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  • 1. AIA Update – Final Rules, Sept. 16, 2012 Presented by: Jerry Selinger and Bruce PattersonCalifornia  Texas  New Jersey  North Carolina
  • 2. TABLE OF CONTENTS Prosecution  Oath and Declaration Public Submissions  Third-Party Submission  Citation of Prior Art and Written Statements Disciplinary Proceedings Reviewing/Challenging Issued Patents  Post Grant Review  Inter Partes Review  Supplemental Examination Attorney Client Privilege/Attorney Work Product 2
  • 3. Effective Dates Summary Day of Enactment 10 Days 60 Days 12 Months 18 Months Sept 16, 2011 Sept 26, 2011 Nov 15, 2011 Sept 16, 2012 Mar 16, 2013Reexamination transition to Prioritized Exam Electronic filing Inventor’s oath/declaration First to file“reasonable likelihood of incentiveprevailing”Best mode 15% surcharge TP submission of PA for New 102 patent applicationPrior commercial use Supplemental examination Amended 103defense (patents filed before, on, or after Sept 16, 2012) Citation of prior art in a patent Derivation file (104)Virtual and false marking Priority examination for Repeal of important technologies Statutory Invention RegistrationVenue from DDC (sec 9) Inter partes review (IPR)Fee setting authority Post grant review (PGR)Tax strategies deemed prior art Transition PGR for covered business method Attorney Client Privilege/Attorney Work Product 3
  • 4. Prosecution - Oath and Declaration Oath/Declaration rules apply to applications filed on or after September 16, 2012 35 U.S.C. 118 has been amended to allow a person, to whom the inventor has assigned, is under an obligation to assign, or shows sufficient proprietary interest in the invention, to file an application for patent. See final rule 37 CFR 1.63(e) and 37 CFR 1.64 35 U.S.C. 115 has been amended to detail the oath/declaration requirements, and spell out:  Required statements and information  Requirements for use of Substitute Statements and Assignments in lieu of an inventors oath or declaration  Time for filing  Ability to correct  Acknowledgement that any willful false statements are punishable under Section 1001 of Title 18  See final rule 37 CFR 1.63 Attorney Client Privilege/Attorney Work Product 4
  • 5. 35 U.S.C. 115 - Content Required Statements  the application was made or was authorized to be made by the affiant or declarant – 37 CFR §1.63(a)  such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application - 37 CFR §1.63(a)  acknowledgement that any willful false statements are punishable under Section 1001 of Title 18 37 CFR §1.63(g) Attorney Client Privilege/Attorney Work Product 5
  • 6. 35 U.S.C. 115 - Content Required Information:  Inventors legal name, residence, inventors mailing address, identification of application (may be provided in Application Data Sheet) – 37 CFR §1.63(a) – (b) Other Requirements;  Declarant has reviewed and understands the contents of the application, including the claims – 37 CFR §1.63(c)  Declarant is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in §1.56 – 37 CFR §1.63(c) Attorney Client Privilege/Attorney Work Product 6
  • 7. 35 U.S.C. 115 - Content Eliminated Requirements  Names of all inventors (if provided in Application Data Sheet – a.k.a. ADS)  Identification of citizenship  That inventor believes to be “first” inventor  Foreign priority claim (must be provided in ADS)  Explicit statement regarding “acknowledge duty of disclosure” and “reviewed/understands content of application” (but inventor is still required to be aware) Attorney Client Privilege/Attorney Work Product 7
  • 8. 35 U.S.C. 115 – Substitute Statement Substitute Statement may serve as oath/declaration – 37 CFR §1.64(a)  Inventor is deceased or legally incapacitated  Inventor cannot be found/reached after diligent effort  Inventor refuses to execute oath/declaration Substitute Statement content – 37 CFR §1.64(b)  Comply with 37 CFR §1.63(a)  Identify inventor by legal name and last known mailing address  Identify person executing substitute statement and relationship to inventor; and  Identify basis for substitute statement  Proof no longer required to show diligent effort Attorney Client Privilege/Attorney Work Product 8
  • 9. 35 U.S.C. 115 – Substitute Statement Substitute Statement Requirements – 37 CFR §1.64(b), (c) and (e)  the application was made or was authorized to be made by the affiant or declarant – 37 CFR §1.63(a)  such individual, based on belief and facts, that the inventor to be the original inventor or an original joint inventor of a claimed invention in the application – 37 CFR §1.63(a)  An acknowledgement that any willful false statements are punishable under Section 1001 of Title 18 - 37 CFR §1.64(e) Other Requirements – 37 CFR §1.64(c)  Person making the Statement has reviewed and understands the contents of the application, including the claims  Person making the Statement is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in §1.56 Attorney Client Privilege/Attorney Work Product 9
