Presentation Transcript

1. Overview of the Leahy-SmithAmerica Invents Act

   The Practical Effect of the AIA and Its Proposed Regulations June 2013
2. Table of Contents 2 8 9 32 37 44 45 49 52 54 60 62 66 70 82 87 89 95 Background of Patent Reform .................................................................................... Effective Dates of Implementation …………................................................................ Novelty – The New §102 ............................................................................................ Derivation Proceedings .............................................................................................. New Prior Commercial Use Defense .......................................................................... New Opportunities for Examination ............................................................................ Preissuance Submissions ...................................................................................... Third Party Submissions vs. Protests ................................................................. Post-Issuance Proceedings .................................................................................... Post-Grant Review and Inter Partes Review ..................................................... Transitional Business Method Reviews .............................................................. Potential Strategies for Selection ....................................................................... Supplemental Examination ................................................................................ The Patent Trial and Appeal Board ............................................................................ Eliminating Litigation Traps ....................................................................................... Prioritized Examination .............................................................................................. Miscellaneous Features of the Act ............................................................................. Conclusion ..................................................................................................................
3. Background of Patent Reform The America Invents Act is a result of pressures from diverse industries and groups. Pressure to conform to international standards: First to-file system. Pressure to reduce high costs of litigation: Post-Grant Review. Reduce damages. Reduce automatic injunctions. Abuse of venue. Ensure proper funding for United States Patent and Trademark Office (USPTO): Reduce backlog. Ensure patent quality: Too many obvious patents.
4. Background of Patent Reform Pressures outlined in two major reports: National Academies Board on Science, Technology, and Economic Policy, A Patent System for the 21st Century (2004). Federal Trade Commission, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy (October 2003). Reports and subsequent industry conferences resulted in Patent Reform Act of 2005 A lot of attention was given to 2005 Act: James G. McEwen, Is the Cure Worse Than the Disease? An Overview of the Patent Reform Act of 2005, 5 J. MARSHALL REV. INTELL. PROP. L. 55 (2005). Failed to pass, as did efforts every year since. Major battles waged: biotechnology vs. consumer electronics industries and large corporations vs. small entities.
5. Background of Patent Reform With each year, many of the problems in the two reports were addressed by the Courts: eBay v. MercExchange, 547 US 388 (2006) (injunctions more difficult to obtain) KSR International v. Teleflex, 550 US 398 (2007) (clarifying the obviousness standard) In re Volkswagen of America, 545 F.3d 304 (5th Cir. 2008) (made transfer from EDTX easier) Uniloc USA v. Microsoft, 632 F.3d 1292 (Fed. Cir. 2011)(reduced damages by eliminating 25% rule) Each case left fewer contested issues for reform. Result: In 2011, a simplified Patent Reform Act passed.
6. Leahy-Smith America Invents Act Sec. 1. Short title; table of contents. Sec. 2. Definitions. Sec. 3. First inventor to file. Sec. 4. Inventor’s oath or declaration. Sec. 5. Defense to infringement based on prior commercial use. Sec. 6. Post-grant review proceedings. Sec. 7. Patent Trial and Appeal Board. Sec. 8. Preissuance submissions by third parties. Sec. 9. Venue. Sec. 10. Fee setting authority. Sec. 11. Fees for patent services. Sec. 12. Supplemental examination. Sec. 13. Funding agreements. Sec. 14. Tax strategies deemed within the prior art. Sec. 15. Best mode requirement. Sec. 16. Marking. Sec. 17. Advice of counsel. Sec. 18. Transitional program for covered business method patents. Sec. 19. Jurisdiction and procedural matters. Sec. 20. Technical amendments. Sec. 21. Travel expenses and payment of administrative judges. Sec. 22. Patent and Trademark Office funding. Sec. 23. Satellite offices. Sec. 24. Designation of Detroit satellite office. Sec. 25. Priority examination for important technologies. Sec. 26. Study on implementation. Sec. 27. Study on genetic testing. Sec. 28. Patent Ombudsman Program for small business concerns. Sec. 29. Establishment of methods for studying the diversity of applicants. Sec. 30. Sense of Congress. Sec. 31. USPTO study on international patent protections for small businesses. Sec. 32. Pro bono program. Sec. 33. Limitation on issuance of patents. Sec. 34. Study of patent litigation. Sec. 35. Effective date. Sec. 36. Budgetary effects. Sec. 37. Calculation of 60-day period for application of patent term extension.
7. Text of the AIA Online Text for the Leahy-Smith America Invents Act can be found at http://www.gpo.gov/fdsys/pkg/PLAW-112publ29/pdf/PLAW-112publ29.pdf Additional information regarding the Act can be found at http://www.uspto.gov/aia_implementation/index.jsp Updates regarding the Act can be requested by going to http://enews.uspto.gov/lists/?p=subscribe&id=1
8. Significant Portions of AIA Sec. 3. First inventor to file. Sec. 5. Defense to infringement based on prior commercial use. Sec. 6. Post-grant review proceedings. Sec. 8. Preissuance submissions by third parties. Sec. 10. Fee setting authority. Sec. 11. Fees for patent services. Sec. 12. Supplemental examination. Sec. 15. Best mode requirement. Sec. 16. Marking. Sec. 22. Patent and Trademark Office funding. Sec. 33. Limitation on issuance of patents. Sec. 14. Tax strategies deemed within the prior art.
9. Dates of Implementation Immediately: September 16, 2011 Fee Setting Authority, General Fees, and Small & Micro Entities Elimination of Best Mode Defense Changes to Marking Law Numerous qui tam cases have already been dismissed After 1 Year: September 16, 2012 Third Party Challenges: Post-Grant Review, Inter Partes Review, and Preissuance Submissions Supplemental Examination All rulemaking for the above, plus the new Statute of Limitations (Sec. 3(k)), Inventor’s Oath (Sec. 4), and general PTAB Practice Rules (Sec. 7). After 18 Months: March 16, 2013 First-to-File System March 19, 2013 Micro-Entity Status Implemented
10. Novelty – The New 35 USC § 102 Sec. 3. First inventor to file 35 USC § 102 changed to only two novelty parts and some exceptions. Removed dates of invention and replaced with “effective date”. Removed “in the United States” requirements. Novelty-defeating event can be anywhere, by anyone.
