A New World (Patent) Order How the US Patent Reform Act (AIA) Compares with European Patent Regulations Peter Thurlow & Andreas Holzwarth-Rochford VPP-Bezirksgruppe Mitte October 10, 2012
AIA Compared to EU Practice First to File Comparison AIA Post Grant Review v. EP Opposition AIA Inter Partes Review v. German Nullity Action AIA Supplemental Examination v. EP Limitation AIA Pre-Issuance Submissions v. EP Third Party Observation AIA Derivation v. EP Fraudulent Abstraction Prior Use Defenses Outlook on Planned Changes in Europe 2
AIA first-inventor-to-file v. EP first-to-file Similarities Generally, patent right belongs to the person with the earlier priority (filing or priority date) for the same invention Prior art, comprising printed publications, use and miscellaneous publications, is relevant Worldwide No swearing behind 3
AIA first-inventor-to-file v. EP first-to-file Differences AIA Earlier but post-published US applications relevant for both novelty and obviousness EP Earlier but post-published EP applications relevant for novelty only Limited one year grace period still exists for: (i) information originating from the inventor; or (ii) other disclosure following inventor s disclosure of the invention No grace period 4
AIA Post Grant Review v. EP Opposition Similarities Time limit for request is 9 months after grant Grounds for revocation are violations of patentability requirements Appeal possible No broadening of scope of protection Subdivision of Patent Office decides (Patent Trial and Appeal Board (PTAB) / opposition division) Oral hearing in case one party requests it 5
AIA Post Grant Review v. EP Opposition Differences (I) AIA PGR Identify the real party in interest Estoppel provisions may apply on subsequent infringement/revocation proceedings EP Opposition Straw man may oppose Germany: No estoppel Additional grounds for revocation inadmissible extension of disclosure fraudulent abstraction widerrechtliche Entnahme 6
AIA Post Grant Review v. EP Opposition Differences (II) AIA PGR Does not appear that PTAB will conduct own independent investigation May be terminated by settlement Discovery Page limits for petitions, motions and replies EP Opposition Office may conduct investigation on its own No termination by parties possible Generally no discovery proceedings No page limits for submissions 7
AIA Post Grant Review v. EP Opposition Differences (III) AIA PGR Higher degree of substantiation ( more likely than not ) for initiation of review PTAB has time limit of one year for decision EP Opposition Lower degree of substantiation ( conclusiveness ) for admissibility No strict time limit for decision 8
AIA Post Grant Review v. EP Opposition Differences (IV) AIA PGR Fees starting from $35,800.00 EP Opposition Fee of 745.00 9
AIA Inter-Partes Review v. German Nullity Action Similarities Request may be filed later than 9 months after grant or filed after closing of post grant review/opposition Grounds of revocation: o Lack of novelty / inventiveness Estoppel provisions apply also for nullification parties in Germany No broadening of scope of protection Procedure may be closed by settlement of parties 10
AIA Inter-Partes Review v. DE Nullity Action Differences AIA IPR State t of the art are solely l patent documents and printed publications Only lack of novelty or inventiveness are revocation grounds Admissibility ibilit threshold h of reasonable likelihood of success USPTO fees start t at $27,200 200 based on number of claims No outcome based fee shifting DE Nullity Action Complete state of the art Additional grounds for revocation as for opposition procedure No admissibility threshold with regard to likelihood of success Court fees start at about 5,000 based on value in dispute Loser pays other side s attorneys fees. 11
AIA Supplemental Examination v. EP Limitation Similarities Proceedings that may lead to a restriction of the scope of protection and that may be requested by patent owner Broadening of scope of protection inadmissible 12
AIA Supplemental Examination v. EP Limitation Differences AIA Supp. Exam Purpose: Ask USPTO to consider, reconsider, or correct information believed relevant to patentability Two stage procedure: (i) office decides if substantial new question of patentability exists, (ii) ex-parte reexamination if new question raised EP Limitation Purpose: Voluntarily restrict scope of European patent in central procedure for all designated states Substantive examination only considers whether amendment restricts scope of protection 13