  • 10. 35 U.S.C. 115 – Substitute Statement Substitute Statement can be made by  Assignee or person to which inventors are under an obligation to assign  documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) should be recorded as no later than the date the issue fee is paid in the application – 37 CFR §1.46(b)  Person who shows sufficient proprietary interest in the invention  Must petition to evidence sufficient proprietary interest and provide a statement that action is appropriate to preserve the rights of the parties – 37 CFR §1.46(b)  A discussion of the evidence necessary for a showing that a person has sufficient proprietary interest in the matter is set forth in MPEP Sec. 409.03(f) Attorney Client Privilege/Attorney Work Product 10
  • 11. 35 U.S.C. 115 – Substitute Statements Corrections Substitute Statements may be corrected at any time Attorney Client Privilege/Attorney Work Product 11
  • 12. 35 U.S.C. 115 – Assignment in lieu of Oath Assignment may serve as oath/declaration – 37 CFR §1.63(e) Assignment content  Must include information and statements required for oath/declaration per 37 CFR 1.63(a-b) (information may be on Application Data Sheet) Must be recorded with Patent Office  Assignment Coversheet has a check box which will automatically place a copy of the Assignment in the PAIR record to satisfy declaration requirements (SEE NEXT SLIDE) Surcharge required if Assignment not filed on same day as application CAUTION – Assignment for a provisional application will not comply with declaration statement requirements for the non-provisional application Attorney Client Privilege/Attorney Work Product 12
  • 13. 35 U.S.C. 115 – Assignment in lieu of Oath EPAS “Check Box” to indicate assignment to be used in lieu of oath Attorney Client Privilege/Attorney Work Product 13
  • 14. 35 U.S.C. 115 – Timing Oath/declaration requirements may be fulfilled any time prior to the application being in condition for allowance  Fulfilled by filing Declaration from inventors, filing a Substitute Statement or recording an assignment in lieu of Declaration  Proposed Rule (August 29, 2012) proposes a fee of $1000 to correct inventorship if Declaration filed after FOAM Filing a signed Application Data Sheet containing inventors names and mailing address will fulfill filing requirements and avoid Missing Parts  Signed Application Data Sheet does not fulfill oath/declaration requirements, oath/declaration still must be filed in the time period described above  Surcharge still required if Oath/declaration requirements are not submitted at time of filing Attorney Client Privilege/Attorney Work Product 14
  • 15. Application Data Sheet - Changes May indentify a different Applicant than the Inventor (e.g., assignee) Required to recite priority claims to all foreign and domestic applications Utilized to provide information otherwise required in oath or declaration Allows corrections by filing subsequent Application Data Sheets Must be signed to avoid issuance of Notice of Missing Parts  Even if oath, declaration or assignment is not filed Attorney Client Privilege/Attorney Work Product 15
  • 16. Application Data Sheet – Timing If not signed with filing of application, treated as transmittal letter If signed at time of filing of the application, and even if accompanied by declaration, ADS sets inventorship  Inventorship must be corrected per 37 CFR 1.48 if inventorship in later filed declaration is different Attorney Client Privilege/Attorney Work Product 16
  • 17. Best Practices - Forms Use AIA/080 to assign POA in applications where the inventors are the applicants but are not the owners  37 CFR 3.73(c) statement is required with AIA/080  Older SB/080 refers to 37 CFR 3.73(b) FORM DECISION CHART Attorney Client Privilege/Attorney Work Product 17
  • 18. Best Practices - Declarations Update Declaration Forms  Caution – Out of date forms will not satisfy oath/declaration requirements for applications filed on or after September 16, 2012  PCT filings should not inadvertently designate inventors as the “Applicants for the United States Only” – beware out of date forms! File new dec for any continuing applications claiming benefit to filing dates before Sept. 16, 2012 (where no new AIA approved dec has been filed in the chain) The PCT filing date, not National Stage Entry, decides if the application was filed before Sept. 16, 2012  Caution – Beware by-pass continuations! Attorney Client Privilege/Attorney Work Product 18
