The America Invents Act as of Sept. 2012 - Patent Law Changes Summary

1. The America Invents Act as of Sept. 2012 - Patent Law Changes Summary • absolutely, positively the shortest, most concise summary in layman's terms of changes to U.S. patent law that you've (probably) ever seen • by Todd L. Juneau

2. Patent Law changes as of Sept. 16, 2011 • 1) Prior User Defense • An accused infringer may avoid liability by proving that it commercially used the invention more than one (1) year before the effective filing date of the patent. • (2) Patent Reexamination: New Threshold • Reexamination now requires requester to show a "REASONABLE LIKELIHOOD TO PREVAIL" (RLP) that at least one granted claim is unpatentable in view of newly presented prior art patents or publications. • Reexamination previously required requester to show that a Substantial New Question (SNQ) of Patentability arose because of newly found prior art patents or publications. (3) Tax Strategies Tax strategies are deemed unpatentable by law. (4) Best Mode The previous requirement that a patent must disclose the best known method of practicing the invention is repealed to the extent that failure to disclose the best mode cannot be used to invalidate the patent, render it unenforceable or cancel it. However, applicants must still meet the best mode requirement at the Patent Office. (5) Human organisms Human organisms are deemed unpatentable by law.

3. Patent Law changes as of Sept. 16, 2011 • (6) False Marking • The previous private enforcement right (called a Qui Tam lawsuit) that anyone could file a False Patent Marking lawsuit and keep the proceeds is repealed. • (7) Court Change • Lawsuits against the Patent Office are now brought at the District Court in Alexandria and no longer at the District Court in Washington D.C. (8) USPTO Fees (i) the Patent Office now has the authority to set their own fees. (ii) a new category of micro-entity fees for small inventors is established which reduces fees by 75%. (9) Fast-Track Examination (9/26/2011) Applicants for Patent may file a petition and fee of $4800 to have the patenting process completed within 12 months.

4. Patent Law changes as of Sept. 16, 2012 • (10) Inventor's Declaration • Inventors now only need to state under oath or penalty of law that they were the original inventor, and are no longer required to state they were the original and first inventor. • (11) Owner Filings • Applications may be filed directly by patent owners (12) New Definition of Prior Art (i) Any public use or prior sale of the invention before the filing date of the invention, anywhere in the world, will defeat patentability. Previously, the law only recognized acts within the U.S. (ii) U.S. patent applications originating from foreign patent filings are now prior art as of their foreign filing date for defeating patentability. Previously, the law only recognized the date these applications were actually filed in the U.S. (iii) U.S. inventors still have a one (1) year grace period after making the invention public to get a patent application on file.

5. Patent Law changes as of Sept. 16, 2012 • (13) Certain Important Technologies given Automatic Fast-Track • Inventions relating to the environment, energy, renewables, greenhouse gases, and counter-terrorism may be fast-tracked and receive a decision on patentability within 12 months. • (14) Pre-Grant Public Access for Providing Prior Art in Pending Applications • Also known as Third Party Pre-grant 122(e) Submissions, this allows anyone to submit printed publications (only) into applications currently under active examination, provided they are submitted before the first Examiner's Report or within six months of the publication date, and with an explanation of their relevance. (15) Post-Grant Public Access to Lodge Prior Art in Granted Patent files Also known as Third Party 501 Submissions allows anyone to submit printed publications (only) into granted patent files, provided they are submitted with an explanation of their relevance. (16) Public Protests Against Pending Applications Under Section 291, this allows anyone to submit a blind protest against an unpublished pending patent application, along with prior art publications (only) into unpublished pending patent application files, provided they are submitted with an explanation of their relevance and the patent office is able to match up the Protest with the appropriate application (held in secret until published).

6. Patent Law changes as of Sept. 16, 2012 • (17) Supplemental Examination • A new service offered by the Patent Office, known as Supplemental Examination, allows a patent owner (only), upon payment of a fee of $5,180, to request that the USPTO consider, reconsider or correct the patent where a patent or publication (only) is believed to raise a Substantial New Question (SNQ) of Patentability. The Patent Office will make this determination within three (3) months of the request. No amendments or interviews are allowed. If no question of patentability is found, a Certificate will issue to that effect. If the Patent Office finds patentability to be questionable, an Ex Parte Reexamination will be ordered and a fee of $16,120 assessed, refundable if the Ex Parte Reexamaintion is not instituted. (18) Patent-Owner Initiated Re-Examination Also known as Ex Parte Reexamination, a patent owner (only), upon payment of a fee of $17,750, may directly request the USPTO to consider, reconsider or correct the patent where a patent or publication (only) is believed to raise a Substantial New Question (SNQ) of Patentability. If the Patent Office finds patentability not to be questionable, the request will be denied and the fee of $16,120 refunded less a processing fee of $4,320.

7. Patent Law changes as of Sept. 16, 2012 • (19) Public Patent Opposition - Prior Art Only • Also known as Inter Partes Review (IPR) and previously known as inter partes (third party) reexamination, anyone may request, within nine (9) months from the issuance of the patent, upon payment of a fee of $27,200, that the Patent Office review the patentability of up to twenty (20) claims of a granted patent in view of prior art patents or publications (only). • The threshold for the Patent Office to grant the request is whether the requester has shown a "REASONABLE LIKELIHOOD TO PREVAIL" (RLP) that at least one granted claim is unpatentable in view of newly presented prior art patents or publications. (20) Public Patent Opposition - Any Reason for Invalidity Also known as Post Grant Review (PGR) and previously known in limited form as inter partes (third party) reexamination, anyone may request, within nine (9) months from the issuance of the patent, upon payment of a fee of $35,800, that the Patent Office review all aspects of the validity of up to twenty (20) claims of a granted patent. The threshold for the Patent Office to grant the request is whether the requester has shown that it is "MORE LIKELY THAN NOT" (MLTN) that at least one granted claim is unpatentable in view of newly presented prior art patents or publications or any other requirement for patentability.

8. Patent Law changes as of Sept. 16, 2012 • (21) Pro Bono Patent Program • The Patent Office will now offer free help to low-income inventors to assist them in obtaining a patent. This program will be available in Minnesota, Denver, Silicon Valley, Dallas, Washington DC, and New York City. (22) Patent Ombudsman The Patent Office will establish a Patent Ombudsman to assist and advocate on behalf of Small Businesses and Solo Inventors who run into difficulties at the Patent Office.

9. Patent Law changes as of Mar. 16, 2013 • (23) Commonly Owned Exception to Prior Art • Exception: A patent or published application (#1) is not prior art against (#2) a claimed invention if they were commonly owned at the time of filing. Sec. 102(b)(2)(C). Effective for applications filed on or after 3/16/2013. • The definition of commonly owned includes subject matter and claimed inventions that were developed under a joint research agreement, where the agreement was in effect at the time of filing, the claimed invention was made as a result of the agreement, and the application is amended to state the names of the parties to the joint research agreement. Sec. 102(c). Effective for applications filed on or after 3/16/2013. (24) Derivation Proceedings Patents will be granted to the first applicant to file, which is pretty much the same as patent law has been previously for all practical purposes except in cases where a patent interference lawsuit was previously filed. Now, the Patent Office has established a Derivation Proceeding to replace the former interference proceeding, that will allow patent applicants to file a request that the Patent Office institute a trial to determine whether an earlier-filed patent applicant has derived the invention from them, provided that the request is made within twelve (12) months after the first publication of the earlier-filed applicant's claim.