AMERICA INVENTS ACT. Changes to Patent Law. Devan Padmanabhan Shareholder, Winthrop & Weinstine

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1 AMERICA INVENTS ACT Changes to Patent Law Devan Padmanabhan Shareholder, Winthrop & Weinstine

2 American Invents Act of 2011 Enacted on September 16, 2011 Effective date for most provisions was September 16, 2012 Generally applies to patents filed on or after the effective date Notable exceptions: False marking: retroactive First-to-file: March 16, 2013

3 Major Provisions: Pre-Grant Converts U.S. from First-to-Invent to First-to-File system Extends time period for third-party submission of prior art during application

4 Major Provisions: Post-Grant Creates new inter partes review proceedings, replacing reexamination Creates new post-grant review proceedings option Creates patent owner supplemental examination procedures Establishes a transitional business method patent review program

5 Major Provisions: Litigation Limits false-marking suits to U.S. government or parties suffering competitive injury Permits virtual marking by Internet link Eliminates best mode as a defense Inequitable conduct generally may not be asserted as to information considered in a patent owner s supplemental examination request Precludes use of infringer s failure to obtain/offer advice of counsel as evidence of willful infringement Court cannot stay preliminary injunction based on post-grant reviews Prohibits raising invalidity arguments on same grounds raised in post-grant review after decision is rendered

6 Pre-Grant Provisions

7 First-to-File System First inventor to file application generally is entitled to patent Prior art dates to application filing date Prior art includes public use or sale in a foreign country Cannot swear behind prior art Conception, diligence, reduction to practice, and abandonment no longer relevant to priority

8 First-to-File System One year grace period for inventor-related disclosures of the invention Includes derived disclosures Incentive to disclose during grace period: any subsequent third party disclosure is not prior art Interference proceedings replaced by derivation proceedings to determine whether the applicant of an earlier-filed application was the proper applicant Effective: Eighteen months after enactment (March 16, 2013)

9 First-to-File System: Practical Considerations Race to the Patent Office Added Costs? Prior art considerations in obviousness determinations can remain different in foreign examination U.S. filing date vs. Foreign publication date What constitutes a disclosure for prior art and exceptions? Non-public sales & commercialization?

10 Prior Art Submission Third parties may currently submit prior art in published applications within two months of publication of application AIA extends time period to earlier of (i) notice of allowance or (ii) later of 6 months after publication or date of first rejection Submission must include description of relevance

11 Post-Grant Provisions

12 Inter Partes Review Replaces current inter partes reexamination An inter partes post-grant proceeding may be instituted only if: The Petition is filed after the later of 9 months from patent issuance or termination of a post-grant review; Must be anticipation or obviousness based on patents or printed publications Cannot be initiated if: Petitioner filed a civil action challenging validity; or It has been more than six months since the petitioner was served with a Complaint

13 Inter Partes Review The standard of review for initiation is a substantial new question of patentability Review proceeding would be conducted by a patent judge, not examiner Includes discovery and oral hearing Appeal directly to Federal Circuit Final determination is mandated to be not later than one year after the proceeding is instituted, or eighteen months for good cause Prior to decision, parties may file written settlement and request termination Effective: September 16, 2012 (Current reexaminations will continue)

14 Post-Grant Review Additional option to current ex parte reexamination Within nine months of patent issuance, third party may request cancellation of any claims on any grounds Same petition requirements Similar procedure and effect as inter partes review

15 Supplemental Examination Patent owner may request supplemental examination to consider, reconsider or correct information relevant to patent USPTO must decide within 3 months whether to order reexamination based on substantial new question of patentability Patent may not be held unenforceable based on information that is considered or reconsidered

16 Transitional Business Method Review Program Accused infringers may institute post-grant review of business method claims Generally subject to new post-grant procedures without time and firstto-file restrictions Estoppel from reasserting invalidity claim on same grounds after final decision Four-year sunset Effective: September 16, 2012

17 Litigation Provisions

18 False Marking Only the United States or a person suffering competitive injury may file civil action for damage adequate to compensate for injury Qui tam actions of any person are eliminated Effective: Upon enactment, including pending suits

19 Virtual Marking Instead of listing patent numbers, the designation of Patent or Pat. may be used with Internet domain name address that includes relevant patents Beneficial where it is undesirable to include a long list of patent numbers on products Effective: Suits commenced after enactment

20 Multiple Defendants Can t sue multiple based solely on the allegation that each party infringes the same patent

21 Best Mode Failure to disclose best mode cannot be used to invalidate patent Effective: Upon enactment, including pending suits

22 Advice of Counsel: Willfulness The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent or the failure of the infringer to present such advice to the court or jury may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent. Codifies In re Seagate Technology

23 Stays, Estoppel & Damages Court may not stay preliminary injunction motion based on a petition for ex parte post-grant review if the patent owner files suit within three months of patent issuance Post-grant final written decisions estop claiming invalidity of subject patent (except as to grounds that could not otherwise have been reasonably raised)

24 Stays, Estoppel & Damages Supplemental review insulates patent owners from unenforceability on remedied deficiencies (with noted FDA and defense exceptions) All limitations on damages struck