US Patent Reform 2011. American Invents Act. FTFG. Old vs. New. First-to-Publish.

1. 7/13/20181
Update on Patent Reform
Brad Pedersen
July 13, 2011
US Patent Reform 2011
American Invent Act
FTFG
Old vs. New
First-to-Publish

2. SM
© 2011 Patterson Thuente Christensen Pedersen, P.A., some rights reserved - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal
advice. Seek competent legal counsel for advice on any legal matter.
Update on Patent Reform
July 13, 2011

3. US Patent Reform 2011: The America Invents Act
Bills have passed
S.23 bill passed Senate (95 – 5)
H.R.1249 passed House (304-117)
White House fully supports (but Pelosi does not)
Two bills are mostly similar other than Fee Diversion issue
The final push
Chief Judge Rader said in April that patent reform is a stalking
horse for debt ceiling debate
Once debt ceiling issue is resolved, Senate expected to pass
H.R.1249 instead of using a conference committee
Director Kappos has said that PTO can live with House version
of fee-setting authority
July 13, 20183

4. US Patent Reform 2011: The America Invents Act
Main provisions
Moves U.S. to a first-to-file with one-year grace period
Introduces several new Post-Issuance Proceedings (PIPs)
• Run by APJ’s instead of USPTO
• Faster due to statutory time limits
Provides for meaningful third party submission options
Controversial patent litigation provisions dropped, except for:
• Limits on patent marking lawsuits
• Limits on joinder of multiple defendants
• Limits on using best mode as a defense
July 13, 20184

5. 5
America Invent Act Will Introduce ...
A Gaggle of PIPs (Post Issuance Proceedings)
Old PIPs Changes
Interferences Phased out over 4
years
Reissue Unchanged
Ex Parte
Reexams
Expanded access via
IC Absolution & Bus
Method Review
Inter Partes
Reexams
Phased out over 4
years
New PIPs Features
Derivations Used to resolve first-
to-file “theft” issues*
Post Grant
Review
Challenges during 1st
Window on any basis,
run by APJ
Inter Partes
Reviews
PGR-like process that
replaces Inter Partes
reexams, can be after
1st Window
IC Absolution Absolves patent of
Inequitable Conduct
Bus Method
Review
Easier reexams for
party sued on these

6. US Patent Reform 2011: The America Invents Act
Fee Setting/Retention Issues
Both bills give USPTO fee-setting authority
S.23 gives USPTO authority to spend what it collects
H.R.1249 only gives authority to spend what is budgeted
H.R.1249 adds revolving account for fees collected over
budgeted amounts
• Concern is whether USPTO can access account without
further action by Congress
• Also, technical issues on how “scoring” of the funds over
budgeted amounts are handled
House Appropriations Committee passed FY2012 funding of
USPTO at $2.7B – 28% increase from FY2011
• Expect final passage to give USPTO guarantee of access
for at least a couple of years
July 13, 20186

7. July 13, 20187
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)
FTFG Will Be Different – Two Filer Scenarios

8. FTFG Will Be Different – One filer scenarios
July 13, 20188
FIG. 2 – Scenarios where only 1 party is seeking a patent
See, http://web.wmitchell.edu/cybaris/wp-
content/uploads/2010/05/01.Pedersen.05-12-10-
vFINAL.WITHAPPENDIX.pdf

9. 9
The “New” Section 102
New 102(a)(1) = Old 102(b), minus 1 year limit
New 102(a)(2) = Old 102(e)
New 102(b)(1) = New Grace Period Exception for 102(a)(1)
New 102(b)(2) = New Grace Period Exception for 102(a)(2)
New 102(c) = Joint Development Exceptions
New 102(d) = Effective Date of Prior Patent Art – earliest date that
application “describes the subject matter”
All of the other current 102 sections will be gone
102(a) – invention by another
102(c) – abandoned
102(d) – foreign patent
102(f) – not the inventor
102(g) - interference

10. 10
Comparison of Old vs. New 102

11. 11
Comparison of Old vs. New 102(a)
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]

12. 12
New 102(a)
`(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.

13. 13
New 102(b)(1)
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE
EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A 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 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.

14. 14
New 102(b)(2)
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A
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;
`(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.

15. 15
Best Practice in view of First-to-Publish
Take advantage of first-to-publish exception of 102(b)(1/2)(B)
File provisional based on invention disclosure – ASAP
Take time to review provisional and publish “expanded” version
that “discloses” alternates to trigger broadest grace period
Before “publishing” to invoke grace period, if OUS protection
desired, file second provisional
OPTIONAL - If additional non-obvious variations are identified
through further developments and/or research, consider filing a
third provisional with any such additional material
Prepare and file utility by one-year date of first provisional
If OUS protection desired, have OUS cases claim priority to all
provisionals in this chain of “string provisionals”

16. April 07, 201112

17. Thank you!
Brad Pedersen / 612.349.5740 / pedersen@ptslaw.com
July 13, 201817