The American Invents Act (AIA)

1
The American Invents Act (AIA)
Brad Pedersen
January 4, 2013
AIA Overview
Fee Changes
Transitions
Changes
Art Exceptions
First-Inventor-to-File (FITF)
First Inventor to File with Grace (FTFG)
Scope of Patent Filing
Suggested Strategies
Timeline
Post Issuance Proceedings
Inter Partes Reexam (IPR) Proceedings
Comparisons
FTFG Scenarios

© 2011-13 Patterson Thuente Christensen Pedersen, P.A., May be distributed with attribution - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein are intended for educational and
informational purposes only and should not be construed as legal advice.
2013 National CLE
Conference
Brad D. Pedersen
January 4, 2013
The AIA

The Leahy-Smith America Invents Act (AIA)
Overview
• Signed into Law
– September 16th, 2011
• Three Big Changes
(1) Fee Setting, but not Fee
Spending Authority
(2) First-Inventor-To-File
w/ Grace (FTFG)
(3) Improvements to Patent
Validity Challenges
• Changes Not Included
– Contentious Litigation Issues
3

4
Some Really Helpful Links
USPTO Links to AIA Related Materials
4
Click Here

5
Fee Setting Changes
Impact of Proposed Fees on Patent Costs
5

6
Timetable for the AIA Transitions
9-16
2011
9-26
2011
11-15
2011
3-16
2012
9-16
2012
3-16
2013
Immediately – 9/16/2011
In – Prior User Rights (Sec. 5)
In – Micro Entity Fee (Sec. 10)
In – Virtual Marking (Sec. 16)
In – Pro bono program (SEC. 32)
Out – Tax strategies (SEC. 14)
Out – Multi-Defendant (SEC. 19)
Out – False Marking (SEC. 16)
Out – Human Organism (SEC. 33)
Done – Best mode (SEC. 15)
Change – SNQ Threshold (SEC. 6(c))
10 Days – 9/26/2011
Starts – 15% Surcharge (Sec. 11(i))
Starts – Fast Track Exam (Sec. 11(h))
60 Days – 11/15/2011
Starts – Electronic Filing Incentive -
$400 (Sec. 10(h))
6 Months – 3/16/2012
Starts – First To Publish (FTP) Grace
One Year – 9/16/2012
In – Assignee Oath/Decl (Sec. 4)
In – 3rd Party Submission (Sec. 8)
In – PTAB (Sec. 7)
In – Supplemental Exam (SEC. 12)
In – Inter Partes Review (SEC. 6(a))
In – Bus Method Pat Review (SEC. 18)
In – Post Grant Review (SEC. 6(d))
Out – Inter Partes Reexam (SEC. 19)
Starts – Important Tech Priority
Exam (Sec. 25)
18 Months – 3/16/2013
In – FTFG (Sec. 3)
In – New Sec. 102
In – Derivation Proceedings
Out – Statutory Invent Registration
6

AIA Changes That Have Already Been Made
• End of Best Mode?
– Gone as defense in litigation
– But doesn’t change prosecution?
• Expanded Prior User Rights
– All categories of patents, not just
business method patents
– New University exemption with an
exception to the exception
– Limited transfer of rights
• Patent Marking
– End of False Marking
– Start of Virtual Marking, now
owners can mark with web page
7

8
• Willful Infringement
– Codifies Seagate
– Does it expand Seagate?
• No Patents on Human
Organisms
– Codifies current law
• End of Tax Strategy Patents
– Strategies for reducing or avoiding
taxes no longer proper subject
matter for patents
– Doesn’t extend to patents on tax
preparation tools

• Fast Track – 9/26
– $4800/$2400 fee (~$7K total)
– Prosecuted in 1 year
– 4 Ind. and 30 total claims
– Limit of 10,000 filings per FY
– About 7000 filings in FY2012
– Key is actions turned around in
about 1 month
9

AIA Changes September 2012
• 3rd Party Submission
– Submission made before Notice of
Allowance and no later than
– 6 mos. after publication, or
– Mailing of FAOM
– 3rd party can/must now point out why
art is being submitted, and Office will
only reject skeleton statements
– Submission can include non-prior art
and address other than 102/103
– Owner cannot submit
– Fee $180/10 items, but fee waived if
less than 3 items are only submission
– So far, 10X submission compared to
old system
10

AIA Changes September 2012
• Filing by Assignee
– Combined Oath/Declaration
– Easier proof of obligation to
assign
– Filing up to Notice of
Allowability
– New Oath/Declaration needed
for any cases, even continuing
cases, filed after 9/15/2012
11
Patent Office

AIA “Technical” Changes – January 2013
• HR 6621 – passed 1/1/13
– President will likely sign next week
– Mostly technical fixes
– Removes “9 month Dead Zone” for IPR
Filings for Just Issued Patents and
Reissues
– Clarifies Submission of Inventor’s Oath
up to Issue Fee
– Clarifies How the New Derivation
Proceedings Operate
– Changed Timing on PTA calculations
– No Reduction of Patent Terms for Pre-
GATT Pending Cases
– No Change to PGR Estoppel Provision
12

