PATENT PROSECUTION STRATEGIES IN AN AIA WORLD: SUCCEEDING WITH THE CHANGES

PATENT PROSECUTION STRATEGIES IN AN AIA WORLD: SUCCEEDING WITH THE CHANGES BY: Juan Carlos A. Marquez Stites & Harbison PLLC 1

OVERVIEW I. Summary Overview of AIA Provisions II. Portfolio Building Side of Prosecution III. Adversarial Side of Prosecution IV. Conclusions & Comments 2

OVERVIEW I. Summary Overview of AIA Provisions A. First-Inventor-to-File B. Post-Grant Proceedings C. Fee Schedule 3

I. Summary Overview of AIA Provisions A. First-Inventor-to-File - Definition of Prior Art (35 USC 102(a)) --... patented, described in a printed publication, or in public use, on sale, or otherwise available to the public... --... described in a patent... or in an application for patent published or deemed published... - Novelty Requirements (35 USC 102(a)) -- Based on the effective filing date of the claimed invention - One Year Grace Period (35 USC 102(b)) -- Effectively creates the First to Disclose rule 4

I. Summary Overview of AIA Provisions A. First-Inventor-to-File - Nature of examination (37 CFR 1.104) -- Statement of common ownership of invention and prior art - Affidavit or declaration of attribution, prior disclosure, or derivation (37 CFR 1.130) -- Submission of affidavits/declarations against a rejection based on a disclosure by or derived from the inventor 5

I. Summary Overview of AIA Provisions A. First-Inventor-to-File - Separating claimed subject matter with priority before March 16, 2013 and after March 16, 2013 -- If an application filed on or after March 16, 2013 contains at least one claim that only has an effective filing date on or after March 16, 2013, ALL claims in the will be subject to examination under AIA provisions EVEN IF THE ONE CLAIM IS LATER CANCELED -- Claim for Foreign Priority (37 CFR 1.55) -- Claiming benefit of earlier filing date and crossreferences to other applications (37 CFR 1.78) 6

I. Summary Overview of AIA Provisions B. Post-Grant Proceedings Post-Grant Review Inter Partes Review Supplemental Examination Ex Parte Reexamination Transitional Review of Business Method Patents 7

B. Post-Grant Litigation Post-Grant Review - Challenge validity on any grounds, including unpatentable subject matter or lack of enablement (35 U.S.C. 101, 112) - NOT limited to patents or printed publications (35 U.S.C. 102, 103) - Must be filed within nine (9) months of the patent grant and be completed in one year - STANDARD: More likely than not that at least one claim is unpatentable, OR raise a novel or unsettled legal question that is important to other patents or patent applications 8

B. Post-Grant Litigation Inter Partes Review - Challenge novelty and non-obviousness only based on patents or printed publications (35 U.S.C. 102, 103) - Must file within one year after a patent issues, is reissued or concludes a post-grant review, whichever occurs later, and must be completed within one year of commencement - STANDARD: A reasonable likelihood of prevailing with respect to at least one claim in order to commence inter partes review 9

B. Post-Grant Litigation Supplemental Examination - Designed to rehabilitate a patent obtained through inequitable conduct - Patent owner can request the USPTO to consider, reconsider, or correct information believed relevant to the patent with respect to subject matter (35 U.S.C. 101), lack of enablement (35 U.S.C. 112), or novelty/nonobviousness based on patents or printed publications (35 U.S.C. 102, 103) - If a substantial new question of patentability is raised, an ex parte reexamination will be ordered 10

B. Post-Grant Litigation Ex Partes Reexamination - Challenge novelty and non-obviousness only based on patents or printed publications (35 U.S.C. 102, 103) - Must file within one year after a patent issues, is reissued or concludes a post-grant review, whichever occurs later, and must be completed within one year of commencement - STANDARD: A substantial new question of patentability is raised - No limit to the number of times ex parte reexamination can be requested 11

B. Post-Grant Litigation Review of Business Method Patents - Review of covered business method (CBM) patents that claims a method or corresponding apparatus for performing data processing operations utilized in the practice, administration or management of a financial product or service, except that the term does not include patents for technological inventions. - Persons charged with or sued for infringement may petition the USPTO, and request a stay of litigation - This program will be repealed after September 15, 2020 12

I. Summary Overview of AIA Provisions C. Fee Schedule FEE INCREASE BEFORE MARCH 19 AFTER MARCH 19 COMMENTS Utility Application Filing Fee $1260.00 $1600.00 Includes basic, search and examination fees for all utility non-provisional, continuation, divisional and continuation-inpart applications Independent Claims Fee Total Claims Fees $250.00 for each claim in excess of 3 $62.00 each claim in excess of 20 $420.00 for each claim in excess of 3 $80.00 each claim in excess of 20 Applies to all utility nonprovisional, continuation, divisional and continuation-inpart applications Applies to all utility nonprovisional, continuation, divisional and continuation-inpart applications Design Application Filing Fee $530.00 $760.00 Includes basic, search and examination fees for all utility non-provisional, continuation, divisional and continuation-inpart applications First RCE Filing Fee $930.00 $1200.00 Second and Subsequent RCE Filing Fee $930.00 $1700.00 Issue Fee $1770.00 $1780.00 Effective only March 19 to December 31, 2013 13

