America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary

Transcription

1 PRESENTATION TITLE America Invents Act (AIA) The Patent Reform Law of 2011 Initial Summary Christopher M. Durkee James L. Ewing, IV September 22,

2 Major Aspects of Act Adoption of a first-to-file system and substantive changes to the requirements for patentability (anticipation and obviousness), new definitions of prior art, new declaration/oath provisions New post-grant review procedures Derivation Proceeding and Civil Action ( 291, 135) Chapter 32 Post-Grant Review ( ) Chapter 31 Inter Partes Review ( ) Supplemental Examination ( 257) Patent office fees and funding Effects on patent litigation 2

3 Effective Dates September 16, False marking provisions revised; best mode defense eliminated; venue provisions revised; patents directed to tax strategies and human organisms banned September 26, Patent fees increased 15% November 15, Electronic filing incentive September 16, Post-Grant Review (Ch. 32) and Inter Partes Review (Ch. 31) proceedings implemented; patent applications may be filed by someone other than the inventor; Pre-issuance submissions under 35 U.S.C. 122 can be filed; new regulations promulgated by Director March 16, First-to-file system implemented; Derivation proceedings replace interference practice (interferences phased out) 3

4 Adoption of First-to-file system Novelty will be determined as of the effective patent application filing date, not the date of invention Effective filing date: the actual filing date or the filing date of the earliest application to which the patent or application is entitled to claim priority Only the effective filing date matters; Rule declaration can no longer be used to swear behind prior art by establishing an invention date prior to the date of prior art Effective March 16, 2013 on all patents with an effective filing date on or after March 16,

5 35 U.S.C. 102 (Conditions for Patentability; Novelty) Bars a patent if the claimed invention was publicly disclosed, in public use, on sale, or otherwise publicly available prior to the effective filing date Exception (grace period) for a disclosure within one year before the effective filing date made by the inventor or by someone who obtained the subject matter disclosed from the inventor A third party disclosure will not be prior art if, before the third party disclosure and within one year before the effective filing date of the application, the subject matter had been disclosed by the inventor or someone who obtained the subject matter from the inventor (provides for exclusion of intervening prior art) (35 U.S.C. 102(b)(1)(B)) As has been the law, a public disclosure by the inventor(s) will be patent-barring prior art if an application is not filed by the inventor(s) within one year after disclosure 5

6 35 U.S.C. 103 (Obviousness) An invention will be deemed obvious under 35 U.S.C. 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains Obviousness will no longer be determined at the time the invention was made 6

7 New Prior Art Requirements Any public disclosure by a non-inventor can operate as prior art (but see exceptions) Published patent applications and patents are prior art for both novelty and obviousness determinations as of their international priority date In Europe and Japan, by contrast, published patent applications are prior art only for novelty determinations as of their international priority date 7

8 Filing by other than the inventor Several new/revised opportunities for a patent applicant to provide a statement by the applicant (the assignee and/or cooperating inventors) instead of the traditional declaration which typically needed to be signed by all inventors Helpful in businesses where inventors migrate frequently between employers or are otherwise often unavailable 35 U.S.C. 118 allows a person or company to whom the inventor has assigned his rights or is under an obligation to assign his rights to apply for a patent 8

9 March 16, 2013 Changes in the law regarding novelty and obviousness will take effect March 16, 2013, and will apply to any patent application that contains or contained at any time a priority claim to a date on or after this date Patent applications with a priority claim to a date before March 16, 2013 will continue to be examined according to current novelty and obviousness law Applications filed after March 16, 2013 that claim priority to an earlier-filed application will get the benefit of current novelty and obviousness law 9

10 Derivation Proceeding (35 U.S.C. 291) Can be filed by a patent applicant against another applicant who derived the claimed invention from the petitioner without permission Must be filed within 1 year of publication of the petitioner s claim (to the same or substantially the same invention as the earlier-filed, allegedly derived claim) Requesting party: applicant for patent claiming substantially the same invention as the earlier-filed, allegedly derived claim Effective March 16, 2013 for any patent with an effective filing date on or after March 16, 2013 Director institutes; Patent Trial & Appeal Board (replaces BPAI ) makes determination; appealable to Federal Circuit Eliminates interferences, which will be phased out depending on the status of the interference on the effective date ( 329(f)) 10

