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New Strategies for Third Parties  The Role of New Third Party Preissuance Submissions Practice under the AIA
 

New Strategies for Third Parties The Role of New Third Party Preissuance Submissions Practice under the AIA

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Influence of the America Invents Act on third party participating during examination at the USPTO

Influence of the America Invents Act on third party participating during examination at the USPTO

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New Strategies for Third Parties  The Role of New Third Party Preissuance Submissions Practice under the AIA New Strategies for Third Parties The Role of New Third Party Preissuance Submissions Practice under the AIA Presentation Transcript

  • New Strategies for Third PartiesThe Role of New Third Party PreissuanceSubmissions Practice under the AIAState Bar of Texas Marc A . HubbardPATENT WORKSHOP 2012: PRACTICING GARDERE WYNNE SEWELL LLPUNDER THE NEW PATENT LAWSMarch 21, 2012Houston, Texas
  • Agenda• Questions — • "Im tired of getting sued by my competitor. What else can we or should we be doing?” • "I heard that my competitor has applied for a patent on my process. What can I do about it?" • “Should we do something to try to stop continuations of this patent from issuing?”• Answer — • Current strategies for third parties • New third party preissuance practice and how it fits with other changes made by America Invents Act • New strategies
  • When/where to attack third party patent rights• Before grant at PTO • Stop grant, force narrowing amendment, create estoppel, etc. • Rule 90 preissuance submissions; public protests; public use proceeding• After grant at PTO • Cancel claims, force narrowing amendment or statements• After grant in district court • Seek declaration that one or more claims invalid• Combination
  • Pre-grant options at the PTO prior to September 16,2012 are very limited• 35 USC §122(c) • (c) PROTEST AND PRE-ISSUANCE OPPOSITION. - The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.• Current options are limited to — • Rule 99 third party submissions under 37 C.F.R. 1.99 (“Rule 99 submissions”) • Public protests under 37 C.F.R. §1.291 • Public use proceedings under 37 C.F.R. § 1.292
  • Rule 99 (current) third party submission practice• Must be filed not later than 2 months after publication • Unless patents or printed publications could not earlier have been presented • But never after mailing of the notice of allowance • Must identify the application; impractical before publication• Each submission limited to 10 patents or printed publications• No explanation of relevance permitted because of 35 USC 122(C) • If before publication, better to use public protest because explanation can be provided• No further participation permitted
  • Public protests under 37 C.F.R. §1.291• Explanation of relevance of cited documents must be included• Only permitted prior to date of publication• Must adequately identify the application (in order to be matched to the file)• Real party in interested may only file one, unless issues significantly different and could not have been presented earlier• No further participation allowed by protester
  • Public use proceedings under 37 C.F.R. § 1.292• Public use and "on sale" issues only• Petition must be filed prior to date of publication• Per PTO — • proceedings are "very rare" • they "seldom" lead to rejection of any claims• See MPEP §720 for details
  • Post-grant options: reexamination• Due to limited pre-grant options, third party PTO practice focuses on reexamination • Ex parte reexamination under 35 USC §302 • Problem: lack of opportunity to participate after initiation • Inter partes reexamination under 35 USC §311 • Allows for third party participation • Relatively high "kill rates” • But, they can be expensive, and there is estoppel
  • Reexamination not common; mostly a litigation tool
  • Current options do little to encourage routine 3rdparty participation at PTO• Pre-grant procedures very limited and likely rarely used • Generally, Rule 99 submissions seem inadvisable unless highly confident in outcome • Not a compelling enough opportunity to justify watching publications of application in most cases • Protest and public use require ability to identify and know details of an unpublished application • Practically speaking, limited mostly to reissues• Available reexamination procedures appear to be attractive mostly in context of litigation; not something that a client would normally want to do in the scenarios mentioned in questions posed above
  • Relevant AIA changes starting September 16, 2012• New §122(e) specifically authorizes third party submissions with explanation • Intended to encourage third parties to submit relevant prior art during examination• New "reviews" in place of inter partes reexamination -- post grant review, inter partes review and covered business method patents • Intended to make PTO more attractive venue for resolving patent validity issues • High cost and complexity likely to limit them to situations in which litigation is at least possible or likely
  • PTO proposed changes to rules effective September16, 2012• Public use proceedings and Rule 99 third party submissions to be eliminated• Public protests still available, but with a few changes • Allowed after publication, but before allowance, if applicant gives written consent • Formal requirements mirror those for Rule 290 preissuance submissions.
  • New third party preissuance submissions under 35USC 122(e) / Rule 290 — basics• Anybody may submit unless that party owes a Rule 56 duty in the application• No requirement to identify the real party in interest• All applications are eligible, regardless of filing date, except for provisional applications • Utility, design, reissue and plant • Application can be abandoned• Fee: $180 per ten items submitted • No fee if 3 or few items submitted with a statement that it is the first and only filing by submitter and those in privity with the submitter
