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? Michael A. Guiliana

April 24, 2012Disney’s Grand Californian Hotel

2© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.

AIA Makes 3 Major Changes

1. “First-to-File”

2. Eliminates Interferences

3. 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

AIA Changes Consider…


Patent Reform – what needed reforming?

What are YOUR thoughts?


Kappos on Keeping Up With the Speed of Business


Kappos on Litigation


Is this what needed reform?!


Patent Monetization Landscape – Key Players


Patent Applications Under First-to-Invent

Inventor A InventsIDF

Decision to Draft and File Patent App. Filing Date

Committee Review of IDF• Searching• Market Analysis

Patent Filing Lag(Can Be Long)

USPTO Procedures

Inventor B InventsFiles Patent Fast

“Swear Behind”(37 CFR § 1.131)

-or-Interference

INVENTOR A WINS!


Patent Applications Under First-to-FileStarting March 16, 2013

Inventor A InventsIDF



USPTO Procedures


INVENTOR B WINS!

“Swear Behind”(37 CFR § 1.131)

-or-Interference



Preparations for First-to-File System

Inventor A InventsIDF and:

• Files Patent App., or• Files Provisional App.



USPTO Procedures


INVENTOR A WINS!


• Reduce Your Patent Lag•Provisional Applications - IDFs•Patent Application Training


Preparations for First-to-File SystemReducing 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


Invention Tracking – Prior Use DefensePrior 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


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”


Challenging Patent Applications in the PTO – New Reasons to MonitorChallenging 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


Challenging Patents in the PTO – More Reasons to MonitorChallenging 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


Challenging Patents in the PTO – More Reasons to MonitorChallenging Issued Patents• Inter Partes Review:

– Prior Art Limited to Printed Publications/Patents– At Least 9 Months After Issuance/After Post Grant Review– Appealable + Estoppel


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¶

©2012 Knobbe Martens, Olson & Bear, LLP all rights reserved.©2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.

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Thank You!

Michael A. Guiliana [email protected]

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

Documents

olson bear

patent reform

patent filingdefense

patent filingpreserve

file patent app

virtual markingthe word

file systeminventor

files provisional app