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Prosecution Group Luncheon

Prosecution Group Luncheon. March, 2011. S.23: Patent Reform Act of 2011. Senate passed 95-5 (3/8); no House action as yet First to File Virtual (Internet) Marking Post-grant Review Supplemental Examination on Owner’s Request Elimination of Best Mode as Invalidity Basis

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Prosecution Group Luncheon

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  1. Prosecution Group Luncheon March, 2011

  2. S.23: Patent Reform Act of 2011 Senate passed 95-5 (3/8); no House action as yet • First to File • Virtual (Internet) Marking • Post-grant Review • Supplemental Examination on Owner’s Request • Elimination of Best Mode as Invalidity Basis • Transitional Review Procedure for Bus. Method Patents • Third-party Citation of Art

  3. S.23: Patent Reform Act of 2011--First to File • Filing Date Prior Art: Did art exist < effective filing date? • Items “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” • Nonobvious Subject Matter: analysis as of “effective filing date,” not “time the invention was made” • Narrow One-Year Grace Period:  exception to prior art • Negates pre-filing disclosures (1) by inventor, (2) derived from inventor, or (3) after inventor had publicly disclosed • Patent Races:  First-filed wins, not first-to-invent • No more interferences, conception, diligence, RTP, abandon/suppress/conceal • Derivation redressable in court or PTO • No Prior User Rights Provision: invalidation via prior invention eliminated; prior user potentially liable for infringement  

  4. S.23: Patent Reform Act of 2011--“Oppositions” “Inter Partes” Review and “Post-Grant” Review • Restrictions if a suit has been filed on patent • PTO must provide regulations for proceeding • Estoppel • Settlement provision (precludes estoppel) • Owner may amend claims during proceeding

  5. S.23: Patent Reform Act of 2011--“Oppositions” Differences • Basis for request • Inter Partes: Under 102/103, based on prior art patents, printed publications • Post-grant: Any ground under section 282(b) [e.g. 102, 103, 112 except best mode] • Timing • Inter partes: File after the later of (1) 9 months after grant, or (2) end of post-grant review • Post-grant: File within 9 months after grant

  6. False Marking Statute Cut Down Unique Product Sol’ns Ltd. v. Hy-Grade Valve Inc. (N.D. Ohio 2/23/2011) • 35 U.S.C. 292: Qui tam suit for false marking, split recovery with U.S. • Defendant challenged under “take care” clause of U.S. Constitution • Court: 292 “represents a wholesale delegation of criminal law enforcement power to private entities with no control exercised by the Department of Justice”--unconstitutional

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