Key points about the new patent reform law
Download
1 / 54

KEY POINTS ABOUT THE NEW PATENT REFORM LAW - PowerPoint PPT Presentation


  • 113 Views
  • Uploaded on

KEY POINTS ABOUT THE NEW PATENT REFORM LAW. PROF. PAUL JANICKE UNIVERSITY OF HOUSTON LAW CENTER OCTOBER 2011. 1. WE ARE NOT GOING TO A “FIRST TO FILE” SYSTEM. THE SENATE FLOOR REMARKS AND THE HOUSE REPORT MAKE CLEAR THAT THE RULE WILL BE:

loader
I am the owner, or an agent authorized to act on behalf of the owner, of the copyrighted work described.
capcha
Download Presentation

PowerPoint Slideshow about 'KEY POINTS ABOUT THE NEW PATENT REFORM LAW' - erzsebet


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.While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server.


- - - - - - - - - - - - - - - - - - - - - - - - - - E N D - - - - - - - - - - - - - - - - - - - - - - - - - -
Presentation Transcript
Key points about the new patent reform law

KEY POINTS ABOUT THE NEW PATENT REFORM LAW

PROF. PAUL JANICKE

UNIVERSITY OF HOUSTON LAW CENTER

OCTOBER 2011


1 we are not going to a first to file system
1. WE ARE NOT GOING TO A “FIRST TO FILE” SYSTEM

  • THE SENATE FLOOR REMARKS AND THE HOUSE REPORT MAKE CLEAR THAT THE RULE WILL BE:

  • IN A CONTEST BETWEEN INDEPENDENT INVENTORS, THE VALID CLAIM WILL GO TO THE FIRST TO PUBLICLY DISCLOSE


  • FIRST-TO-FILE IS THE DEFAULT RULE

    • TWO ENTITIES VYING FOR SAME PATENT COVERAGE WILL LIKELY CONTINUE TO BE A FAIRLY RARE HAPPENING

      • CALLING THE STATUTE THIS WAY IS ODD

    • RULE: WHERE NO ONE HAS PUBLICLY DISCLOSED AND BOTH HAVE FILED CLAIMING ≈ SAME SUBJECT MATTER, THE FIRST TO FILE WINS


Example
EXAMPLE

  • JANUARY A INVENTS

  • FEBRUARY B INVENTS

  • MARCH B PUBLICLY USES

  • APRIL A FILES

  • MAY B FILES

  • B WINS, EVEN THOUGH A WAS FIRST TO INVENT AND FIRST TO FILE

  • A IS BARRED BY THE PUBLIC USE

  • B IS SAVED BY HIS “GRACE PERIOD”


2 most one year clocks for time bars will be abolished
2. MOST ONE-YEAR CLOCKS FOR TIME BARS WILL BE ABOLISHED

  • OFFERS FOR SALE AND PUBLIC USES WILL NOW BE WORLD-WIDE

  • AND THEY INSTANTLY BAR ANYONE WHO IS NOT ALREADY ON FILE SOMEWHERE (PRIORITY DATE) OR IN A GRACE PERIOD


So called grace period only for first inventor to publish
SO-CALLED GRACE PERIOD ONLY FOR FIRST-INVENTOR-TO-PUBLISH

  • WHERE AN INVENTOR’S OWN WORK TRIGGERED THE BAR, DIRECTLY OR THROUGH AN INTERMEDIARY:

    • HE GETS A ONE-YEAR PERIOD IN WHICH TO FILE, IF NOTHING ELSE HAPPENS

    • A PARIS CONVENTION FILING WILL BE OK TO AVOID THE BAR

      >


Bottom line
BOTTOM LINE

  • THE SYSTEM SHOULD BE NAMED “INSTANT BAR SYSTEM, WITH NARROW GRACE PERIOD” RATHER THAN “FIRST TO . . . ”

  • THE ONLY WAY TO PROTECT AGAINST 3RD PARTY PUBLIC DISCLOSURES IS TO FILE OR PUBLICLY DISCLOSE BEFORE THEY HAPPEN


Danger tardy application drafting
DANGER: TARDY APPLICATION DRAFTING

  • LAWYERS: MUST TAKE ACCOUNT OF POTENTIAL INSTANT BAR BY 3RD PARTY WHEN COMMISSIONED TO FILE AN APPLICATION

  • THE CLIENT CAN BE BARRED IF AN INDEPENDENT PARTY PUBLISHES TOMORROW!