11. Is It Simpler?
12. Is it Simpler? 35 USC § 102 – Conditions for Patentability; Novelty (a) NOVELTY; PRIOR ART. A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. (b) EXCEPTIONS. (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS. A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person (c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS. Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if— (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention; (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. (d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART. For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application— (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.
13. Novelty – The New 35 USC § 102 Two novelty parts (a)(1): the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (a)(2): the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
14. Novelty – The New 35 USC § 102 Potential Problem: Undefined term in 35 USC § 102(a)(1): “otherwise available to the public”? Must mean something other than patented, printed publication, in public use, on sale Possibility: Look to trade secret law Uniform Trade Secrets Act: § 1(4)(i) Not secret if readily reverse-engineerable Has been used for simple inventions if displayed as readily reverse-engineerable? Would likely change result in Motionless Keyboard Co. v. Microsoft et al., 486 F.3d 1376; 82 U.S.P.Q.2d 1801 (Fed. Cir. 2007) (mere display of device not public use) Strategy Tip: Assume that any unrestricted display of built invention can also be bar to patentability.
15. Novelty – The New 35 USC § 102 New 35 USC § 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” anywherebefore the inventor’s effective filing date. Old 35 USC § 102(a) precludes a patent if, before invention by the applicant, the invention was known or used in the US or patented or described in a printed publication anywhere. Old 35 USC § 102(b) precludes a patent if, more than 12 months before the US filing, the invention was patented or described in a printed patent publication anywhere or in public use or on sale in the US. “On sale” is described in case law.
16. Novelty – The New 35 USC § 102 Thus, under the new 35 USC § 102, the public use, sale or “otherwise available to the public” activities can be anywhere in the world, whereas in the past, only related to activities in the US. This provision actually benefits foreign companies, as they primarily perform such activities initially outside of the US.
17. Novelty – The New 35 USC § 102 Potential Problem: What is “public use” under 35 USC § 102(a)(1)? Under previous law, public use includes Uses accessible to the public Commercial exploitation which can be secret Invitrogen Corp. v. Biocrest Manufacturing L.P., 424 F.3d 1374 (Fed. Cir. 2005) Under new law, public use may not include commercial exploitation (e.g., use within a factory) Prior user rights under new 35 USC § 273 relate to secret commercial uses more than 1 year before effective date. Strategy Tip: Courts need to sort potential conflict Arguably, Congress narrowed definition of public use from present meaning, and certain public uses are not invalidating
18. Novelty – The New 35 USC § 102 Problem: What is “effectively filed” under 35 USC § 102(a)(2)? New 35 USC § 102(d) defines as date of filing for US patent or patent publication, or filing date of foreign priority application Essentially overrules In re Hilmer, 359 F.2d 859 (CCPA 1966) Does not include foreign priority date if no US application.
19. Novelty – The New 35 USC § 102 Under the Hilmer doctrine, a US application date could be a prior art date against your application, but the filing date of foreign priority application could not. Under new 102(a)(2), the filing date of the foreign application could be a prior art date as long as there is a US application from which the earlier foreign application claims priority. Example: Company A files a patent application in Germany on July 1, 2009 and then files a US patent application on July 1, 2010. Company B files a US patent application on February 1, 2010. Under old 102(a), the German patent application filing date is not applicable, but under the new 102(a)(2), the German patent application filing date is applicable. So now more prior art is available against one’s patent application.
20. Novelty – The New 35 USC § 102 Potential Problem: What is the status of a PCT application under 35 USC § 102(a)(2)? 35 USC § 363 says PCT “designating the United States shall have the effect … of a national application for patent regularly filed in the Patent and Trademark Office” Means most PCT applications can be cited against applications Strategy Tip: If you cannot file in US, good idea to file PCT application designating the US to block other parties filing in the US or publish right away
21. Novelty – The New 35 USC § 102 Potential Problem: What is “the effective filing date of the claimed invention” under 35 USC § 102(a)? 35 USC § 100(i) defines as “(A) the actual filing date of the patent or the application for the patent containing a claim to the invention; or (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c)”. What happens where there is no foreign priority claim, and the claim was added after the first US filing date? Technically there is no effective filing date for that claim. Possible claim can always be anticipated even by later applications. Unlikely reading. Strategy Tip: Include at least one claim to anything you want to patent (broad claims). Claim foreign priority whenever possible since 35 USC § 100(i)(B) not tied to claimed invention.
22. Novelty – The New 35 USC § 102 Four exceptions to 35 USC § 102(a) 1 year grace period Inventor’s invention in other applications Commonly-owned inventions Joint Research Development Agreements
23. Novelty – The New 35 USC § 102 35 USC § 102(b)(1): One year grace period for disclosures under 35 USC § 102(a)(1) if— (A) the disclosure was made by or derived “directly or indirectly” from the inventor or joint inventor; or (B) prior to the disclosure, the subject matter was publicly disclosed (e.g., published) by the inventor or someone who obtained the subject matter from the inventor.
24. Novelty – The New 35 USC § 102 35 USC § 102(b)(1) Features Early disclosure allows maximum use of 1 year grace period and prevents others from patenting same subject matter. Inventor need not be the one disclosing as long as can show derivation.