13
So, What Will You Need for a Patent
Under the AIA New Section 102?
13

14
Prior art exists under new 102(a) if a disclosure establishes that:
(1) “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. . .”
or
(2) “the claimed invention was described in a patent issued
under section 151, or in an application for patent published
or deemed published under section 122(b), in which the
patent or application, as the case may be, names another
inventor and was effectively filed before the effective filing
date . . .”
14
A disclosure of the claimed invention was
publicly available before the effective filing
date.
The claimed invention was described in a later-
published U.S./U.S. PCT patent application or patent
of another inventor, effectively filed before the
inventor’s effective filing date.
§102(a)(1)
§102(a)(2)
Public
Availability
Anywhere in
World
Non-Public
“US” Patent
Filings That
Later Become
Public
New 102(a) defines 2 kinds of Prior Art:
Publicly Available (PA) Art + Patent Filing (PF) Art

15 15
Prior PA art
have two
separate
“Exceptions.”
Prior-filed,
later-publish
PF art have
three
“Exceptions.”
New 102(b) defines Exceptions to Prior Art:
Publicly Available (PA) Art and Patent Filing (PF) Art
§102(b)(1)
exceptions
deal only
with
§102(a)(1)
prior art.
§102(b)(2)
exceptions
deal only
with
§102(a)(2)
prior art.

A disclosure under §102(a)(1) is excepted if:
(A) “the disclosure was made by the inventor or
joint inventor or by another who obtained the
subject matter disclosed directly or indirectly from
the inventor or a joint inventor“ or
(B) “the subject matter disclosed had, before such
disclosure, been publicly disclosed by the
inventor or a joint inventor or another who
obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor”
16
Exceptions for PA art
if less than 1-year before “effective filing date”
§102(b)(1)(A)
§102(b)(1)(B)
The disclosure represents the inventor’s
own work – Full Year grace period.
A subsequent disclosure by anyone else is
not prior art with respect to subject matter
in an inventor’s earlier public disclosure –
the First to Publish (FTP) grace period

17
§102(b)(2)(B)
Exceptions for PF art
If earlier than “effective filing date”
An earlier patent filing under §102(a)(2) is excepted if:
(A) “the subject matter disclosed was obtained directly or
indirectly from the inventor or a joint inventor“ or
(B) “the subject matter disclosed had, before such subject
matter was effectively filed under subsection (a)(2), been
publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint 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 the same person or subject to
an obligation of assignment to the same person.”
17
The inventor’s co-workers and
research collaborators patent filings.
The inventor’s own work – Full year +
grace period.
Earlier patent filings of others to the
extent of inventor’s public disclosures
before such filings – FTP grace period.
§102(b)(2)(A)
§102(b)(2)(C)

FITF Prior Art under the AIA
Domestic
Not “PF” Prior Art:
Abandoned Applications
Applications with secrecy orders*
Unconverted Provisional
Applications*
Not “PA” Prior Art:
Offers for Sale
“Secret” Prior Art
Patent Filing (“PF”)
Prior Art - 102(a)(2)
Later US Patent, Published
Application, or
“Deemed Published” 122(b)
Publicly Available (“PA”)
Patented Printed Publication
Public Use
On Sale Otherwise available
18

FITF Prior Art under the AIA
International
Publicly Available “PA”
Patent Filing “PF”
PCT Applications designating US
Now “PA” prior art:
In use or on sale
OUTSIDE the US - if publicly accessible
Not “PF” prior art:
Foreign Appls/PCT Appls
Not filed in/designating the US
19

20
Scenario 1.1: invents first and files first before
Party
Party
AIA RESULT: No change from current First To Invent (FTI)
wins
20
The FITF “Scenarios” under the AIA

21
Scenario 1.2: invents first, but files first
Party
Party
AIA RESULT: Change from FTI – Old 102(a)/(g)
loses can no longer swear behind or win by
interference – now must “publish ahead” to
establish a First-To-Publish (FTP) Grace Period
21

22
Scenario 1.3: invents first, files first, but establishes
FTP Grace period by publishing before files
Party
Party
A’s FTP Grace
AIA RESULT: No effective change – New 102(b)(2)(B)
wins FTP Grace period exempts filing even
though it is before filing
22
1 year max FTP Grace

23
Redline of New 102 with Old 102
23
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless —
(a) the invention was known or used by others in this country, or patented or described in a printed
publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) (1) the claimed invention was patented or described in a printed publication, in this or a foreign
country or in public use, or on sale in this country, or otherwise available to the public more than one year
prior to the date of the application for patent in the United States before the effective filing date of the
claimed invention; or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s
certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of
the application for patent in this country on an application for patent or inventor’s certificate filed more
than twelve months before the filing of the application in the United States, or
(e) (2) the claimed invention was described in a patent issued under section 151,— (1) or in an application
for patent, published or deemed published under section 122(b), by another filed in the United States
before the invention by the applicant for patent or (2) a patent granted on an application for patent by
another filed in the United States before the invention by the applicant for patent, except that an
international application filed under the treaty defined in section 351(a) shall have the effects for the
purposes of this subsection of an application filed in the United States only if the international application
designated the United States and was published under Article 21(2) of such treaty in the English language;
or in which the patent or application, as the case may be, names another inventor and was effectively filed
before the effective filing date of the claimed invention.
(f) he did not himself invent the subject matter sought to be patented, or
(g) (1) and (2) [Interference provisions]

