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Presentation on theme: "© 2011 Patterson Thuente Christensen Pedersen, P.A., May be distributed with attribution - www.ptslaw.comwww.ptslaw.com DISCLAIMER: This presentation and."— Presentation transcript:

1 © 2011 Patterson Thuente Christensen Pedersen, P.A., May be distributed with attribution - DISCLAIMER: This presentation and any information contained herein are intended for educational and informational purposes only and should not be construed as legal advice. CIPLA Presentation March 28, 2012 Brad D. Pedersen

2 The AIA – Main Points  Signed into Law  September 16 th, 2011  Three Big Changes  First-Inventor-To-File w/ Grace (FTFG)  Improvements to Patent Validity Challenges  Fee Setting, but not Fee Spending Authority  Changes Not Included  Contentious Litigation Issues 2

3 3 Timetable for the AIA Transitions Immediately – 9/16/2011 In – Prior User Rights (Sec. 5) In – Micro Entity Fee (Sec. 10) In – Virtual Marking (Sec. 16) In – Pro bono program (S EC. 32) Out – Tax strategies (S EC. 14) Out – Multi-Defendant (S EC. 19) Out – False Marking (S EC. 16) Out – Human Organism (S EC. 33) Done – Best mode (S EC. 15) Change – SNQ Threshold (S EC. 6(c)) 10 Days – 9/26/2011 Starts – 15% Surcharge (Sec. 11(i)) Starts – Fast Track Exam (Sec. 11(h)) 60 Days – 11/15/2011 Starts – Electronic Filing Incentive - $400 (Sec. 10(h)) 6 Months – 3/16/2012 Starts – First To Publish (FTP) Grace One Year – 9/16/2012 In – Assignee Oath/Decl (Sec. 4) In – 3 rd Party Submission (Sec. 8) In – PTAB (Sec. 7) In – Supplemental Exam (S EC. 12) In – Inter Partes Review (S EC. 6(a)) In – Bus Method Pat Review (S EC. 18) In – Post Grant Review (S EC. 6(d)) Out – Inter Partes Reexam (S EC. 19) Starts – Important Tech Priority Exam (Sec. 25) 18 Months – 3/16/2013 In – FTFG (Sec. 3) In – New Sec. 102 In – Derivation Proceedings Out – Statutory Invent Registration 3

4 Fast Track – 9/26 –$4800/$2400 fee (~$7K total) –Prosecuted in 1 year –4 Ind. and 30 total claims –No extensions or RCEs Only bypass PCT, not nat’l stage –“Complete” electronic filing –PTO/SB/424 Form –Limit of 10,000 filings per FY –Only 856 filings in FY2011 –So far 1600 filings in FY2012 –Key is actions turned around in about 1 month 4 AIA Changes Already In Place

5 AIA Changes For Next September  3 rd Party Submission  Submission made before Notice of Allowance and no later than  6 mos. after publication, or  Mailing of FAOM  3 rd party must now point out why art is being submitted, but Office will only reject skeleton statements  Submission can include non-prior art and address other than 102/103  Owner cannot submit  Fee $180/10 items, but fee waived if less than 3 items are only submission 5

6  Filing by Assignee  Combined Oath/Declaration  Supposed to be easier proof of obligation to assign and filing up to Notice of Allowability  Proposed Rules still require early filing and current process for unwilling inventor  Word is that Office is looking to fix these problems in the Final Rules 6 Patent Office AIA Changes For Next September

7  Supplemental Examination  New route into ex parte reexam  Allows owner to cleanse patent  But attorney will not be cleared  Proposed Rules  Expensive - $21K to file for up to 10 items with $16K refunded if no EPX  Requires explanation of relevance of each item  Summarize items over 50 pages  More than 1 Supp Exam can be filed if more than 10 items  Ex Parte Reexam fees now $17K 7 Forgive me, Patent Office, for I have … AIA Changes For Next September