3 invention date is here to stay for quite some time
3. “INVENTION DATE” IS HERE TO STAY FOR QUITE SOME TIME

  • THE PHASE-IN OF “NEW” PRIOR ART PROVISIONS IS PAINFULLY SLOW

  • NEW APPLICATIONS FILED AFTER 3/16/13, WITH NO EARLIER PRIORITY CLAIM, ARE UNDER “NEW” PRIOR ART

  • BUT>


  • ALL NOW-EXISTING PATENTS

  • ALL APPLICATIONS NOW PENDING

    • AND PATENTS ISSUING THEREON

  • ALL APPLICATIONS FILED UP TO 3/16/13

    • AND PATENTS ISSUING THEREON

  • ALL LATER APPLICATIONS, IF THEY CLAIM EARLIER PRIORITY

    • AND PATENTS ISSUING THEREON

  • ARE UNDER THE OLD NOVELTY LAW!>


  • RESULT:

    • WE SHOULD EXPECT TO SEE LITIGATION DEFENSE OF EARLIER INVENTORSHIP BEING ADJUDICATED UNTIL ABOUT 2025; MAYBE LONGER

    • WE SHOULD NOT SAY INTERFERENCES HAVE BEEN ABOLISHED, OR ARE EVEN OBSOLESCENT, UNTIL AT LEAST 2020

      >



4 best mode can now be concealed
4. BEST MODE CAN NOW BE CONCEALED? PATENTS

  • EVEN DELIBERATELY

  • § 15 OF THE BILL:

    • “. . . EXCEPT THAT THE FAILURE TO DISCLOSE THE BEST MODE SHALL NOT BE A BASIS ON WHICH ANY CLAIM OF A PATENT MAY BE . . . HELD INVALID OR OTHERWISE UNENFORCEABLE”

      >


  • NO LOSS OF PRIORITY EITHER PATENTS

    • AMENDED 119, 120 NOW HAVE SPECIFIC EXCEPTION FOR BEST MODE OMISSION

  • SEEMS TO BE NO PENALTY FOR HIDING IT

  • A BOON TO FOREIGN ORIGINATORS

    >


  • MYSTERY PATENTS: WHY DID CONGRESS KEEP BEST MODE IN

    § 112?

  • DOES IT HAVE SOME LINGERING EFFECT?

  • PTO HAS INDICATED AN INTENTION TO CONTINUE TO ENFORCE IT (SOMEHOW)


5 derived information is not prior art
5. DERIVED INFORMATION IS NOT PRIOR ART PATENTS

  • INVENTOR’S STATEMENT NEW 35 U.S.C. § 115(b) MUST ASSERT BELIEF OF ORIGINALITY

  • BUT: A LITTLE CHANGE MAY GO A LONG WAY

    • SLIGHT VARIATION FROM THE DERIVED INFO WOULD SEEM TO BE OK

    • DERIVED INFO IS NOT PRIOR ART >



  • CONGRESSIONAL APPROACH TO DERIVED INFO: PATENTS

    • NEW 35 U.S.C. § 291: “DERIVED PATENTS”

    • APPLIES ONLY WHERE THE ORIGINATOR SEEKS A PATENT AT SOME POINT

  • IF ORIGINATOR DOESN’T CARE TO FILE, THE MAINLY DERIVED CLAIMS APPEAR TO BE VALID


6 penitence supplemental examination 10 of h r 1249 new 35 u s c 257 c
6. PENITENCE PATENTS“SUPPLEMENTAL EXAMINATION,” § 10 OF H.R. 1249, NEW 35 U.S.C. § 257(c)