24
Summary Comparison of New 102 with Old 102
Subsection New 102 Old 102 Notes on Changes
Non-Patent Art New 102(a)(1) Old 102(b) Changes definition based on “publicly available” approach,
see New 102(b)(1) for first-to-publish (FTP) grace period
Patent Filing Art New 102(a)(2) Old 102(e) Applies to both US and PCT filings that designate US and are
published in 1 of 10 PCT official languages
Full Year and
FTP Grace for Non-
Patent Art
New
102(b)(1)
Old 102(b) Up to 1 year - for inventor’s own work full year, but for 3rd
party only after triggered by ‘publicly disclosed’ FTP
Full Year + and
FTP Grace for
Patent Filing Art
New
102(b)(2)
Old 102(a) Up to 1 year after publication - for inventor’s own work full
year after publication, but for 3rd party only after triggered
by FTP - replaces swearing behind
Joint Development New 102(c) Old 103(c) Expands “team” exception to both New 102/New 103
Abandoned -------- Old 102(c) Changes to abandoned w/out publication, see New 102(a)(2)
Foreign patent -------- Old 102(d) Hilmer doctrine gone as non-English priority filings okayed
Not the Inventor -------- Old 102(f) Replaced by definitions of inventor under New 100(f)
Interference -------- Old 102(g) Replaced by new derivation proceedings under New 135
24

25
First Inventor to File w/ Grace (FTFG) Will Be Different
Comparison of Two Filer Scenarios
FIG. 1 – Scenarios where both parties are seeking a patent
(based on hypothetical evaluation of weighted likelihood of 200 typical
fact patterns from “The Matrix” article at Cybaris IP Law Review)
See, http://web.wmitchell.edu/cybaris/wp-
content/uploads/2010/05/01.Pedersen.05-12-10-
vFINAL.WITHAPPENDIX.pdf
25

Comparison of One Filer Scenarios
FIG. 2 – Scenarios where only 1 party is seeking a patent
vFINAL.WITHAPPENDIX.pdf26

Comparison of Derivation Scenarios
FIG. 3 – Scenarios involving fact patterns with derivation issues
vFINAL.WITHAPPENDIX.pdf27

28
Open Questions for New 102:
The “Classic Coke®” vs. “New Coke®” Challenge
Patenting “Secret Prior Art”
Can long-held trade secrets
be considered for patenting
under FTFG?
Prior User Rights Under 273(g) Invalidity-
A patent shall not be deemed to be invalid
under section 102 or 103 solely because a
defense is raised or established under this
section.’
Does the AIA overrule Metalizing
Engineering?
• Coca Cola Classic recipe is
secret prior art
• Possible to file for patent but
trade secret protection for
120+ years makes this unlikely
• There are Prior User rights
• New Coke recipe is also secret
prior art
• Prior User Rights lost by Coke
as to anyone else patenting
New Coke recipe due to
abandonment for 18 months

29
Tips/Pointers for Transition
“Mind the Gap”
Pre-FTFG Transition
(Before 3/16/2013)
• First To Invent
• Ability to Swear Behind
• 1 Year Grace/Statutory Bar
• Team Exception
(at time of invention)
Post-FTFG Transition
(After 3/15/2013)
• First To File w/ Grace
• First To Publish Grace Period
(for 3rd Party NPL/Patent Filing)
• Full Year+ Grace Period
(for Work by/from Inventor)
• Expanded Team Exception
(at time of filing)
Avoid unintentionally bridging between FTI and FTFG
• For provisional-to-utility conversions
• For parent-to-child CIP applications
29

30
The Proposed FITF Rules
Symmetry is a Good Thing
“Available to the
Public”
•PA Art under 102(a)(1)
beyond:
•Printed publication,
•In Public Use
•On Sale
“Publicly
Disclosed”
•FTP Grace under
102(b)(1/2)(B)
•By inventor
•For inventor
•From Inventor
Intersection of
102(a)(1) and
102(b)(1/2)(B):
• Equivalent
30
Thus, the Office is treating the term “disclosure” [as
used in 35 U.S.C. 102(b)] as a generic expression
intended to encompass the documents and
activities enumerated in 35 U.S.C. 102(a).
Fed. Reg. Vol. 77, No. 144, pp. 43763-74.