11 Civil Derivation Action (35 U.S.C. 135) Civil action can be filed within one year after issuance of the patent containing the allegedly derived subject matter Statute of limitations is earlier of: 10 years after alleged derivation, and 1 year after PTO is made aware May provide additional time to seek redress if window for filing derivation proceeding under 35 U.S.C. 291 (one year after petitioner s publication) is missed 11

12 Ch. 32 Post-Grant Review 35 U.S.C Grounds for review: prior art or any other basis for invalidity including under 251 (reissue) or 112 (but not best mode) Must be filed within 9 months post-grant Granted by Director based on more likely than not standard; conducted by PTAB; appealable to Federal Circuit Claims can be amended or canceled Cannot file Post-Grant Review if you previously filed a Civil action challenging validity ( 325 (a)(1)) If you file a Civil action on or after date you file Post-Grant Review, the Civil action will be stayed until Patentee moves to lift stay or files action or counterclaim alleging infringement: Petitioner moves to dismiss the Civil action ( 325 (a)(2)) An Invalidity Counterclaim is not Civil action, so only DJ Actions will be stayed If Civil action filed within 3 months after patent issuance, court cannot stay consideration of preliminary injunction on basis that Post-Grant Review was filed ( 325 (b)) Petitioner must prove unpatentability by preponderance of the evidence standard Effective September 16, 2012 on any patent or application with an effective date on or after March 16, 2013 Broad estoppel (for issues raised or reasonably could have been raised) can apply to subsequent PTO, ITC and District Court proceedings, and to real parties in interest and privies, as soon as PTAB issues decision (Note: possible error in statute) 12

13 Ch. 31 Inter Partes Review 35 U.S.C Grounds for review: prior art patents or printed publications only May be filed after the later of: (i) 9 months post-grant; or (ii) termination of any Ch. 32 Post-Grant Review (cannot be filed until after the window for Post-Grant Review closes) Granted by Director based on reasonable likelihood standard; conducted by PTAB; appealable to Federal Circuit Claims can be amended or canceled Similar limitations and DJ stays as Ch. 32 Post-Grant Review ( 315) Inter Partes Review cannot be filed more than 1 year after petitioner is sued for infringement Petitioner must prove unpatentability by preponderance of the evidence standard Effective September 16, 2012 on any patent issued at any time Similar broad estoppel provisions as Ch. 32 Post-Grant Review 13

14 More on Ch. 32 and Ch. 31 Reviews Can be filed by any party that is not the owner of the patent; identity must be revealed; proceedings published Owner of patent can file a preliminary response (deadline TBD) Director shall proscribe regulations, including the requirement that the PTAB make a final determination within 1 year after commencement of the review (extendible by the Director for 6 additional months with sufficient cause) Director will promulgate regulations for conduct of the Reviews, including: Discovery: For Ch. 31 Inter Partes Review, discovery is limited to depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice For Ch. 32 Post-Grant Review, discovery is limited to evidence directly related to factual assertions advanced by either party in the proceeding Sanctions for abuse of discovery/abuse of process Protective orders for exchange and submission of confidential information PTAB Review proceedings will look a lot more like trials than previous BPAI reexamination proceedings did 14

15 Supplemental Examination (35 U.S.C. 257) Information relevant to the patent (to be established by the Director) No deadline specified Can be requested by owner of patent Effective September 16, 2012 on any patent issued at any time Director grants Ch. 30 reexamination based on substantial new question of patentability standard In general, patent cannot be held unenforceable based on information not considered during prior examination if it was considered during supplemental examination Exceptions: Enforceability bar not applicable if allegations pled in a civil action before date of request. If patent owner files action and a defense is raised as to inequitable conduct, enforceability bar non-operative if supplemental exam and any reexam are not concluded before action brought. 15

16 Pre-issuance submissions (35 U.S.C. 122) Prior art accompanied by a statement of relevance Filed by the earlier of: (A) Notice of Allowance, or (B) later of: (i) 6 months after publication, and (ii) date of 1st substantive rejection May be requested by any third party; no requirement to self-identify Examiner reviews 16