25. Novelty – The New 35 USC § 102 Potential Problem: “disclosure” under 35 USC § 102(b)(1) does not match language of “public” under 35 USC § 102(a)(1). “Public”: Patented, described in a printed publication, or in public use, on sale, or otherwise available to the public. But is on sale or public use a “disclosure”? Under previous law, sales and public uses can be secret Is a public use a “disclosure” if nothing written? Strategy Tip: until resolved, make sure no sales, public uses or displays made until patent application is filed. Ironically, actual publications are fine (definitely covered under one year safe harbor provision).
26. Novelty – The New 35 USC § 102 35 USC § 102(b)(2): Same invention in different applications under 35 USC § 102(a)(2) if: (A) the subject matter was derived “directly or indirectly” from the inventor or a joint inventor; (B) the subject matter was previously publicly disclosed by or “directly or indirectly” from the inventor or joint inventor prior to the subject matter was effectively filed under subsection (a)(2).
27. Novelty – The New 35 USC § 102 35 USC § 102(b)(2)(C) takes former 35 USC § 103(c) and applies to novelty Very common problem under old law Large companies have different teams of inventors all filing different disclosures One broad disclosure anticipated all later applications No longer a concern Concept expanded to joint research and development agreements under 35 USC § 102(c)
28. Novelty – The New 35 USC § 102 Example: Company X files patent application A (by inventor Y) on July 1, 2009 and patent application B (by inventor Z) on September 1, 2009. Patent application B is rejected as being anticipated under 35 USC § 102 in view of patent application A and being obvious under 35 USC § 103 as being obvious in view of patent application A in combination with patent C issued to another company. Under old 35 USC § 102, since application A qualifies as prior art under only § 102(e), application A is prior art for anticipation purposes but not obviousness purposes. Under new 35 USC § 102, application A would not qualify as prior art for anticipation or obviousness purposes.
29. Novelty – The New 35 USC § 102 Summary: Some issues of uncertainty and more prior art available for applications filed after March 16, 2013. Note: Old § 102 still applies to any application that can claim priority before March 16 (e.g. continuations, national stages of PCT applications).
30. Example 1 4/1/13 10/1/14 10/1/15 Company X files appl. A in Japan Appl. A is published Company X files appl. A in the US Can Company X file the same appl. in the US without claiming priority on/before 10/1/15? Yes. This is similar to old § 102(a) practice if you do not claim priority.  The Japanese application does not have an effective filing date because there is no corresponding US filing claiming priority, so there is no filing date usable under 35 USC § 102(a)(2). Specifically, “effectively filed” is defined under 35 USC § 102(d) requires foreign filing dates to be usable under 35 USC 102(a)(2) if there is a corresponding US application (which there is not). Under new 35 USC § 102(a)(1), because the effective filing date is not until 10/1/15, the publication at 10/1/14 makes the 10/1/14 publication available against the application unless there is a 35 USC § 102(b) exception.  But there is – under new 35 USC § 102(b)(1), it can be assumed that the published application is a disclosure and is by the same inventor.  Thus, the publication is not usable against the later-filed US application, because it was disclosed within one year of the effective filing date.
31. Example 2 4/1/13 4/1/14 4/1/15 Company X publishes Company X files appl. A in Japan Company X files appl. A in the US Can Company X file the same subject matter in the US on 4/1/15? Yes. This appears to be a change in the law, as this was not possible under the old law. Under new 35 USC § 100(i)(B), there is no distinction in the effective filing date between filing in the US and abroad, as was the case previously.  In this example, the effective filing date for application A is 4/1/14, which is the date the US application is entitled to rely upon for purposes of 35 USC § 102(b)(1). Accordingly, you can file in the US two years after a publication, assuming you file a prior foreign application within 12 months of that publication.  This analysis assumes the publication is a disclosure under 35 USC § 102(b)(1).   The answer changes if the prior art event is not a disclosure. Where the prior art event is not a disclosure, there is no grace period because 35 USC § 102(b)(1) only applies to disclosures by the inventor.
32. Example 3 4/1/13 7/1/13 4/1/14 4/1/15 Company X has a sale in Japan Company Y files appl. A in the US Company X files appl. B in Japan Company X files appl. B in the US If the sale is a disclosure, is Company X entitled to a patent under 35 USC § 102(b)(2)(B)? Yes. For purposes of 35 USC § 102(b)(2)(B), “the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor” is available as prior art against the application of the inventor, if the inventor files the application within 1 year of the disclosure.  Thus, assuming Company Y’s application contains the same subject matter as Company X’s and the sale is of the same subject matter, Company Y’s application is not prior art for Company X’s application under 35 USC 102(a)(2). However, the prior sale is available against Company Y under 35 USC § 102(a)(1). If the sale is not a disclosure, does Company Y get its patent because it is the first to file? No. If the prior art event is not a disclosure, there is no grace period because 35 USC § 102(b)(2) only applies to disclosures by the inventor, so Company X cannot get its patent as the sale is a bar under 35 USC § 102(a)(1). But the sale is also still available as prior art against Company Y under 35 USC § 102(a)(1).  As such, neither company would get a patent.
33. Derivation Proceedings Derivation Proceedings – 35 USC § 135 Under old law, where there was a conflict under 35 USC § 102(g), could resolve using an interference proceeding. 35 USC § 102(f) is a defense to an earlier-filed invention. Very rare. 35 USC §§ 291 & 135 replace interference law with derivation law. 35 USC § 291: in court between patents. 35 USC § 135: at the USPTO between applications.
34. Derivation Proceedings Rules implemented in 37 CFR Part 42 Subpart E (§ 42.400-.412). Key Rules: Petition Fee: $400. Petition Page Limit: 60 pages (not including table of contents, table of authorities, certificate of service, and appendix of exhibits). “First publication” that starts the one-year clock to file a derivation may be through patent application publication, patent issuance, or WIPO application publication designating the US. Publication of the petitioner’s claim does not start the clock. Reissue applications and applicants are treated the same as other applications and applicants (as opposed to patents and patentees) for all derivation purposes.