  • 19. Best Practices - Declarations File new dec for non-provisionals claiming priority to provisions, regardless of filing date of provisional Utilize assignment in lieu of declarations  minimizes paperwork and increases efficiency  reduces burden on inventors and corporate administrators Satisfy Oath/Declaration requirements early  Avoid potential government fees for filing after First Action Attorney Client Privilege/Attorney Work Product 19
  • 20. Best Practices - ADS To sign or Not to sign?  If inventorship is certain, file signed ADS  Prevents issuance of Notice of Missing Parts for applications filed without meeting inventors oath/declaration requirements  Allows for efficient correction of potential errors  Ensures that priority claims are properly made and accepted  Simplifies PCT filings and filing of power of attorney  If inventorship is uncertain, consider filing with unsigned ADS (not recommended in most cases)  Avoids setting inventorship and, thus, Rule 48 paperwork  Will get Notice of Missing Parts Always file ADS when utilizing an assignment in lieu of declaration  Provides inventor information not present on assignment Identify assignee as the Applicant Attorney Client Privilege/Attorney Work Product 20
  • 21. Best Practices - Assignments Assignments include only the required statements  Application made or authorized to be made by the declarant  Believes him/herself to be original inventor  Acknowledges that willful false statements are punishable Cover includes other scienter requirements  Has reviewed and understands  Declarant is aware of the duty to disclose Attorney Client Privilege/Attorney Work Product 21
  • 22. Best Practices - Assignments Record assignment the same day as filing  Avoids surcharge Record Assignments of Provisional Applications  Provides evidence of ownership should a Substitute Statement be necessary at non-provisional filing  Eliminates potential priority claim problems particularly in China in subsequently filed foreign applications  Caution – Provisional Assignment likely will not satisfy non- provisional oath/declaration requirements Attorney Client Privilege/Attorney Work Product 22
  • 23. Best Practices - POA File separate Power of Attorney provided by Applicant  Use of a general power of attorney to the customer number by Applicant will reduce administrative burden on Applicant Attorney Client Privilege/Attorney Work Product 23
  • 24. Preissuance Submissions by 3rd Parties Statutory Sections: 35 U.S.C. § 122(e) and 37 CFR § 1.290 Effective Date: effective one year after enactment (9/16/12) and applies to any patent application filed before, on, or after the effective date. Submission of any printed publication, patent or otherwise, is permitted Time Period for Submission:  Deadline is the earlier of:  Date of the notice of allowance; or  The later of:  Six months from date of publication; or  Date of first rejection under Section 132 (excludes requirements or objections) Attorney Client Privilege/Attorney Work Product 24
  • 25. Preissuance Submissions – Highlights Submission:  May be made in any non-provisional application or continuing application  No preissuance submissions in reissue or reexamination proceedings.  Preissuance submissions can be submitted even if application is abandoned  Notice to Applicants  To receive notice of complaint preissuance submission, Applicant must participate in e-Office Action program  Notification provided via email Attorney Client Privilege/Attorney Work Product 25
  • 26. Preissuance Submissions – Highlights Submission (cont.)  Third Party  Rule permits the Third Party to remain anonymous  How to Submit  May be submitted by first class mail, express mail, by hand, or Web-based interface  37 CFR 1.8 amended to state that preissuance submissions receive no benefit of a certificate of mailing or transmission  Faxed submissions are not permitted (37 CFR 1.6(d)(3)) Attorney Client Privilege/Attorney Work Product 26
  • 27. Preissuance Submissions – Highlights Submission (cont.)  Third Party (cont.)  Issues of Non-compliance  Submissions are not added to the file wrapper until reviewed for compliance  No refund for non-compliant submissions  No amendment allowed to correct non-compliant submissions; must refile  Must provide email address to receive notice of non- compliance  No tolling if submission is improper  No set time period for filing corrected submission  Requires a statement that you are not under a duty of disclosure Attorney Client Privilege/Attorney Work Product 27
