The Need for Patent Reform. Patent Litigation Trends. US Patent Reform 2011. FTFG. First-to-Publish. American Invents Act.

1. 7/13/20181
Update on Patent Reform
Brad Pedersen
May 3, 2011
The Need for Patent Reform
Patent Litigation Trends
US Patent Reform 2011
FTFG
First-to-Publish
American Invents Act

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.
May 3, 2011
Update on Patent Reform

3. The Need for Patent Reform
Three Big “Pushers”
Patent Litigation
Patent Quality
Patent Harmonization
July 13, 20183

4. Patent Litigation Trends – by the numbers
04/07/113

5. April 07, 20114
Patent Litigation Trends – by the %’s

6. US Patent Reform 2011: The America Invents Act
Momentum is building
S.23 bill passed Senate (95 – 5 vote)
White House fully supports
House Judiciary forwarded HR.1249 to floor (32-3 vote)
Two bills are very similar
Only opposition is against First-to-File by Tea Party
Reconciled bill likely to be signed into law this summer
July 13, 20186

7. US Patent Reform 2011: The America Invents Act
Main provisions
Moves U.S. to a first-to-file with one-year grace period
Resolves funding problems by giving USPTO authority to set
fee and ending fee diversion
Introduces several new Post-Issuance Proceedings (PIPs)
• Run by APJ’s instead of PTO
• 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, 20187

8. July 13, 20188
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® an IP Law Review)
FTFG Will Be Different – Two Filer Scenarios

9. FTFG Will Be Different – One filer scenarios
July 13, 20189
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

10. 10
FTFG and the Creeping Disclosure Problem
If different inventors "disclose" inventions
For identical disclosures -> 1 + 2 + 3
A publishes
then B publishes or files for same thing
then A files
the patent goes to A by virtue of 102(b)(1/2)(B) exceptions
What about “creeping disclosures” -> 1 + 2 + 3 + (?) 4
A publishes 1 + 2 + 3
then B publishes or files 1 + 2 + 4
then A files for 1 + 2 + 3, and also 1 + 2 + 3 + 4
A gets patent to 1 + 2 + 3, but is A entitled to 1 + 2 + 3 + 4?
Maybe – is adding "4” obvious?

11. FTFG Will Be Different – Derivation scenarios
July 13, 201811
FIG. 3 – Scenarios involving fact patterns with derivation issues

12. 12
FTFG and the Derivation Dilemma
Assume theft scenario -- A “steals” from B and B files first
Under current law of “derivation” in an interference:
A must prove that A conveyed each element of invention 1 + 2
+ 3 to B - Gambro v. Baxter (Fed. Cir. 1997)
So, if B files first for 1 + 2 + 3, and then A files for 1 + 2 + 3
A wins a derivation proceeding against B
But, what if B is crafty and tries to hide the “theft”
A conveys 1 + 2 + 3 to B
B files first, but files for 1 + 2 + 3 + 4
A then files for 1 + 2 + 3
Now, in derivation proceeding A can’t prove “4” was conveyed
Current law says B wins, but older case law would have A win -
Agawam v. Jordon, 74 US 583 (1868)

13. 13
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 1-year date of first provisional
If OUS protection desired, have OUS cases claim priority to all
provisionals in this chain of “string provisionals”

14. 14
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

15. US Patent Reform 2011: What’s Left?
Remaining Differences between S.23 and HR. 1249
Differences in the PGR windows (9 mos. vs. 12 mos)
Stay of litigation during PGR (none vs. automatic)
Prior user defense (broader vs. limited)
Sunset provision on PTO funding fix (none vs. 6 years)
Limits on multi-defendant litigation (none vs. 1/case)
July 13, 201815

16. April 07, 201112

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