I. Summary Overview of AIA Provisions C. Fee Schedule FEE REDUCTION CURRENT FEE AFTER MARCH 19 COMMENTS Assignment Recordation Fee $40.00 Fee will be waived if filed via EFS Effective starting January 1, 2014 Issue Fee $1780.00 $960.00 Effective starting January 1, 2014 Request for Prioritized Examination Fee $4800.00 $4000.00 FEE INCREASE BEFORE MARCH 19 AFTER MARCH 19 COMMENTS Notice of Appeal Fee $630.00 $800.00 First stage in appeal process prior to PTAB consideration Appeal Brief Filing Fee $630.00 NONE Appeal Forwarding to the PTAB Fee NONE $2000.00 Final stage in appeal process prior to PTAB consideration 14

I. Summary Overview of AIA Provisions C. Fee Schedule FEE INCREASE BEFORE MARCH 19 AFTER MARCH 19 COMMENTS Utility Application Size Fee $320.00 $400.00 For each additional 50 sheets in excess of 100 sheets First Month Extension of Time Fee Second Month Extension of Time Fee Third Month Extension of Time Fee Fourth Month Extension of Time Fee Fifth Month Extension of Time Fee Maintenance Fee at 3.5 years Maintenance Fee at 7.5 years Maintenance Fee at 11.5 years $150.00 $200.00 $570.00 $600.00 $1290.00 $1400.00 $2010.00 $2200.00 $2730.00 $3000.00 $1150.00 $1600.00 $2900.00 $3600.00 $4810.00 $7400.00 15

OVERVIEW II. Portfolio Building Side of Prosecution A. First Inventor to Disclose B. Application Preparation & Filing C. Advancing Prosecution D. Continuation & Divisional Practice E. Information Disclosure Statement Practice F. RCE Practice 16

II. Portfolio Building Side of Prosecution A. First Inventor to Disclose - Secure earliest priority date (1 year) by: (1) Filing one or more provisional applications on an invention; OR (2) Publicly disclosing the invention; OR (3) Claiming priority to a pending non-us application; OR (4) Preparing and filing a US non-provisional application as early as possible; OR (5) Preparing and filing a PCT application as early as possible FIRST. 17

II. Portfolio Building Side of Prosecution A. First Inventor to Disclose - Protect against misappropriation of an invention by third parties - Only derivative proceeding at the PTAB can resolve this issue (1) Control disclosure of the invention to third parties until an application is filed: (2) Secure employment agreements and non-disclosure agreements from all parties involved with the invention; (3) Investigate prior work of all inventors to secure ownership of the invention. 18

II. Portfolio Building Side of Prosecution A. First Inventor to Disclose - Protect against misappropriation of an invention by third parties (3) Investigate prior work of all inventors to secure ownership of the invention: -- prior and upcoming publications -- prior and upcoming lectures -- prior work disclosures -- prior inventions and patents obtained independently and/or for prior employers 19

II. Portfolio Building Side of Prosecution B. Application Preparation & Filing - To make the prosecution more efficient, the provisions and fees under the AIA are designed to encourage: - Shorter (100 total pages or less) but detailed patent applications - Fewer (3 independent, 20 total) claims per application - Filing claims that vary in scope (broad claims and narrow claims) -- Grouping broad claims to be filed in one application and narrower claims in another application -- Grouping claims for one embodiment in one application and other embodiments in further applications 20

II. Portfolio Building Side of Prosecution B. Application Preparation & Filing - To make the prosecution more efficient, the provisions and fees under the AIA are designed to encourage: (cont.) - Separating claims that have priority before March 16, 2013 and claims that only have priority on or after March 16, 2013 EXAMPLES: - Provisional application filed before March 16 and nonprovisional application filed after March 16 - Parent application filed before March 16 and continuationin-part filed after March 16 21

II. Portfolio Building Side of Prosecution B. Application Preparation & Filing - Prepare and file a non-provisional application that covers a narrower claim scope -- Disclosure must still be thorough and detailed to minimize risk of attack by post-grant review proceedings - Consider filing separate related applications for separate groups of broad and narrow claims to avoid exposure of all related claims to post-grant review at the same time 22

II. Portfolio Building Side of Prosecution B. Application Preparation & Filing - To make the prosecution more efficient, the provisions of the AIA are designed to encourage: - Thorough research of the prior art to identify patentable subject matter - Thorough analysis of the prior art to identify distinguishing features to claim - Use of various programs to advance or accelerate prosecution 23