  • 28. Preissuance Submissions – Highlights Concise Explanation  Unlike previous preissuance submission rules, requires a concise explanation of each document’s relevance  The concise explanation should set forth facts, explaining how an item listed is of potential relevance to the examination to the application  Specific examples include (i) a claim chart, (ii) a narrative description, or (iii) citations to pages or lines of the respective documents  Different from 37 CFR § 1.291 (a protest) which allows for arguments against patentability Attorney Client Privilege/Attorney Work Product 28
  • 29. Preissuance Submissions – Highlights Treatment of Preissuance Submissions  Submissions and concise statement treated like an IDS  Applicants are not required to file a separate IDS to have the references considered  Third Parties cannot respond to Examiner’s treatment of submissions  Preissuance submissions are printed on the patent and designated as such Cost  Free if three or fewer documents are submitted and the third party attests that the submission is the first and only submission for a given application  $180 (37 CFR 17(p)) for ten or few references, regardless of the number of submissions from the same third party  $380 fee for more than ten but twenty or fewer references, regardless of the number of submissions from the same third party Attorney Client Privilege/Attorney Work Product 29
  • 30. Preissuance Submissions – Rule Status 37 CFR § 1.290 37 CFR § 1.99 37 CFR § 1.291 37 CFR § 1.292Title Submissions by 3rd Party Protest by Public Use 3rd Parties Submission Public ProceedingStatus New Repealed In Force RepealedFunction The new rule Subsumed by •Permits a third •Permits a implementing new rule 1.290. party to file a petition that 35 USC protest detailing shows an 1.22(e). facts that would application had make the grant been in public of a patent on use or on sale the application more than one improper year before the •In contrast to filing date. rule 1.290, does • Repealed allow because post- submission in grant review reissue permits this applications. issue to be raised Attorney Client Privilege/Attorney Work Product 30
  • 31. Citation of Prior Art and Written Statements Amendments contained in Section 6(g) of AIA Amends 35 U.S.C. § 301, which formerly read:  Any person at any time may cite to the Office in writing prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent. If the person explains in writing the pertinency and manner of applying such prior art to at least one claim of the patent, the citation of such prior art and the explanation thereof will become a part of the official file of the patent. At the written request of the person citing the prior art, his or her identity will be excluded from the patent file and kept confidential. Implemented by 37 C.F.R. § 1.501. Attorney Client Privilege/Attorney Work Product 31
  • 32. Citation of Prior Art and Written Statements Any person may still file prior art Any person may now also file “statements of the patent owner filed by the patent owner in [court or the USPTO] in which the patent owner took a position on the scope of any claim . . . .”  Must indicate:  Forum and proceeding in which statement was made  In which documents the statement was made  How each statement relates to the scope of the claims  Must be accompanied by records from proceeding in which the statement was made  Must include an explanation of the pertinence of the statements to the claims of the patent in order for the statement to be included in the patent record Attorney Client Privilege/Attorney Work Product 32
  • 33. Citation of Prior Art and Written Statements Reexamination pending?  Submissions by patent owner or ex parte or inter partes re exam requesters will be entered into the re-exam file  Submissions by others after orders for reexamination will only be entered in the patent file after the termination of the reexamination Patentee must be served  Without certificate of service, submission will not be entered into patent file May be submitted anonymously  Change from previous provision, which provided that submitters should request that their name be excluded from the record. Attorney Client Privilege/Attorney Work Product 33
  • 34. Office Disciplinary Proceedings - Statute of Limitations Provisions Statutory Sections: 35 U.S.C. 32, 37 CFR Part 11 Effective Date: August 30, 2012 Deadline for filing a complaint:  Within 1 year after the date on which the OED Director receives a grievance forming the basis of the complaint  In no event more than 10 years after the date on which the misconduct forming the basis for the proceeding occurred Attorney Client Privilege/Attorney Work Product 34
