America Invents Act: Patent Reform Gunnar Leinberg, Nicholas Gallo, and Gerald F. Gibbs, Jr. LeClairRyan January 4 th 2012 gunnar.leinberg@leclairryan.com; nicholas.gallo@leclaairryan.com; and gerald.gibbs@leclairryan.com
America Invents Act: Patent Reform Our presentation is available at: www.leclairryan.com/america-invents-act- Patent-Reform 2
AIA: Patent Reform From First-to-Invent to First-to-File Pre- and Post-Issuance Proceedings Litigation Issues Additional provisions 3
From First-to-Invent to First-to- File 4
From First-to-Invent to First-to-File First-Inventor-to-File? Effective Dates Definition of Effective filing date Examples of Which law applies? Examples of Who gets the Patent? Recommendations New definition of Prior Art Category (a)(1) Category (a)(2) Example - Removing prior art using a prior publication Recommendations 5
What is First-to-File? 6
First to File: Effective Dates First to file provisions effective March 16, 2013 Current first to invent laws will continue to apply for roughly another 23 years Applicable law depends on whether or not an application or patent contains only claims having an effective filing date before March 16, 2013 7
First to File: Effective Filing Dates Effective filing date 35 U.S.C. 100(i)(1) The actual filing date of the patent application containing a claim to the invention The filing date of the earliest application for which a patent or application is entitled to a right of priority 8
First to File vs. First to Invent: Which Laws Apply? The new first to file laws apply to any application or patent that contains or contained at any time: a claim that has an effective filing date that is on or after March 16, 2013; or a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim 9
First to File vs. First to Invent: Example #1 December 9, 2011 1 year March 16, 2013 Current laws apply for life of Formal Provisional application Formal application Cont/Div application Current laws apply for life of Cont/Div Provisional application March 16, 2013 1 year Formal application w/ all claims supported by provisional Cont/Div application Current laws apply for life of Formal Current laws apply for life of Cont/Div 10
First to File vs. First to Invent: Example #2 March 16, 2013 New laws apply for life of Formal Provisional application 1 year Formal application w/ at least one claim not supported by provisional Cont/Div application New laws apply for life of Cont/Div 11
First to File vs. First to Invent: Example #4 March 16, 2013 Current laws apply for life of Formal Provisional application 1 year Formal application w/ all claims supported by provisional Cont/Div application w/ at least one claim not supported by provisional New laws apply for life of Cont/Div 12
Who gets the patent? F.T.I provision Patent COMPANY A: First to invent is entitled to the Patent (interference) 13
Who gets the patent? F.T.F provision COMPANY B Patent COMPANY B: Wins race to the patent office (no interference) 14
Who gets the patent? F.T.F provision COMPANY A: Files PROVISIONAL based on subject matter disclosed in a white paper published September COMPANY 2013 B 15
Recommendations Educate researchers, staff, and employees about the rules in the new law regarding disclosure and patentability File provisional patent applications (early and often), which offer advantages including preservation of foreign patent rights Avoid minimal disclosure provisional applications 16
Definitions of Prior Art 35 U.S.C. 102 Current laws define seven categories of prior art Several categories are defined relative to date of invention Permits removal of prior art with inventor declaration Provides for interferences New laws define two categories of prior art Both are relevant to effective filing date Exceptions to both categories 17
Category 102 (a)(1) Publicly-Available Prior Art 102(a)(1) precludes a patent if the invention was patented, described in a printed publication or in public use, on sale or otherwise available to the public anywhere before the inventor s effective filing date. ( On sale means publically on sale.) One Year Grace Period 102(b)(1) provides that a disclosure is not prior art if the disclosure was made one year or less before the effective filing date of the claimed invention and: (A) the disclosure was made by the inventor or someone who obtained the subject matter from the inventor, ( By the inventor includes by one who obtained the subject matter from the inventor (e.g., stolen work)) or (B) before the disclosure, the subject matter was publicly disclosed (e.g., published) by the inventor or someone who obtained the subject matter from the inventor. 18
Category 102 (a)(2) Secret Prior Art 102(a)(2) precludes a patent if the invention was described in a U.S. patent or published U.S. patent application effectively filed by another before the applicant s effective filing date. U.S. Patents and patent application publications are effective as prior art as of their effective filing date (Not their publication date) No one year Grace period Disclosures Appearing In Applications and Patents A disclosure shall not be prior art to a claimed invention under subsection (a)(2) If the subject matter disclosed, (A) was obtained directly or indirectly from the inventor or a joint inventor; (B) was publicly disclosed by the inventor before the prior art s effective filing date; or (C) commonly owned on or before the inventor s effective filing date 19