35. Derivation Proceedings Key Rules: Petition must argue constructions for the challenged claims, including structure for means-plus-function claims, and show them to be “the same or substantially the same” (i.e. “patentably indistinct”) as the communicated invention. Evidence of derivation must be shown by substantial evidence and must include "at least one affidavit addressing communication of the derived invention and lack of authorization”. The showing of communication “must be corroborated”. If common ownership is found between the applications at issue, the Board may terminate the derivation.
36. Derivation Proceedings Problem: Derivation proceeding under § 135 requires filing within 1 year of first publication of a claim to an invention that is “the same or substantially the same” as the earlier application’s claim to the invention. What is time limit for unpublished claims? E.g., patent applicant amends/adds claims after publication. Neither legislation nor rules address this. Petition shall set forth with particularity the basis for finding that inventor named in earlier application derived the claimed invention from inventor named in petitioner’s application, and filed without authorization. Derivation proceeding under § 291 requires filing within one year after issuance of the first patent. Likely to be a very rare proceeding, just like interference practice.
37. “New” Prior Commercial Use Defense Sec. 5. Defense to infringement based on prior commercial use Under old law: 35 USC § 102(g)(2) would invalidate patent if shown that another person first actually reduced to practice. Thomson S.A. v. Quixote Corp., 166 F.3d 1172, 49 U.S.P.Q.2d 1530 (Fed. Cir. 1999). 35 USC § 102(b) would invalidate patent if commercial exploitation of invention shown. Invitrogen Corp. v. Biocrest Manufacturing L.P., 424 F.3d 1374 (Fed. Cir. 2005) Protected entire industry. Under new prior user defense, patent possibly still valid against others in industry.
38. “New” Prior Commercial Use Defense Test under 35 USC § 273 Infringing subject matter “consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process”. Infringer “commercially used” the infringing subject matter in the United States while “acting in good faith”. Commercial use is internal use or commercial transfer. Commercial use is at least 1 year more than: Effective filing date; or Disclosure date of 35 USC § 102(b).
39. “New” Prior Commercial Use Defense What qualifies as commercial use? Likely any commercial exploitation FDA reviews of drug applications Non-commercial use in “nonprofit” or university laboratory “for which the public is the intended beneficiary” Exception for prolonged experimental use
40. “New” Prior Commercial Use Defense Defense is personal Cannot extend to others except Customers Commercial use “exhausts” patent right for resulting product Purchasers of entire business Defense is limited to where commercial use is ongoing Like a shop right Cannot use in new factory/new importations
41. “New” Prior Commercial Use Defense Cannot assert defense if Infringer derived invention from inventor Infringer abandoned use Inventor of patent was a University employee University exception Does not apply where Government funds used to reduce to practice New subject invention defense to University exception Major exception since many University patents are “subject inventions” under Bayh-Dole, 35 USC §§ 200 et seq.
42. “New” Prior Commercial Use Defense Secret, concealed innovations that are used in a commercial process can now be used as a defense – previously exception only applied to business method processes. But such innovations cannot be used to invalidate the patent. Strategy Tip: carefully document all processes, machinery, dates of use that are employed by your company as such information may be used as a defense against a patent holder later on
43. “New” Prior Commercial Use Defense Caution: 35 USC § 273(f) If asserted, possible counterclaim of unreasonableness if not successful Will get attorneys fees for unreasonable assertion “the court shall find the case exceptional for the purpose of awarding attorney fees under section 285.” Not discretionary Strategy Tip: be careful when using boilerplate Answers in responding to complaint in lawsuit
44. “New” Prior Commercial Use Defense Very difficult to show Must show by clear and convincing evidence Strategy Tip: With clear and convincing standard, assert as alternative defense Do not assert if are unsure Try to rely solely on 35 USC § 102
45. New Opportunities for Examination The new law provides 4 mechanisms for limited third party activity (old law provides 3 mechanisms) Pre-issuance Protest and preissuance submissions only allowed within limited time of publication Post-issuance Ex parte reexamination Inter partes review Post-grant review
46. Preissuance Submissions Preissuance – 35 USC § 122 Preissuance Submissions by Third Party 35 USC § 122(e): Allows submission of printed publications (including patents and publications) by third party. Must include explanation of relevance, a fee, and a statement in compliance with the statute. Must make prior to the earlier of A Notice of Allowance; or The later of— 6 months after US publication, or Issuance of a first Office rejection. Existing Protest system also remains (with minor changes) May be submitted electronically through EFS
47. Preissuance Submissions Submission Rules: 37 CFR § 1.290 and .291 No requirement that an application be published before a third party may make a submission into its record. No requirement that the submission is prior art, merely “of potential relevance.” If prior art status is what would make a submission relevant, the third party bears the burden of showing the date of publication. But documents included solely for the purpose of this showing do not count as additional documents for the purpose of fee calculation. § 1.290(d)(5)(i): A party with a § 1.56 duty to disclose information may not make a submission under these rules. But no requirement to identify the real party in interest (who might fear being put at odds with the applicant). Must merely declare that said party does not have such a duty. § 1.290(h): The applicant need not respond to a submission unless the PTO requests it.
48. Preissuance Submissions Submission Rules: 37 CFR § 1.290 and .291 Notes on § 1.290(b): The time periods are statutory; the Office may not extend them. Only a 35 USC § 122 publication (as opposed to, e.g., a WIPO publication) starts the “six months after publication” clock. A republication “due to material mistake” (see § 1.221) restarts the publication clock. A first Office action is not a “first rejection” if no claims are rejected (e.g., if it is a restriction or a Quayle action). § 1.17(p): Fee is $180.00 for each batch of ten documents or fraction thereof. § 1.290(g): No fee required for submissions of three or less documents, unless third party has previously or concurrently presented other submissions.