31
Disclosure Requirements for Priority and Exceptions
31
• Applicant proactive approach of identifying:
– Earliest Priority and which law applies, AIA or pre-AIA,
to which claims
– Any FTP Grace Periods or Exceptions
– Evidentiary presumption advantages if this is done
within 4 months of filing
– Proposed Rules 1.55, 1.77, 1.78
• Presumptions/penalties on proving entitlement are the
right incentives to encourage early identification and
assertion of these issues

32
Narrow vs. Broad Construction for 3rd Party FTP Grace
“Publicly
Disclosed”
Enabled
Meets
Section 112
Standards
Inherency
Express and
Implied
Disclosure
Obviousness
What POSITA
would know
Anticipation
Only Express
Disclosures
32
Even if the only differences
between the subject
matter in the prior art
disclosure that is relied
upon under 35 U.S.C.
102(a) and the subject
matter publicly disclosed
by the inventor before such
prior art disclosure are
mere insubstantial
changes, or only trivial or
obvious variations, the
exception under 35 U.S.C.
102(b)(1)(B) does not
apply.
Fed. Reg. Vol. 77, No. 144,
pp. 43767

33
A’s FTP sub(B) Grace Period
Scenario 10.1: publishes A+B+C first, but files for A+B+C’ after
publicly discloses A+B+C’ where C’ is obvious/trivial variation
Party
Party
Under narrow construction, FTP sub (B) grace will
not remove disclosure with respect to C’
Different Result?:
“broad” FTP sub(B) grace
sub(B) doesn’t apply
“narrow” FTP sub(B) grace

34 34
• Inventor’s Own disclosures under sub(A) treated
differently than 3rd party disclosures under sub(B)
• Guidelines create an entirely new standard
– “insubstantial change” or “trivial variation”
• Is sub(B) standard applied to disqualify all or only a
portion of the intervening art?
– Just the differences in intervening art “that is relied
upon” can disqualify the exception
• Can intervening art be used in obviousness rejection as
the motivation to combine?
Problems with Asymmetric, “Narrow” Construction

35 35
§ 102. Conditions for patentability; novelty.
(a) NOVELTY; PRIOR ART. – A person shall be entitled to a patent unless–
(1) 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; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section
122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) EXCEPTIONS. –
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. – A [grace period public] disclosure made 1 year or less before the
effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if –
(A) the [grace period public] disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such [grace period public] disclosure, been publicly disclosed by the inventor or joint inventor or another who
obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS. – A [grace period patent filing] disclosure shall not be prior art to a claimed invention under subsection
(a)(2) if –
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such [grace period patent filing] subject matter was effectively filed under subsection (a)(2) [as determined
pursuant to section (d)], been publicly disclosed by the inventor or joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a
joint 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 the same person or
subject to an obligation of assignment to the same person.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS. – Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to
an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that
was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART. – For purposes of determining whether a patent or application is prior art to a claimed invention under subsection
(a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application –
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing
date under section 120, 121 or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest of such application that describes the subject
matter.
Leahy-Smith America Invents Act, Pub. L. No. 112-29, §102(a)-(d), 125 Stat. 284, 285-86 (2011) (to be codified at 35 U.S.C. § 102(a)-(d)).
Interpreting “subject matter” and “disclosed”

Continuums of Invention
36
Interpreting “subject matter disclosed”
“Narrow” sub(B) FTP Grace “Broad” sub(B) FTP Grace

37 37
• Broad standard of “obvious variations” better
matches general public expectation of ‘grace”
• Same standard for both FTP sub(A) and sub(B)
exceptions encourages early publication
• Examiners already know how to apply the standard of
“patentably distinct” to determine whether exception
applies
• Eliminates need for Applicants to police
derivation/variation issues in their publications
• Preserves Office resources by avoiding a deluge of
derivation declarations and petitions
Better Approach is a Symmetric, Broad Construction

38
Scope of Patent Filing Prior Art:
What Is “Described In” for 102(d) Prior Art Filing Date?
“Described
In”
Enabled
Meets
Section 112
Standards
Inherency
Express and
Implied
Disclosure
Obviousness
What POSITA
would know
Anticipation
Only Express
Disclosures
38

39 39
• Always File First!!!
• Whether to Publish or Not to Publish
• Proactively using FTP Grace
• String Provisional Patent Filings
• How to improve your odds of getting
an “effective filing date”
• Bridging the Gap
• Whether and how to intentionally
cross-over the Ides of March cutover
Suggested FITF Strategies
Key Issues for Consideration

40
The New 102 - FTFG:
Theory vs. Practice
Idealized
Patent Filing
Fully Complete
Disclosure with
no Additional
Development
Always Filed
Before Any
Public Availability
First-to-Publish
(FTP) Grace
Period Not Used
Reality for
Most Corps.
Initial Invention
Disclosure with
Subsequent
Development
Filed After
Approval By
Patent Review
Committee
Limited Use of
Provisional/FTP
Grace Based on
Product Release
Reality for
Startups
Initial Concepts
with Subsequent
Development
Patent Filings
Efforts
Competing with
Fund Raising
Typical Use of
Provisional
Filings to
Minimize Cost
Reality for
Universities
Research
Concepts Instead
of Product
Concepts
Patent Filings
Contend with
Demands of
Publish or Perish
Will Make Most
Use of
Provisional/FTP
Grace
40

