The America Invents Act Turns Traditional Patent Practices into a Thing of the Past

Gone with the Wind
The America Invents Act Turns Traditional
Patent Practices into a Thing of the Past

March 27, 2013
Jennifer Hoekel

© 2013 Armstrong Armstrong Teasdale LLP
© 2013 Teasdale LLP

Prosecuting Under the America Invents Act

 First Inventor to File (FITF); What happened to First to
Invent?
 Third Party Submissions.
 Supplemental Examination.
 Fees and Fast Track.
 Micro-Entities.

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© 2013 Armstrong Teasdale LLP

FIRST INVENTOR TO FILE
— What Happened To First To Invent? —
Section 3 of the AIA
Before After
a) Publicly known or used in US or published anywhere (a)(1) Patented, published, in
before date of invention. public use, on sale or
b) Published anywhere or on sale in US more than 1 year “otherwise available to the
before filing. public” before effective filing
date or
c) Abandonment.
(2) an earlier filed issued
d) Foreign filing more than one year prior. patent or published
e) Secret prior art. application to another
inventor.
f) Not the inventor.
(b) – (g) eliminated.
g) Made by another who didn’t abandon, suppress or
conceal (interferences). Subject to one year grace period
exceptions.

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© 2013 Armstrong Teasdale LLP Effective: March 16, 2013.

-Pre v. Post AIA 102-
Pre-AIA 35 U.S.C. 102 AIA 35 U.S.C. 102
A person shall be entitled to a patent unless— Concordance
(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 102(a)(1)
(b) The 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,
more than one year prior to the date of the application for patent in the United States, or

(c) He has abandoned the invention, or
Abandonment of invention No corresponding
(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 provision
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
Premature foreign patenting
inventor’s certificate filed more than twelve months before the filing date of the application in the United States, or

(e) The invention was described in 102(a)(2)
(1) An application for patent, 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 than 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

(f) He did not himself invent the subject matter sought to be patented, or 101 and 115
Derivation
(g)
(1) during the course of an interference conduced under section 135 or section 291, another inventor involved therein establishes, to the
extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not No corresponding
abandoned, suppressed, or concealed, or
(2) Before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned,
provision
suppressed, or concealed it. Prior invention by another

4 USPTO AIA Public
Forum 3/15/13

Grace Period
Before After
One year grace period One year grace period
(b) Published anywhere or on sale in US more than 1 (b)(1) A disclosure made one
year before filing. year or less before the
(d) Foreign filing more than one year prior. effective filing date of the
claimed invention shall not
be prior art to the claimed
invention, if
(A) the disclosure was made
by the inventor or joint
inventor or derived from the
inventors or
(B) the subject matter had
first been disclosed by the
inventors or so derived.
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Grace Period

When does a disclosure within the grace period not constitute prior art?
A) If the subject matter was derived from the inventor or joint inventor.

B) The subject matter was previously publicly disclosed by the inventor, joint
inventor, or another who derived therefrom.

C) The subject matter disclosed and the claimed invention were owned by the
same person or subject to an obligation of assignment to the same person.

6


Common Ownership

 Common ownership is assumed when:

• 1) Developed under a joint research agreement in place before the
effective filing date;

• 2) Invented as a result of those joint research activities; and

• 3) Application names the parties to the agreement.

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Before After
Interferences Derivation Proceeding
• Determines first to invent. • Determines the true inventor with
• Provoked within one year of issuance right to file (not who was the first
or publication. inventor).

• Decided at BPAI. • Must be filed within 1 year of
publication of the derivative
• Appealable to Fed. Cir. application.
• PTAB decides.
• Appealable to Fed. Cir. or ED Va.

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Before After
• First to Invent. • First Inventor To File.
• Right to a patent is awarded to • Right to a patent is awarded to the inventor with the
an inventor establishing the earliest filed application . . .
earliest date of invention.
• Derivation Proceedings replace interferences.
• Interference proceedings.
• No ability to swear behind.
• Swearing behind priority dates.

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PATENT PROSECUTION AND STRATEGY CONSIDERATIONS
— First-to-File Considerations —

Before After
1) Delay filing to gather sufficient 1) Time is of the essence: file as soon as sufficient
data for broad claims. data for claims.
2) Delay filing until reduction to 2) File provisional application and reduce during
practice. 1yr period.
3) File provisional applications. 3) For applications being filed in the U.S. only:
4) File a comprehensive enabling public disclosure instead of
application. provisional applications is sufficient to give the
inventor priority.
5) Swear behind non-102(b) art.
4) File a series of provisionals during
development.
5) Monitor competitors (and prior art) and
anticipate advances in technology.
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THIRD PARTY SUBMISSIONS DURING PROSECUTION
— Scope of References Expanded —
Before After
• Third party could only submit • Patents and printed publications
patents or printed publications. may be submitted and requires a
• MPEP § 1134.01: “A submission concise description of relevance
under this section shall not include and a fee. No “explanation” is
any explanation of the patents or allowed.
publications, or any other • Timing: before the earlier of the
information.” Notice of Allowance, or the later of
• Limited to 10 patents/publications. (a) 6 months after publication or
(b) the date of first rejection of any
• Timing: the earlier of within two claim of the application.
months of publication or prior to
Notice of Allowance.
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Effective: September 16, 2012 and includes all pending cases.