  • INEQUITABLE CONDUCT CAN NOW BE CURED BY A POST-GRANT CLEANSING PROCEDURE

  • ANY WITHHELD INFORMATION CAN BE BROUGHT FORWARD TO PTO

  • IF CLAIMS ARE RE-ALLOWED, THIS INFO IS BLOCKED IN COURT


Conditions for cleansing
CONDITIONS FOR CLEANSING PATENTS

  • CANNOT COMMENCE OR CONTINUE SUPPLEMENTAL EXAM IF PATENTEE HAS BROUGHT A PENDING INFRINGEMENT ACTION

    • FILING OF SUIT TERMINATES THE SUPPLEMENTAL PROCEEDING

  • CANNOT COMMENCE SUPPLEMENTAL EXAM IF A D.J. SUIT IS PENDING AND THE CHALLENGER HAS PLEADED INEQ. CONDUCT “WITH PARTICULARITY”


7 deceptive intent disappears
7. DECEPTIVE INTENT DISAPPEARS PATENTS

  • “WITHOUT DECEPTIVE INTENTION” HAS BEEN DELETED FROM THE STATUTE (ALL 7 OCCURRENCES)

    • CHANGE OF INVENTORSHIP (§§ 116, 256)

    • ERROR IN REISSUE (§ 251)

    • FILING A DISCLAIMER (§ 253)

    • SUING ON A PATENT CONTAINING AN INVALID CLAIM (§ 288)

    • FOREIGN FILING WITHOUT A LICENSE (§§ 184, 185) >


WHY? PATENTS

  • PROBABLY:

    • TOO MANY MENTAL STATES FOR A MODERN COMMERCIAL STATUTE

    • NEED TO STREAMLINE PATENT LITIGATION

  • COULD ALSO BE: HARMONIZATION ATTEMPT


8 public submission of prior art and other info
8. PUBLIC SUBMISSION OF PRIOR ART AND OTHER INFO PATENTS

  • WE HAVE LONG HAD 35 USC § 301:

    • ANY PERSON, AT ANY TIME, CAN SEND IN PRIOR PATENTS OR PUBLICATIONS FOR CONSIDERATION RE. SOMEONE ELSE’S ISSUED PATENT

    • IF EXPLANATION IS GIVEN, WILL BE PLACED IN THE FILE

  • AMENDED § 301 ADDS A WRINKLE THAT COULD BE IMPORTANT >



And will now be allowed to attack pending applications as well h r 1249 8 adding 35 u s c 122 e
AND WILL NOW BE ALLOWED TO ATTACK PENDING APPLICATIONS AS WELLH.R. 1249 §8, ADDING 35 U.S.C. §122(e)

  • SUBMISSIONS OF PRIOR PATENTS AND PUBLICATIONS

  • SOME TIME CONSTRAINTS:

    • BEFORE NOTICE OF ALLOWANCE

    • OTHER LIMITS BASED ON APPL. PUBLICATION DATE OR CLAIM REJECTION >



9 new danger unsupported claims
9. NEW DANGER: UNSUPPORTED CLAIMS AND INCLUSION IN THE OFFICIAL RECORD”

  • NEW § 102 (STRICT) vs. OLD § 102 (EASIER)

  • IN A CHAIN OF APPLICATIONS THAT STRADDLES 3/16/13, INSERTION OF ANY CLAIM THAT IS NOT ENTITLED TO PRIORITY:

    • MAY BE UNPATENTABLE UNDER § 112, OF COURSE

    • ALSO PUTS ALL CLAIMS UNDER THE NEW, MORE STRINGENT LAW


10 submarine prior art
10. SUBMARINE PRIOR ART AND INCLUSION IN THE OFFICIAL RECORD”