41
So, What Happens to Patent Applications?
Less Complicated:
< 50 claims
< 3 priority claims
1 inventive entity
More Complicated:
> 49 claims
> 2 priority claims
> 1 inventive entity
AFTER THE TRANSITION
Less Complicated Cases will be Easier
More Complicated Cases will have More Options and Expense
So, expectation is there will be a relative increase in Less Complicated Filings

42
Changes Impact Different Technologies Differently
42

How Long Will It Take For the Courts
To Get Up to Speed on the AIA?
Sept 2011
AIA Enacted
Sept 2012
New Post
Issuance
Proceedings
March 2013
FTFG Starts
March 2014
1st FTFG
patents
start issuing
Sept 2015
Earliest
Possible
PTAB ruling
on a PGR
case
Sept 2016
1st District
Court Cases
Completed*
and
1st CAFC
Appeal on
PTAB-PGR
Sept 2017
1st Federal
Circuit
Rulings on
Litigated
Cases
43

The New Post Issuance Proceedings
44

Federal
Circuit
PTAB
CRUExamination
Corps
Reexamination
Reexamination
Applicant
Appeal
Review
Proceedings
The New Post Issuance Proceedings
USPTO

Why Replace Inter Partes Reexam (IPX) Proceedings?
46

47

48
• Too Long
– IPX proceedings were like old
friends – it took a long time to
grow them
– Average of 5.6 years from IPX
filing to BPAI decision
• Too Little Input
– IPX proceedings at the Central
Reexam Unit (CRU) prohibit oral
discussions with Examiner
• Too Complex/Uncertain
– Many issues had to be
petitioned not appealed

49

Post Issuance Proceedings under the AIA
Five Different Regimes and Three Different Standards
Ex Parte
Reexam
and Older
Inter Partes
Reexams
(EPX/IPX)
Standard
SNQ
plus IPX only
post Nov
1999
IPX Filed
before
9/16/2011
Cutover
Inter Partes
Reexams
(IPX)
Standard
RLP
plus post
Nov 1999
Filed
between
9/16/11
and
9/16/12
New Inter
Partes
Reviews
(IPR)
Standard
RLP
for
All patents
Filed after
9/16/12
and
After 9 mos.
1st Window
New Bus
Method
Patent
Review
(CBM)
Standard
MLPTN
plus
Defendant*
Filed after
9/16/12
but
Before 9
mos.
1st Window
New Post
Grant
Review
(PGR)
Standard
MLPTN
For
FTFG patent
Filed after
3/16/13
but
Before 9
mos.
1st Window
50

51
Post Issuance Proceedings Comparison
Ex Parte
Reexam
Inter Partes
Reexam (rev.)
Inter Partes
Review (new)
Post-Grant Review (PGR)
(new)
SEC. 18 Proceeding
(new)
Threshold
& Pleading
• 35 USC §303(a)
(current law):
Substantial new
question of
patentability (SNQ)
•Reasonable likelihood
of prevailing (RLP)
•SNQ continues to
apply to pre-9/16/11
requests
• 35 USC §314(a): RLP
• 35 USC §315(a): Has
not “filed” a civil action
challenging validity
• 35 USC §324(a):“More likely
than not” (MLTN) that at least 1
claim is unpatentable
• §325(a): Must not have filed a
civil action challenging validity
• SEC. 18(a)(1)(B) : must be
sued or charged with
infringement
• Otherwise same as PGR
Estoppel:
•Civil actions
•ITC
•PTO
• None 35 USC §315(c)
(current law): “Raised
or could have raised”
Applies to civil actions,
not ITC
Also not PTO
• 35 USC §315(e)
• “Raised or reasonably
could have raised”
(RORCHR)
• May not “assert” issue
• Final written decision
• Civil actions, ITC & PTO
• 35 USC §325(e)
• RORCHR
• May not “assert” issue
• Final written decision
• Civil actions ITC & PTO
• SEC. 18(a)(1)(D)
• Any ground “raised” (not
RORCHR)
• Otherwise same as PGR
Patents
Covered
All Filed Post Nov 1999 All patents Only FTFG patent issued under
the AIA
• SEC. 18(a)(1)(A) & (d)
• “Covered business
method patents”
• Not “technological
inventions”
Scope, Grounds,
Bases
• 35 USC §§302
and 301 (current
law): Patents and
printed
publications
• 35 USC §§311(a)
and 301 (current law):
Patents and printed
publications
• 35 USC §311(b):
Patents or printed
publications
• 35 USC §312(a)(3)(B):
Can be supported by
expert opinions,
affidavits, etc.
• 35 USC §321(b): Issues relating
to invalidity under §282(b)(2) or
(3)
• 35 USC §324(b): Novel or
unsettled question important to
other patents or patent
applications (does not require
MLTN)
•Same as PGR
When • Any time • Any time • 35 USC §311(c)
• After later of:
• 9 months after
issuance (reissuance); or
• PGR is terminated
• 35 USC §321(c): ≤9 months
after issuance (or reissuance)
• 35 USC §325(f): No challenge
to non-broadened reissue claims
after original 9-month PGR period
• SEC. 18(a)(1)(B)
• Any time after suit or
charge of infringement
51

