 2011 • Joinder/Consolidation – Fed. Cir. has exclusive jurisdiction over compulsory counterclaims – Need more than common infringed patent for joinder© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7
    • Recent and Upcoming Changes September 16, 2012 March 16, 2013 • Third-Party Submissions • First-Inventor-to-File – Prior art and statement in – Change from first to invent pending applications • Derivation Proceedings • Post-Grant Proceedings – Change from interferences – Post-Grant Review – Inter Partes Review • Supplemental Examination • Changed rules re declarations, assignments and filing formalities© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8
    • First Inventor To File© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 9
    • First Inventor to File • “A person shall be entitled to a patent unless the claimed invention 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” • Limited 1 year grace period for “disclosure” by inventor and disclosure or application filed by others after a “public disclosure” by the inventor • Earlier filed applications are not prior art if – 1) derived from inventor – 2) filed after “public disclosure” by inventor or – 3) commonly owned by same person at the time of filing • Applies to any claim with an “effective date” after March 16, 2013© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 10
    • First Inventor to File – March 16, 2013 • Should our company change its patent filing practices? – File more/faster provisional apps? – How to remain cost effective and minimize distraction? • Should we rush to file applications before March 16? – Any particular circumstances in which we should beat the deadline? • How will continuation and continuation-in-part applications be treated?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 13
    • Take Home Points • File before March 16, 2013 if possible • File more often and more quickly after March 16, 2013 – File before public disclosure/sale – File many provisional applications • Implement internal infrastructure to promote disclosures • Don’t throw away lab notebooks© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 14
    • Third Party Submissions© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15
    • Third Party Submissions in Pending Applications • Old Rule • New Rule – Limited ability to submit prior art – Can submit patents, published patent applications or other – Prior art must be submitted printed publications within 2 months following publication of the application – Can submit anonymously – Can only submit up to 10 pieces – Must be accompanied by of prior art concise description of asserted relevance of each submitted – Cannot submit explanation of the document relevance of the prior art – Must be filed prior to the earlier of: • (1) a notice of allowance; or • (2) the later of: (a) 6 months after the date of first publication; or (b) the date the first rejection of any claim© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 16
    • Third Party Submissions, Questions • Should I use this process to challenge competitor patent applications? – Should I use the third-party submission process or wait until my competitor’s patent issues and challenge it via post-grant review or in litigation? • What is the downside risk? • How should I decide which of my competitors’ applications to challenge?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 17
    • Take Home Points • Inexpensive way to potentially narrow a competitor’s claims ($180 fee for up to 10 prior art references) • No estoppel (but presumption of validity) • Risk = patent examiner considers submitted prior art and allows broad claims anyway • Discuss with your patent attorney the pros and cons of holding back “best” prior art for potential post-grant challenges© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 18
    • Post-Grant and Inter Partes Review© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 19
    • Changes to Post-Issuance Disputes Before AIA After AIA • Inter Partes Reexam • Post-Grant Review • Ex Parte Reexam • Inter Partes Review • Interferences • Derivation Proceedings • Ex Parte Reexam • Interferences (Legacy) • Transitional Program for Covered Business Method Patents© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 20
    • Summary of Post Issuance Review Post-Grant Review Inter Partes Review Basis Any basis used in litigation Only patents and printed publications When Within 9 months of grant After 9 months from grant or end of Post Grant review or within 12 + before civil action filed month of civil action Targets Priority on/after 3/16/2013 Any Effective 3/16/2013 9/16/2012 Discovery Yes Yes – including depositions Bar Yes Yes Estoppel Yes Yes© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 21
    • Trial Proceedings Timeline PO Petitioner PO discovery discovery discovery period period period Petitioner PO reply response PO to PO’s to decision PO Oral WrittenPetition prelim. Decision response reply hearing decision response motion opp’n to to amend motion 3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo. Trial begins ≤ 1 year© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 22
    • Post-Issuance Review, Questions • When should I use post-grant review or inter partes review rather than litigation? • How should I decide between post-grant review and inter partes review? • If you settle during post-grant proceedings, what happens? • Is there anything I can do to prevent post-grant review or inter partes review of my company’s patents? • If I have been sued for infringement of one patent by a competitor and see that a second patent might be coming, should I challenge it using post-grant review or just wait and challenge it in the litigation?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 27