  • WE WORRIED ABOUT SUBMARINE PATENTS

    • STILL A PROBLEM, ALTHOUGH LESS WITH 20-YEAR EXPIRATION


  • NOW WE HAVE SECRET RETROACTIVE PRIOR ART, EXTENDED: AND INCLUSION IN THE OFFICIAL RECORD”

    • PUBLISHED APPLICATION OR PATENT OF ANOTHER IS RETROACTIVE PRIOR ART

    • AND IT IS EFFECTIVE NOW GOING TO BE AS OF ITS FOREIGN PRIORITY DATE (MORE ON THIS LATER)

    • YOU CAN’T FIND IT IN A SEARCH, UNTIL RELATIVELY LATE



Assignee filing finally
ASSIGNEE FILING (FINALLY) IN THE PRESS

  • BUT INVENTOR’S “STATEMENT” STILL NEEDED

    • RISKY TO ASSUME THERE IS AN OBLIGATION TO ASSIGN

    • HARDLY WORTH IT


Prior user rights
PRIOR USER RIGHTS IN THE PRESS

  • ARE NOW EXPANDED, FROM BUSINESS METHODS TO ALL KINDS OF PATENTS

  • MIGHT BE NEEDED FOR SECRET METHODS IN FACTORIES

    • CURRENTLY THESE COULD BE ENJOINED BY A LATER PATENTEE


Post grant review
POST-GRANT REVIEW IN THE PRESS

  • MUST FILE WITHIN 9 MONTHS OF ISSUE

  • ANY GROUND OF INVALIDITY, E.G.:

    • INDEFINITENESS

    • INELIGIBLE SUBJECT MATTER

    • ENABLEMENT

    • WRITTEN DESCRIPTION

      >


  • 3-JUDGE DECISION IN THE PRESS

    • DISCOVERY MIGHT BE ALLOWED

    • PROTECTIVE ORDERS MIGHT BE FOUGHT OVER

    • PRIVILEGE ISSUES WILL ARISE

    • 18-MONTH TIME FUSE

  • BROAD PRECLUSIVE EFFECT – ANY GROUND THAT WAS “RAISED OR REASONABLY COULD HAVE BEEN RAISED” >


  • COULD BE VERY EXPENSIVE IN THE PRESS

  • SMALL AND MIDSIZE PATENTEES WILL BE HARD-PRESSED

  • MAY HAVE TO ISSUE CHEAP LICENSE TO SETTLE


Inter partes review
INTER PARTES REVIEW IN THE PRESS

  • CAN BE FILED ONLY AFTER 9 MONTHS FROM GRANT

  • GROUNDS: PATENTS AND PRINTED PUBLICATIONS ONLY

  • AGAIN, A 3-JUDGE DECISION

  • BROAD PRECLUSIVE EFFECT RE. ITEMS THAT WERE OR COULD HAVE BEEN RAISED (PATENTS AND PRINTED PUBLICATIONS)


Costs for either form of post grant proceeding
COSTS FOR EITHER FORM OF POST-GRANT PROCEEDING IN THE PRESS

  • WILL DEPEND HEAVILY ON DIRECTOR KAPPOS’S REGULATIONS

  • THESE ARE DUE BY SEPTEMBER 2012

  • THE PROCEEDINGS BEGIN THEN


A few administrative problems
A FEW ADMINISTRATIVE PROBLEMS IN THE PRESS

  • CURRENTLY PTO HAS 102 ADMINISTRATIVE PATENT JUDGES

  • BACKLOG: 24,000 APPEALS [ABOUT 240 PER JUDGE]

  • ADDING POST-GRANT REVIEWS WILL BE A BURDEN

  • LOOKING FOR 100 MORE JUDGES

    PROBABLE BUDGET: MINUS 10% >



Qui tam actions for mismarking abolished qui tam pro domino rege
QUI TAM ACTIONS FOR MISMARKING ABOLISHED LANGUAGE“QUI TAM PRO DOMINO REGE . . .”