  • 35. Office Disciplinary Proceedings - Statute of Limitations Provisions Grievance – A written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner Tolling agreement – The 1 year period for filing a complaint shall be tolled if the involved practitioner and the OED Director agree in writing to such tolling Attorney Client Privilege/Attorney Work Product 35
  • 36. Post Grant Review Effective Date:  Transitional Post Grant Review  Begins September 16, 2012, for entity who has been threatened or sued.  Limited to questions of patentability of claims in a covered business method patent  A patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service, except patents for technological inventions are excluded  Post Grant Review - Applies to patents issuing from applications subject to the first-inventor-to-file provision of the AIA  which does not even become effective until March 16, 2013. Post Grant Review  Anyone not the owner of a patent may file a petition for post-grant review, unless that person has previously filed a declaratory judgment action.  The petition requests that one or more claims be cancelled as unpatentable on any ground that could be raised under paragraph (2) or (3) of section 282(b) of Title 35  A PGR petition may only be filed up to 9 months after the date of the patent grant or the issuance of a reissue patent. Attorney Client Privilege/Attorney Work Product 36
  • 37. Post Grant Review The PTO fee begins at $35,800. The PGR petition must, in pertinent part:  Identity all real parties in interest.  Identify each claim challenged, the grounds for the challenge, and the evidence that supports the challenge, to each claim.  Certify that petitioner is not estopped from requesting a post-grant review for the challenged claims, as opposed to the patent. The PRG petition will be granted if  the information demonstrates that “it is more likely than not” that at least one of the claims challenged in the petition is unpatentable, or  a novel or unsettled legal question is presented. Attorney Client Privilege/Attorney Work Product 37
  • 38. Post Grant Review The final determination is due within one year after the date on which the PGR proceeding starts, except, for good cause shown, the period may be extended by up to six months.  The one year period may also be adjusted in the case of joinder. The patent owner may file one motion to amend to:  propose a reasonable number of substitute claims for each challenged claim. What is reasonable will be determined in litigation. The petitioner has the burden of proving unpatentability by a preponderance of the evidence, with claims construed under “broadest reasonable interpretation” standard Attorney Client Privilege/Attorney Work Product 38
  • 39. Post Grant Review If petitioner files civil action after filing the petition the district court must automatically stay the action.  Unless the patent owner moves that the stay be lifted, files a lawsuit, or files a counterclaim asserting infringement. A district must decide a patentee’s motion for preliminary injunction in an infringement suit brought within three months after the patent issues. Estoppel provisions  One real bite on a claim in the PTO (“reasonably could have brought”).  Estoppel in civil litigation or before the ITC from asserting any ground that was raised or could have been raised during post grant review. Attorney Client Privilege/Attorney Work Product 39
  • 40. The Transition from IP Re-Exam to IP Review The standard has changed in theory  Requests for Inter Partes Re-examination filed before September 16, 2011 were decided based upon whether a substantial new question (SNQ) of patentability exists.  Inter Partes Re-examination requests filed on or after September 16, 2011, but before September 16, 2012, were, and will be, decided based upon a “reasonable likelihood of success” standard.  As of September 16, 2012, the PTO will only accept Inter Partes Review requests. The threshold for granting an IPR petition is a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Do the nuances in standard really matter?? Cannot be filed until the later of:  Nine months after the grant of the patent/issuance of a reissue; or the date of termination of a post grant review. Attorney Client Privilege/Attorney Work Product 40
