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The Race to the Patent Office – The Impact of the America Invents Act

The Race to the Patent Office – The Impact of the America Invents Act. James T. Hagler Senior Patent Counsel Qualcomm Incorporated. America Invents Act. US Patent System transitioned from First-To-Invent to First-To-File System on March 16, 2013.

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The Race to the Patent Office – The Impact of the America Invents Act

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  1. The Race to the Patent Office – The Impact of the America Invents Act James T. Hagler Senior Patent Counsel Qualcomm Incorporated

  2. America Invents Act • US Patent System transitioned from First-To-Invent to First-To-File System on March 16, 2013. • Filing an application before March 16, 2013 created potential value because it decreases the pool of prior art available to the Examiner.

  3. America Invents ActFirst-to-Invent (FTI) to First-Inventor-to-File (FITF) Transition • Effective Date – March 16, 2013 • “shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time … a claim to a claimed invention that has an effective filing date … that is on or after the effective date described in this paragraph [March 16, 2013]” • Benefits Lost under FITF • Open to new, previously unconsidered, class of prior art • Can’t swear behind any reference (3) One-year grace period limited to applicant’s own disclosure of invention

  4. New Class of Prior Art Previously Not Considered by USPTO US application filed claiming priority to Foreign application Foreign application filed Application publishes 6 mo 12 months Prior art as of filing date under AIA Not Prior Art under previous FTI Potentially 12 months prior art now considered that wasn’t under FTI Application filed

  5. New Class of Prior Art Previously Not Considered by USPTO PCT application designating US but not in English filed Foreign application not in English language filed PCT application published Not Prior Art under previous FTI 12 months 6 mo Prior art as of filing date under AIA Potentially 18 months prior art now considered that wasn’t under FTI Application filed

  6. New Class of Prior Art Previously Not Considered by USPTO US National Phase entered w/ English translation PCT application publishes not in English language PCT application designating US but not in English filed Not Prior Art under previous FTI 18 months 12 mo Prior art as of filing date under AIA Potentially 30 months prior art now considered that wasn’t under FTI Application filed

  7. New Class of Prior Art Previously Not Considered by USPTO US National Phase entered w/ English translation Foreign application not in English language filed Not Prior Art under previous FTI 12 months 18 mo Prior art as of filing date under AIA PCT application designating US but not in English filed Application filed Potentially 30 months prior art now considered that wasn’t under FTI

  8. AIA Prosecution Strategy • Accelerate selected cases to ensure that they were filed before March 16, 2013 and are examined under first-to-invent system. • Tightly manage prosecution timeline of cases, advance from invention disclosure to filing quickly

  9. Start of the Race • Compressed Prosecution Timeline • Shortened timeline for Patent Review Board disposition for a submitted IDF • Concurrent Search and Drafting • Shortened window for patent attorney to prepare draft application • Shortened window for inventor to review and attorney to finalize application

  10. Head Start on the Race Q1/Q2 surpassed annual totals Q3/Q4 Est. Q1, Jan., Feb. March surpassed annual totals though FY07 March

  11. USPTO New Filings

  12. Results of the RaceReduction of Backlogged Cases Pre-AIA filing push reduced backlog in Q2 12

  13. AIA Acceleration Impact • Avg. time to filing reduced 44% • Time to PRB disposition - reduced 38 days • Disposition to draft received - reduced 63 days (concurrent PFS) • Review - reduced 23 days

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