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September 2011 Patent Group Lunch
 

September 2011 Patent Group Lunch

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Topics covered: America Invents Act...

Topics covered: America Invents Act

Effective Dates
Major Changes to 102 & 103
Derivation Proceedings
Post Grant Review
Citation of Art
Prior Use Defense
Miscellaneous Provisions

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    September 2011 Patent Group Lunch September 2011 Patent Group Lunch Presentation Transcript

    • Prosecution Group Luncheon September, 2011
    • America Invents Act
      • Passed House and Senate (HR 1249)
      • Presidential Signature expected Friday
      • Most provisions take effect either
      • 12 or 18 months from enactment
    • America Invents Act—Effective Dates
      • Generally: effective 1 year after enactment (~9/16/2012)
      • Immediate effect
      • Prior user defense Best mode changes
      • Tax strategy provision Marking provision
      • Effective 18 mos. after enactment (~3/16/2013)
      • First to file (applies to apps. with claims with EFD after that effective date)
    • America Invents Act
      • First to File
      • Post-grant Review/Citation of Art (3d party/supp. exam)
        • Transitional Procedure for certain Bus. Method Patents
      • Prior use defense
      • Tax strategies deemed within prior art
      • Elimination of Best Mode as Invalidity Basis
      • Marking issues
    • America Invents Act—First to File
      • Section 102 rewritten—prior art is
      • (a)(1) Publicly available before effective filing date
        • Exceptions [(b)(1)]: disclosures less than 1 year before EFD are not prior art under (a)(1) if
        • By inventor or one who obtained it from inventor
        • Disclosure was previously disclosed by inventor
      • (a)(2) Patents/published applications of other inventor, having prior EFD
        • Exceptions [(b)(2)]: disclosures not prior art under (a)(2) if
        • Obtained from inventor
        • Publicly disclosed by inventor before reference’s EFD
        • Disclosure and claimed invention subject to common ownership
    • America Invents Act—First to File
      • Section 103:
      • A patent may not be obtained
      • if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains .
    • America Invents Act—First to File
      • Derivation proceedings
      • Patents: new sec. 291, civil action (1 year deadline)
      • Applications: new section 135, petition akin to post-grant petitions
      • Note: current secs. 102(g), 135, 291 remain in effect for applications and patents with claim(s) having EFD before the effective date (March 2013)
    • America Invents Act—Post-Grant Review
      • Inter Partes Review (Ch. 31; replaces inter partes reexam)
      • Basis: 102/103, over patents or printed publications
      • Petition to cancel claim(s) (with references, expert declarations, argument), decision whether to grant is not appealable
      • Timing: after 9 months from issue, or after Ch. 32 post-grant review
      • Post-Grant Review (Ch. 32)
      • Basis: any invalidity ground in sec. 282
      • Similar petition process
      • Timing: within 9 months after issue
    • America Invents Act—Post-Grant Review
      • Transitional program for “covered business method patents” (Ch. 32 procedure, where patent is in suit)
      • Regulations from PTO within one year from enactment
      • Estoppel (akin to interference), stay, joinder provisions
      • Settlement provision precludes estoppel
      • Claims can be amended during proceeding; intervening rights arise
    • America Invents Act—Citation of Art
      • Third-party submissions
      • Sec. 301: patents/publications or owner’s court/PTO statements can be filed at any time
      • Amended sec. 122: patents/publications can be filed pre-issuance (w/relevance statement)
      • Patent Owner’s Supplemental Examination
      • Step prior to requesting reexamination
      • PTO can institute reexamination
      • Chance to cure possible inequitable conduct
    • America Invents Act—Prior Use Defense
      • For good-faith commercial user of process or machine, manufacture, composition used in process
      • For uses 1 year before infringed patent’s effective filing date; abandonment re-starts the clock
      • Clear and convincing standard of proof
      • Premarket regulatory, nonprofit lab use is “commercial”
      • Personal defense; transfer only with sale of business
      • Exception for university plaintiffs
      • No defense for derivers
    • America Invents Act
      • Other provisions of note
      • 14: Strategies for reducing/deferring tax liability are insufficient to distinguish from prior art (with exceptions)
      • 15: Best mode
      • Absence no longer an invalidity ground
      • No longer required for 119(e)/120 priority
    • America Invents Act—Other
      • 16: Marking
      • Qui tam suits eliminated
      • Competitive injury by false marking actionable
      • Virtual marking (“Patented; see www. . . .”)
      • 17: Codification/extension of Knorr-Bremse : failure to obtain or disclose advice of counsel cannot be used to prove willfulness/intent to induce infringement
    • America Invents Act—Effective Dates
      • Generally: effective 1 year after enactment (~9/16/2012)
      • Immediate effect
      • Prior user defense Best mode changes
      • Tax strategy provision Marking provision
      • Effective 18 mos. after enactment (~3/16/2013)
      • First to file (applies to apps. with claims with EFD after that effective date)