  • 41. Inter Partes Review Cost – $27,200 for the first 20 claims challenged in any patent. That does not include attorney fees.  One petition per patent. Multi-patent, multiple claim disputes can become expensive quickly – even with subject matter overlap. Petition for review is limited to patents or printed publications, and limited to non-patentability under §§ 102 or 103.  But not limited to new art. The patent owner may file one motion to amend the patent by:  For each challenged claim, proposing a “reasonable number” of substitute claims. “Reasonable” will be defined through case law. Petitioner need only prove non-patentability by preponderance of the evidence, under “broadest reasonable interpretation” claim construction rule.  Double standard for IPR invalidity and district court infringement Attorney Client Privilege/Attorney Work Product 41
  • 42. Inter Partes Review The petition for Inter Partes Review must include, inter alia:  The identity of the real party in interest  The grounds on which the challenge to each claim is made, and the grounds must be presented in writing with particularity.  Any affidavits or declarations of supporting evidence or opinions  Everything must be provided to the patent owner. An Inter Partes Review may not be instituted if  the petitioner or real party in interest filed a civil action challenging the validity of the patent before filing the petition or  the petition is filed more than one year after the petitioner, real party in interest or privy of the petitioner is served with a complaint alleging infringement.  No automatic stay of litigation instituted by patent owner Attorney Client Privilege/Attorney Work Product 42
  • 43. Inter Partes Review If the petitioner or real party in interest files a civil suit challenging the validity of the patent after filing the petition, the civil action is automatically stayed until:  The patent owner moves the court to lift the stay; or  The patent owner files a civil action or counterclaim alleging the petitioner or real party of interest has infringed the patent; or  The petitioner or real party in interest moves to dismiss the civil action.  A counterclaim challenging the validity of a claim of the patent does not constitute such a civil action. Once the PTAB issues a final written decision, collateral estoppel attaches against the petitioner, the real party in interest and any privy of the petitioner  Bars attacking a claim on any ground raised or which reasonably could have been raised in a new IPR petition, a civil action, or before the ITC. Attorney Client Privilege/Attorney Work Product 43
  • 44. Supplemental Examination Effective September 16, 2012  A patent owner may request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent.  The PTO conducts the supplemental examination within 3 months of receiving the request, and, if one or more substantial new questions of patentability are found, then ex parte re-examination of the patent is ordered  Interviews and amendments are prohibited during supplemental examination  A patent shall not be held unenforceable on the basis of conduct relating to information that (1) had not been considered, (2) was inadequately considered, or (3) was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent This can be used during the period of enforceability of the patent (i.e., up to 6 years after expiration of the patent). Attorney Client Privilege/Attorney Work Product 44
  • 45. Section 12 – Supplemental Examination The contents of a request must include:  (1) A list of each item of information:  “Information” is not limited to patents and printed publications and may include, for example, issues of patentability under § 101 and § 112, or transcripts of audio or video recordings;  Limited to 12 “items” of information per request, but more than one request may be filed concurrently;  (2) an identification of each claim of the patent for which supplemental examination is requested;  (3) a separate explanation of the relevance and manner of applying each item of information to each claim of the patent for which it was identified; and  (4) a summary of the relevant portions of any submitted document, other than the request, that is over fifty pages in length. Attorney Client Privilege/Attorney Work Product 45
  • 46. Section 12 – Supplemental Examination Major Fees:  (1) $5,140.00 for the request for supplemental examination;  (2) $16,120.00 for an ex parte reexamination ordered as a result of a supplemental examination proceeding; but  The $16,120.00 will be refunded if no substantial new questions of patentability are discovered during supplemental examination Attorney Client Privilege/Attorney Work Product 46
  • 47. Patterson & Sheridan, LLP Jerry Selinger jselinger@pattersonsheridan.com Bruce Pattersonbpatterson@pattersonsheridan.com 47