  • NEW LAW: ONLY U.S. CAN SUE IN GENERAL

  • A DAMAGED PRIVATE ENTITY CAN SUE FOR THE AMOUNT OF HARM CAUSED

    • HIGHLY UNLIKELY

  • AND NO ONE CAN SUE FOR MISMARKING WITH AN EXPIRED PATENT NUMBER


Tax strategy patents abolished
TAX STRATEGY PATENTS ABOLISHED LANGUAGE

  • “DEEMED TO BE WITHIN THE PRIOR ART” [BILL § 14]

  • MYSTERY: WHY NOT AMEND § 101?

  • REJECTIONS WILL NOW BE UNDER §102??


Human organisms are nonstatutory
“HUMAN ORGANISMS” ARE NONSTATUTORY LANGUAGE

  • BUT WHAT IS EMBRACED IN THAT TERM?

    • CELL LINES?

    • STEM CELLS?

    • TISSUE SAMPLES?

  • LEGISLATIVE HISTORY REFERS TO REP. WELDON’S AMENDMENT

  • AIMED AT EMBRYOS


Two minds needed
TWO MINDS NEEDED! LANGUAGE

  • FOR THE NEXT 15 YEARS OR SO, WE WILL BE LITIGATING PATENTS UNDER THE OLD NOVELTY RULES

    • ALL FILINGS UP TO MARCH 2013, AND THE PATENTS ISSUING ON THEM

  • AND PROSECUTING UNDER THE NEW ONES

    >



Special treatment for some business methods
SPECIAL TREATMENT FOR SOME BUSINESS METHODS PRIORITY DATE

  • SPECIAL PROCEDURE FOR CHALLENGING ALREADY-ISSUED PATENTS AND FUTURE PATENTS

  • APPLICABLE ONLY TO FINANCIAL-SERVICE METHODS

    >



Au revoir to hilmer
AU REVOIR TO PRIORITY DATEHILMER

  • PATENTS AND PUBLISHED APPLICATIONS NOW EFFECTIVE AS PRIOR ART AS OF THEIR FOREIGN FILING DATES

  • ON THE PLUS SIDE: FOR THAT APPLICANT, FOREIGN FILING PREVENTS ALL BARS [CF. OLD § 119]


Advising clients
ADVISING CLIENTS PRIORITY DATE

  • FILE EARLY, AS NOW

  • INCLUDE THE BEST MODE, UNTIL THE SITUATION CLARIFIES

  • CONSIDER INVITING PREISSUANCE PRIOR ART SUBMISSIONS BY YOUR COMPETITORS


  • BEFORE SUING FOR INFRINGEMENT PRIORITY DATE:

    • SCOUR THE FILES, U.S. AND FOREIGN, AND CORPORATE RECORDS FOR OMITTED PRIOR ART

    • INTERVIEW INVENTORS RE. POSSIBLE UNDISCLOSED PRIOR ART

    • SCOUR THE FILE HISTORY FOR POSSIBLE MISSTATEMENTS

    • USE SUPPLEMENTAL EXAMINATION IF NEEDED


If you are a potential infringement target
IF YOU ARE A POTENTIAL INFRINGEMENT TARGET PRIORITY DATE

  • MONITOR PUBLISHED APPLICATIONS FOR POTENTIAL TROUBLE

    • CONSIDER PREISSUANCE ART SUBMISSIONS

  • CONSIDER PROS AND CONS OF POST-GRANT PROCEEDINGS


Overall assessment of the new law
OVERALL ASSESSMENT OF THE NEW LAW PRIORITY DATE

  • PATENT PROSECUTION AND KEEPING A PATENT

    • MORE EXPENSIVE

    • MORE DANGEROUS

    • NOT STREAMLINED

  • HELPFUL TO FOREIGN ORIGINATORS

    • NO BEST MODE NEEDED (MAYBE)

    • FOREIGN PRIORITY IS NOW COMPLETE

    • ALL BARS ARE NOW WORLDWIDE




ad