49. Preissuance Submissions Submission Rules: 37 CFR § 1.290 and 1.291 § 1.290(c)-(e): Formatting and required information for a submission. Note on § 1.290(d)(2): Each description should ideally point to the relevant pages or lines of the submitted document. § 1.290(d)(3): Copies of submitted documents are required, unless the document is a US patent or published US application § 1.290(d)(4): Translations of “all relevant portions” of non-English documents must be included. § 1.291(b): Clarified to state that protests cannot be filed after a notice of allowance even if the applicant has consented. § 1.291(c): Clarified to state how a protest should list items. Old § 1.99 is removed as redundant (§ 1.290 covers all its scenarios and more).
50. Third Party Submissions vs. Protests Content Third party submissions may only contain publications with an explanation of their relevance, and are generally only effective for anticipation and obviousness. Protests may also contain non-published material and direct arguments, and can be used to argue any reason not to allow the patent (a POSitA would understand a term to mean X, not Y; the inventorship is incorrect; inequitable conduct has occurred, etc.) Timing Protests must be filed before the application goes to publication, unless the Applicant permits otherwise. (Protester most often knows to protest by spotting a corresponding PCT application.) Third party submissions may be filed up to six months after publication, or up to the mailing of the first OA on the merits, whichever is later. (Neither may be filed once a Notice of Allowance is mailed.)
51. Third Party Submissions vs. Protests Fees Third party submissions cost $180 for each set of ten references (a first submission of three or less is free). The first protest is free, regardless of size. Later protests by the same real party in interest for the same application cost $140. Multiple Submissions A real party in interest may not make more than one protest for an application unless they can explain why they did not present the second argument with the first protest. A party may submit as many third party submissions as they like, at any time within the window for submission.
52. Preissuance Submissions Strategy Tip: Consider monitoring published PCT applications filed by predetermined applicants as they may publish before the corresponding US patent application, thereby allowing more time to file submission. May wish to monitor the prosecution of applications in relevant fields and conduct prior art searches prior to issuance of those claims. This will also allow action within the protest window, if desired. Caution – Preissuance submissions may prejudice its later use as grounds for a post-grant review or inter partes review in view of the standards for initiating those procedures.
53. Post-Issuance Proceedings Post-issuance Ex parte reexamination 35 USC § 302 A third party may request an ex parte reexamination, but the right of the third party to participate in the proceedings is very limited. Patent owner can request Director of USPTO can request No time limit to submit Appeal is only to Federal Circuit; no longer to DC District Court Inter partes review 35 USC §§ 311-319 A third party has more extensive rights to participate Must file the later of (i) 9 months after issuance or reissuance; or (ii) if post-grant review is initiated, the date of termination of such review (unless the application was filed before March 16, 2013, in which case may file an IPR immediately after issuance; see PL 112-274). Post-Grant Review 35 USC §§ 321-329
54. Post-Issuance Proceedings Asserted Benefits Reduce litigation costs Quicker review than in litigation – proceeding must be completed within 1 year; although 6 month extension is possible for good cause Asserted Criticisms Unfunded Mandate – how will USPTO hire ALJs knowledgeable in discovery and other litigation procedures? Somewhat redundant with other procedures More chances to cause delays and problems for patentee
55. Differences in Reviews Differences between inter partesreview and post-grant review: Inter partesreview may only invalidate a patent for anticipation or obviousness, while post-grant review may invalidate for any ground available in court (e.g. § 112 indefiniteness, § 101 ineligibility). Inter partes review may only consider patents and printed publications as evidence of prior art, while post-grant review may also consider public sale, use, or other disclosure. Post-grant review may only be brought within nine months of a patent’s issuance (or reissuance); inter partesreview may be brought after this period.
56. Provisions for Post-Grant Review and Inter Partes Review Both post-grant review and inter partes review will allow limited discovery, protective orders, oral hearings, settlement, and the management of the proceedings by a three person Administrative Patent Judge (APJ) panel of the new Patent Trial & Appeal Board (PTAB). Overall cost will be somewhat expensive, but still less than litigation.
57. Standard for Review The standards to institute a proceeding are as follows: For Post-Grant Review – if petition is not rebutted, when it is more likely than not that at least one challenged claim is unpatentable; alternatively, the petition must raise a novel or unsettled legal question important to other patent or applications. For Inter Partes Review – reasonable likelihood that petitioner will prevail with respect to at least one of the challenged claims.
58. Former Dead Zone for Proceedings Post-grant review will only be available for patents with effective filing dates on or after March 16, 2013. Thus this process likely will not be available until around 2015. As § 311(c) initially offered no exception to 9 month wait for inter partesreview, this meant that any patents issuing at present could not be challenged for 9 months. In courts with swift dockets, the opportunity to stay the case pending USPTO proceedings might have been lost. However, Congress removed this dead zone in January 2013 (Public Law 112-274, § 1(d)); inter partesreview may now be initiated at any time for issued patents with effective filing dates prior to March 16, 2013. Additionally, reissues no longer reset the nine month wait, regardless of filing date (but apparently do still reopen the window for post-grant review).
59. Rules for Reviews 37 CFR Part 42 Subparts B (Inter Partes Review) and C (Post-Grant Review). A reissue does not reset the nine-month window for post-grant reviews of claims if the new claim is “identical or narrower” than the original. As with derivation petitions, a review petition must argue constructions for the challenged claims and explain why they are unpatentable. The Office, although given statutory authority to limit the number of inter partes and post-grant reviews each year up to 2016, has for the moment declined to do so. However, it reserves the right to do so in the future by providing notice in the Official Gazette or Federal Register.