    • Advantages of Inter Partes Review vs. Litigation • Lower Burden of Proof (preponderance of the evidence) • Lower Cost (FRCP do not apply) – Limited discovery – Professionalism strictly enforced – Fewer “ancillary” battles (venue, jurisdiction, discovery, etc.) • Quicker (1-2 years) • Better informed decision maker (both technical & legal)© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 28
    • Advantages of Litigation vs. Inter Partes Review • Infringement can be adjudicated • Full scope of claims and defenses • Full discovery opportunities • Estoppel effect of USPTO Inter Partes proceedings • More expensive to opponent • Jury presents potentially more risk to opponent© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 29
    • Take Home Points • Consider Post-Grant Review and Inter Partes Review as less expensive alternatives to litigation • Monitor competitors’ pending applications if Post-Grant Procedures are a possibility • Assess risk of potential Post-Grant Procedures against your patents by third parties – Set aside budget – Keep continuation pending – File many/quality dependent claims – If post-grant challenge is likely and prior art is known, consider strengthening patent via supplemental examination© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 30
    • Derivation Proceedings© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 31
    • Derivation Proceedings • Address “stolen” inventions – Eventually will replace interferences • Requires petition to explain facts surrounding “theft” • Two options – Civil action b/w 2 patents • Filed w/in 1 year of issuance of derived patent – Derivation proceeding at PTO b/w 2 pending apps • Filed w/in 1 year of publication of the derived application • Remedy – Cancelation of claims – Inventor name corrections© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 32
    • Take Home Points • Invention documentation is still important – lab notebooks, etc. • Important to monitor IP of competitors and potential competitors • Keep good records of what you disclose to collaborators© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 33
    • Supplemental Exam© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 34
    • Supplemental Examination • Patent owner may request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent • PTO decides if information raises a substantial new question of patentability – May result in ex parte reexamination • Request may address any condition for patentability (patentable subject matter, anticipation, obviousness, double patenting, definiteness, etc.) – Information is not limited to patents and printed publications • No third party involvement© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 36
    • Benefit and Exceptions • Patent cannot be held unenforceable on information considered • Benefit does not apply to: – Allegations pled in a civil action prior to date of supplemental examination request – Notice (for abbreviated drug application) received by patentee prior to date of supplemental examination request – Defenses to patent infringement, unless supplemental examination and any resulting ex parte reexamination are completed before civil action is brought© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 37
    • Costs – Proposed Sept. 10, 2012 • PTO Filing Fees Large Small Micro $18,000 $9,000 $4,500 • Refund if ex parte reexamination not ordered Large Small Micro $13,600 $6,800 $3,400© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 38
    • Supplemental Examination Questions • When should I consider using supplemental examination? • What are the risks? • Are there specific circumstances when I definitely should NOT use supplemental examination?© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 39
    • Take Home Points • Therasense decision likely decreased the importance of supplemental examination • Declaratory Judgment (DJ) Actions – If aware of possible DJ against patent, consider filing supplemental examination before DJ is filed • ANDA Litigation – If patent will be listed in Orange Book, consider filing supplemental examination as part of due diligence, or at a minimum, prior to receiving notice • Enforcement – If planning to enforce the patent, consider filing supplemental examination with sufficient time to complete any ex parte reexamination before filing suit© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 40
    • Action Item List© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 45
    • Action Item List  Consider prioritized examination  Keep post-grant challenges in mind when preparing patent  Consider whether micro-entity applications. Keep continuations status applies pending and consider setting  Evaluate current invention aside funds for defending. harvesting procedures for speed  Consider supplemental exam for and efficiency strengthening patents  Consider filing more/faster  Obtain assignments of provisional applications provisional applications before  Implement patent/publication filing monitors for possible prior art  Continue documenting submissions and post-grant inventions and developments action  Consider implementing virtual  Consider using new procedures marking program to challenge pending applications and issued patents© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 46
    • Thank you!