Example Removing prior art using a prior publication < 1 year A s Publication of invention Inventor B Inventor A Inventor A can remove B s application as prior art by relying on Inventor A s earlier publication A s earlier publication is prior art that will prevent B from obtaining a patent (even though Inventor B was the first to file) 20
First-to-File Recommendations Before March 16, 2013 Consider developing appropriate filing/claiming strategies early in the pre-filing stage of a proposed invention Consider filing formal (non-provisional) application before March 16, 2013 After March 16, 2013 Closely watch claims in families that straddle the effective date For formal applications do not include claims directed to new subject matter Publish early, if no interest in patenting outside the US 21
PATENT REFORM - 2011 An efficient well thought out and strategic plan will win!! 22
Pre- and Post-Issuance Proceedings 23
PPIP After Patent Reform 24
PPIP After Patent Reform Existing Reissue Ex Parte and Inter Partes Reexamination Interferences Continuation Practice Modified Derivation Proceedings Inter Partes Review Preissuance Submissions New Post-Grant Review Supplemental Examination 25
PPIP Patent Owner Proceedings Continuation Practice Ex Parte Reexamination Reissue Supplemental Examination 26
PPIP Patent Owner Strategies Continuation Practice Broaden claims anytime Narrow claims anytime Reissue Broaden claims (2 years) cannot recapture disclaimed subject matter Narrow claims Ex parte Reexamination Narrow claims Obtain PTO evaluation of prior art s relevance Supplemental Examination Cure inequitable conduct Fix incorrect information 27
Broadening Claims Continuation and Reissue 0 years 2 years Application Filed Patent Issues Reissue Filing Continuation Filed Second Continuation Filed Third Continuation Filed, etc. 28
Differences - Ex parte Reexamination and Reissue Ex parte Reexamination substantial new question of patentability raised by the prior art presented in the request initiated by the patent owner or a third party Reissue the patent is, through error without a deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent. 35 U.S.C. 251 only initiated by the patent owner 29
Supplemental Examination (SE) 30
Supplemental Examination (SE) Have PTO consider, reconsider, or correct information Any information Any basis SE Certificate: Substantial new question of patentability? Yes Ex Parte Rexam ordered No done Cure inequitable conduct No unenforceability based on information (re)considered/ corrected during SE unless Unenforceability is asserted before SE request is filed or SE (and any resulting Ex Parte Rexam) is not concluded before patentee brings enforcement action Available Sept 16, 2012 Applies to all patents 31
Patentee Overcoming Validity/ Enforceability Issues * Reissue Filing Application Filed Patent Issues A Ex Parte Reexam Filing SE (not curative) B SE (not curative) C SE (curative) * = Potentially Invalidating Reference Unenforceability Asserted Enforcement Action 32
PPIP Patent Challenger Proceedings Preissuance Submissions Ex Parte Reexamination Post-Grant Review Inter Partes Review 33
Preissuance Submissions 34
Preissuance Submissions Submit art in pending applications Patents and printed publications Of potential relevance to examination Provide concise description of the asserted relevance Patent challenger can remain anonymous Submit on or before allowance and by later of first office action or 6 months after publication of the application Effective Sept 16, 2012 Applies to all applications 35
Post-Grant Review (PGR) 36
Post-Grant Review (PGR) Anticipation, obviousness, 112 issues (enablement, written description, indefiniteness), and reissue irregularities Any information Initiated by the PTO if, "the information presented in the petition, if not rebutted, would demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable Effective Sept 16, 2012 Generally applies to all patents to which new prior art rules apply 37
PGR Key Procedural Considerations Petition Identify challenged claims and grounds for challenge Supporting evidence (cited art, expert declarations, etc.) Challenger cannot remain anonymous Deadline: Within 9 months from issuance Validity of the patent evaluated under the preponderance of the evidence standard Discovery available (e.g., witness depositions) Initial review by the Board Final decision within one year (limited exceptions) 38
PGR Effect on Other Proceedings PTO proceedings PTO can stay, transfer, consolidate, or terminate proceedings involving the same patent Civil actions challenging validity Already filed: Cannot request PGR Later filed: Civil action automatically stayed Counterclaims don t count 39
PGR Estoppel 40