60. Rules for Reviews Inter Partes Review Petition: $23,000 filing fee (more for over 15 challenged claims, $14,000 refundable if petition denied). 60 page limit. Post Grant Review Petition: $30,000 filing fee more for over 15 challenged claims, $18,000 refundable if petition denied). 80 page limit. Neither petition fee benefits from small-entity or micro-entity fee reductions. Responses have the same page limit as the corresponding petition, not counting the listing of facts admitted or denied. A petitioner may move to waive a page limit “in the interests of justice.”
61. Transitional Business Method Reviews AIA § 18: The nine-month window for filing post-grant reviews will not apply to “covered business method patents” between September 16, 2012 and September 15, 2020. “Covered business method patent” defined as “a patent that 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.” Allows easy review of existing business method patents under new standards of law. Petitioners employing the standards of the recent CLS Bank decision could use reviews to demolish all but the most specific claims in the field.
62. Rules for Business Method Reviews 37 CFR Part 42 Subpart D. The burden of showing that a patent is a “covered transitional business method” falls on the petitioner, and must be shown in the petition. To determine whether a patent is a “technological invention” immune from transitional business method reviews, examine “whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” A transitional business method review cannot be filed if a standard post-grant review is available. Otherwise the same as other post-grant reviews, but without the nine-month window.
63. Potential Strategies in Determining How to Proceed (1) Pre-issuance submissions and Ex Parte Reexaminations, (2) Post Grant Reviews and (3) Inter Partes Review are designed as way to submit knock-out prior art and avoid the issuance of a patent or the expense of a litigation.  Not really designed to question or re-argue PTO decisions.  Any of procedures can be dangerous when used with weak prior art because they may provide applicant with means to strengthen his patent, especially when using pre-issuance submissions or Ex Parte Reexamination. Post Grant Review should also be based on a strong position or risk a strengthened patent if the challenge is not successful.
64. Potential Strategies in Determining How to Proceed Inter Partes Review was designed as lower cost alternative to Federal District Court litigation and has most of the same procedures in a condensed form and with a knowledgeable tribunal instead of  lay judge.Allows for a weaker or a more complicated position to be presented in a more detailed and persuasive manner. An IPR must be filed within one year of the start of a litigation. In summary, strategy-wise, use: Pre-issuance Submissions with very strong prior art, Post-Grant Review with strong prior art or with prior art that requires explanation or live testimony, and Inter Partes Review with complicated prior art or a complicated theory of invalidity.
65. Potential Strategies in Determining How to Proceed None of the options provides for automatic stay of litigation and any stay will depend greatly on particular facts of the litigation. Strategically recommending a course of action is VERY fact dependent: How crowded is the prior art? What is the level of “invention” in that particular patent classification? Who owns the patent?
66. Problems with Reviews Problems with new post-grant review Must initiate quickly, within 9 months of grant Problems with new inter partes review and post-grant review May not be instituted or maintained after the petitioner or real party in interest has filed a civil action challenging the validity of a patent claim Cannot file with declaratory judgment Can still file if invalidity is counterclaim In later actions, estopped from raising defenses that could have been raised in initial review Can get very expensive, especially if concurrent petitions are required Strategy Tip: If going to use, best option usually post-grant review Do it quickly If too expensive or too late, use ex parte reexamination
67. Supplemental Examination 35 USC § 257 – Supplemental examination Adds a third (new) mechanism for patent owner to test validity of patent Standard: if new information raises a substantial new question of patentability First method: Ex parte reexamination 35 USC § 302 Patent owner can request Substantial new question of patentability Second method: reissue application 35 USC § 251
68. Supplemental Examination SE request must be filed before unenforceability is alleged in civil action (or in an ANDA notice letter; see 21 U.S.C. § 355(j)(2)(B)), and does not afford protection if an ITC § 337 action is brought before conclusion of the SE. Any information believed to be relevant, and not limited to patents or publications, may be submitted. Caution: USPTO can consider material fraud and order cancellation of patent in supplemental examination, or refer the matter to the Attorney General. Must be material fraud.
69. Supplemental Examination 37 CFR Part 1 Subpart E (§ 1.601-.625) Each SE will consider up to 12 “Items of Information” Defined as any single document or recording, including its translation, summary, or transcription. May file multiple concurrent SEs in case of additional items. Fees: $4400 to request, plus additional fees to consider items over 20 pages. Also, $12,100 reexamination “deposit”, which will be refunded if a reexamination does not result.
70. Supplemental Examination Major difference: Effect is like a shield in that another party cannot use information considered during supplemental examination for invalidity Not same in ex parte reexamination When to use: Really only useful if cannot file reissue application Reissue allows correction and usually broadening of claims (if within 2 years). More flexible If reissue not an option, use supplemental examination prior to court action, and ex parte reexamination as a last resort. E.g., if reference shows up after Notice of Allowance and before issuance, but you don’t think reference will affect scope of claims.
71. The Patent Trial and Appeal Board The Patent Trial and Appeal Board , under AIA’s § 7 and the new 35 USC § 6, replaces the Board of Patent Appeals and Interferences. Duties include derivations, inter partes reviews, post-grant and business method reviews, and appeals of examiner decisions and reexaminations. For transitional purposes, it will also take over any pending BPAI proceedings. All hearings will be by three-member panel. 37 CFR § 42.200: Interferences initiated before September 16, 2012 will continue and will remain regulated under 37 CFR Part 41 unless the Chief Administrative Patent Judge “otherwise order[s] in the interest of justice.” PTAB procedures are to be implemented in 37 CFR Part 42 and apply to all Board proceedings (save for transitioned BPAI proceedings), including derivations and both inter partesand post-grant reviews.
72. PTAB General Procedural Rules Both parties must file notification of real party-in-interest, related proceedings, lead and back-up counsel, and service information (including email, post and hand-delivery addresses, phone and fax). If the petitioner, file as part of the petition. If the respondent, file within 21 days of service. Also, file a new notice within 21 days of any of the above facts changing. Note that a PTAB proceeding does not allow anonymous parties (unlike with third-party submissions). Unless pro se, a party must designate both lead and back-up counsel. Apparently to maintain the speed of the proceeding when the lead is temporarily unavailable. Power of attorney must be filed when counsel is designated (unless counsel was already of record for the patent at the time of petition).