II. Portfolio Building Side of Prosecution C. Advancing Prosecution 1. Patent Prosecution Highway - Most cost effective if priority application has allowed claims 2. First Action Interview Program - Cost effective if claims are narrow and prior art is not crowded 3. Prioritized Examination Program - Somewhat costly and only guarantees final disposition in twelve months 4. Accelerated Examination - Most costly to prepare and prosecute 5. Other Special Prosecution Options - Special consideration for age and health of applicant 24

II. Portfolio Building Side of Prosecution 1. Patent Prosecution Highway - An applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim is patentable may request that the office of Second Filing (OSF) fast track the examination of the corresponding claims in corresponding applications - Examination will occur within two to three months from the grant of the PPH request provided the application has completed all its pre-exam processing and is ready for examination - No petition fee for making a PPH request - The program has expanded to permit PPH eligibility for national- and regional-phase applications under the PCT 25

II. Portfolio Building Side of Prosecution 1. Patent Prosecution Highway - USPTO has PPH arrangements with the intellectual property offices of the following jurisdictions: Australia Iceland Spain Austria Israel Sweden Canada Japan Taiwan China Korea United Kingdom Colombia Mexico Czech Republic Nordic Patent Institute Denmark Norway EPO Philippines PCT-PPH Finland Portugal Germany Russia Hungary Singapore 26

II. Portfolio Building Side of Prosecution 2. First Action Interview Program - An applicant is entitled to a first action interview, upon request, prior to the first Office Action on the merits. - The examiner will conduct a prior art search and provide applicant with a condensed pre-interview communication citing relevant prior art and identifying proposed rejections or objections. - Within 30 days of receipt, applicant schedules an interview and submits proposed amendments and/or arguments. - If agreement is not reached, the applicant will receive a first action interview Office Action that includes an interview summary that constitutes a first Office Action on the merits under 35 USC 132. 27

II. Portfolio Building Side of Prosecution 3. Prioritized Examination Program - Prioritized examination is a procedure for expedited review of a patent application for an additional fee. The goal is to provide a final disposition within twelve months of prioritized status being granted. - Nonprovisional utility and plant patent applications having no more than 4 independent claims, 30 total claims, and no multiple dependent claims are eligible for Prioritized Examination (Track I). - Requests for prioritized examination of utility patent applications must be filed using EFS-Web. - The request for prioritized examination must be present on filing of the utility or plant application. 28

II. Portfolio Building Side of Prosecution 4. Accelerated Examination (1) The application must be filed via EFS-Web with: (a) required petition fee, or (b) a statement that the claimed invention is directed to environmental quality, development or conservation of energy resources, or counter terrorism; (2) The application must be complete and in condition for examination; (3) The application must contain three or fewer independent and twenty or fewer total claims, and must not contain any multiple dependent claims; (4) The claims must be directed to a single invention; 29

II. Portfolio Building Side of Prosecution 4. Accelerated Examination (5) The petition must include a statement agreeing to have an interview; (6) Applicant must provide a statement that a pre-examination search was conducted that meets certain requirements; and (7) Applicant must provide an accelerated examination support document that satisfies certain requirements. - Goal is to complete examination of an application within 12 months from the filing date of the application. - Applications are placed on an accelerated examination track throughout the entire prosecution in the USPTO. 30

II. Portfolio Building Side of Prosecution 5. Other Special Prosecution Options - A petition to make an application special may be filed without a fee if the basis for the petition is: (1) The applicant s age or health; or (2) That the invention will materially: (i) Enhance the quality of the environment; (ii) Contribute to the development or conservation of energy resources; or (iii) Contribute to countering terrorism. 31

II. Portfolio Building Side of Prosecution D. Continuation & Divisional Practice - Use continuations and divisionals to claim distinct embodiments or inventions in an application - Use continuations to cover broader claims once the narrower claims are allowed in an earlier parent application - Use continuations to separate claims that have priority before March 16, 2013 from claims that only have priority on or after March 16, 2013 32

II. Portfolio Building Side of Prosecution E. Information Disclosure Statement Practice - To avoid the Examiner finding prior art more relevant than the prior art known to the applicant OR to minimize the impact of third party submissions, applicants are encouraged to: (1) Conduct thorough prior art searches early in the prosecution (i.e., at the time of filing); (2) Submit new prior art from searches conducted in related pending applications, both US and foreign cases; (3) Consider timing US prosecution to coincide with prosecution of equivalent foreign cases 33

II. Portfolio Building Side of Prosecution F. RCE Practice - DISCOURAGES filing more than one RCE in a single application (to avoid higher fees for the second or subsequent RCEs) - Encourages submitting and/or amending claims that are narrower to obtain allowance earlier in the prosecution - Encourages more communication with the Examiner to negotiate claims that will be allowed - WARNING: This will require that all Examiners be more willing to allow amending claims after final rejection to avoid filing RCE to have the amendments considered. 34