How Long Will Review Proceedings Take?
52

53
How Will Review Proceedings be Used?
53

Other New Post Issuance Proceedings
• Supplemental Examination
– New route into ex parte reexam (EPX)
– Allows owner to cleanse patent
– But attorney will not be cleared
– Final Rules
– Expensive - $17K to file for up to
10 items with $13K refunded if no
EPX
– Requires explanation of relevance
of each item
– Summarize items over 50 pages
– EPX fees increased to $17K
– Initial Filings are lower than
expected and most are running
afoul of technical rules
54
Forgive me,
Patent
Office, for I
have …

So now you know!
The AIA is more complicated than 3D Chess!
55

Thank You!
About Brad Pedersen
Brad Pedersen is a patent attorney with more than 25 years of experience in patent law, engineering,
business and entrepreneurship. He is a partner and the chair of the patent practice group at Patterson
Thuente Christensen Pedersen, P.A., an intellectual property law firm in Minneapolis, Minnesota. Brad
concentrates his practice in the areas of high-technology, computer, software and medical device patent
prosecution strategy, licensing and litigation.
Brad is one of the more knowledgeable IP attorneys in the U.S. when it comes to the patent reform. Since
it was first introduced in 2005, he has actively followed the developments and debate surrounding patent
reform at the agency, legislative and judicial levels. He educates clients and colleagues by writing and
presenting on the imminent changes and strategies for dealing with the reforms.
A special thanks to Robert Armitage, Matt Rainey, Steve Kunin, Justin Woo, Christen Hansen, Tracy Dann,
Tim Bianchi and Michelle Arcand for their invaluable help on these materials.
Brad can be reached at pedersen@ptslaw.com or (612) 349.5774
About Patterson Thuente IP
Patterson Thuente Christensen Pedersen, P.A. helps creative and inventive clients worldwide protect, and
profit from, their ideas. Practicing in the areas of patents, trademark, copyright, trade secrets, IP litigation,
international IP protection, licensing and post-grant proceedings, the firm’s attorneys excel at finding
strategic solutions to complex intellectual property matters.
Visit us online at www.ptslaw.com.
56

57
Scenario 1: and both file, but neither publishes
Scenario 2: publishes and files, but only publishes
Scenario 3: and both publish and file
Scenario 4: claims priority to OUS filings
Scenario 5: has non-published patent filing
Scenario 6: and have cases with varying disclosures
Scenario 7: derives from
Scenario 8: and are working together/sharing info
Scenario 9: and are bridging “the Gap”
Scenario 10:
Scenario 11:
Party Party
First Inventor to File w/ Grace (FTFG) -
Scenarios of How New 102 works under FITF

58
Scenario 2.1: invents first and files first before is
publicly available
Party
Party
No change from FTI
AIA RESULT:
wins

59
Party
Scenario 2.2a: invents first, but files after has itself
been publicly available for more than 1 year
A’s Full Year Grace
No effective change – New 102(b)(1)(A)
public actions are outside Full Year Grace
period for actions by/for or derived from inventor
AIA RESULT:
wins

60
Party
Scenario 2.2b: invents first, but files after has itself
been publicly available for less than 1 year
A’s Full Year Grace
public actions are inside Full Year Grace
period for actions by/for or derived from inventor
AIA RESULT:
wins

61
Scenario 2.3: invents first, but files after has been
publicly available for more than 1 year
Party
Party 1 year
AIA RESULT: No change from FTI
loses

62
Scenario 2.4a: invents first, but files after has been
publicly available for less than 1 year
Party
Party
1 year
AIA RESULT: Change from FTI - New 102(b)(1)(B)
loses 3rd party First To Publish (FTP) Grace period
only if makes invention publicly available

63
Scenario 2.4b: invents first and publishes first, but files after
has been publicly available for less than 1 year
Party
Party
A’s FTP Grace
1 year
Change from FTI - New 102(b)(1)(B)
If is publicly available for less than 1 year and
before is publicly available – inside FTP Grace period
AIA RESULT:
wins

64
Scenario 2.4c: invents first, but publishes and files after has
been publicly available for less than 1 year
Party
Party
1 year
A’s FTP
AIA RESULT: Change from FTI - New 102(b)(1)(B)
loses If is publicly available for less than 1 year but
after was publicly available – outside FTP grace period

65
A’s FTP Grace
B’s FTP Grace
Scenario 3: invents first, publishes first and files before
files or is publicly available for less than 1 year
Party
Party
1 year
AIA RESULT: No effective change – New 102(b)(1)(B)
wins FTP Grace period (exempting public
activity) is before FTP Grace period

