The America Invents Act- What You Need To Know

Transcription

1 The America Invents Act- What Yu Need T Knw Reprinted fr ChIPs Summit Octber 10, 2012

2 The Leahy-Smith America Invents Act Mst significant change t the Patent Act since 1952 Changes t patent prsecutin prcedures and standards Litigatin refrms New prcedures fr challenging patents at the Patent & Trademark Office (PTO) 2

3 The Key Prvisins First t File will harmnize U.S. with the rest f the wrld Significant differences will cntinue t exist Imprtant changes t what cnstitutes prir art Optin fr priritized patent prsecutin 3

4 The Key Prvisins (cnt d) Ntable litigatin changes Unlikely t significantly impact litigatin utcme New prcedures at the patent ffice t challenge yur cmpetitrs bad patents Unclear whether they are better than current prcedures 4

5 AIA Implementatin Unless therwise specified, the AIA s prvisins g int effect n September 16, 2012 First-t-file rules g int effect n March 16, 2013 Few changes t patent prsecutin have gne int effect Increased fees t file patent applicatins Priritized examinatin Mst changes affecting litigatin are nw in effect 5

6 AIA s Impact n Patent Prsecutin 6

7 I. Change t First-Inventr-t-File System March 16, 2013 First-t-Invent System Changes t First-Inventr-t-File System 7

8 Tday: Wh Gets a Patent? Wilbur invents airplane n January 1, 2012 Wilbur files patent applicatin n April 1, 2012 Wilbur gets the airplane patent because Wilbur was the first t invent Orville invents airplane n February 1, 2012 Orville files patent applicatin n March 1,

9 After March 15, 2013: Wh Gets a Patent? Wilbur invents airplane n January 1, 2014 Wilbur files patent applicatin n April 1, 2014 Orville invents airplane n February 1, 2014 Orville files patent applicatin n March 1, 2014 Orville gets the airplane patent, because Orville was the first t file 9

10 Practice Tip # 1 File First! Need t review inventin disclsure and patent filing prcesses Identify and remve bttlenecks in inventin disclsure prcess Build IP brainstrming sessins int prduct develpment schedules Increase frequency f IP Review Bard meetings Imprve quality and cmpleteness f disclsures Reassess patent filing prcess and strategies Use law firms that can cmplete high quality applicatins reasnably quickly Cnsider filing serial prvisinal applicatins if design changes are made thrughut the develpment prcess 10

11 Is It Really That Simple?... N Pre-filing events that will prevent yu frm getting a patent: Smene else files a patent applicatin describing the inventin An article, patent applicatin, r patent describing the inventin publishes The inventin is publicly used The inventin (e.g., a prduct embdying the inventin) is n sale... anywhere in the wrld 11

12 Defined Scpe f Prir Art First t invent (Existing Statute 35 U.S.C. 102(a), (b), and (e)): N patent if - the inventin was knwn r used by thers in this cuntry, r patented r described in a printed publicatin in this r a freign cuntry, befre the inventin theref by the applicant fr patent - the inventin was patented r described in a printed publicatin in this r a freign cuntry r in public use r n sale in this cuntry, mre than ne year prir t the date f the applicatin fr patent in the United States - the inventin was described in - (1) an applicatin fr patent, published under sectin 122(b), by anther filed in the United States befre the inventin by the applicant fr patent r (2) a patent granted n an applicatin fr patent by anther filed in the United States befre the inventin by the applicant fr patent, except that an internatinal applicatin filed under the treaty defined in sectin 351(a) shall have the effects fr the purpses f this subsectin f an applicatin filed in the United States nly if the internatinal applicatin designated the United States and was published under Article 21(2) f such treaty in the English language 12

13 Defined Scpe f Prir Art (cnt d) First inventr t file (New Statute 35 U.S.C. 102(a)(1) and (2)): N patent if - the claimed inventin was patented, described in a printed publicatin, r in public use, n sale, r therwise available t the public befre the effective filing date f the claimed inventin - the claimed inventin was described in a patent issued under sectin 151, r in an applicatin fr patent published r deemed published under sectin 122(b), in which the patent r applicatin, as the case may be, names anther inventr and was effectively filed befre the effective filing date f the claimed inventin 13

