The America Invents Act Turns Traditional Patent Practices into a Thing of the Past

© 2013 Armstrong Teasdale LLP © 2013 Armstrong Teasdale LLP

Jennifer Hoekel March 27, 2013

Gone with the Wind The America Invents Act Turns Traditional Patent Practices into a Thing of the Past

© 2013 Armstrong Teasdale LLP

Prosecuting Under the America Invents Act

First Inventor to File (FITF); What happened to First to Invent?

Third Party Submissions.

Supplemental Examination.

Fees and Fast Track.

Micro-Entities.

2


FIRST INVENTOR TO FILE — What Happened To First To Invent? —

Section 3 of the AIA

3

(a)(1) Patented, published, in public use, on sale or “otherwise available to the public” before effective filing date or

(2) an earlier filed issued patent or published application to another inventor.

(b) – (g) eliminated.

Subject to one year grace period exceptions.

a) Publicly known or used in US or published anywhere before date of invention.

b) Published anywhere or on sale in US more than 1 year before filing.

c) Abandonment.

d) Foreign filing more than one year prior.

e) Secret prior art.

f) Not the inventor.

g) Made by another who didn’t abandon, suppress or conceal (interferences).

After Before

Effective: March 16, 2013.


-Pre v. Post AIA 102- Pre-AIA 35 U.S.C. 102 A person shall be entitled to a patent unless—

AIA 35 U.S.C. 102 Concordance

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

102(a)(1)

(b) The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c) He has abandoned the invention, or No corresponding

provision

(d) The invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing date of the application in the United States, or

(e) The invention was described in (1) An application for patent, published under section 122(b), by another filed in the United States before the invention by the

applicant for patent or (2) A patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent,

except than an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language, or

102(a)(2)

(f) He did not himself invent the subject matter sought to be patented, or 101 and 115

(g) (1) during the course of an interference conduced under section 135 or section 291, another inventor involved therein establishes, to the

extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or

(2) Before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

No corresponding provision

4

Abandonment of invention

Premature foreign patenting

Prior invention by another

Derivation

USPTO AIA Public Forum 3/15/13



Grace Period

5

One year grace period

(b)(1) A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art to the claimed invention, if

(A) the disclosure was made by the inventor or joint inventor or derived from the inventors or

(B) the subject matter had first been disclosed by the inventors or so derived.

One year grace period

(b) Published anywhere or on sale in US more than 1 year before filing.

(d) Foreign filing more than one year prior.

After Before




Grace Period

When does a disclosure within the grace period not constitute prior art? A) If the subject matter was derived from the inventor or joint inventor.

B) The subject matter was previously publicly disclosed by the inventor, joint inventor, or another who derived therefrom.

C) The subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person.

6



Common Ownership

Common ownership is assumed when:

• 1) Developed under a joint research agreement in place before the effective filing date;

• 2) Invented as a result of those joint research activities; and

• 3) Application names the parties to the agreement.

7



8

Derivation Proceeding

• Determines the true inventor with right to file (not who was the first inventor).

• Must be filed within 1 year of publication of the derivative application.

• PTAB decides.

• Appealable to Fed. Cir. or ED Va.

Interferences

• Determines first to invent.

• Provoked within one year of issuance or publication.

• Decided at BPAI.

• Appealable to Fed. Cir.

After Before



9

• First Inventor To File.

• Right to a patent is awarded to the inventor with the earliest filed application . . .

• Derivation Proceedings replace interferences.

• No ability to swear behind.

• First to Invent.

• Right to a patent is awarded to an inventor establishing the earliest date of invention.

• Interference proceedings.

• Swearing behind priority dates.

After Before



PATENT PROSECUTION AND STRATEGY CONSIDERATIONS — First-to-File Considerations —

10

1) Time is of the essence: file as soon as sufficient data for claims.

2) File provisional application and reduce during 1yr period.

3) For applications being filed in the U.S. only: enabling public disclosure instead of provisional applications is sufficient to give the inventor priority.

4) File a series of provisionals during development.

5) Monitor competitors (and prior art) and anticipate advances in technology.

1) Delay filing to gather sufficient data for broad claims.

2) Delay filing until reduction to practice.

3) File provisional applications.

4) File a comprehensive application.

5) Swear behind non-102(b) art.

After Before


THIRD PARTY SUBMISSIONS DURING PROSECUTION

— Scope of References Expanded — Section 8 of the AIA

11

• Patents and printed publications may be submitted and requires a concise description of relevance and a fee. No “explanation” is allowed.

• Timing: before the earlier of the Notice of Allowance, or the later of (a) 6 months after publication or (b) the date of first rejection of any claim of the application.

• Third party could only submit patents or printed publications.