8 Post Issuance Proceedings under AIA Five Different Regimes and Three Different Standards Ex Parte Reexam and Older Inter Partes Reexams (EPX/IPX) Standard SNQ plus IPX only post Nov 1999 IPX Filed before 9/16/2011 Cutover Inter Partes Reexams (IPX) Standard RLP plus post Nov 1999 Filed between 9/16/11 and 9/16/12 New Inter Partes Reviews (IPR) Standard RLP for All patents Filed after 9/16/12 and After 9 mos. 1 st Window New Bus Method Patent Review (CBM) Standard MLPTN plus Defendant* Filed after 9/16/12 but Before 9 mos. 1 st Window New Post Grant Review (PGR) Standard MLPTN For FTFG patent Filed after 3/16/13 but Before 9 mos. 1 st Window 8

9 9 Post Issuance Proceedings Comparison Ex Parte Reexam Inter Partes Reexam (rev.) Inter Partes Review (new) Post-Grant Review (PGR) (new) SEC. 18 Proceeding (new) Threshold & Pleading 35 USC §303(a) (current law): Substantial new question of patentability (SNQ) Reasonable likelihood of prevailing (RLP) SNQ continues to apply to pre-9/16/11 requests 35 USC §314(a): RLP 35 USC §315(a): Has not “filed” a civil action challenging validity 35 USC §324(a):“More likely than not” (MLTN) that at least 1 claim is unpatentable §325(a): Must not have filed a civil action challenging validity SEC. 18(a)(1)(B) : must be sued or charged with infringement Otherwise same as PGR Estoppel: Civil actions ITC PTO None  35 USC §315(c) (current law): “Raised or could have raised”  Applies to civil actions, not ITC  Also not PTO 35 USC §315(e) “Raised or reasonably could have raised” (RORCHR) May not “assert” issue Final written decision Civil actions, ITC & PTO 35 USC §325(e) RORCHR May not “assert” issue Final written decision Civil actions ITC & PTO SEC. 18(a)(1)(D) Any ground “raised” (not RORCHR) Otherwise same as PGR Patents Covered AllFiled Post Nov 1999All patentsOnly FTFG patent issued under the AIA SEC. 18(a)(1)(A) & (d) “Covered business method patents” Not “technological inventions” Scope, Grounds, Bases 35 USC §§302 and 301 (current law): Patents and printed publications 35 USC §§311(a) and 301 (current law): Patents and printed publications 35 USC §311(b): Patents or printed publications 35 USC §312(a)(3)(B): Can be supported by expert opinions, affidavits, etc. 35 USC §321(b): Issues relating to invalidity under §282(b)(2) or (3) 35 USC §324(b): Novel or unsettled question important to other patents or patent applications (does not require MLTN) Same as PGR When Any time 35 USC §311(c) After later of: 9 months after issuance (reissuance); or PGR is terminated 35 USC §321(c): ≤9 months after issuance (or reissuance) 35 USC §325(f): No challenge to non-broadened reissue claims after original 9-month PGR period SEC. 18(a)(1)(B) Any time after suit or charge of infringement 9

10 Proposed Rules for the Review Proceedings  Umbrella Rules  Petitioner must provide evidence and propose claim construction  Sequenced time periods for each side for discovery/responses  Managed discovery w/ disclosure and APJ motion practice  Variable length oral hearing by 10 months from declaration of “trial”  FRE followed but not binding  Page limits for everything, typically 50 pages w/out permission  PGR/IPR Rules  PGR Fees: average fee at $47K, but includes $12K per each additional 10 claims over 20  IPR Fees: average fee at $36K, but includes $10K per each additional 10 claims over 20  CBM Rules  Same as PGR, but limited to Business Method patents that do not recite a technological feature or solve a technical problem with a technical solution  Derivation Rules  Case alleging derivation must be filed within 1 year of publication of case from which invention was allegedly derived  Standard for derivation will be conveyance of enough elements of invention that claims would have been obvious 10

11 11 Our Current Understanding of First Inventor to File w/ Grace (FTFG) under the Leahy-Smith America Invents Act (AIA) 11 The Leahy-Smith America Invents Act (AIA)

12 12 Prior art exists under new 102(a) if a disclosure establishes that: (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...” 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...” 12 A disclosure of the claimed invention was publicly accessible before the effective filing date. The claimed invention was described in a later- published U.S./U.S. PCT patent application or patent of another inventor, effectively filed before the inventor’s effective filing date. §102(a)(1) §102(a)(2) Public Disclosures Anywhere in World Non-Public “US” Patent Filings That Later Become Public New 102(a) defines 2 kinds of Prior Art: Publicly Disclosed (“PD”) Art + Patent Filing (“PF”) Art

13 13 Prior PD art have two separate “Exceptions.” Prior-filed, later-publish PF art have three “Exceptions.” New 102(b) defines Exceptions to Prior Art: Publicly Disclosed (PD) Art and Patent Filing (PF) Art §102(b)(1) exceptions deal only with §102(a)(1) prior art. §102(b)(2) exceptions deal only with §102(a)(2) prior art.

