America Invents Act

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presented at the Center For Emerging Technology in St. Louis, MO on October 19, 2011.

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America Invents Act

  1. 1. Highlights of the Leahy-Smith America Invents Act by Steve Ritchey
  2. 2. Overview of Presentation Change to First Inventor-to-File Prior Commercial Use Defense Expanded Changes to Best Mode Supplemental Examination Post-grant Review Inter Partes Review Joinder of Parties Patent Marking Other Provisions: fees, advice of counsel, etc. 2
  3. 3. First Inventor-To-File Effective Date - applies to applications that contain or contained a claim to a claim invention having an effective filing date on or after March 16, 2013. Underlying Changes • Expansion of inventive entity to include individual inventors or sub-groups of inventors (“an inventor”). • Removed differential treatment of Foreign Inventions. Reduces the types of prior art from 7 to 2 plus exceptions. 3
  4. 4. First Inventor-to-File (cont.) New §102(a)(1) – A person shall be entitled to a patent unless 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 date of the claimed invention. New §102(b)(1) Exceptions – A disclosure made 1 year or less before the effective filing date of a claimed invention is not §102(a)(1) prior art to the claimed invention if: (A) the disclosure was made by “an inventor” or by another who obtained the subject matter disclosed directly or indirectly from an “an inventor”; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by an “an inventor” or another who obtained the subject matter disclosed directly or indirectly from an “an inventor.” 4
  5. 5. First Inventor-to-File (cont.) New §102(a)(2) - A person shall be entitled to a patent unless the claimed invention was described in an U.S. patent, a published or deemed published U.S. patent application that names another inventive entity that was effectively filed before the effective date of the claimed invention. New §102(b)(2) Exceptions – A disclosure under is not §102(a)(2) prior art to a claimed invention if: (A) the subject matter disclosed was obtained directly or indirectly from “an inventor”; (B) the subject matter disclosed had, before such subject matter was effectively filed under (a)(2), been publicly disclosed by “an inventor” or by another who obtained the subject matter disclosed directly or indirectly from an “an 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 or obliged to be assigned to the same person. 5
  6. 6. Derivation Actions Patents • The owner of a patent with a later effective filing date to file a law suit seeking “relief” against an owner of an patent having an earlier effective filing date if the claimed invention was derived from the inventive entity of the “later” patent. • The action must be filed no later than 1 year after issuance of the “later” patent. Patent applications • An applicant can petition the Office to institute a derivation proceeding. • The petition must be filed within 1 year after the publication of a “later” application having a claim that is same or substantially the same as the “earlier” application. 6
  7. 7. Issues and ConcernsAct does not really harmonize U.S. law with absolutenovelty jurisdictions. The new U.S. system is more accurately described as a First Inventor-to-Disclose or File System. Earlier disclosure trumps earlier filing.Example - Inventor A invents a product on April 1 and filesan application 6 mos later (October 1). Inventor B inventsthe same product 3 mos after Inventor A (June1), publishes 3 mos later (September 1), and files anapplication 3 mos after publication (December 1). Inventor A was the first to invent and first to file but Inventor B’s publication is prior art against Inventor A and removes Inventor A’s earlier filed application as prior art. 7
  8. 8. Issues and Concerns (cont.)Differing Scope of Prior Art and Exceptions The new §102(a)(1) prior art includes “uses”, “sales” and “availability to the public” but the inventor grace periods only apply to “disclosures”. Legislative history indicates that this difference was intentional. Thus, an inventor’s use of or sale of an invention before the effective filing date will be a bar. Whereas an inventor’s public disclosure less than 1 year the effective filing date will not be a bar. Continued viability of Experimental Use Doctrine? 8
  9. 9. Issues and Concerns (cont.)What constitutes a “disclosure”?Will it be the current “printed publication” standard orsomething more lax such an oral disclosure or aPowerPoint slide?Scope of a “subject matter that is publicly disclosed byan inventor”? Must it be identical in scope to the later-filed application? Must it satisfy §112 written description, best mode, enablement, means-plus-function? Is it sufficient for the inventor’s public disclosure to only disclose what is in another reference to preclude that reference from being prior art? 9
  10. 10. Issues and Concerns (cont.)Treatment in the PTO of Inventor DisclosuresBecause disclosures of subject matter by “aninventor” are so critical for determiningwhether a reference available less than 1 yearbefore the effective filing date is prior art, willthe Office require the applicant to disclose allsuch “public disclosures” on an IDS or will theOffice simply identify such references andallow “an inventor” to antedate them byproviding evidence of an earlier publicdisclosure? 10
  11. 11. Issues and Concerns (cont.)Invalidity Opinions Because the U.S. will not be a true first-to- file system, it is likely to continue being undesirable to rely upon references available less than 1 year before the effective filing date of a patent. 11
