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Overview of the Leahy-Smith America Invents Act. The Practical Effect of the AIA and Its Proposed Regulations. June 2013. Table of Contents. 2 8 9 32 37 44 45 49 52 54 60 62 66 70 82 87 89 95.

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Overview of the Leahy-Smith America Invents Act


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  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.)