14 Main Differences in Scpe f Prir Art Timing f prir art publicatins, public uses, and patent filings Befre inventin (existing rule) v. befre effective filing date (new rule) - N mre swearing behind this prir art Timing f prir art sales Mre than ne year befre effective filing date (existing rule) v. befre effective filing date (new rule) Lcatin f sales and public uses In the U.S. (existing rule) v. anywhere in the wrld (new rule) Prir art date fr U.S. patents and published applicatins that claim freign pririty U.S. filing date (existing rule) v. freign pririty date (new rule) 14

15 Prir Use, Sale, and Disclsure Example Wilbur invents airplane n January 1, 2014 Wilbur files patent applicatin n March 1, 2014 Under existing rules, Wilbur may be entitled t the airplane patent (demnstratin nt in the U.S., sale nt mre than ne year prir t filing date, and may be able t swear behind publicatin) On February 1, 2014, Orville des ne f the fllwing: 1. Demnstrates a prttype airplane t Lindbergh in France 2. Sells an airplane t Earhart in the United States 3. Describes hw t make an airplane in Aviatin Week Under new rules, Wilbur is nt able t get the patent, because Orville made a prir use, sale, r disclsure befre Wilbur filed his patent applicatin 15

16 What If Yur Inventr Tells the Wrld Befre Telling Yur Patent Lawyer? An inventr s public disclsures will nt preclude a patent, if they are made within ne year f the filing f the patent applicatin AKA the grace perid An inventr s public articles and speeches are nt prir art if made within ne year f patent applicatin Unclear whether the grace perid applies t public uses r sales In fact, the inventr s public disclsures can give the inventr pririty ver later filed patent applicatins But rights will be lst abrad 16

17 Wilbur invents airplane n February 1, 2014 Wilbur publishes an article in Aviatin Week fully describing hw t build his airplane n March 1, 2014 Wilbur files patent applicatin n May 1, 2014 Under new rules, Wilbur gets the airplane patent -- he was first t publish and filed his patent applicatin within ne year f first publicatin Orville invents airplane n January 1, 2014 Orville files patent applicatin n April 1, 2014 Under existing rules, Orville gets the airplane patent he was first t invent

18 Practice Tip # 2 The Grace Perid is a Backup Plan Nt A Strategy Teach yur inventrs t file patent applicatins BEFORE making the inventin public But even if they publicly disclse their inventin, yu may still be able t invke the grace perid t btain U.S. patent Nte - public disclsure must fully supprt claimed inventin t be entitled t pririty; freign patent rights will be lst in mst cuntries 18

19 The Virtues f Cmmn Ownership Cmmnly wned U.S. patents and applicatins will nt be prir art in many cases This applies when Applicatin 1 was effectively filed prir t Applicatin 2 but did nt publish/issue prir t the effective filing date f Applicatin 2 Applicatins 1 and 2 are wned by the same persn r subject t an bligatin f assignment t the same persn r subject t a jint research agreement, and The cmmn wnership existed n later than the effective filing date f the claimed inventin 19

20 Cmmn Ownership Cmparisn Existing Rule - Cmmnly wned patents and applicatins cannt be used t render claims bvius but can be used t anticipate claims; cmmn wnership must exist as f inventin date New Rule - Cmmnly wned patents and applicatins cannt be used t render claims bvius r t anticipate claims; cmmn wnership must nly exist as f effective filing date f claimed inventin 20

21 Can I Get a Patent Based n Anther Persn s Inventin? N Derivatin (i.e., stealing an inventin) = N Patent Inventr is defined as the individual r, if a jint inventin, the individuals cllectively wh invented r discvered the subject matter f the inventin. First-inventr-t-file system, nt a first-t-file system 21

22 Derivatin Example 1 Wilbur invents airplane n January 1, 2014 Wilbur files patent applicatin n March 1, 2014 Wilbur gets the airplane patent, because Orville s wrk was derived frm Wilbur s Orville brrws Wilbur s lab ntebk and files a patent applicatin n February 1, 2014

23 Derivatin Example 2 Wilbur invents airplane n January 1, 2014 Wilbur files patent applicatin n March 1, 2016 (mre than ne year after publicatin in Aviatin Week) Orville brrws Wilbur s lab ntebk and publishes a descriptin f the airplane in Aviatin Week and files a patent applicatin n February 1, 2014 Neither Orville nr Wilbur gets the airplane patent: 1. Orville s wrk was derived frm Wilbur s 2. Wilbur waited mre than a year t file an applicatin after his wn wrk was published