14 A disclosure under §102(a)(1) is excepted 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” 14 Exceptions for art that is first publicly available not more than than 1-year before “effective filing date” – §102(b)(1)(A) §102(b)(1)(B) The disclosure represents the inventor’s own work – Full Year grace period. A subsequent disclosure by anyone else is not prior art with respect to subject matter in an inventor’s earlier public disclosure – the First to Publish (FTP) grace period

15 15 §102(b)(2)(B) Exceptions for art that is earlier (not-yet-public) patent filings as of when effectively filed… An earlier patent filing under §102(a)(2) is excepted if: (A) “the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor“ or (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.” 15 The inventor’s co-workers and research collaborators patent filings. The inventor’s own work – Full year + grace period. Earlier patent filings of others to the extent of inventor’s public disclosures before such filings – FTP grace period. §102(b)(2)(A) §102(b)(2)(C)

16 Prior Art under the AIA - Domestic Not “PF” Prior Art: Abandoned Applications Applications with secrecy orders* Unconverted Provisional Applications* Not “PD” Prior Art: Offers for Sale “Secret” Prior Art Patent Filing (“PF”) Prior Art - 102(a)(2) Later US Patent, Published Application, or “Deemed Published” 122(b) Public Disclosure (“PD”) Prior Art - 102(a)(1) Patented Printed Publication Public Use On Sale Otherwise available 16

17 Prior Art under the AIA - International Public Disclosure “PD” Prior Art - 102(a)(1) Patent Filing “PF” Prior Art - 102(a)(2) PCT Applications designating US Now “PD” prior art: In use or on sale OUTSIDE the US - if publicly accessible Not “PF” prior art: Foreign Appls/PCT Appls Not filed in/designating the US 17

18 18

19 19

20 20 A’s FTP Grace 20

21 21 First Inventor to File w/ Grace (FTFG) Will Be Different Comparison of Two Filer Scenarios FIG. 1 – Scenarios where both parties are seeking a patent (based on hypothetical evaluation of weighted likelihood of 200 typical fact patterns from “The Matrix” article at Cybaris IP Law Review) See, content/uploads/2010/05/01.Pedersen vFINAL.WITHAPPENDIX.pdf 21

22 First Inventor to File w/ Grace (FTFG) Will Be Different Comparison of One Filer Scenarios FIG. 2 – Scenarios where only 1 party is seeking a patent (based on hypothetical evaluation of weighted likelihood of 200 typical fact patterns from “The Matrix” article at Cybaris IP Law Review) See, content/uploads/2010/05/01.Pedersen vFINAL.WITHAPPENDIX.pdf 22

23 First Inventor to File w/ Grace (FTFG) Will Be Different Comparison of Derivation Scenarios FIG. 3 – Scenarios involving fact patterns with derivation issues (based on hypothetical evaluation of weighted likelihood of 200 typical fact patterns from “The Matrix” article at Cybaris IP Law Review) See, content/uploads/2010/05/01.Pedersen vFINAL.WITHAPPENDIX.pdf 23

24 24 Summary Comparison of New 102 with Old 102 SubsectionNew 102Old 102Notes on Changes Non-Patent ArtNew 102(a)(1)Old 102(b)Changes definition based on “publicly available” approach, see New 102(b)(1) for first-to-publish (FTP) grace period Patent Filing ArtNew 102(a)(2)Old 102(e)Applies to both US and PCT filings that designate US and are published in 1 of 10 PCT official languages Full Year and FTP Grace for Non- Patent Art New 102(b)(1) Old 102(b)Up to 1 year - for inventor’s own work full year, but for 3 rd party only after triggered by ‘publicly disclosed’ FTP Full Year + and FTP Grace for Patent Filing Art New 102(b)(2) Old 102(a)Up to 1 year after publication - for inventor’s own work full year after publication, but for 3 rd party only after triggered by FTP - replaces swearing behind Joint DevelopmentNew 102(c)Old 103(c)Expands “team” exception to both New 102/New 103 Abandoned Old 102(c)Changes to abandoned w/out publication, see New 102(a)(2) Foreign patent Old 102(d)Hilmer doctrine gone as non-English priority filings okayed Not the Inventor Old 102(f)Replaced by definitions of inventor under New 100(f) Interference Old 102(g)Replaced by new derivation proceedings under New

