presented at the Center For Emerging Technology in St. Louis, MO on October 19, 2011.

1. Highlights of the Leahy-Smith
America Invents Act
by
Steve Ritchey

2. Overview of Presentation
 Change to First Inventor-to-File
 Prior Commercial Use Defense Expanded
 Changes to Best Mode
 Supplemental Examination
 Post-grant Review
 Inter Partes Review
 Joinder of Parties
 Patent Marking
 Other Provisions: fees, advice of
counsel, etc.
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3. First Inventor-To-File
 Effective Date - applies to applications that
contain or contained a claim to a claim
invention having an effective filing date on
or after March 16, 2013.
 Underlying Changes
• Expansion of inventive entity to include
individual inventors or sub-groups of inventors
(“an inventor”).
• Removed differential treatment of Foreign
Inventions.
 Reduces the types of prior art from 7 to 2
plus exceptions.
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4. First Inventor-to-File (cont.)
 New §102(a)(1) – 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 date of the claimed invention.
 New §102(b)(1) Exceptions – A disclosure made 1 year or less
before the effective filing date of a claimed invention is not
§102(a)(1) prior art to the claimed invention if:
(A) the disclosure was made by “an inventor” or by another who
obtained the subject matter disclosed directly or indirectly
from an “an inventor”; or
(B) the subject matter disclosed had, before such
disclosure, been publicly disclosed by an “an inventor” or
another who obtained the subject matter disclosed directly
or indirectly from an “an inventor.”
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5. First Inventor-to-File (cont.)
 New §102(a)(2) - A person shall be entitled to a patent unless the
claimed invention was described in an U.S. patent, a published or
deemed published U.S. patent application that names another
inventive entity that was effectively filed before the effective
date of the claimed invention.
 New §102(b)(2) Exceptions – A disclosure under is not §102(a)(2)
prior art to a claimed invention if:
(A) the subject matter disclosed was obtained directly or indirectly
from “an inventor”;
(B) the subject matter disclosed had, before such subject matter was
effectively filed under (a)(2), been publicly disclosed by “an
inventor” or by another who obtained the subject matter disclosed
directly or indirectly from an “an 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 or obliged to be assigned to the same person.
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6. Derivation Actions
 Patents
• The owner of a patent with a later effective filing date to file a
law suit seeking “relief” against an owner of an patent having
an earlier effective filing date if the claimed invention was
derived from the inventive entity of the “later” patent.
• The action must be filed no later than 1 year after issuance of
the “later” patent.
 Patent applications
• An applicant can petition the Office to institute a derivation
proceeding.
• The petition must be filed within 1 year after the publication of
a “later” application having a claim that is same or substantially
the same as the “earlier” application.
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7. Issues and Concerns
Act does not really harmonize U.S. law with absolute
novelty jurisdictions.
 The new U.S. system is more accurately described as a
First Inventor-to-Disclose or File System. Earlier
disclosure trumps earlier filing.
Example - Inventor A invents a product on April 1 and files
an application 6 mos later (October 1). Inventor B invents
the same product 3 mos after Inventor A (June
1), publishes 3 mos later (September 1), and files an
application 3 mos after publication (December 1).
 Inventor A was the first to invent and first to file but
Inventor B’s publication is prior art against Inventor A
and removes Inventor A’s earlier filed application as
prior art.
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8. Issues and Concerns (cont.)
Differing Scope of Prior Art and Exceptions
 The new §102(a)(1) prior art includes
“uses”, “sales” and “availability to the public”
but the inventor grace periods only apply to
“disclosures”.
 Legislative history indicates that this difference
was intentional.
 Thus, an inventor’s use of or sale of an invention
before the effective filing date will be a bar.
Whereas an inventor’s public disclosure less
than 1 year the effective filing date will not be a
bar.
 Continued viability of Experimental Use
Doctrine?
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9. Issues and Concerns (cont.)
What constitutes a “disclosure”?
Will it be the current “printed publication” standard or
something more lax such an oral disclosure or a
PowerPoint slide?
Scope of a “subject matter that is publicly disclosed by
an inventor”?
 Must it be identical in scope to the later-filed
application?
 Must it satisfy §112 written description, best
mode, enablement, means-plus-function?
 Is it sufficient for the inventor’s public disclosure to
only disclose what is in another reference to
preclude that reference from being prior art?
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10. Issues and Concerns (cont.)
Treatment in the PTO of Inventor Disclosures
Because disclosures of subject matter by “an
inventor” are so critical for determining
whether a reference available less than 1 year
before the effective filing date is prior art, will
the Office require the applicant to disclose all
such “public disclosures” on an IDS or will the
Office simply identify such references and
allow “an inventor” to antedate them by
providing evidence of an earlier public
disclosure?
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11. Issues and Concerns (cont.)