24 Practice Tip # 3 Maintain Ntebks Cntinue t maintain labratry ntebks s yu can prve inventrship in derivatin prceedings These lab ntebks may als prve useful in litigatin 24

25 II. Priritized Patent Examinatin Pay additinal fee fr faster examinatin USPTO gal: final dispsitin n average 12 mnths frm date f priritized status Patent applicatins filed after Sept. 25, 2011 Limit f 10,000 requests fr priritized exam each year 25

26 Priritized Examinatin Requirements Applicatin must be cmplete Fees f abut $6,500: $1,250 in filing fees $4,800 priritized examinatin fee; $130 prcessing fee; and $300 publicatin fee Claims: Limited t 4 independent claims, 50 ttal claims N multiple dependent claims Request fr Priritized Examinatin File applicatin electrnically 26

27 Practice Tip # 4 Use Priritized Examinatin t Obtain Strategic Patents Quickly btain strategically imprtant patents Licensing Litigatin Priritized examinatin makes the mst sense when yu have a gd handle n the prir art and can draft highly fcused claims File cntinuatins and quickly btain fllw n patents The cntinuatins will likely als be examined quickly, and fr n extra fee 27

28 AIA s Impact n Patent Litigatin 28

29 AIA s Litigatin Prvisins Virtual patent number marking allwed N mre jinder f unrelated defendants Failure t btain advice f cunsel nt admissible t prve willfulness & inducement False marking suits vaprized Best mde defense eliminated Prir user defense created Litigatin changes are imprtant but unlikely t have significant impact verall n the number f cases, wh wins, r the amunt f damages 29

30 CAFC Beats Cngress t the Punch n Refrm Many f the early litigatin refrm prpsals in Cngress became mt r less imprtant because f changes in the Curts Venue In re TS Tech USA Crp. (2008) (Texas) In re Link_A_Media Devices (2011) (Delaware) Damages Lucent v. Gateway (Fed. Cir. 2009) Unilc USA, Inc. v. Micrsft Crp. (2011) 30

31 CAFC Beats Cngress t the Punch n Refrm (cnt d) Patent Marking Pequignt v. Sl Cup C. (2010) Willfulness In re Seagate Technlgy, LLC (2007) Inequitable cnduct & unenfrceability Levitn Mfg. C., Inc. v. Universal Sec. Instruments, Inc. (2010) Therasense, Inc. v. Bectn Dickinsn and C. (2011) 31

32 Frecast: Increased Use f Virtual Patent Marking Virtual marking makes it easier fr patent wners t prvide ntice f their patents and get pre-suit damages Patent hlder may prvide web address n prduct List all patents that cver the prduct The web page shuld be publicly available Update the web page regularly Keep a lg f web page mdificatins Keep the URL alive Mark the URL n the prduct itself nt just n packaging r user manuals 32

33 Frecast: Multi-Defendant NPE Cases Will Cntinue Unabated AIA s anti-jinder rules make it difficult t file ne suit naming multiple defendants Nthing prevents a plaintiff frm filing 30 separate lawsuits n the same day The cases will likely be jined fr pre-trial activities (status cnferences, discvery, claim cnstructin) But defendants shuld get separate trials unless liability arises ut f the same transactin 33

34 Frecast: Mre ITC Investigatins AIA s jinder prvisins d nt apply t ITC investigatins Advantages f ITC investigatins: Injunctive relief Trial in 8-10 mnths Difficult fr respndent t assert cunterclaims 34

35 Frecast: Mre Cases Will Be Litigated Outside f Texas and Delaware AIA s requirement that each defendant be named in a separate suit makes it easier t transfer a case t the defendant s hme curt Mandamus decisins are making parties think hard abut filing suit in jurisdictins with n relatin t the case 35

36 Frecast: Mre Patents Will Be Fund Invalid Pririty dates will be later in time (filing vs. inventin) Mre prir art under the AIA: Freign patents get freign pririty date Freign uses Freign sales Will new PTO prcedures lead t mre invalidity challenges? 36

