1 / 11

Patent Strategy Under the AIA

Patent Strategy Under the AIA. Washington in the West January 29, 2013. Timeline. 9/16/2012 Inventor’s Oath or Decl. 3rd Party Subm. of Prior Art Supplemental Exam. Post-Grant Review Inter Partes Review. 9/16/2011 Best Mode Prioritized Exam. Micro-Entities Prior User Rights.

bluma
Download Presentation

Patent Strategy Under the AIA

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript


  1. Patent Strategy Under the AIA Washington in the West January 29, 2013

  2. Timeline 9/16/2012 • Inventor’s Oath or Decl. • 3rd Party Subm. of Prior Art • Supplemental Exam. • Post-Grant Review • Inter Partes Review 9/16/2011 • Best Mode • Prioritized Exam. • Micro-Entities • Prior User Rights 3/16/2013 • First to File System • Derivation Proceedings 9/16/2014 • 3+ USPTO satellite offices

  3. Statutory Framework 102(a)(1) precludes patent if, before applicant’s effective filing date of claimed invention: • patented or described in printed publication, or • in public use, on sale, or otherwise available to public, anywhere 102(a)(2) precludes patent if: • described in US patent or published US application effectively filed before applicant’s effective filing date ofclaimed invention But 102(b)(1) provides a one year grace period if: • disclosure by inventor or someone who obtained subject matter from inventor, or • pre-filing public disclosure by inventor … before third party disclosure

  4. Novelty Defeating Who? Applicant • What? (a) Patent / printed publication, (b) public use, (c) on sale, or (d) make available to public • Where? Anywhere • When? More than one year before applicant’s effective filing date Who? Third Party • What? Same as above • Where? Same as above • When? Before applicant’s effective filing date • More than one year before, or • Less than a year before, unless applicant made pre-filing disclosure first

  5. Effect of Foreign Priority Dates • Hilmer Doctrine • foreign priority used as shield against intervening prior art, but not as sword against intervening inventions • New 102(a)(2) and (d)(2) eliminate Hilmer Doctrine • U.S. patents and applications = prior art as of foreign priority date • File EARLY!

  6. Filing Strategies… Before March 16, 2013 • File, File, File • Elimination of Hilmer Doctrine post-3/16 • Take advantage of current law • Continuations, Divisionals, CIPs*

  7. Filing Strategies… After March 16, 2013 • Publishing • 102(a)(1): defeats rights of others to later patent invention • 102(b)(1)(A): preserves discloser’s U.S. patent rights • 102(b)(1)(B): insulates discloser from prior art effect of subsequent disclosure by others • BUT • Can defeat foreign rights • Puts invention in hands of competitors • Provisional • Skimpy provisional could be risky

  8. In-House Procedures • Filing process  SPEED UP! • Educate inventors • Simplify disclosure process • Accelerate reviews/approvals • Provide extra incentives • Inventors and Law Firms • Early/timely reviews • Inventor oath/declaration/assignments

  9. Derivation Proceedings • Pre-3/16/13 priority = Interferences (declared by Director) • 3/16/13 and beyond = Derivation • Director institutes after applicant petitions • PTAB hears evidence from parties • May correct naming of inventors • Appeal or civil action if dissatisfied • Inventor records remain crucial

  10. Prior User Defense • 35 U.S.C. 273 (original) • limited defense to infringement for use of method of doing or conducting business in the U.S. prior to effective filing date • 35 U.S.C. 273 (new) (post 9/16/11 grant) – limited defense to infringement • use of process, machine, manufacture, or composition of matter in U.S. • more than one year before effective filing date or public disclosure • Personal/Burden of Proof/Exhaustion/No License/Some Variations

  11. Miscellaneous • Patent marking • Third Party Submissions • Post-Grant Review • Inter Partes Review

More Related