America Invents Act: Patent Reform

America Invents Act: Patent Reform Gunnar Leinberg, Nicholas Gallo, and Gerald Gibbs LeClairRyan December 2011 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 Category B Examples CREATE Act 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 UNIVERSITY A: First to invent is entitled to the Patent (interference) 13

Who gets the patent? F.T.F provision UNIVERSITY B Patent UNIVERSITY B: Wins race to the patent office (no interference) 14

Who gets the patent? F.T.F provision UNIVERSITY A: Files PROVISIONAL based on an enabling disclosure at an academic conference September 2013 UNIVERSITY B 15

Recommendations Educate researchers, staff, and students 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 Narrow exceptions to both categories 17

First-to-File Category A Publicly-Available Prior Art Patents, printed publications, public use, on sale, or otherwise available to the public Available before the effective filing date Exceptions 1 Year Grace Period Disclosures made by the inventor Disclosures made by others if the subject matter was publicly disclosed by the inventor first By the inventor includes by one who obtained the subject matter from the inventor (e.g., stolen work) Unclear what activity is encompassed by disclosure (e.g., offer for sale? prior public use?) 18

First-to-File Category B Secret Prior Art U.S. Patents and patent application publications are effective as prior art as of their effective filing date (If also published before the filing date, it is Category A prior art) Exceptions Subject matter was obtained from the inventor Subject matter was publicly disclosed by the inventor before the prior art s effective filing date Commonly owned on or before the inventor s effective filing date 19

Definitions of Prior Art (cont.) < 1 year B s Publication of invention Applicant A Applicant B Example Removing prior art (application) using prior publication B can remove A s application as prior art by relying on B s earlier publication B s earlier publication is prior art that will prevent A from obtaining a patent (even though A was the first to file) 20

CREATE Act maintained Cooperative Research and Technology Enhancement (CREATE) Act signed into law of 2004 to promote cooperative research among universities, the public sector, and private companies. Common ownership presumed under joint research agreement Subject matter disclosed by one party to agreement excluded as prior art against other party if Joint research agreement was in effect on or before the effective filing date of the claimed invention Disclosed subject matter is developed pursuant to agreement Claimed subject matter invented pursuant to agreement Specification amended to identify agreement 21

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 22

A well thought out and strategic plan will win!! 23

Pre- and Post-Issuance Proceedings 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 After Patent Reform 26

PPIP Patent Owner Proceedings Continuation Practice Ex Parte Reexamination Reissue Supplemental Examination 27

PPIP Patent Owner Strategies Continuation Practice Broaden claims anytime Narrow claims anytime Ex parte Reexamination Narrow claims Obtain PTO evaluation of prior art s relevance Reissue Broaden claims (2 years) cannot recapture disclaimed subject matter Narrow claims Supplemental Examination Cure inequitable conduct Fix incorrect information 28

Patentee Broadening Claims 0 years 2 years Application Filed Patent Issues Reissue Filing Continuation Filed Second Continuation Filed Third Continuation Filed, etc. 29

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 30

Supplemental Examination (SE) 31

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 32

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 33

PPIP Patent Challenger Proceedings Preissuance Submissions Ex Parte Reexamination Post-Grant Review Inter Partes Review 34

Preissuance Submissions 35

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 36

Post-Grant Review (PGR) 37

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 38

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) 39

PGR Effect on Other Proceedings PTO proceedings PTO can stay, transfer, consolidate, or terminate proceedings involving the same patent Civil actions challenging validity Actions brought by the same challenger Already filed: Cannot request PGR Later filed: Civil action automatically stayed Counterclaims don t count 40

PGR Estoppel 41

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 42

PGR Business Method Patents 43

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 44

Inter Partes Review (IPR) 45

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 46

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 Discovery available (e.g., witness depositions) Initial review by the Board Final decision within one year (limited exceptions) 47

IPR Effect on Other Proceedings PTO proceedings PTO can stay, transfer, consolidate, or terminate involving the same patent Civil actions challenging validity Actions brought by the same challenger Already filed: Cannot request IPR Later filed: Civil action automatically stayed Counterclaims don t count 48

IPR Estoppel 49

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 50

Patent Challengers Validity Challenge pre-september 16, 2012 Formal Application Filed U.S. Patent Issues Allowance Inter partes reexamination Ex parte reexamination 51

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 52

Patent Challenger Strategies PS EPR PGR IPR Participation Limited Limited Full Full Anonymous? Y Y 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 No deadline (on the back end) 53

Inventorship Dispute Proceedings 54

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 55

Derivation Proceedings 56

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 57

Interferences Generally 58

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 59

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 60

Litigation Issues 61

Litigation Issues False and virtual marking Joinder of multiple defendants Prior user rights Advice of counsel Best mode requirement Recommendations 62

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 a website address that provides the applicable patents May reduce costs particularly benefiting cost-conscious and/or small companies Effective Sept 16, 2011 Applies to all pending and future cases 63

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 Effective Sept 16, 2011 Applies to all civil actions commenced on/after Sept 16, 2011 64

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 65

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 66

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 67

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 68

Litigation Issues Recommendations Continue to mark all products, consider leveraging 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 69

Additional Provisions 70

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 71

USPTO Fee Provisions Micro Entity, 35 U.S.C. 123 Qualified entities receive a 75% reduction in fees University-specific provision: A micro entity shall include an applicant who certifies that: (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, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education. Effective Sept 16, 2011 Applies to all cases 72

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 73

THANK YOU Gunnar Leinberg, Nicholas Gallo, and Gerald Gibbs

For any follow-up questions after this presentation please contact: RIT: William Bond at 585-475-2986 or webipmo@rit.edu LeClairRyan: Gunnar Leinberg at 585-270-2103 or gunnar.leinberg@leclairryan.com