25 25 Tips/Pointers for Transition “Mind the Gap” Pre-FTFG Transition (Before 3/16/2013 ) First To Invent Ability to Swear Behind 1 Year Grace/Statutory Bar Team Exception (at time of invention) Post-FTFG Transition (After 3/15/2013) First To File w/ Grace First To Publish Grace Period (for 3 rd Party NPL/Patent Filing) Full Year+ Grace Period (for Work by/from Inventor) Expanded Team Exception (at time of filing) Avoid unintentionally bridging between FTI and FTFG For provisional-to-utility conversions For parent-to-child CIP applications 25

26 26 Open Questions for New 102: What Will PTO Use As FTFG Search Date? Provisional Filing Date Assume Support in Earliest Provisional Case and Search for Art Before That Date FTP Publication Date Ask Applicant’s to Submit Earliest Asserted FTP Date and Search Only Art Dated Prior to that Date Utility Filing Date Assume No Support in Provisional or Use of FTP Grace Period with Applicant Having to Prove Entitlement to Earlier Date Current FTI Answer: MPEP provides that there is no need to determine whether applicant is entitled to an earlier claimed priority date unless that filing date is actually need to overcome a reference 26

27 27 Open Questions for New 102: What Is “Publicly Disclosed” for 102(b)(1/2)(B) Exceptions? “Publicly Disclosed” Enabled Meets Section 112 Standards Inherency Express and Implied Disclosure Obviousness What POSITA would know Anticipation Only Express Disclosures 27

28 28 Open Questions for New 102: What Is “Described In” for 102(d) Prior Art Filing Date? “Described In” Enabled Meets Section 112 Standards Inherency Express and Implied Disclosure Obviousness What POSITA would know Anticipation Only Express Disclosures 28

29 29 The New FTFG: Theory vs. Practice Idealized Patent Filing Fully Complete Disclosure with no Additional Development Always Filed Before Any Public Availability First-to-Publish (FTP) Grace Period Not Used Reality for Most Corps. Initial Invention Disclosure with Subsequent Development Filed After Approval By Patent Review Committee Limited Use of Provisional/FTP Grace Based on Product Release Reality for Startups Initial Concepts with Subsequent Development Patent Filings Efforts Competing with Fund Raising Typical Use of Provisional Filings to Minimize Cost Reality for Universities Research Concepts Instead of Product Concepts Patent Filings Contend with Demands of Publish or Perish Will Make Most Use of Provisional/FTP Grace 29

30 30 So, What Might the AIA Do? Less Complicated: < 50 claims < 3 priority claims 1 inventive entity More Complicated: > 49 claims > 2 priority claims > 1 inventive entity AFTER THE TRANSITION Less Complicated Cases will be Easier More Complicated Cases will have More Options and Expense So, expectation is there will be a relative increase in Less Complicated Filings

31 31 Changes Impact Different Technologies Differently 31

32 32 Timetable for AIA Regulations Group 1 In – Micro Entity Fee (Sec. 10) In – Pro bono program (S EC. 32) Out – Tax strategies (S EC. 14) Out – Human Organism (S EC. 33) Done – Best mode (S EC. 15) Change – SNQ Threshold (S EC. 6(c)) Starts – 15% Surcharge (Sec. 11(i)) Starts – Fast Track Exam (Sec. 11(h)) Group 2 In – Assignee Oath/Decl (Sec. 4) In – 3 rd Party Submission (Sec. 8) In – Supplemental Exam (S EC. 12) In – Inter Partes Review (S EC. 6(a)) In – Bus Method Pat Review (S EC. 18) In – Post Grant Review (S EC. 6(d)) Starts – Important Tech Priority Exam (Sec. 25) Group 3 In – FTFG (Sec. 3) In – New Sec. 102 In – Derivation Proceedings USPTO needs lots of input with comments 8 month Notice/Comment process for each rule package