• MPEP § 1134.01: “A submission under this section shall not include any explanation of the patents or publications, or any other information.”

• Limited to 10 patents/publications.

• Timing: the earlier of within two months of publication or prior to Notice of Allowance.

After Before

Effective: September 16, 2012 and includes all pending cases.


SUPPLEMENTAL EXAMINATION

— NEW Post-Issuance PTO Proceeding — Section 12 of the AIA

12

• Supplemental Examination Permits the Patent Owner to:

• Request supplemental examination to consider, reconsider or correct any information believed to be relevant to the patent.

• Cannot correct material fraud.

• Has the potential to eliminate prior art, §112, and inequitable conduct litigation defenses.

• Must request before an allegation of inequitable conduct is “pled with particularity” in a civil case.

• High filing fee – proposed at $5,180 + $16,120

Strategy Consideration (Litigation): Twombly or FRCP Rule 9 motion to dismiss complaint and if successful request supplemental examination.

After Before


• Inequitable conduct or invalidity raised as a defense in litigation.


SUPPLEMENTAL EXAMINATION — NEW Post-Issuance PTO Proceeding (continued) —

13

• Practice Point: Reissue may be a better option if material being submitted raises a substantial new question of patentability. Can ask for it without claiming error.

• PTO could institute an ex parte reexam under supplemental examination, limiting the enforceability of the patent and possibly resulting in narrowed, or canceled claims

• Could create intervening rights problem.

After Before



FAST TRACKS — New Opportunities —

Sections 25 and 11of the AIA

14

Section 25 of the AIA has authorized the PTO to prioritize examination for applications important to the economy or national competitiveness, without charging additional fees for prioritization (similar to existing practices for “green” technologies). Section 11 establishes a $4,800 fee for Track 1 Prioritized

Examination. Final disposition (final rejection or allowance) within one year. Accelerated Examination remains.


MICRO-ENTITIES

— New Opportunities —

Patent applicants designated as “micro entities” under the AIA are entitled to a 75% reduction in certain fees paid to the Office.

• The reduced fees are for filing, search, examination, extension fees, issuance and appeal of applications, patent maintenance fees, and certain PCT filing fees.

• Micro Entity Fees: − Basic Filing, Search, and Exam of Utility Application: $400

− Issue Fee: $445

15


MICRO-ENTITIES

— Who Qualifies —

• An Applicant Can Qualify for Micro Entity Status in One of Two Ways:

• “Gross Income” basis under 37 C.F.R. § 1.29(a). OR • “Institution of Higher Education” basis under 37 C.F.R. §

1.29(d).

16


MICRO-ENTITIES — Gross Income Basis —

An applicant may qualify as a micro entity if:

1. The applicant qualifies as a small entity;

2. Neither the applicant nor the inventor nor a joint inventor has been named as an inventor on more than four previously filed applications;

3. Neither the applicant nor the inventor nor a joint inventor had a gross income in the previous calendar year exceeding three times the median household income; and

4. Neither the applicant nor the inventor nor a joint inventor has assigned, granted or conveyed, or is under an obligation to assign, grant or convey, a license or other ownership interest to an entity that had a gross income in the previous calendar year exceeding three times the median household income.

17


MICRO-ENTITIES -Institutions of Higher Education Basis-

To establish micro entity status under § 1.29(d), the applicant must certify that:

1. The applicant qualifies as a small entity; and

2. (i) The applicant’s employer, from whom the majority of his or her income is

obtained, is an institution of higher education as defined in the Higher

Education Act of 1965; or (ii) The applicant has assigned, granted or conveyed, or is under an obligation

to assign, grant or convey, a license or other ownership interest in the

application to such an institution of higher education.

Non-profit research foundations, technology transfer organizations, and Federal Government research laboratories do not qualify as “institutions of higher education.”

18


What hasn’t changed?

1. Novelty and obviousness standards.

2. Enablement and written description requirements.

19


Changes in Litigation

20


Litigating Under the America Invents Act

1. Prior Art: What happened to §102 and §103?

2. Marking.

3. Multi-Defendant Suits: Infringing the Same Patent Not Enough.

4. Section 273 Defense: Not Just for Methods Anymore.

5. Interferences are OUT. Post-grant oppositions and inter partes are IN.

6. Litigation Miscellaneous.

7. What hasn’t changed? 21


PRIOR ART — What Happened to §102 and §103 —

Anticipation under 35 U.S.C. §102

22

(a)(1) Patented, published, in public use, on sale or “otherwise available to the public” before effective filing date or

(2) an earlier filed issued patent or published application to another inventor.

(b) – (g) eliminated.