PGR Estoppel Cannot raise an issue challenger raised or reasonably could have raised in PGR Proceedings PTO: Cannot request or maintain another proceeding Civil Action/ITC Proceeding Cannot assert invalidity Applicability Only if PGR resulted in a final decision Only to challengers not released before the final decision Only to challenged claims 41
PGR Business Method Patents 42
Post-Grant Review (PGR) Business Method Patents Business method patent claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions (often USPTO Class 705) Effective period for this transitional post-grant review is eight years from enactment 43
Inter Partes Review (IPR) 44
Inter Partes Review (IPR) Replaces Inter Partes Reexamination Limited to anticipation or obviousness Limited to patents and printed publications Reasonable likelihood that a challenged claim is unpatentable Effective Sept 16, 2012 Generally applies to all patents 45
IPR Key Procedural Considerations Petition Identify challenged claims and grounds for challenge Supporting evidence (cited art, expert declarations, etc.) Challenger cannot remain anonymous Deadline: Anytime 9 months after issuance and <1 year from infringement complaint Discovery available (e.g., witness depositions) Initial review by the Board Final decision within one year (limited exceptions) 46
IPR Effect on Other Proceedings PTO proceedings PTO can stay, transfer, consolidate, or terminate involving the same patent Civil actions challenging validity Already filed: Cannot request IPR Later filed: Civil action automatically stayed Counterclaims don t count 47
IPR Estoppel 48
IPR Estoppel Cannot raise an issue challenger raised or reasonably could have raised in IPR Proceedings PTO: Cannot request or maintain another proceeding Civil Action/ITC Proceeding Cannot assert invalidity Applicability Only if IPR resulted in a final decision Only to challengers not released before the final decision Only to challenged claims 49
Patent Challengers Validity Challenge pre-september 16, 2012 Formal Application Filed U.S. Patent Issues Allowance Inter partes reexamination Ex parte reexamination 50
Patent Challengers Validity Challenge post-september 16, 2012 Formal Application Filed U.S. Patent Issues 9 months Allowance Post-grant review Preissuance submissions by later of first rejection or 6 months after publication Inter partes review Ex parte reexamination 51
Patent Challenger Strategies PS EPR PGR IPR Participation Limited Limited Full Full Anonymous? Y N N N Estoppel? N N Y Y Standard Lowest: of potential relevance Low: substantial new question of patentability Higher: more likely than not Highest: reasonable likelihood Basis Patents and printed publications Patents and printed publications Any information Patents and printed publications Applicability All applications All patents Only patents to which first-to-file rules apply All patents Other Considerations Preemptive No deadline Can raise 112 Must file within 9 months Cannot raise 112 <1 year of infringement complaint 52
Inventorship Dispute Proceedings 53
Inventorship Dispute Proceedings Today Interference Resolve priority contests Can also challenge validity, including inventorship Future Derivation proceedings Resolve inventorship disputes Cannot otherwise challenge validity or priority 54
Derivation Proceedings 55
Derivation Proceedings Party alleging derivation must prove prior conception and communication to other party Instituted in PTO by applicant or in district court by later patentee File petition within 1 year from publication of application or grant of patent Effective Mar 16, 2013 Generally applies to all applications to which new prior art rules apply 56
Interferences Generally 57
Interferences Generally Procedures are unchanged Applicability depends on filing date and claiming strategy Some patents/applications will be subject to all current first-to-invent laws Some patents/applications will be subject to all new first-to-file laws Some patents/applications will be subject to a mixture of first-to-invent and first-to-file 58
Interferences Applicability New first-to-file laws apply to all patents and applications that ever contain: a claim with an effective filing date on or after March 16, 2013 or a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim Current 35 U.S.C. 102(g), 135, and 291 continue to apply to all patents and applications that ever contain: a claim with an effective filing date before March 16, 2013 or a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim Including patents and applications to which first-to-file laws apply 59
Litigation Issues 60
Litigation Issues False and virtual marking Joinder of multiple defendants Prior user rights Advice of counsel Best mode requirement Recommendations 61
Litigation Issues Marking, 35 U.S.C. 287(a) and 292 False marking Legal standing in false marking cases is now limited to persons who have suffered competitive injury It is not false marking to continue marking after patent expiration, assuming patent once covered the product Virtual marking Products may be marked with an address of an Internet posting that associates the article with the number of the applicable patent(s) E.g. For applicable patents please visit http://acme.com/patents May reduce costs particularly benefiting cost-conscious and/or small companies Effective Sept 16, 2011 Applies to all pending and future cases 62