66
Scenario 4.1a: files US application after claimed
priority in PCT/US case published in English
1 year Paris
Party
Party
18 mo nat’l stage
Filed as nat’l case
in any language
Filed as PCT/US
in English
No effective change – New 102(a)(2)
PCT filing designating the US is given the earlier effective
filing date (even if B doesn’t enter national stage in the US)
AIA RESULT:
wins

67
Scenario 4.1b: files US application after priority in
PCT/US case published in any PCT language
1 year Paris
Party
Party
18 mo nat’l stage
Filed as PCT/US in
any PCT language
in any language
AIA RESULT: Change from FTI – New 102(a)(2)
loses PCT filing no longer has to be in English
(Current - Arabic, Chinese, English, French, German,
Japanese, Korean, Portuguese, Russian, and Spanish)

68
Scenario 4.2a: files US application after priority date
but before is published as national case
Party
Party
18 mo publication
Published as
nat’l case
in any language
patent publication alone other than by US
or PCT is not prior art to as of priority date
Doesn’t
matter if
patent
issues or
not
AIA RESULT:
wins

69
Scenario 4.2b: Same as 4.2a, except invented first and
case is patented
Party
Party
18 mo publication
Published in
any language
Filed in any language Patented in
any language
patent outside of US or PCT/US case is only prior
by US art to as of issue date – In re Ekenstam.
MPEP 2126.
AIA RESULT:
wins

70
Scenario 5: invents first and files first, but case is
never published or issued
Party
Party
Request for non-publication or
non-converted provisional Abandoned
patent application is not prior art because
it never publishes and is equivalent to
abandoned aspect of Old 102(g)
AIA RESULT:
wins

71
Scenario 6.1a: invents X + Y and invents X +Z -
Y and Z are patentably distinct from X alone
Party
Party
and
both win

72
Scenario 6.1b: Same as 6.1a, except invents X + Z before
invents X + Y
Party
Party
AIA RESULT: Change from FTI – Old 102(a)/(g)
and But wins patent to X instead of , who wins
both win under FTI by swearing behind or interference

73
Scenario 6.1c: Same as 6.1b, except Y’ Z’ are patentably
indistinct when added with X
Party
Party
Change from FTI for X – Old 102(a)/(g)
wins patent to X instead of , and filing
is now patent filing prior art to for X + Z’
AIA RESULT:
Only wins

74
Scenario 6.1d: Same as 6.1b, but Y” Z” are distinct when
added with X, but indistinct from each other
Party
Party
Change from FTI – Old 102(a)/(g)
wins patent to X instead of , and cannot
swear behind filing for X + Y” for X + Z”
AIA RESULT:
Only wins

75
Scenario 6.2a: files provisional with X and then utility with
X Y, files utility with X Z before utility
Party
Party
1 year conversion deadline
No change from FTI
If X + Y and X + Z patentable over X and each
other, prov. only defeats claim to X
and filing, while prior, does not defeat
AIA RESULT:
and
both win

76
Scenario 6.2b: Same as 6.2a, except invents X + Y before
invents X + Z
Party
Party
No change from FTI
Same as 4.1a, invention date does not
change this example where Y and Z are
patentably distinct when added to X
AIA RESULT:
and
both win

77
Scenario 6.3a: Same as 6.2a, but Y” Z” are distinct when
added with X, but indistinct from each other
Party
Party
No effective change
filing for X + Z” now defeats claim to
X + Y” instead of being unable to swear
behind earlier invention of X + Z”
AIA RESULT:
and
both win

78
Scenario 6.3b: Same as 6.3a, except invents X + Y” before
invents X + Z”
Party
Party
Change from FTI – Old 102(a)/(g)
filing for X + Z” now defeats claim to
X + Y” instead of being unable to swear
behind earlier invention of X + Z”
AIA RESULT:
and
both win

79 79
Scenario 6.4a: Same as 6.2a and 6.2b, except that
publishes X Y before files with X Z
and Same result as 4.2a and 4.2b – FTP grace
both win period doesn’t change results
Party
Party
A’s FTP

80
Scenario 6.4b: Same as 6.4a, except that publishes X, Y
and Z before files with X and Z
Party
Party 1 year conversion deadline
A’s FTP
Change from FTI – New 102(b)(1)(B)
wins patent to X+Z and X+Y instead of
because uses FTP grace period to trump
AIA RESULT:
Only wins

81
Scenario 6.4c: Similar to 6.3a and 6.3b, except publishes
X Y” before files and files for X Y” Z”
Party
Party
A’s FTP
Change from FTI – New 102(b)(1)(B)
wins patent to X+Z” instead of
because uses FTP grace period to trump
AIA RESULT:
Only wins

82
Scenario 7.1: invents first and files not more than 1 year
after , but derived invention X from
Party
18 mo publication 1 year grace
A’s Full Year+ Grace
“Anticipation-type” derivation will definitely
be protected under the AIA
AIA RESULT:
wins
Party

83
Scenario 7.2: invents first and files not more than 1 year
after , but derived invention X from
Party
Party
18 mo publication 1 year grace
A’s Full Year+ Grace
Change – New 102(b)(2)(A)
“Obviousness-type” derivation will also
be protected under the AIA (based on Final Rules)
AIA RESULT:
wins