Subject to one year grace period exceptions.

a) Publicly known or used in US or published anywhere before date of invention.

b) Published anywhere or on sale in US more than 1 year before filing.

c) Abandonment.

d) Foreign filing more than one year prior.

e) Secret prior art.

f) Not the inventor.

g) Made by another who didn’t abandon, suppress or conceal (interferences).

After Before



PRIOR ART — What Happened to §102 and §103 —

Obviousness under 35 U.S.C. §103

23

All art that predates the effective filing date of the patent is relevant to obviousness.

Patent would issue unless subject matter was obvious to one of ordinary skill in the art in light of any §102 prior art.

After Before


FALSE MARKING — Dramatically Restricted —

35 USC §292; Section 16 of the AIA

24

• US only can sue for statutory penalties.

• Private suits require competitive injury.

• Damages are “recovery of damages adequate to compensate for the injury.”

• Safe harbor for products marked with expired patent numbers.

• Anyone can sue under qui tam.

• No competitive injury required.

• Expired patents were subject to false marking penalties.

• Damages for each mismarked item up to $500.

After Before



VIRTUAL MARKING — Now Permitted —


25

• Permits patentee to satisfy §287 marking requirements by marking article with "patent" or "pat." and an internet address, accessible to the public without charge, that associates the patented article with the patent number.

• Only marking on the product itself, or packaging when product could not be marked, satisfied §287 marking requirement.

After Before

Effective: September 16, 2011.


MULTI-DEFENDANT LAWSUITS — Joint and Several Liability —


26

• "only if" the right to relief against all the parties (1) "aris[es] out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process" and (2) is based on common questions of fact.

• Common to file against unrelated defendants with unrelated products for infringing the same patent.

• E.g. NPEs (“patent trolls”).

• 9/15 - at least 54 new patent cases were filed – accusing over 800 corporate entities of patent infringement.

After Before

Effective: September 16, 2011.


SECTION 273 DEFENSE — Prior User Rights —

35 U.S.C. §273; Section 5 of the AIA

27

• A person shall be entitled to a defense under §282(b) with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe . . . .

• It shall be a defense to an action for infringement under §271 of this title with respect to any subject matter that would otherwise infringe one or more claims for a method in the patent being asserted against a person . . . .

After Before

Effective: Applies to any patent issued on or after September 16, 2011.


QUASI LITIGATION: POST GRANT OPPOSITION AND INTER PARTES REVIEW

— New Proceedings — Section 6 of the AIA

28

1) Post Grant Review (new): Based on any invalidity ground and may be sought during the first 9 months after a patent issues or reissues.

2) Inter Partes Review (new): Based on patents or printed publications and may be sought any time after post grant review period ends (replaces inter partes reexam).

• Burden: Preponderance of the Evidence Standard for both.

• Estoppel applies to both (“raised or could have raised”).

After Before

Effective: Not later than 1 year after September 16, 2011.



— New Adjudicative Proceeding — Post Grant Review: Section 6 of the AIA

29

1) Post Grant Review: adjudicative proceeding.

• USPTO grants review if it is more likely than not that at least one of the claims is unpatentable or the petition raises novel or unsettled legal question.

• Review barred if petitioner has DJ’d for invalidity; automatic stay of civil suits filed by petitioner pending review.

• USPTO will issue rules for: Pleading, protective orders, discovery, sanctions, hearings.

• Right to oral hearing, heard by PTAB.

After Before




— New Adjudicative Proceeding — Inter Partes Review: Section 6 of the AIA

30

2) Inter Partes Review: adjudicative proceeding.

• Requires threshold PTO determination to institute review (similar to reexam).

• Time Limits: within 12 months of litigation; no review if petitioner filed a DJ on invalidity.

• Discovery of affiants (like interference); other discovery as permitted by USPTO.

• Right to oral hearing, heard by PTAB.

After Before



SIMPLIFYING LITIGATION —Advice of Counsel & Willfulness—


31

Cannot prove willful infringement or inducement by (1) failure to obtain advice of counsel or (2) failure to present such evidence in court.

The Federal Circuit prevents an adverse inference of willfulness, BUT:

• District courts free to instruct jury to consider whether an opinion was obtained under “totality of circumstances” test used to determine willfulness.

• District courts could permit jury to consider a party’s failure to obtain an opinion in determining whether that party intended to induce infringement (§271(b)).

After Before

Effective: Applies to any patent issued on or after September 16, 2012.


What hasn’t changed?

1. Novelty and obviousness standards.

2. Enablement and written description requirements.

3. Claim construction standards.

4. Doctrine of equivalents and prosecution history estoppel.

5. Infringement remedies.

6. Direct and indirect infringement standards.

Derived from Chisum.com

32

The America Invents Act Turns Traditional Patent Practices into a Thing of the Past

Business

prior invention

date of invention

persons invention

orabandonment of invention

joint inventor

year prior

international application

patent unlessconcordance