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HOW WILL THE AMERICA INVENTS ACT (AIA) CHANGE THE WAY WE PROTECT AMERICAN IMAGINEERING?

HOW WILL THE AMERICA INVENTS ACT (AIA) CHANGE THE WAY WE PROTECT AMERICAN IMAGINEERING?. April 24, 2012. Disney ’ s Grand Californian Hotel. Michael A. Guiliana. AIA Makes 3 Major Changes. AIA Changes. Consider…. “ First-to-File ” Eliminates Interferences Post Grant Oppositions.

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HOW WILL THE AMERICA INVENTS ACT (AIA) CHANGE THE WAY WE PROTECT AMERICAN IMAGINEERING?

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  1. HOW WILL THE AMERICA INVENTS ACT (AIA) CHANGE THE WAY WE PROTECT AMERICAN IMAGINEERING? April 24, 2012 Disney’s Grand Californian Hotel Michael A. Guiliana

  2. AIA Makes 3 Major Changes AIA Changes Consider… • “First-to-File” • Eliminates Interferences • Post Grant Oppositions • Accelerate Patent Filing Process • Segregate Patent Applications re March 16, 2013 Deadline • Last Call for Interferences • Revise Pre-Litigation Checklist with Post Grant PTO Options • Consider Monitoring Policy

  3. Patent Reform – what needed reforming? What are YOUR thoughts?

  4. Kappos on Keeping Up With the Speed of Business

  5. Kappos on Litigation

  6. Is this what needed reform?!

  7. Patent Monetization Landscape – Key Players

  8. Patent Applications Under First-to-Invent Inventor B Invents Files Patent Fast INVENTOR A WINS! • Committee Review of IDF • Searching • Market Analysis Inventor A Invents IDF Decision to Draft and File Patent App. USPTO Procedures Filing Date Patent Filing Lag (Can Be Long) “Swear Behind” (37 CFR § 1.131) -or- Interference

  9. Patent Applications Under First-to-FileStarting March 16, 2013 Inventor B Invents Files Patent Fast INVENTOR B WINS! • Committee Review of IDF • Searching • Market Analysis Inventor A Invents IDF Decision to Draft and File Patent App. USPTO Procedures Filing Date Patent Filing Lag (Can Be Long) “Swear Behind” (37 CFR § 1.131) -or- Interference

  10. Preparations for First-to-File System • Reduce Your Patent Lag • Provisional Applications - IDFs • Patent Application Training Inventor B Invents Files Patent Fast INVENTOR A WINS! • Inventor A Invents • IDF and: • Files Patent App., or • Files Provisional App. • Committee Review of IDF • Searching • Market Analysis Decision to Draft and File Patent App. USPTO Procedures Filing Date Patent Filing Lag (Can Be Long)

  11. Preparations for First-to-File System Reducing Patent Filing Lag / File First – Vet Later • Train R&D Staff to Assist Writing Patent Applications • File IDFs as Provisional Applications • Segregate Unnecessary Information • PTO Fee < $100 • 10 Months Available for: • Searching • Market Research • Prototyping • Foreign Filing Decisions

  12. Invention Tracking – Prior Use Defense Prior Commercial Use is a Defense to ANY Patent Infringement • Invention Disclosure Forms are Vehicle for Capturing Evidence • Revise IDFs to include “Date of First Commercialization” • Keep IDF Open Until DFC Established (even if no patent filing) • Preserve All IDFs (even if no patent filing) • Defense Potentially Available Even if Commercial Use of Invention is Trade Secret

  13. Simplified Product Marking • 35 U.S.C. § 287(a) – Virtual Marking • The word ‘patent’ or the abbreviation ‘pat.’ AND • A website address “accessible to the public without charge” • Must associate “the patented article with the number of the patent”

  14. Challenging Patent Applications in the PTO – New Reasons to Monitor Challenging Pending Patent Applications • “Third Party Submissions” 35 U.S.C. § 122(e)(2) • TP Can Submit Patent/Published App., Printed Pub. + • Argument • Deadline – A Very Narrow Window: • Before Allowance, AND • Within 6 Months After Publication, or • Before First Rejection • Monitoring is the ONLY Way to Identify Opportunities

  15. Challenging Patents in the PTO – More Reasons to Monitor Challenging Issued Patents • Post Grant Review: • Requester can use ANY Prior Art/Any Basis for Invalidity • (except failure to disclose Best Mode) • Deadline: • 9 Months from Issuance • Monitoring Only Practical Way to Identify Opportunities • Appealable/Estoppel

  16. Challenging Patents in the PTO – More Reasons to Monitor Challenging Issued Patents • Inter Partes Review: • Prior Art Limited to Printed Publications/Patents • At Least 9 Months After Issuance/After Post Grant Review • Appealable + Estoppel

  17. Best Mode Requirement – Dead? • Disclosure of Best Mode Still Required 35 U.S.C. § 112, 1st • Failure to Disclose Best Mode No Longer Grounds for Invalidity • 35 U.S.C. 282 • Not Clear if Duty of Candor to the PTO will Have Any Effect • Patent Attorney Subject to OED • Possibly No Recourse Against Inventor or Patent Owner¶

  18. Thank You!

  19. Michael A. Guiliana michael.guiliana@knobbe.com 949.721.6384

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