  • New third party preissuance submissions — whatcan be submitted• Limited to 10 pieces of information per submission — patents and printed publications only • Declarations considered a printed publication • Used to prove up dates of publication • Can point out 101 and 112 issues using a declaration • Declarations do not count toward limit if not listed and included only to establish dates• May make more than one submission • However, if submitting 3 or fewer items without paying fee, may not cite any more documents
  • Third party preissuance submissions — concisedescription of relevance• Submitter must explain why document submitted and potential relevance to the examination • A bare statement that the document is relevant is not a concise description • PTO will not otherwise valuate the sufficiency of the concise description• PTO suggested best practices: • Point out the relevant pages or lines of the respective document • Use format that would best explain to the examiner the relevance of the document, such as in a narrative description or a claim chart • Avoid verbose description
  • Third party preissuance submissions — time limits• Must be filed before date of mailing of first rejection or, if no rejection, allowance • But, may submit any time within 6 months of publication unless allowance mailed • Will not be entered if filed after mailing of notice of allowance
  • Will AIA change pre-grant strategies?• Generally, pre-grant options will be more attractive • Ability to explain how to apply the prior art and expanded window for submission make pre-issuance submissions much more attractive • No estoppel • Public protest can still be used if necessary• But, there are still downsides of preissuance submissions
  • No guarantee that the examiner will give thedocuments careful consideration• No further involvement by submitter will be permitted• Applicant will have the opportunity to amend the claims and argue against the submitted references without any further input from the submitter• Courts and juries may give deference to cited document having been considered • Holding back of best or equally good documents might be an option when there are multiple documents available • Citing fewer, but well selected documents might actually give better results
  • Preissuance submission will put applicant on notice• Nature of the prior art and the arguments may tip off applicant as to issues • Applicant likely to amend to fortify claims against cited prior art • Applicant may be more circumspect in remarks• Applicant may file continuation as a precaution
  • Possible impairment of ex parte reexaminationopportunities• Although no estoppel, preissuance submission may impair ability to establish a substantial new question of patentability for ex parte reexamination • Submitter may not be giving up much; ex parte generally not attractive
  • Effect of post grant and inter partes review onpreissuance submission• Review should still be an option even if reference submitted prior to issue • Threshold for review: reasonable likelihood that challenged claim is unpatentable (IPR) or claim more likely than not is unpatentable (PGR) • Whether there is a substantial new question of patentability, is irrelevant to initiation • APJs make decision; consideration by examiner should carry no weight• Early success with PGR and IP may embolden third parties to try preissuance submissions• High costs of PGR / IPR might encourage early knockout attempts with preissuance submissions
  • Additional factors to consider• Quality of the prior art and the client’s desired result • Prior art that anticipates all the claims or the client practices what is disclosed by the reference better than prior art that leaves room for applicant to maneuver• State of examination • Claims are moving target; published claims may change substantially • However, if there’s been an Office action, and even a response, supplying a the reference might make a big difference in the outcome
  • Watching application publications• Other than cost, there appears to be little downside to watching publications: • No patent, no objectively high risk of infringement. Cf. In re Seagate Technology LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc) • Not aware of duty to watch for grant• But what to watch for and how to evaluate timely and cost- effectively evaluate hits? • Watching for publication continuations and divisionals of problematic patents much more easily justified than watching every dozens of subclasses• Those watching only grants may now have reason to watch applications instead of or in addition to grants
  • "I heard that my competitor has applied for a patenton my process"• Do nothing • Options are very limited and expensive; better off not knowing about it; decide when sued • New prior commercial use defense under AIA of help? • Rely on huge patent portfolio• Maybe file an application (interference or, in the future, derivation proceeding)• If doing nothing not appealing, look for patent application or start watching for it and, if found — • Evaluate scope of patent and defenses / design around • Evaluate whether it makes sense to take action in PTO, wait until grant and then challenge with post grant procedures, or wait until sued
  • "Im tired of getting sued by my competitor. Whatelse can we do?”• Clearance searches • Options at PTO still not great; better to identify problematic patents in time to allow for designing around•Patent application and grant watching • Opportunity to design around might be limited, so needs to be done primarily for purposes of pre-grant or post- grant action • Watching grants may create exposure to willful infringement
  • Conclusion• Those who have been watching publications will likely continue• Whether preissuance submission practice will entice others to start is uncertain • Rule 290 Preissuance submissions certainly a lot more attractive, but there are downsides to consider • Might make sense when dealing with continuations, etc., of problematic patents • Availability of post grant review and inter partes review might make preissuance submissions seem less of a risk
  • New Strategies for Third PartiesThe New Third Party Preissuance SubmissionsPractice under the AIAMarc Hubbard | PartnerGardere Wynne Sewell LLP1601 Elm Street, Suite 3000 | Dallas, TX 75201214.999.4880 direct214.208.2601 cell214.999.3880 faxmhubbard@gardere.comwww.gardere.com 27