Invalidity Opinions
Because the U.S. will not be a true first-to-
file system, it is likely to continue being
undesirable to rely upon references
available less than 1 year before the
effective filing date of a patent.
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12. Issues and Concerns (cont.)
Subject matter disclosed by another who
obtained it from “an inventor”
 Yet to be determined how any
comparison between disclosures should
be done.
 What evidence will be considered; what
standard of proof?
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13. Issues and Concerns (cont.)
Change of inventive entity and prior art.
 Changing the prior art exceptions from the
same inventive entity to disclosures made by
“an inventor”, has the potential to remove
significant prior art.
 For example, in a crowded field with a lot of
publications, it may be possible for two or more
authors to remove what would be prior art
against one or more of individually filed
applications by jointly filing an application
within 1 year after the earliest publication of
concern.
 If desired, the inventors or assignees could
divide up rights or fields by agreement.
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14. Issues and Concerns (cont.)
Common Ownership Exception
 Limited to prior art that is a U.S. patent
or published U.S. application.
 Retroactive: parties can agree to
common ownership after an invention is
made; just needs to be done by the
effective filing date.
 Similarly, Joint Research Agreements
need to be in effect by the effective
filing date.
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15. Recommendations
 File Early - file provisional applications
early and often and then make a priority
claim to the relevant provisional
applications that were filed no more than 1
year before the non-provisional filing.
 Pre-filing Disclosures - if foreign patents
are not wanted, it is likely a good strategy
to publicly disclose the subject matter
immediately (even before filing an
application). Remember to file the U.S.
application within 1 year of the publication.
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16. Recommendation (cont.)
 Provisional applications not always prior
art - must file a non-provisional application
to obtain a prior art benefit. If it is likely
you may not file a non-
provisional, consider publicly disclosing
inventions immediately after the effective
filing date to create prior art.
 Scope of Disclosures – there are
uncertainties around the required scope of
disclosures. To create effective prior art
against others it is advisable to avoid “bare
bones” disclosures; goal should probably
be satisfying §112.
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17. Recommendations (cont.)
 When to file - with respect to novelty, it unlikely
the AIA will be of benefit to applicants so
consider filing applications to new subject
matter (i.e., new applications and
continuations-in-part) before March 16, 2013.
 Take advantage of §102(g) - after March
16, 2013, if you have reason to believe you were
the first to invent but the later to file an
application, consider the making a priority claim
to an application filed before March 16, 2013, if
possible, this may allow you to obtain a patent
by taking advantage of interference
proceedings.
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18. Recommendations (cont.)
 Don’t throw out your copy of the
current Patent Act.
• The current novelty standards apply to all
cases filed before March 16, 2013, and
those applications will be prosecuted and
the subject of litigation for years to come
(20+ years).
• Interferences are likely to be around for
10+ years.
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19. Prior Commercial Use Defense Expanded
 Now applies to any patentable invention used in good faith in
a manufacturing or other commercial use in the U.S. at least
one year before the earlier of:
(A) the effective filing date of the claimed invention; or
(B) a public disclosure which qualifies for the an §102(b) prior
art exception.
 Effective to any patent issued after September 16, 2011.
 Other provisions essentially unchanged.
• Defense is personal but transferable upon sale of
business.
• Limited to sites were otherwise infringing activities
occurred before effective filing date.
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20. Prior Commercial Use (cont.)
 University Exception
• Defense not available if claimed invention
was, at the time the invention was
made, owned or subject to assignment to a
University.
• Note: not ownership as of the effective
filing date as for prior art exception.
• Possible incentive for performing research
with an University or having an University
perform research for you and then license
patents.
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21. Best Mode
 As of September 16, 2011, Best Mode is no
longer a basis on which a claim or a patent may
be canceled, held invalid or otherwise
unenforceable.
 Best Mode is still required under §112.
 Why have the requirement, if there is no
remedy?
 Possible tension between clients and attorneys.
 Judiciary May Fashion Remedies – for
example, keeping valuable modes as trade
secrets could result in narrowed claim scope as
an Enablement or Written Description violation.
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22. Supplemental Examination
 Patent owner may request supplemental
examination of a patent so the Office can
consider, reconsider, or correct information
believed to be relevant to the patent.
 Reexamination will be conducted if the Office
determines that there is a substantial new question
of patentability.
 Prevents such information from causing a patent to
be held unenforceable on the basis of conduct
related to the information; provided the
supplemental examination is concluded before the
patent is the subject of an infringement claim.
 The making or absence of making a request is
irrelevant to the presumption of validity.
 Effective as of September 16, 2012.
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23. Post-grant Review
 Grounds - New post-grant review before the PTAB to review
validity of issued patents on any ground, not just prior art.
 Petition period - Petition must be filed within 9 months of
patent grant.