  12. 12. Issues and Concerns (cont.)Subject matter disclosed by another whoobtained it from “an inventor” Yet to be determined how any comparison between disclosures should be done. What evidence will be considered; what standard of proof? 12
  13. 13. Issues and Concerns (cont.)Change of inventive entity and prior art. Changing the prior art exceptions from the same inventive entity to disclosures made by “an inventor”, has the potential to remove significant prior art. For example, in a crowded field with a lot of publications, it may be possible for two or more authors to remove what would be prior art against one or more of individually filed applications by jointly filing an application within 1 year after the earliest publication of concern. If desired, the inventors or assignees could divide up rights or fields by agreement. 13
  14. 14. Issues and Concerns (cont.)Common Ownership Exception Limited to prior art that is a U.S. patent or published U.S. application. Retroactive: parties can agree to common ownership after an invention is made; just needs to be done by the effective filing date. Similarly, Joint Research Agreements need to be in effect by the effective filing date. 14
  15. 15. Recommendations File Early - file provisional applications early and often and then make a priority claim to the relevant provisional applications that were filed no more than 1 year before the non-provisional filing. Pre-filing Disclosures - if foreign patents are not wanted, it is likely a good strategy to publicly disclose the subject matter immediately (even before filing an application). Remember to file the U.S. application within 1 year of the publication. 15
  16. 16. Recommendation (cont.) Provisional applications not always prior art - must file a non-provisional application to obtain a prior art benefit. If it is likely you may not file a non- provisional, consider publicly disclosing inventions immediately after the effective filing date to create prior art. Scope of Disclosures – there are uncertainties around the required scope of disclosures. To create effective prior art against others it is advisable to avoid “bare bones” disclosures; goal should probably be satisfying §112. 16
  17. 17. Recommendations (cont.) When to file - with respect to novelty, it unlikely the AIA will be of benefit to applicants so consider filing applications to new subject matter (i.e., new applications and continuations-in-part) before March 16, 2013. Take advantage of §102(g) - after March 16, 2013, if you have reason to believe you were the first to invent but the later to file an application, consider the making a priority claim to an application filed before March 16, 2013, if possible, this may allow you to obtain a patent by taking advantage of interference proceedings. 17
  18. 18. Recommendations (cont.) Don’t throw out your copy of the current Patent Act. • The current novelty standards apply to all cases filed before March 16, 2013, and those applications will be prosecuted and the subject of litigation for years to come (20+ years). • Interferences are likely to be around for 10+ years. 18
  19. 19. Prior Commercial Use Defense Expanded Now applies to any patentable invention used in good faith in a manufacturing or other commercial use in the U.S. at least one year before the earlier of: (A) the effective filing date of the claimed invention; or (B) a public disclosure which qualifies for the an §102(b) prior art exception. Effective to any patent issued after September 16, 2011. Other provisions essentially unchanged. • Defense is personal but transferable upon sale of business. • Limited to sites were otherwise infringing activities occurred before effective filing date. 19
  20. 20. Prior Commercial Use (cont.) University Exception • Defense not available if claimed invention was, at the time the invention was made, owned or subject to assignment to a University. • Note: not ownership as of the effective filing date as for prior art exception. • Possible incentive for performing research with an University or having an University perform research for you and then license patents. 20
  21. 21. Best Mode As of September 16, 2011, Best Mode is no longer a basis on which a claim or a patent may be canceled, held invalid or otherwise unenforceable. Best Mode is still required under §112. Why have the requirement, if there is no remedy? Possible tension between clients and attorneys. Judiciary May Fashion Remedies – for example, keeping valuable modes as trade secrets could result in narrowed claim scope as an Enablement or Written Description violation. 21
  22. 22. Supplemental Examination Patent owner may request supplemental examination of a patent so the Office can consider, reconsider, or correct information believed to be relevant to the patent. Reexamination will be conducted if the Office determines that there is a substantial new question of patentability. Prevents such information from causing a patent to be held unenforceable on the basis of conduct related to the information; provided the supplemental examination is concluded before the patent is the subject of an infringement claim. The making or absence of making a request is irrelevant to the presumption of validity. Effective as of September 16, 2012. 22