Litigation Issues Joinder, 35 U.S.C. 299 Plaintiffs may no longer join multiple accused infringers in one action unless the claims arise out of the same transactions and are based on common questions of fact Same patent at issue is insufficient, alone, to meet the requirements Increases effort required to bring suits against multiple parties Transfer may be easier, number of filings in DE may increase District court may consolidate for discovery/claim construction in the interest of judicial economy Effective Sept 16, 2011 Applies to all civil actions commenced on/after Sept 16, 2011 63
Litigation Issues Prior User Rights, 35 U.S.C. 273(b)(6) Prior user rights defense extended to all subject matter if: Commercially used continuously at least one year before the earlier of; The asserted patent s effective filing date; or Public disclosure of the invention covered by the asserted patent Defense not available if the subject matter was derived from patent holder Does not invalidate a patent, merely a personal defense Strengthens trade secret protection Clear and convincing evidence is a strong burden Effective Sept 16, 2011 Applies to all patents issued on/after Sept 16, 2011 64
Litigation Issues Prior User Rights, 35 U.S.C. 273(b)(6) University-specific provisions: Use of subject matter by a non-profit research laboratory or university shall be deemed to be a commercial use Defense is not available if a university or a tech transfer office is the patent holder 65
Litigation Issues Advice of Counsel, 35 U.S.C. 298 Intent of infringer is a relevant consideration for a finding of willful infringement or inducement of another to infringe Failure to obtain an opinion of counsel or to disclose an opinion of counsel may not be used to prove: Willful infringement (codifying In re Seagate); or Induced infringement (overruling Broadcom v. Qualcomm) There is no affirmative duty to seek advice of counsel regarding potential infringement However, there may be good business reasons to do so in many circumstances Effective Sept 16, 2012 Applies to all patents issued on/after Sept 16, 2012 66
Litigation Issues Best Mode Requirement The failure to disclose the best mode in an application for patent cannot be a basis for invalidating an issued patent Best practice is still to contemplate the best mode of practicing an invention and ensure its inclusion in every patent application PTO rejections can still be made but the PTO is not positioned to reject claims on this basis May still be relevant in post-grant procedure or an unclean hands defense May be related to the enablement requirement in some instances Laws are subject to change Effective Sept 16, 2011 Applies to all proceedings commenced on/after Sept 16, 2011 67
Litigation Issues Recommendations Continue to mark all products, consider leveraging a website Consider moving to separate/transfer the action when one of several defendants Less risk of infringement in maintaining process as a trade secret Maintain accurate and thorough records Continue to receive advice of counsel, when appropriate Continue to consider and disclose the best mode of practicing an invention 68
Additional Provisions 69
USPTO Fee Provisions Fee-setting authority Director of USPTO is authorized to set or adjust fees As of September 26, 2011, a surcharge of 15% for most fees went into effect Accelerated examination is available guaranteeing final disposition within one year for a $4800 fee Fee diversion Reserve Fund was created to provide a sequestered account for excess USPTO revenue Funds will be released to the USPTO only [t]o the extent and in the amounts provided in appropriations Acts 70
USPTO Fee Provisions Micro Entity, 35 U.S.C. 123 Entities receive a 75% reduction in fees if qualified based on: 1. Independently qualification as a small entity; 2. No more than four patent families filed in preceding calendar year; 3. Gross income of less than three times the national median (~$150,000); and 4. No assignment or license to a non-micro entity. University-specific provision requires: 1. The applicant s employer, from which the applicant obtains the majority of the applicant s income, is an institution of higher education ; or 2. The applicant has assigned or is under an obligation to assign or license the particular application to such an institution of higher education. Effective Sept 16, 2011 Applies to all cases 71
Filing Formalities Electronic filing incentive $400 additional fee for each application not filed by electronic means Excludes design, plant, and provisional applications Execution of assignment must occur subsequent to execution of other formal papers in order to avoid fee Filing by Other than Inventor Assignees can now apply for a U.S. patent without a petition and associated fee Effective Nov 15, 2011 Applies to all new applications except provisional, design, and plant 72
THANK YOU Gunnar Leinberg, Nicholas Gallo, and Gerald F. Gibbs, Jr.
For any follow-up questions after this presentation please contact: LeClairRyan: Gunnar Leinberg at 585-270-2103 or gunnar.leinberg@leclairryan.com