Patent Reform Fact and Fiction. What You Need to Know to Prepare for the First Inventor to File Transition. November 27, 2012

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1 Patent Reform Fact and Fiction What You Need to Know to Prepare for the First Inventor to File Transition November 27, 2012 Wolf, Greenfield & Sacks, P.C. 600 Atlantic Avenue Boston, Massachusetts fax wolfgreenfield.com

2 Largest IP-Only Law Firm Based in New England 200 IP professionals and staff 88 Attorneys & technology specialists 89% Degree in science/ engineering 55% Prior industry experience 65% Ph.D., M.D., advanced degrees 2,927 Patents filed in Years serving clients 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 2

3 Patent Practice Areas electrical and computer consumer products chemical and materials biotechnology Deep Expertise medical mechanical cleantech pharmaceutical 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 3

5 America Invents Act (AIA) Major Provisions Already in Effect Changes to patent application process Third party attacks at the PTO Stronger patents Expanded infringement defense: prior use 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 5

6 America Invents Act (AIA) Major Provisions Already in Effect (cont.) Changes to Patent Application Processes: Inventor Oath/Declaration Prioritized Examination Third Party Preissuance Submissions Fees 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 6

7 America Invents Act (AIA) Major Provisions Already in Effect (cont.) Third Party Attacks On Patents at the PTO: Inter Partes Review (IPR) 102 & 103 publications only Post-Grant Review (PGR) 101, 112, 102 & 103 all art Covered Business Method Patent Review 101, 112, 102 & 103 all art Ex Parte Reexamination (EPR) 102 & 103 publications only 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 7

8 America Invents Act (AIA) Major Provisions Already in Effect (cont.) Stronger Patents: Best Mode Supplemental Examination Request Purging Inequitable Conduct Extending presumption of validity to new information Patent Marking Virtual False Expanded Infringement Defense: Prior Use 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 8

9 Overview of First Inventor to File Change from first to invent to first to file Applies to applications filed after, and that have a claim with an effective date on or after, March 16, 2013 Expansive definition of prior art includes worldwide information otherwise available to the public 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 9

10 What Does First Inventor to File Mean? Simply put whoever files first wins Doesn t matter if you invented 1 day, 1 month, 1 year earlier than another if you lose the race to the Patent Office, you likely lose patent rights Exceptions may apply to eliminate a prior filed application as prior art to a later application First filing can be anywhere around the world and in any language Creates tension between filing quickly and ensuring applications are complete 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 10

11 What Law Applies to My Application? If filed before March 16, 2013 old law If filed on or after March 16, 2013 Old law applies if all claims have an earliest effective date before March 16, 2013 E.g., g, continuation and divisional applications claiming to pre-march 16 application New law applies if any claim included, at any time, with an earliest effective date of March 16, 2013 or after E.g., CIPs, a non-provisional application converted from an earlier provisional i and dincluding new subject matter 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 11

12 What Can Be Prior Art? Any public disclosure, anywhere in the world Prior Art no longer limited (at least in some cases) to the United States Printed publications, a presentation, something in public use, on sale, or otherwise available to the public anywhere Meaning of on sale and otherwise available to the public not entirely clear Legislative history suggests prior, secret sales or commercial use may not be prior art Contrary to long standing law 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 12

13 What Can Be Prior Art? (cont.) US U.S. patents/applications t ti and dpct applications effectively filed before your application Content of foreign priority application is prior art a big change We will be in the dark even more than before regarding prior art US/PCT applications available as prior art for novelty and obviousness purposes In Europe, such prior filings only available on novelty basis 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 13

14 Is It Prior Art? Questions to ask: Was it available to the public anywhere in the world before my application s filing date? OR Is it a US or PCT application/patent p effectively filed before my application s filing date (including any foreign priority dates)? If yes to either It is prior art t( (unless an exception applies) 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 14

15 Any Grace Periods or Exceptions Regarding Public Disclosures? Limited exceptions are provided for certain disclosures occurring 1 year or less before your inventor s filing date Disclosures that will not be prior art: By the inventor (or by another who obtained the subject matter from the inventor) Occurring after a public disclosure by the inventor of the same subject matter (or by another who obtained the subject matter from your inventor) Note, however, that slightly different disclosures by third parties will not be knocked out by prior inventor disclosure 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 15