73. PTAB General Procedural Rules Defective petitions may be corrected within one month unless the statutory deadline to file expires first. Defective petitions will not be granted a filing date until corrected. File early! Filing at the deadline could remove any chance to correct errors. The preliminary response is limited to arguments against the prima facie merits of the petition. The preliminary response may not present new testimony evidence. Additional evidence may be introduced during discovery. The preliminary response may not amend the patent, but may disclaim any claim at issue. The right to a preliminary response may be waived, to accelerate the proceeding.
74. PTAB General Procedural Rules The Board may, if the prima facie burden is not met for a specific challenge, dismiss review on that claim or grounds and institute a review regarding the rest. The respondent may file a response, post-institution, to “any ground for unpatentability not already denied.” If the Board does not set a deadline for these later responses, they are due three months after the review is instituted. The respondent may move to amend the patent “after conferring with the Board” before filing a response. The amendment will be refused if it does not address the grounds for review or if it expands the scope or subject matter of the patent. In apparent conflict with the statute, which seems to grant one amendment as a matter of right. All parties involved in the proceeding have a duty of candor and good faith.
75. PTAB General Procedural Rules The default evidentiary standard for any issue is preponderance of the evidence (not “clear and convincing”). Required by statute for the reviews (see the new §§ 316(e) and 326(e)). Congress and the PTO apparently intend to encourage Board proceedings, with the easier standard of proof, over attacking the patent in District Court. Claims will be given their broadest reasonable construction. Standard selected due to USPTO’s view of the legislative history, over objections from AIPLA about the difference from the district court standard. Petitioners may, within one month of the trial institution, move to add relevant "supplemental information" to the record. Ex parte communication with a Board member regarding a specific proceeding is forbidden.
76. PTAB General Procedural Rules Filing format: 8½ x 11, unless an exhibit requires larger paper to preserve details. 14+ point(!) proportional font, or no more than 10 chars/inch monospace. Double-spaced, save for headings, tables and indexes, signature blocks, block quotations, and certificates of service. Block quotations may be 1.5 spaced but indented on both sides. 1 inch margins on all sides. All filings must be electronic unless otherwise authorized. No combined documents are allowed, and no document may incorporate another by reference. No repeat filings of the same document are allowed, unless otherwise authorized. All exhibits must be filed with the first document that cites them.
77. PTAB General Procedural Rules Motions are limited to 15 pages. Replies to responses are limited to 15 pages. Replies to motions are limited to 5 pages. Motion oppositions and replies to oppositions are due one month after service; however, the Board may alter this by order. Due dates aside, the rules encourage prompt filing: “Delay in seeking relief may justify a denial of relief sought.” Citations to a non-binding authority, if said authority is not published in the US Reports or West Reporter System, should be accompanied by a copy of the authority attached to the citing petition or motion. Expert testimony should disclose the underlying facts or data, and if reliant on a test should explain by affidavit “information necessary for the Board to evaluate the test and data”, including how the test generates the data, why the test was used, and how the relevant art views the test.
78. PTAB General Procedural Rules May serve a petition not only on the correspondence address of record but also, in addition, on “any other address known to the petitioner as likely to effect service.”. Later documents and motions shall be served on opposing party’s counsel, if any exists, simultaneously with filing. Certificates of service are required with all filed documents. An exhibit filed separately requires a transmittal letter. Electronic service is permitted on agreement of all parties. Otherwise, all service should be “by EXPRESS MAIL® or by means at least as fast and reliable”.
79. PTAB General Procedural Rules Parties are required to provide exhibits cited in testimony, cross-examination of affidavit testimony, and noncumulative information “inconsistent with” a party's position. Parties may agree to additional discovery, or one may move for it “in the interest of justice.” In post-grant reviews only, additional discovery is “on showing of good cause” but is limited to evidence “directly related” to a party’s assertion. If a foreign witness falls under the Board’s jurisdiction but refuses to attend trial, their affidavit may still be introduced. Apparently even without cross-examination. The Federal Rules of Evidence apply, unless in conflict with Subpart A of the regulations, or relating to matters not relevant to PTAB proceedings (e.g. juries, criminal trials).
80. PTAB General Procedural Rules Requests for rehearing on any issue may be filed within 14 days of a non-final decision or 30 days of a final decision. The request must identify all matters it believes the Board did not properly consider and show where the moving party addressed said matters. A request for rehearing does not toll any times for other actions. Interlocutory decisions are permitted on motion. They are not final and may not be appealed before final judgment, but may be reheard. Settlements are allowed but do not prevent the Board from making determinations of patentability, jurisdiction, etc. Board judgments may include a recommendation to the examiner or Director for further action.
81. PTAB General Procedural Rules The record of a proceeding shall be public. However, on motion concurrent with filing of confidential information, the Board may seal said information by protective order. This motion should include a proposed protective order. A party may also move to expunge said information after final judgment or denial of petition. When the confidential information is in a petition and accompanied by a motion, the protective order is granted as part of the institution of trial, and the respondent may only view the information before trial by agreeing to the order. Appeals to the Federal Circuit must be filed within 63 days of the final decision. Unless a party first requests a rehearing, in which case the appeal must be filed within 63 days of action on the request.
82. PTAB General Procedural Rules Estoppel: When a patent owner’s claim is canceled/refused, they may not later add a claim that is “not patentablydistinct”. The petitioner may not request or maintain proceedings related to claims for which a final decision was given, unless the matter was resolved through settlement, or unless on a ground that the petitioner could not reasonably have raised at the time of review. The Board has the authority to sanction for misconduct, up to and including judgment or dismissal of the proceeding. The Board has discretion to waive or suspend non-statutory procedural requirements or require additional procedures, conditionally or otherwise. A Practice Guide has been published at 77 FR 48755.