AIA Supplemental Examination v. EP Limitation Differences AIA Supp. Exam Substantial new question of patentability must exist USPTO searches for prior art during ex parte reexamination phase Up to 10 items of information per SE request $5,180.00 fee plus $16,120.00 reexamination fee if granted EP Limitation No new information on patentability (e.g. state of the art) necessary No additional investigation by the office No item of information 1,105.00 fee 14
AIA Prior art submission v. EP Third party Observation Similarities Submission/Observation permissible after publication of application Person filing submission/observation does not become party of the examination proceedings Submission/Observation has to be substantiated No prejudice or estoppel, straw man may file 15
Excursion PCT Third party Observation In place since July 2, 2012 Can be filed at any time between the publication date and 28 months from the priority date of the International Application Have to be filed in language of the International Application 10 documents per observation allowed and 10 observations per application allowed Party filing observation might remain anonymous 16 Applicant may file comments on the observations in English, French or language of the International Application within 30 months after the priority date; comments will be made available for public inspection
AIA Prior Art Submission v. EP Third Party Observation Differences (I) AIA Only written publications citable Must be filed before the earlier of (A) notice of allowance; or (B) the later of (1) 6 months after publication or (2) date of first rejection EP Complete state of the art citable Also observations filed in opposition procedure after grant of the patent are considered by examiner(s) 17
AIA Prior Art Submission v. EP Third Party Observation Differences (II) AIA $180.00 fee for each 10 documents Submissions (prior art and statements on scope of claims by patent owner) filed outside of time frame are not considered, but do become part of the official file No fees EP 18
AIA Derivation v. EP Fraudulent Abstraction Aim is the (partial) revocation of the patent Substantiation is examined Inventor from whom the inventive idea is taken/derived may request invalidation/derivation procedure for nullification 19
AIA Derivation v. EP Fraudulent Abstraction Differences (I) AIA Derivation Only available for applicant of application with later priority Time line of one year after publication of the derived claim in application/patent Decision on admissibility not appealable Fee of $400.00 EP Fraudulent Abstraction Every inventor is legitimized Timely restriction due to time lines for revocation proceedings Decision on admissibility appealable Fee for opposition of 745.00 20
AIA Derivation v. EP Fraudulent Abstraction Differences (II) AIA Derivation Derivation proceedings may be entered during examination at the USPTO Derivation proceedings may be entered after grant at a civil court 21 EP Fraudulent Abstraction Revocation ground admissible only after grant and during opposition procedure Germany: Revocation ground admissible in nullity procedure Germany: Plaintiff may request transfer of right to the patent by Vindikationsklage
AIA Prior Use v. DE Prior Use Similarities Defense in infringement litigation Use needs to take place in the respective territory (USA/DE) 22
AIA Prior use v. DE Prior use Differences AIA Prior Use Defense available to party and affiliates But defense is limited to the site where the existing commercial use occurred Use has to be commercial (including admission procedure) Defense not admissible against Universities Use occurred in the US at least one year before effective filing date or public disclosure 23 DE Prior Use Defense is available only for party that has prepared or started t the use and binding to enterprise The ownership of the invention and the preparation of the use are sufficient Use/preparation of use occurred before priority date
Conclusion Similarities exist between the AIA and European practice beyond first to file: AIA Post Grant Review and EP Opposition AIA Inter Partes Review and German Nullity Action AIA Supplemental Examination and EP Limitation AIA Pre-Issuance Submissions and EP Third Party Observation AIA Derivation EP Fraudulent Abstraction Prior Use Defenses But there are key differences in implementation 24
Many thanks for your attention! Questions? Peter Thurlow NEW YORK pgthurlow@jonesday.com 222 East 41st Street New York, NY 10017-6702 T : +1 212 326 3939 Andreas Holzwarth-Rochford FRANKFURT aholzwarth@jonesday.com Thurn-und-Taxis-Platz 6 60313 Frankfurt am Main T : +49-69 - 9726 3939