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Patent Strategy Under the AIA

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  1. Patent Strategy Under the AIA Washington in the West January 29, 2013

  2. Timeline 9/16/2012 • Inventor’s Oath or Decl. • 3rd Party Subm. of Prior Art • Supplemental Exam. • Post-Grant Review • Inter Partes Review 9/16/2011 • Best Mode • Prioritized Exam. • Micro-Entities • Prior User Rights 3/16/2013 • First to File System • Derivation Proceedings 9/16/2014 • 3+ USPTO satellite offices

  3. Statutory Framework 102(a)(1) precludes patent if, before applicant’s effective filing date of claimed invention: • patented or described in printed publication, or • in public use, on sale, or otherwise available to public, anywhere 102(a)(2) precludes patent if: • described in US patent or published US application effectively filed before applicant’s effective filing date ofclaimed invention But 102(b)(1) provides a one year grace period if: • disclosure by inventor or someone who obtained subject matter from inventor, or • pre-filing public disclosure by inventor … before third party disclosure

  4. Novelty Defeating Who? Applicant • What? (a) Patent / printed publication, (b) public use, (c) on sale, or (d) make available to public • Where? Anywhere • When? More than one year before applicant’s effective filing date Who? Third Party • What? Same as above • Where? Same as above • When? Before applicant’s effective filing date • More than one year before, or • Less than a year before, unless applicant made pre-filing disclosure first

  5. Effect of Foreign Priority Dates • Hilmer Doctrine • foreign priority used as shield against intervening prior art, but not as sword against intervening inventions • New 102(a)(2) and (d)(2) eliminate Hilmer Doctrine • U.S. patents and applications = prior art as of foreign priority date • File EARLY!

  6. Filing Strategies… Before March 16, 2013 • File, File, File • Elimination of Hilmer Doctrine post-3/16 • Take advantage of current law • Continuations, Divisionals, CIPs*

  7. Filing Strategies… After March 16, 2013 • Publishing • 102(a)(1): defeats rights of others to later patent invention • 102(b)(1)(A): preserves discloser’s U.S. patent rights • 102(b)(1)(B): insulates discloser from prior art effect of subsequent disclosure by others • BUT • Can defeat foreign rights • Puts invention in hands of competitors • Provisional • Skimpy provisional could be risky

  8. In-House Procedures • Filing process  SPEED UP! • Educate inventors • Simplify disclosure process • Accelerate reviews/approvals • Provide extra incentives • Inventors and Law Firms • Early/timely reviews • Inventor oath/declaration/assignments

  9. Derivation Proceedings • Pre-3/16/13 priority = Interferences (declared by Director) • 3/16/13 and beyond = Derivation • Director institutes after applicant petitions • PTAB hears evidence from parties • May correct naming of inventors • Appeal or civil action if dissatisfied • Inventor records remain crucial

  10. Prior User Defense • 35 U.S.C. 273 (original) • limited defense to infringement for use of method of doing or conducting business in the U.S. prior to effective filing date • 35 U.S.C. 273 (new) (post 9/16/11 grant) – limited defense to infringement • use of process, machine, manufacture, or composition of matter in U.S. • more than one year before effective filing date or public disclosure • Personal/Burden of Proof/Exhaustion/No License/Some Variations

  11. Miscellaneous • Patent marking • Third Party Submissions • Post-Grant Review • Inter Partes Review