SUPPLEMENTAL EXAMINATION
— NEW Post-Issuance PTO Proceeding —
Before After
• Inequitable • Supplemental Examination Permits the Patent Owner to:
conduct or • Request supplemental examination to consider, reconsider or correct
invalidity any information believed to be relevant to the patent.
raised as a
defense in • Cannot correct material fraud.
litigation. • Has the potential to eliminate prior art, §112, and inequitable
conduct litigation defenses.
• Must request before an allegation of inequitable conduct is “pled with
particularity” in a civil case.
• High filing fee – proposed at $5,180 + $16,120
Strategy Consideration (Litigation): Twombly or FRCP Rule 9 motion to dismiss
complaint and if successful request supplemental examination.

12


SUPPLEMENTAL EXAMINATION
— NEW Post-Issuance PTO Proceeding (continued) —

Before After

• Practice Point: Reissue may be a better option if material
being submitted raises a substantial new question of
patentability.  Can ask for it without claiming error.
• PTO could institute an ex parte reexam under supplemental
examination, limiting the enforceability of the patent and
possibly resulting in narrowed, or canceled claims
• Could create intervening rights problem.

13


FAST TRACKS
— New Opportunities —
Sections 25 and 11of the AIA
 Section 25 of the AIA has authorized the PTO to prioritize
examination for applications important to the economy or
national competitiveness, without charging additional fees
for prioritization (similar to existing practices for “green”
technologies).
 Section 11 establishes a $4,800 fee for Track 1 Prioritized
Examination. Final disposition (final rejection or allowance)
within one year.
 Accelerated Examination remains.

14


MICRO-ENTITIES
— New Opportunities —
 Patent applicants designated as “micro entities” under the
AIA are entitled to a 75% reduction in certain fees paid to the
Office.
• The reduced fees are for filing, search, examination,
extension fees, issuance and appeal of applications, patent
maintenance fees, and certain PCT filing fees.
• Micro Entity Fees:
− Basic Filing, Search, and Exam of Utility Application: $400
− Issue Fee: $445

15


MICRO-ENTITIES
— Who Qualifies —

• An Applicant Can Qualify for Micro Entity Status in One of
Two Ways:

• “Gross Income” basis under 37 C.F.R. § 1.29(a).
OR
• “Institution of Higher Education” basis under 37 C.F.R. §
1.29(d).

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MICRO-ENTITIES
— Gross Income Basis —
 An applicant may qualify as a micro entity if:

1. The applicant qualifies as a small entity;

2. Neither the applicant nor the inventor nor a joint inventor has
been named as an inventor on more than four previously filed
applications;

3. Neither the applicant nor the inventor nor a joint inventor had a
gross income in the previous calendar year exceeding three
times the median household income; and

4. Neither the applicant nor the inventor nor a joint inventor has
assigned, granted or conveyed, or is under an obligation to
assign, grant or convey, a license or other ownership interest to
an entity that had a gross income in the previous calendar year
exceeding three times the median household income.
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MICRO-ENTITIES
-Institutions of Higher Education Basis-
 To establish micro entity status under § 1.29(d), the applicant must certify that:

1. The applicant qualifies as a small entity; and
2. (i) The applicant’s employer, from whom the majority of his or her income is
obtained, is an institution of higher education as defined in the Higher
Education Act of 1965; or
(ii) The applicant has assigned, granted or conveyed, or is under an obligation
to assign, grant or convey, a license or other ownership interest in the
application to such an institution of higher education.

 Non-profit research foundations, technology transfer organizations, and Federal
Government research laboratories do not qualify as “institutions of higher
education.”
18


What hasn’t changed?

1. Novelty and obviousness standards.
2. Enablement and written description requirements.

19


Changes in Litigation

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Litigating Under the America Invents Act

1. Prior Art: What happened to §102 and §103?
2. Marking.
3. Multi-Defendant Suits: Infringing the Same Patent Not
Enough.
4. Section 273 Defense: Not Just for Methods Anymore.
5. Interferences are OUT. Post-grant oppositions and inter
partes are IN.
6. Litigation Miscellaneous.
7. What hasn’t changed?
21


PRIOR ART
— What Happened to §102 and §103 —
Anticipation under 35 U.S.C. §102
Before After
a) Publicly known or used in US or published anywhere (a)(1) Patented, published, in
before date of invention. public use, on sale or
b) Published anywhere or on sale in US more than 1 year “otherwise available to the
before filing. public” before effective filing
date or
c) Abandonment.
(2) an earlier filed issued
d) Foreign filing more than one year prior. patent or published
e) Secret prior art. application to another
inventor.
f) Not the inventor.
(b) – (g) eliminated.
g) Made by another who didn’t abandon, suppress or
conceal (interferences). Subject to one year grace period
exceptions.