OVERVIEW III. Adversarial Side of Prosecution A. Third Party Prior Art Submission B. Post-Grant Review C. Inter Partes Review D. Ex Parte Reexamination E. Claim Scope Negotiation 35

III. Adversarial Side of Prosecution A. Third Party Prior Art Submission - The provisions of the AIA encourage third parties to submit prior art in pending applications - Requires due diligence in monitoring competitor patent procurement activities: -- aggressive prior art searching and data mining strategies to identify relevant prior art -- aggressive pre-issuance submissions against competitor s key patent applications - Less expensive than post-grant proceedings - Submission must conform to USPTO requirements to be considered 36

III. Adversarial Side of Prosecution A. Third Party Prior Art Submission - To minimize the impact of third party submissions, applicants should: (1) Conduct thorough prior art searches early in the prosecution (i.e., at the time of filing); (2) Submit new prior art from searches conducted in related pending applications, both US and foreign cases; (3) Consider timing US prosecution to coincide with prosecution of equivalent foreign cases 37

III. Adversarial Side of Prosecution B. Post-Grant Review - Post-grant review and inter partes review may be effective ways to attack a competitor s key patent applications - Post-grant review now available since March 16, 2013 - Proceedings may be costly, but not as costly as conventional patent infringement litigation - Statutory time constraints puts pressure on both sides to resolve quickly - Settlement procedures are available but not yet tested 38

III. Adversarial Side of Prosecution C. Inter Partes Review - Inter partes review available since September 16, 2012 -- Since that date, over 150 IPR proceedings have been filed and twelve (12) have been allowed to be instituted - Time restrictions for filing less strict than post-grant review - The decision to allow instituting an IPR is based on a claim by claim analysis -- Petition for IPR should attack as many claims as possible in the patent to increase chance of success 39

III. Adversarial Side of Prosecution D. Ex Parte Reexamination - Traditional procedure for contesting the patentability of the invention claimed - Least costly of the post-grant procedures - Handled by the USPTO Central Reexamination Unit, NOT the PTAB - Under the AIA, the patent owner is barred from review by a district court (no opportunity to present new evidence) - Only appealable to the Patent Trial & Appeal Board or the Federal Circuit 40

III. Adversarial Side of Prosecution D. Ex Parte Reexamination - Can be initiated anytime after an inter partes review or other ex parte reexamination is completed -- opportunity to present new prior art not presented in prior proceedings -- may prevents patent owner from initiating litigation or gaining momentum in litigation 41

III. Adversarial Side of Prosecution E. Claim Scope Negotiation - Under the AIA, parties to PGR and IPR can settle the dispute with the approval of the PTAB if accomplished prior to a final decision by the PTAB -- The applicable rule has not yet been tested - Possible scenarios for negotiating settlement include agreements to: - Limit scope of claims in specific applications - Prosecute only certain claims in an application - Obtain only certain claims in one party s pending application and allow the second party to get other claims in another pending application - Compensation for prosecuting or not prosecuting certain claims - License or purchase if certain claim scope is achieved 42

III. Adversarial Side of Prosecution E. Claim Scope Negotiation - Negotiating claim scope may be more successful if presented to the applicant: - During normal pendency of an application - During normal pendency under threat of third party prior art submission - After application is allowed but before the issue fee is paid - Under threat of a post-grant review (within nine months of grant) - Under threat of an inter partes review (within one year of patent issuance or during pendency of a post-grant review) 43

IV. Conclusion & Comments - The AIA has shifted the US to a new way of thinking in obtaining and enforcing U.S. patents and patent applications: -- More open to the public and competitors -- More adversarial and competitive -- More consistent with practices in other countries (?) 44

IV. Conclusions & Comments - The consequences of the provisions and fees of the AIA include: - Incentive for applicants to disclose and file sooner (more often?) OR file narrower applications (more applications?) - Encouraging or requiring greater coordination in patent filing strategies for the U.S. and for other countries - Encouraging competitors in very active technologies to monitor each other and attack each other s patent scope 45

IV. Conclusions & Comments - The consequences of the provisions and fees of the AIA include: (cont.) - Creating incentive for competitors to negotiate limits on claim scope of each others pending applications - Encouraging more sharing and distribution of technology between competitors, licensors and licensees to avoid costly post grant proceedings and litigation (??) 46

PATENT PROSECUTION STRATEGIES IN AN AIA WORLD Any questions? Thank you! Juan Carlos A. Marquez Stites & Harbison PLLC 1199 North Fairfax Street, Suite 900 Alexandria, VA 22315 USA 1-703-837-3930 (Voice) 1-703-739-9577 (Fax) jmarquez@stites.com 47