17 Transitional Program for Covered Business Method Patents Director shall establish, by September 16, 2012, a transitional post-grant review proceeding for the review of the validity of covered business method patents, which are generally defined as financial-related business method patents Available September 16, 2012 for a period of 8 years and will generally follow the procedures of the Ch. 32 Post-Grant Review Only persons sued for infringement of a covered business method patent may utilize the transitional proceeding Estoppel: Petitioner cannot assert in a civil action invalidity of a patent on any ground that was considered in a transitional proceeding Venue can no longer be established based on where an automated teller machine is located Categories of patent-eligible subject matter under 35 U.S.C. 101 are not affected by this program 17

18 Patent Office Fees and Funding The Director can set or adjust fees. A new micro entity fee structure provides for reduced fees of 25% of large entity fees (35 U.S.C. 123). In order to qualify as a micro entity: The applicant must qualify as small entity The applicant cannot have been named as an inventor on more than four other U.S. applications (provisional applications, foreign applications and PCT applications in which no U.S. national stage filing was made are excluded) The applicant does not have a gross income more than three times the median US household income and has not assigned rights to any entity that exceeds this income Applicants who work for, and assign their application to, institutions of higher education may qualify as micro entities All PTO fees are increased by 15% on September 26, 2011 (35 U.S.C. 41) PTO funding provisions: if the fees collected by the PTO exceed those appropriated by Congress, excess fees will go into a reserve fund Expenditure of reserve funds is limited to certain activities Electronic filing incentive: Starting November 15, 2011, an additional $400 filing fee is charged if a utility application is not filed electronically 18

19 Patent litigation Advice of counsel: Failure to obtain an opinion of counsel, or to present the opinion to the court or jury, no longer can be used as evidence of inducement of infringement or willfulness (effective September 16, 2012) Reverses Broadcom v. Qualcomm (Fed. Cir. 2008) and codifies Knorr- Bremse v. Dana (Fed. Cir. 2004) Joinder of parties: Accused infringers can no longer be joined in one action or trial based solely on allegations that they each have infringed the same patent (effective for all cases filed on or after September 16, 2011) Alleged infringement must relate to the same accused product or process Tightens joinder rules now applied more liberally by some district courts 19

20 Patent litigation (cont.) Marking & false marking: Patentees can virtually mark products with a web address that associates a product with a patent number Qui tam standing is eliminated; only the U.S. Government and persons who show competitive injury may sue for false marking Effective September 16, 2011 on all cases filed at any time Best mode defense eliminated: Failure to disclose the best mode of practicing the claimed invention cannot be used as a basis for invalidating a patent or rendering it unenforceable Effective September 16, 2011 on all cases filed on or after this date Best mode requirement remains in 35 U.S.C. 112 Prior commercial use defense expanded: 35 U.S.C. 273 s prior use defense to infringement, once limited to prior practice of a claimed business method, now applies to any claim of any patent (e.g., machine, manufacture and composition of matter) 20

21 Practice tips and discussion Analysis just beginning Fee increases go into effect Monday (9/26) File your applications and pay your maintenance fees this week if practicable Use electronic filing for applications and other PTO filings Implications of shift to first-to-file priority rules Consider invention disclosure/filing procedures Elimination of best mode defense may encourage less disclosure in applications 21

22 Practice tips and discussion (cont.) New post-grant review procedures and enhancements in pre-issuance prior art submissions provides additional benefits of monitoring competitor s patent applications/ patents Possible increase in use of post-grant review procedures in view of: Use of PTAB instead of Examiner Special dispatch requirement Enhanced discovery options Ability to introduce non-prior art bases for invalidity (Ch. 32 Post- Grant Review only) Possible decrease in Declaratory Judgment actions due to exclusion of Post-Grant Review and Inter Partes Review procedures 22

23 Effective Dates September 16, False marking provisions revised; best mode defense eliminated; venue provisions revised; patents directed to tax strategies and human organisms banned September 26, Patent fees increased 15% November 15, Electronic filing incentive September 16, Post-Grant Review (Ch. 32) and Inter Partes Review (Ch. 31) proceedings implemented; patent applications may be filed by someone other than the inventor; Pre-issuance submissions under 35 U.S.C. 122 can be filed; new regulations promulgated by Director March 16, First-to-file system implemented; Derivation proceedings replace interference practice (interferences phased out) 23

24 Thank you for your time and attention! Chris Durkee (404) Jim Ewing (404)