33 How Long Will It Take For the Courts To Get Up to Speed on the AIA? Sept 2011 AIA Enacted Sept 2012 New Post Issuance Proceedings March 2013 FTFG Starts March st FTFG patents start issuing Sept 2015 Earliest Possible PTAB ruling on a PGR case Sept st District Court Cases Completed* and 1 st CAFC Appeal on PTAB-PGR Sept st Federal Circuit Rulings on Litigated Cases 33

34 34 First Inventor to File w/ Grace (FTFG) - Examples of How New 102 works under the AIA

35 35

36 36

37 37 A’s FTP Grace

38 38 No change from FTI

39 39 A’s Full Year Grace

40 40 A’s Full Year Grace

41 41 1 year

42 42 1 year

43 43 A’s FTP Grace 1 year

44 44 1 year A’s FTP

45 45 A’s FTP Grace B’s FTP Grace 1 year

46 46 1 year Paris18 mo nat’l stage Filed as nat’l case in any language Filed as PCT/US in English

47 47 1 year Paris18 mo nat’l stage Filed as PCT/US in any PCT language Filed as nat’l case in any language

48 48 18 mo publication Published as nat’l case Filed as nat’l case in any language Doesn’t matter if patent issues or not

49 49 18 mo publication Published in any language Filed in any language Patented in any language

50 50 Request for non-publication or non-converted provisional Abandoned

51 51

52 52

53 53 Scenario 6.1c: Same as 6.1b, except Y’ Z’ are patentably indistinct when added with X

54 54 Scenario 6.1d: Same as 6.1b, but Y” Z” are distinct when added with X, but indistinct from each other

55 55 1 year conversion deadline

56 56 1 year conversion deadline

57 57 Scenario 6.3a: Same as 6.2a, but Y” Z” are distinct when added with X, but indistinct from each other 1 year conversion deadline

58 58 1 year conversion deadline

59 59 A’s FTP 1 year conversion deadline

60 60 1 year conversion deadline A’s FTP

61 61 A’s FTP 1 year conversion deadline

62 62 18 mo publication1 year grace A’s Full Year+ Grace No effective change – New 102(b)(2)(1) “Anticipation-type” derivation will definitely be protected under the AIA

63 63 18 mo publication1 year grace A’s Full Year+ Grace Uncertain – New 102(b)(2)(1) “Obviousness-type” derivation may/may not be protected under the AIA (but should be)

64 64 Same Company

65 65 Create Act JDA

66 66 Scenario 9.1:New Matter Added From Provisional to Utility March 16, 2013 FTIFTFG

67 67 Scenario 9.2:New Matter Added After 3/16/13 but not claimed March 16,

68 68 Some Really Helpful Links USPTO Links to AIA Related Materials Final AIA bill as enacted – a required read, and then reread Patent Office website on AIA implementation Patent Office effective dates of various AIA provisions 68

69 Thank You! About Brad Pedersen Brad Pedersen is a patent attorney with more than 25 years of experience in patent law, engineering, business and entrepreneurship. He is a partner and the chair of the patent practice group at Patterson Thuente Christensen Pedersen, P.A., an intellectual property law firm in Minneapolis, Minnesota. Brad concentrates his practice in the areas of high-technology, computer, software and medical device patent prosecution strategy, licensing and litigation. Brad is one of the more knowledgeable IP attorneys in the U.S. when it comes to the patent reform. Since it was first introduced in 2005, he has actively followed the developments and debate surrounding patent reform at the agency, legislative and judicial levels. He educates clients and colleagues by writing and presenting on the imminent changes and strategies for dealing with the reforms. A special thanks to Robert Armitage, Matt Rainey, Steve Kunin, Justin Woo, Tracy Dann, and Michelle Arcand for their invaluable help on these materials. Brad can be reached at or (612) About Patterson Thuente IP Patterson Thuente Christensen Pedersen, P.A. helps creative and inventive clients worldwide protect, and profit from, their ideas. Practicing in the areas of patents, trademark, copyright, trade secrets, IP litigation, international IP protection, licensing and post-grant proceedings, the firm’s attorneys excel at finding strategic solutions to complex intellectual property matters. Visit us online at 69


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