83. Eliminating Litigation Traps Under old law, there are a number of defenses which are traps for the unwary patent owner 35 USC § 112’s requirement of best mode False Patent Marking Both have public policies that are well intentioned The Act takes approach that benefit does not outweigh the harm
84. Eliminating Litigation Traps Best mode is a problematic trap since it requires inventors to remember years later what was “best” way to build. Very subjective Hard to show Leads to fishing expeditions Rarely succeeds Patent Marking Led to phenomenon of patent marking trolls Allowed third parties who were not injured by false marking to obtain large damages
85. Eliminating Litigation Traps AIA § 15 eliminated the use of best mode invalidity as a defense during litigation. Amended 35 USC § 282 to indicate one can invalidate patent for not complying with any portion of 35 USC § 112 “except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.” Does not affect requirement during regular prosecution. But: Cannot use in post-grant review. Cannot use in reexaminations.
86. Eliminating Litigation Traps Problem: Rare to use in prosecution since USPTO does not have access to the facts. MPEP 2163.03 admits this. Solution: If evidence is available (possibly product descriptions, etc.), submit as third party submission or protest during prosecution. Allows use of non-prior art publications to examine issue.
87. Eliminating Litigation Traps Sec. 16: Revises Marking Statutes in Two Places. 35 USC § 287: Provided specific mechanism for virtual marking products using webpages. Add to product description word “patent” and link to actual patent. 35 USC § 292: Limits who can bring false marking suits: US Government or Persons suffering a competitive injury (actual harm) by false marking. Cannot use expired patents as basis for suits. Helps eliminate qui tam suits instituted by companies which exist solely to bring false marking suits.
88. Prioritized Examination The Act establishes a new procedure under 35 § 2(b)(2)(G) for accelerated examination called “Prioritized Examination (PE)”. Applicant can pay additional $4,000 fee (small/micro discounts available) to place an application on a prioritized track. USPTO has a goal to provide final disposition (i.e., rejection or allowance) within a year on average.
89. Differences Between PE and AE Accelerated examination (AE) procedures have also been retained. Differences between PE and AE: PE does not require a pre-examination search document (PESD) and an accelerated examination support document (AESD). This can very costly and time consuming to prepare. PE allows for 4 independent and 30 total claims subject to excess claim fees whereas AE allows for 3 independent and 20 total claims. PE petition fee is $4000, whereas AE petition fee is $140 (and not required in all cases) AE response time is 1 month for non-final office actions and failure to meet results in abandonment, whereas PE response time is 3 months which is extendible but results in falling out of PE program.
90. Eliminating Patent Backlog America Invents Act recognized continued problem of USPTO underfunding. Lack of funding blamed for backlog of patents. Addressed in three sections: Sec. 10. Fee setting authority Sec. 11. Fees for patent services Sec. 22. Patent and Trademark Office funding
91. Eliminating Patent Backlog The Director of the USPTO may establish fees. Fees have been adjusted once by Congress and twice by the USPTO, based on the Consumer Price Index and the cost to the USPTO of processing given filings. Establishes Patent and Trademark Fee Reserve Fund for amounts collected but not appropriated to USPTO. Does not stop fee diversion, but better than the old system.
92. Eliminating Patent Backlog Creates the new status of “micro entity.” Defined as a small entity that: has been an inventor in no more than 4 prior applications; had less than 3 times the median household gross income the previous year (for 2012, $150,162); and has not assigned ownership interest in an application to an entity with an income exceeding 3 times the median household gross income. Fees for “filing, searching, examining, issuing, appealing, and maintaining patent applications and patents” are reduced by 75% for micro-entities. Unlike small entity status, once micro-entity status is asserted, each payment at the discount is a reassertion of status. Also, if status no longer applies, must be explicitly withdrawn. Effective March 19, 2013.
93. Exceptions to Patentable Subject Matter Has been a great deal of attention drawn to what is patentable subject matter. Usually under 35 USC § 101. Bilski v. Kappos, 130 S.Ct. 3218 (US 2010) (regarding abstract methods) Mayo v. Prometheus, 132 S.Ct. 1289 (US 2012) (regarding natural laws and phenomena) CLS Bank v. Alice Corp., 106 U.S.P.Q.2d 1696 (Fed. Cir. 2013) (regarding software implementation of abstract ideas) State of the law is in flux.
94. Exceptions to Patentable Subject Matter Congress has added to the confusion Sec. 33. Limitation on issuance of patents. No patents on the “human organism” Does not affect validity of any patent issued prior to the September 16, 2011 Sec. 14. Tax strategies deemed within the prior art No patents on tax strategies
95. Other Features of AIA § 118 allows an assignee to file an application. The assignee is then deemed to be the applicant. Previously, assignee could file an application only if inventor could not be found or refused to cooperate. § 115 still requires the inventor to sign the declaration before the notice of allowance (with certain exceptions). $400 fee for each patent application not filed electronically. § 298 states that failure to obtain advice of counsel may not be used to prove willful infringement. Effective on patents issued on or after September 16, 2012. Requires USPTO to establish 3 or more satellite offices in the US, subject to available resources. Due by September 16, 2014. An office at 300 River Place Dr., Detroit, MI 48207 opened in July 2012. Other satellite offices are planned in Dallas, Denver, and Silicon Valley.
96. Conclusion America Invents Act is first significant change in US Patent Law in 50 years. President believes will help businesses and protect jobs. Accomplished a number of long-desired goals. Switch to First to File. Should allow for improved international cooperation. More stable USPTO funding. Should reduce backlog. Not perfect. Novelty more complex than before. Will be increased litigation while terms sorted. Important that companies engage US counsel to ensure meet goals in new IP environment.