 Threshold showing - is either (a) “more likely than not” at least
one claim is unpatentable or (b) the petition raises a novel or
unsettled legal question that is important to other patents or
applications.
 Duration - Final Decision within 1 yr or 1.5 years for good cause.
 Claim Amendment - patent owner has right to file 1 motion to
amend claims; no broadening amendments or new matter.
Additional motions available for good cause or upon joint
request.
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24. Post-grant Review (cont.)
 Bar - review barred by earlier filed civil action.
 Stay - if petitioner files a later civil action it will be
automatically stayed until either: (a) patent owner moves to
lift stay; (b) patent owner files a civil action or counterclaim
alleging infringement by petitioner; or (c) petitioner moves
for dismissal.
 Preliminary Injunction - if civil action alleging infringement is
filed within 3 mos of grant, a post-grant review cannot be a
basis for a court to stay consideration of patent owner’s
motion for preliminary injunction against infringement of the
patent.
 Estoppel – petitioner cannot later bring another proceeding
in the PTO or in the courts based on any ground that was or
could have been raised.
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25. Inter Partes Review
 Replaces inter partes reexamination.
 Timing
• Petition filed after the later of (a) 9 months after grant
or reissue or (b) termination of a post-grant review.
• Petition must be filed within 1 year of being sued.
 Grounds – limited to anticipation and obviousness on the
basis of patents or printed publications.
 Threshold showing – reasonable likelihood that petitioner
would prevail on at least one claim.
 Duration - Final Decision within 1 yr or 1.5 years for good
cause.
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26. Inter Partes Review (cont.)
 Claim Amendment - patent owner has right to file 1
motion to amend claims; no broadening amendments or
new matter. Additional motions available for good cause
or upon joint request.
 Bar - review barred by earlier filed civil action.
 Stay - if petitioner files a later civil action it will be
automatically stayed until either: (a) patent owner moves
to lift stay; (b) patent owner files a civil action or
counterclaim alleging infringement by petitioner; or (c)
petitioner moves for dismissal.
 Estoppel – petitioner cannot later bring another
proceeding in the PTO or in the courts based on any
ground that was or could have been raised.
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27. Transitional Program For Covered Business
Method Patents
 “Covered Business Method Patents” are defined as
“a patent that claims a method or corresponding
apparatus for performing data processing or other
operations used in the
practice, administration, management of a financial
product or service, except that the term does not
include patents for technological inventions.”
 Effective September 16, 2012, a person sued for
infringement can challenge the validity of the
patent as anticipated or obvious.
 Applies to patents issued before the effective date.
 Sunset – September 16, 2020.
 Can seek a stay in litigation.
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28. Preissuance Submissions by 3rd Parties
 A third party can submit a patent, a published
application, or other printed publication for
consideration in the examination of an
application.
 Must be submitted before the earlier of the
notice of allowance, 6 months after
publication of the application.
 Must set forth a concise description of the
asserted relevance.
 Effective - September 16, 2012.
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29. Citation of Written Statement
 In addition to submitting prior art, any
person may submit statements made
the patent owner in a court or Office
proceeding “in which the patent owner
took a position on the scope of any
claim of a particular patent.”
 Must include a statement explaining the
pertinence to at least one claim.
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30. Joinder of Parties
 AIA bars joining unrelated parties in a
single action for patent infringement
unless there are common facts and the
parties were involved together in the
same acts that caused the alleged
infringement.
 The fact that separate parties are
accused of infringing the same patent is
not a basis for joinder.
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31. Patent Marking
 Permits virtual marking to provide
public notice that an article is patented
(marking that direct public to a freely
accessible website).
 Restricts availability of false marking
damages to the government and
persons that suffered a competitive
injury.
 Exempts expired patents.
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32. Other Provisions of the AIA
 Inventor’s Oath or Declaration - An
assignee can file a patent application
instead of the inventors. Effective
September 16, 2012.
 Advice of Counsel – bars the use of an
accused infringer’s failure to obtain
advice of counsel to prove willful
infringement.
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33. Other Provisions (cont.)
 Fees
• USPTO given fee setting authority.
• Fees went up 15% on September 26, 2011.
• Micro entities (less than 4 prior non-provisional
applications and less than 3 times median
household income) entitled to 75% reduction in
fees.
• Prioritized Examination Fee - $4,800 in addition to
regular fees
• Paper filing charge for non-provisional utility apps-
$400
 Human Organisms – can’t have a claim
“directed to or encompassing a human
organism.”
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34. Other Provisions (cont.)
 PTO Funding – fees collected in excess
of the PTO’s budget are deposited with
the Treasury and can be appropriated by
Congress for use by the PTO.
 Prioritized Examination – an applicant
can request prioritized examination (at
no extra cost) of an application for
products, processes, or technologies
that are important to the national
economy or national competitiveness.
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