22


PRIOR ART
— What Happened to §102 and §103 —
Obviousness under 35 U.S.C. §103
Before After
Patent would issue unless subject All art that predates the effective filing
matter was obvious to one of ordinary date of the patent is relevant to
skill in the art in light of any §102 obviousness.
prior art.

23


FALSE MARKING
— Dramatically Restricted —
35 USC §292; Section 16 of the AIA
Before After
• Anyone can sue under qui tam. • US only can sue for statutory
• No competitive injury required. penalties.

• Expired patents were subject to false • Private suits require competitive
marking penalties. injury.

• Damages for each mismarked item • Damages are “recovery of damages
up to $500. adequate to compensate for the
injury.”
• Safe harbor for products marked
with expired patent numbers.

24


VIRTUAL MARKING
— Now Permitted —
Before After
• Only marking on the product itself, • Permits patentee to satisfy §287
or packaging when product could marking requirements by marking
not be marked, satisfied §287 article with "patent" or "pat." and
marking requirement. an internet address, accessible to
the public without charge, that
associates the patented article with
the patent number.

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Effective: September
© 2013 Armstrong Teasdale LLP 16, 2011.

MULTI-DEFENDANT LAWSUITS
— Joint and Several Liability —
Before After
• Common to file against unrelated • "only if" the right to relief against
defendants with unrelated products all the parties (1) "aris[es] out of the
for infringing the same patent. same transaction, occurrence, or
• E.g. NPEs (“patent trolls”). series of transactions or occurrences
relating to the making, using,
• 9/15 - at least 54 new patent cases importing into the United States,
were filed – accusing over 800 offering for sale, or selling of the
corporate entities of patent same accused product or process"
infringement. and (2) is based on common
questions of fact.

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Effective: September
© 2013 Armstrong Teasdale LLP 16, 2011.

SECTION 273 DEFENSE
— Prior User Rights —
35 U.S.C. §273; Section 5 of the AIA
Before After
• It shall be a defense to an action for • A person shall be entitled to a
infringement under §271 of this title defense under §282(b) with respect
with respect to any subject matter to subject matter consisting of a
that would otherwise infringe one or process, or consisting of a machine,
more claims for a method in the manufacture, or composition of
patent being asserted against a matter used in a manufacturing or
person . . . . other commercial process, that
would otherwise infringe . . . .

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© 2013 Armstrong Teasdale LLP to
Effective: Applies any patent issued on or after September 16, 2011.

QUASI LITIGATION: POST GRANT OPPOSITION AND INTER PARTES REVIEW
— New Proceedings —
Before After

1) Post Grant Review (new): Based on any invalidity ground and
may be sought during the first 9 months after a patent issues
or reissues.
2) Inter Partes Review (new): Based on patents or printed
publications and may be sought any time after post grant
review period ends (replaces inter partes reexam).
• Burden: Preponderance of the Evidence Standard for
both.
• Estoppel applies to both (“raised or could have
raised”).
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© 2013 Effective: Not later
Armstrong Teasdale LLP than 1 year after September 16, 2011.

— New Adjudicative Proceeding —
Post Grant Review: Section 6 of the AIA
Before After
1) Post Grant Review: adjudicative proceeding.
• USPTO grants review if it is more likely than not that at
least one of the claims is unpatentable or the petition
raises novel or unsettled legal question.
• Review barred if petitioner has DJ’d for invalidity;
automatic stay of civil suits filed by petitioner pending
review.
• USPTO will issue rules for: Pleading, protective orders,
discovery, sanctions, hearings.
• Right to oral hearing, heard by PTAB.
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© 2013 Effective: Not later
Armstrong Teasdale LLP than 1 year after September 16, 2011.

— New Adjudicative Proceeding —
Inter Partes Review: Section 6 of the AIA
Before After
2) Inter Partes Review: adjudicative proceeding.
• Requires threshold PTO determination to institute
review (similar to reexam).
• Time Limits: within 12 months of litigation; no
review if petitioner filed a DJ on invalidity.
• Discovery of affiants (like interference); other
discovery as permitted by USPTO.
• Right to oral hearing, heard by PTAB.

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© 2013 Armstrong Teasdale LLP Effective: Not later than 1 year after September 16, 2011.

SIMPLIFYING LITIGATION
—Advice of Counsel & Willfulness—
Before After

The Federal Circuit prevents an adverse inference of Cannot prove willful
willfulness, BUT: infringement or
• District courts free to instruct jury to consider inducement by (1) failure
whether an opinion was obtained under “totality to obtain advice of counsel
of circumstances” test used to determine or (2) failure to present
willfulness. such evidence in court.

• District courts could permit jury to consider a
party’s failure to obtain an opinion in
determining whether that party intended to
induce infringement (§271(b)).
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Effective: Applies to
© 2013 Armstrong Teasdale LLP any patent issued on or after September 16, 2012.

What hasn’t changed?

1. Novelty and obviousness standards.
2. Enablement and written description requirements.

3. Claim construction standards.
4. Doctrine of equivalents and prosecution history estoppel.

5. Infringement remedies.
6. Direct and indirect infringement standards.

Derived from Chisum.com

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The America Invents Act Turns Traditional Patent Practices into a Thing of the Past

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