  23. 23. Post-grant Review Grounds - New post-grant review before the PTAB to review validity of issued patents on any ground, not just prior art. Petition period - Petition must be filed within 9 months of patent grant. Threshold showing - is either (a) “more likely than not” at least one claim is unpatentable or (b) the petition raises a novel or unsettled legal question that is important to other patents or applications. Duration - Final Decision within 1 yr or 1.5 years for good cause. Claim Amendment - patent owner has right to file 1 motion to amend claims; no broadening amendments or new matter. Additional motions available for good cause or upon joint request. 23
  24. 24. Post-grant Review (cont.) Bar - review barred by earlier filed civil action. Stay - if petitioner files a later civil action it will be automatically stayed until either: (a) patent owner moves to lift stay; (b) patent owner files a civil action or counterclaim alleging infringement by petitioner; or (c) petitioner moves for dismissal. Preliminary Injunction - if civil action alleging infringement is filed within 3 mos of grant, a post-grant review cannot be a basis for a court to stay consideration of patent owner’s motion for preliminary injunction against infringement of the patent. Estoppel – petitioner cannot later bring another proceeding in the PTO or in the courts based on any ground that was or could have been raised. 24
  25. 25. Inter Partes Review Replaces inter partes reexamination. Timing • Petition filed after the later of (a) 9 months after grant or reissue or (b) termination of a post-grant review. • Petition must be filed within 1 year of being sued. Grounds – limited to anticipation and obviousness on the basis of patents or printed publications. Threshold showing – reasonable likelihood that petitioner would prevail on at least one claim. Duration - Final Decision within 1 yr or 1.5 years for good cause. 25
  26. 26. Inter Partes Review (cont.) Claim Amendment - patent owner has right to file 1 motion to amend claims; no broadening amendments or new matter. Additional motions available for good cause or upon joint request. Bar - review barred by earlier filed civil action. Stay - if petitioner files a later civil action it will be automatically stayed until either: (a) patent owner moves to lift stay; (b) patent owner files a civil action or counterclaim alleging infringement by petitioner; or (c) petitioner moves for dismissal. Estoppel – petitioner cannot later bring another proceeding in the PTO or in the courts based on any ground that was or could have been raised. 26
  27. 27. Transitional Program For Covered BusinessMethod Patents “Covered Business Method Patents” are defined as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, management of a financial product or service, except that the term does not include patents for technological inventions.” Effective September 16, 2012, a person sued for infringement can challenge the validity of the patent as anticipated or obvious. Applies to patents issued before the effective date. Sunset – September 16, 2020. Can seek a stay in litigation. 27
  28. 28. Preissuance Submissions by 3rd Parties A third party can submit a patent, a published application, or other printed publication for consideration in the examination of an application. Must be submitted before the earlier of the notice of allowance, 6 months after publication of the application. Must set forth a concise description of the asserted relevance. Effective - September 16, 2012. 28
  29. 29. Citation of Written Statement In addition to submitting prior art, any person may submit statements made the patent owner in a court or Office proceeding “in which the patent owner took a position on the scope of any claim of a particular patent.” Must include a statement explaining the pertinence to at least one claim. 29
  30. 30. Joinder of Parties AIA bars joining unrelated parties in a single action for patent infringement unless there are common facts and the parties were involved together in the same acts that caused the alleged infringement. The fact that separate parties are accused of infringing the same patent is not a basis for joinder. 30
  31. 31. Patent Marking Permits virtual marking to provide public notice that an article is patented (marking that direct public to a freely accessible website). Restricts availability of false marking damages to the government and persons that suffered a competitive injury. Exempts expired patents. 31
  32. 32. Other Provisions of the AIA Inventor’s Oath or Declaration - An assignee can file a patent application instead of the inventors. Effective September 16, 2012. Advice of Counsel – bars the use of an accused infringer’s failure to obtain advice of counsel to prove willful infringement. 32
  33. 33. Other Provisions (cont.) Fees • USPTO given fee setting authority. • Fees went up 15% on September 26, 2011. • Micro entities (less than 4 prior non-provisional applications and less than 3 times median household income) entitled to 75% reduction in fees. • Prioritized Examination Fee - $4,800 in addition to regular fees • Paper filing charge for non-provisional utility apps- $400 Human Organisms – can’t have a claim “directed to or encompassing a human organism.” 33
  34. 34. Other Provisions (cont.) PTO Funding – fees collected in excess of the PTO’s budget are deposited with the Treasury and can be appropriated by Congress for use by the PTO. Prioritized Examination – an applicant can request prioritized examination (at no extra cost) of an application for products, processes, or technologies that are important to the national economy or national competitiveness. 34

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