16 Any Grace Periods or Exceptions Regarding US/PCT applications? U.S. or PCT applications will not be prior art if: Subject matter obtained directly or indirectly from the inventor Filed after a public disclosure of the same subject matter by the inventor (or by another who obtained the subject matter from your inventor) Note, however, that slightly different disclosures by third parties will not be knocked out by prior inventor disclosure Co-ownedowned as of later application s filing date 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 16

18 What s Out? (cont.) X invents A X files A Y publicly discloses A < 1 year Old: X could disqualify Y publication based on earlier date of invention New: Y s Ys publication is novelty destroying prior art to X 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 18

21 There Is Still A Grace Period, But X publishes A < 1 year X files A Y publishes or files A + A Old: X gets to claim A, not A New: X gets nothing 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 21

22 Foreign Activity Is More Important X files A in U.S. Y files A in China Y files A in U.S. with priority to China Y U.S. filing publishes Old: Y s China application is not prior art New: Y s China application filing date is prior art date for U.S. application 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 22

23 Foreign Activity Is More Important (cont.) X files A in U.S. Y files AB in China Y files BC in U.S. with priority to China The only thing in Y s U.S. application that is prior art is B Ai is safe if non-obvious over B 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 23

24 Foreign Activity Is More Important (cont.) X files A Y openly sells or publicly uses A only in China Old: Y sales/use are not prior art New: Y sales/use are now novelty destroying prior art to X 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 24

25 Situations Where You Are Now Better Off X confidentially sells A or X secret use of A in commerce even in the U.S X files A > 1 year Old: X s confidential sale/use are novelty destroying prior art if activity conducted in the U.S. New: X s Xs confidential sale/use not prior art anywhere in the world 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 25

26 Commonly Owned Applications No Longer Prior Art At All X and Y agree to assign their inventions to Co. Co. Files Apl 1 on invention A by X Co. Files Apl 2 on invention A by X and Y prior to publication of Apl 1 Old: Apl 1 is not prior art for Apl 2f for obviousness BUT it is for novelty A okay in Apl 2 only if not anticipated by A New: Apl 1 not prior art to Apl 2 for either obviousness OR novelty A okay in Apl 2 even if anticipated by A 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 26

27 Written Agreement Before Invention No Longer Needed for CREATE Act Exception X invents A X and Y invent A X and Y execute written Joint Development Agreement Apl 1 on invention A filed by X Apl 2 on invention A by X and Y Old: Apl 1i is prior art tfor Apl 2f for all purposes A not patentable if anticipated or obvious over A New: Apl 1 not prior art to Apl 2 for either obviousness OR novelty A okay in Apl 2 even if anticipated i t or obvious over A 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 27

28 Different Prior Art For CIPs Than Parent Application X files A March 16, 2013 X files Con with priority to A X files CIP claiming new subject matter Con: old rules of prior art apply CIP: new rules of prior art apply to all claims 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 28

29 Different Prior Art For CIPs (cont.) X invents A X files A March 16, 2013 X files Con A X files CIP A, A Y discloses A Straight Con to A is not barred CIP both A and A are barred by Y s disclosure 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 29

30 Strategies and Tactics Ooops moments act t quickly European Strategy (file before publishing) generally a reasonable approach to handle new US law But US/PCT applications being prior art for novelty and obviousness urges earlier filing But avoid relying on a weak provisional consequences more severe than before 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 30

31 Strategies and Tactics (cont.) Should I keep invention records anymore? Derivation proceedings Patent Office determines if earlier filer stole invention from later filer likely rare case Circle March 15, 2013 on calendar May be circumstances where you want new rules to apply May be circumstances where you want old rules to apply Carefully use CIPs after March 16, 2013 avoid mixing pre- and post transition inventions/claims 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 31

32 Strategies and Tactics (cont.) Remember, it is a race to the patent t office File multiple provisionals Take advantage of low filing costs/informal rules Combine if/when you decide to convert 2012 Wolf, Greenfield & Sacks, P.C. All rights reserved. 32

America Invents Act: Patent Reform

America Invents Act: Patent Reform Gunnar Leinberg, Nicholas Gallo, and Gerald F. Gibbs, Jr. LeClairRyan January 4 th 2012 gunnar.leinberg@leclairryan.com; nicholas.gallo@leclaairryan.com; and gerald.gibbs@leclairryan.com