84
Scenario 8.1: invents first and files after , but and
work for same company
Party
Party
Same Company
Change from FTI – New 102(b)(3)
filing for X + Y” is not prior art to claim both win
to X if and are at same company as of
filing date; compared to invention date for FTI
AIA RESULT:
and

85
Scenario 8.2: invents first and files after , but and
are parties for CREATE Act joint development
Party Create Act JDA
AIA RESULT: Change from FTI – New 102(c)
and filing for X + Y” is not prior art to claim
both win to X if and are under JDA as of
filing date; compared to invention date for FTI
Party

86
Scenario 8.3a: invents first and shares information
informally with before filing, does sharing
constitute “PA” prior art under 102(a)(1)?
Party
AIA RESULT: No Effective Change
should disclosure of X to in an “informal” context is not
still get patent prior art to because it falls under 102(b)(1)(A) exception
as inventor’s own work
Party

87
Scenario 8.3b: invents X first and shares X informally
with before filing, but publishes X before
files within 1 year of publishing?
Party
AIA RESULT: No Effective Change
should disclosure of X to in an “informal” context is not
still get patent prior art to because it still falls under 102(b)(1)(A) exception
as indirectly attributable to inventor’s own work
Party

88
Scenario 8.3c: invents first and shares X informally with B
before filing, but now conceives of Y and
publishes X and Y before files?
Party
AIA RESULT: Change – B’s publication of X and Y is PA art under 102(a)(1)
should get disclosure of X to in an “informal” context is not
X but not prior art and still falls under 102(b)(1)(A), but publication
X and Y of Y will be PA prior art under 102(a)(1)
Party

89
Scenario 8.3d: Same as 8.3c, but and execute CREATE
JDA before files?
Party
AIA RESULT: Change – A’s publication of X and Y is not exempt
should get disclosure of X is not PA prior art under 102(b)(1)(A),
X but not but publication of Y will be PA prior art under 102(a)(1)
X and Y as the “team” exception of the JDA only applies to PF art
Party
Create Act JDA

90
Party
Scenario 9.1: New Matter Added From Provisional to Utility
March 16, 2013
FTI
FTFG
+102(g)
AIA RESULT: Changeover from FTI to FTFG
can claims for X + Y are evaluated under FTI unless
Patent Both also includes claims to X + Y + Z, then both claims
are evaluated under FTFG + 102(g) - AIA Sec 3(n)

91
Party
Scenario 9.2: New Matter Added After 3/16/13 but not claimed
March 16, 2013
Party
91
No Change because FTI applies
wins patent to X+Y governed by FTI and
can swear behind
AIA RESULT:
wins

92
Scenario 10.1: files a provisional claiming A+B before conceiving
of A+B+C, then files a utility claiming A+B and A+B+C after 3/16/13
Party
AIA does applies to both claims
Under Sec. 3(n)(1)(A), the AIA applies to any patent that
contains “a claim to a claimed invention that has an effective
date…” [after March 16, 2013]
RESULT:
PROV
March 16, 2013
Post 3/16/13 effective date
Addition of C is non-obvious
Pre 3/16/13
effective date

93
Party
is entitled to the patent for A+B, not A+B+C
Under the AIA, cannot swear behind publication of
A+B+C despite being the first inventor
RESULT:
PROV
March 16, 2013
Party

94
Party
is entitled to the patent for A+B and A+B+C
Under the AIA, publication removes publication of
A+B+C under 102(b)(1)(B)
RESULT:
PROV
March 16, 2013
Party

95
Party
Under the narrow construction of 102(b)(1)(B), publication
of A+B+C’ remains prior art despite publication of A+B+C
RESULT:
PROV
March 16, 2013
Party
C’ is an obvious
variation of C

96
of A+B+C, then files a utility claiming A+B and A+B+C after 3/16/13.
files a utility for A+B+C before files its utility
Party
Under the AIA, cannot swear behind filing date, nor is
application prior art to
RESULT:
PROV
March 16, 2013
Party

97
Party
is entitled to the patent for A+B and for A+B+C
Under both a narrow or broad construction of 102(b)(2)(B),
publication removes filing as prior art to application
RESULT:
PROV
March 16, 2013
Party

98
Party
AIA does not apply to either patent
Under Sec. 3(n)(2)(A), the existing law applies to any patent
that refers to “a claim to a claimed invention that has an
effective date…” [before March 16, 2013]
RESULT:
PROV
March 16, 2013
Party
Pre 3/16/13
effective date
Interference
via 102(g)

99
of A+B+C, then files a utility claiming only A+B+C after 3/16/13.
Party
AIA does not apply to either patent
Under Sec. 3(n)(2)(A), the existing law applies to any patent
that refers to “a claim to a claimed invention that has an
effective date…” [before March 16, 2013]
RESULT:
PROV
March 16, 2013
Party
Pre 3/16/13
effective date
No Interference via
102(g) – no claim
that triggers pre-AIA

The American Invents Act (AIA)

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