(SUCCESSFUL) PATENT FILING IN THE US February 26th, 2014 Pankaj Soni, Partner www.remfry.com The America Invents Act (AIA) The America Invents Act, enacted in law on September 16, 2011 Represents a significant change to United States patent law Provisions went into effect on March 16, 2013 First To File Filing By Assignee Prioritized examination Best mode requirement diluted Interference proceedings eliminated New Post-Grant Review Proceedings Post-Grant review Transitional Program for Covered Business Method Inter Partes review 2 1
First-to-file And The America Invents Act Time Jan 2014 Feb 2014 March 2014 April 2014 Activity Inventor A invents widget X Inventor B invents widget X Inventor B files patent application Inventor A files patent application First-to-invent : Inventor A gets the patent Inventor A discloses widget X in a trade fair First-to-File (with Disclosure): First-to-file: Inventor A gets the Inventor patent B gets the patent 3 4 13 Steps to A U.S. Patent http://www.uspto.gov/patents/process/ppo_textonly.jsp Step Actor Activity 1 Applicant Threshold determination Has your invention already been patented? Search If already patented, end of process If not already patented, continue to Step 2 2 Applicant Application type Design/Plant/Utility Design Patent (ornamental characteristics) Plant Patent (new variety of asexually reproduced plant) Utility Patent (useful process, machine, article, composition) 3 Applicant Determine Filing Strategy File Globally? File in U.S.? - continue to Step 4 4 Applicant Utility Application type Provisional or Non-provisional 5 Applicant Consider Expedited Examination Prioritized Examination Accelerated Examination Program First Action Interview Patent Prosecution Highway 2
13 Steps to A U.S. Patent http://www.uspto.gov/patents/process/ppo_textonly.jsp 5 Step Actor Activity 6 Applicant Filing Strategy File Yourself OR Use an Agent (Recommended) 7 Applicant Prepare For Electronic Filing Use filing checklist for preparing documents 8 Applicant File Application Use Electronic Filing System as a Registered e-filer (Recommended) 9 USPTO USPTO Examines Application Allowed? Yes, Got To Step 12 No, continue to Step 10 10 Applicant Prosecution File replies, requests for reconsideration, and appeals (as necessary) 11 USPTO Allowance If objections and rejection of the examiner are overcome, USPTO sends Notice of Allowance and Fee(s) due 12 Applicant Grant Pay the issue fee/publication fee - USPTO Grants Patent 13 Applicant Maintenance Pay Maintenance Fees - 3 1/2, 7 1/2 and 11 1/2 years after grant Type of Applications PROVISIONAL APPLICATION Obtain priority for an invention Within 12 months time COMPLETE APPLICATION CONTINUATION APPLICATION (1) Filed for covering distinct subject matter (2) Claim priority from basic application CONTINUATION-IN PART APPLICATION (1) Filed for covering improved/additional subject matter (2) Claim priority to basic application for original subject matter (3) Claim priority to instant application for new subject matter 6 3
Examination Procedures (Primary Differences US and India) India Request For Examination Filed Separately Within 48 Months From Earliest Priority No Extensions Available No Continued Examination Procedure Examination Reports are (often) vague on substantive objections Duty of disclosure Section 8(1), 8(2); Rule 12 U.S.A. No separate Examination Request Extension Available Continued Examination Can Be Requested Office Actions are very detailed Duty of disclosure - 37 C.F.R. 1.56 and 1.97(b)-(d) and 1.98. 7 US - Sample Examination Report 8 4
India - Sample Examination Report 1. Subject matter as described and claimed in claims 1-25 does not constitute an invention under section 2(1)(j) (lacking novelty) of the Patents Act, 1970 as amended Patent Act 2005 in view of cited documents i.e. D1: WO 03/001696 A 2. Subject matter of method claims (claims 1-12) fall u/s 3(k) being an computer network based algorithm.. 9 US - Duty To Disclose Requirements 37 C.F.R. 1.56 Duty of Candor. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section...[and] in the manner prescribed by 1.97(b)-(d) and 1.98. 10 5
Patentable Subject Matter An invention must meet the subject matter eligibility requirements under 101 101. Inventions patentable Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Judicially created exceptions laws of nature, physical phenomena, abstract ideas This is different from the patentability requirement under 102 (novelty) and 103 (non-obvious subject matter) 11 101 STATUTORY SUBJECT MATTER AND STATE OF US CASE LAWS 1. Bilski v. Kappos, 561 U.S., 130 S.Ct. 3218 (2010) Patent applied for methods of hedging risks in commodities trading. Observation of court patentable methods do not include laws of nature, natural phenomena, [or] abstract ideas. machine-or-transformation test cannot be the sole test for patent-eligible methods. Use of specific machine or transformation of article must impose meaningful limits. 12 6
101 STATUTORY SUBJECT MATTER AND STATE OF US CASE LAWS 2. CLS Bank International v. Alice Corporation Pty. Ltd., 717 F. 3d 1269 (Fed. Cir. 2013) Patent applied for a computerized trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate settlement risk. District Court held that (Post Bilski) Alice s 4 patents were invalid under 101. Federal Circuit En banc Decision - released seven different opinions but held, without clarification- that the method and computer-readable medium claims lack subject matter eligibility; system claims were affirmed without agreement. Appealed to Supreme Court and will be heard in 2014. 13 101 STATUTORY SUBJECT MATTER AND STATE OF US CASE LAWS 3. Ultramercial, Inc. v. Hulu, LLC (Fed. Cir. 2013) Patent for method for distributing copyrighted products over the Internet where the consumer receives a copyrighted item paid by an advertiser in exchange for viewing the advertisement. Federal Circuit (reversed the District Courts finding) and held that: Congress intended 101 to be read expansively. A claim can embrace an abstract idea and be patentable claims an application of an abstract idea. Patent was valid "no risk of preempting all forms of advertising, let alone advertising on the Internet" and met the requirements of 101. 14 7
Before We Go USPTO and IPO Filings by Indian Residents Year Filed in USPTO Filed in India 2009 2878 7044 2010 3696 8312 2011 4482 8921 2012 5515 -- 15 US is an important jurisdiction to protect your inventions US has specific procedures for filing patent applications, but is not as harsh as India when it comes to deadlines Disclosure requirement is different in the US Case law, while advanced, leaves room for ambiguity Critical subject matter issues coming up before the Supreme Court in 2014 8