37 Frecast: Mre Cmpanies Will Seek Freedm t Operate Opinins The accused infringer may rely n a legal pinin t tell a jury that it did nt think it was infringing, which is useful t shw: N willful infringement N inducing infringement The patentee cannt tell the jury that the accused infringer did nt get (r present at trial) a legal pinin Legal pinins can nly help the accused infringer: If the pinin is negative, dn t disclse it If it is psitive, use it at trial t shw n willfulness and n inducement 37

38 AIA s Prcedures fr Challenging the Validity f a Patent 38

39 PTO Prceedings Under AIA Supplemental examinatin Third party pre-issuance submissins Pst-grant review Inter partes review Ex parte reexaminatin Citatin f prir art and written statements Derivatin prceedings Pst grant review initiated by patent wner Pre-grant submissin by third parties Pst-grant reviews initiated by third parties Pst-grant review (patent wner r third-party) Pst-grant submissin by third parties Pst-grant challenge t inventrship by applicant 39

40 Pst Refrm USPTO Prceedings Prceeding When Des It Apply? Grunds (Prir Art) Estppel? Expected Cst Supplemental Examinatin -Available starting n Sept. 16, Applies t all patents Any infrmatin N/A $30-50K Third party pre-issuance submissins -Available starting n Sept. 16, Applies t all patent applicatins -Time limits n filing request Patents/published patent apps/printed publicatins N/A Less than $5K Pst-grant review (9 mnth windw) -Available starting n Sept. 16, Applies nly t patents having a claim with a pririty date n r after March 16, 2013 Any invalidity grund Raised r reasnably culd have raised Very expensive Inter partes review (after P.G.R.) -Available starting n Sept. 16, Applies t all patents Patents/published patent apps/printed publicatins Raised r reasnably culd have raised $ K Ex parte reexam (unchanged) Available nw Patents/published patent apps/printed publicatins Nne $30-50K 40

41 Hw D Yu Chse? Which prcedures are applicable? Will the patentee be allwed t amend claims? Estppel Cst Speed Annymity vs. participatin Cmplexity f technlgy Legal Standards Claim cnstructin Prf f invalidity 41

42 Scenari: The Vulnerable Startup Yu are a small startup with ne sftware prduct Yu learn f a patent that has just been issued t a large cmpany that arguably cvers yur prduct The large cmpany des nt have a licensing prgram and des nt get invlved in much patent litigatin Yu are aware f a Japanese language article that appears t be anticipatry prir art; there may be ther art, but yu haven t wanted t spend the mney t search fr it D yu file a pst-grant review, file an ex parte reexaminatin, wait t file inter partes review, file declaratry judgment actin, get an pinin f cunsel, r just d nthing? 42

43 Scenari: The Humbled Licensr Yur cmpany is lking t license a patent that has little value t yur cmpany, but has substantial value t ther cmpanies A ptential licensee disclses a very gd piece f prir art and says they wn t take a license because the patent is invalid Yur GC wants t file suit t shw that yu are serius abut yur licensing campaign Yu speak t yur inventrs and learn that they knew f the art but thught it was nt relevant D yu file fr supplemental examinatin, file an ex parte reexaminatin, r prceed with the litigatin? 43

44 Scenari: The Bellicse Cmpetitr Cmpetitr sues yur cmpany fr infringement f multiple patents Cmpetitr s gal is t prevent yu frm selling cmpeting prduct with $50M in annual sales Yu have cnducted a search f the PTO database and lcated sme gd prir art (U.S. patents) Yu think the cmpany may have been selling its prduct mre than ne year befre it sught a patent D yu file a pst grant review, wait fr inter partes review, file an ex parte reexaminatin, r fight invalidity in district curt? 44

45 Scenari: The Talkative Inventr Yur inventr gives a speech at a cnference n Nvember 15, 2012, describing her new inventin A cmpetitr files a patent applicatin n March 30, 2013, claiming her inventin Yu file a patent applicatin n April 30, 2013 In 2014 yu learn f the cmpetitr s applicatin and suspect that they learned f the inventin at the cnference What are yur ptins? 45

46 Fr mre infrmatin, please cntact: Christpher Dilln Fish & Richardsn P.C. Mike Hamlin Fish & Richardsn P.C. 46