2Patents U.S. Constitution – Article 1, Section 8: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”35 U.S.C. § 101: Who even invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof…Not patentable subject matter: Mere ideas, concepts, mathematical formulas, laws of nature (scientific or theoretical principles), literary and artistic works, etc.
3What is the Leahy-Smith America Invents Act (“AIA”)? Signed into U.S. law on September 16, 2011Presents greatest change to our patent statute since 1952Changes seen across the board in matters concerning pre-filing, prosecution, post- grant/ “inter partes” procedures, and litigationAims to reduce costs, level economic playing field for small and large businesses, and create economic growth
4Why did we need patent reform? Attempts to align U.S. patent process with international standards and proceduresCreates new post-grant procedures to correct defectively issued patents/mitigate potential for bad filings without resorting to litigationReforms litigation provisions to reduce frivolous suits
5Five Major Areas of Change to U.S. Patent System: Shift to the new “First-Inventor-to-File” system and other pre-filing concernsChanges to application filing process, new filing programsChanges to Prosecution/examinationCreation of new post-issuance/“inter partes” proceedingsAmendments to post-grant litigation procedures
6“First-Inventor-to-File” System, and Other Pre-Filing Concerns Section 1First-Inventor-to-FileShifts from old “First-to-Invent” to new “First-Inventor-to-File”Effective on March 16, 2013Shifts focus to the effective filing date of the claimed inventionEliminates interferences
7“First-Inventor-to-File” System, and Other Pre-Filing Concerns Section 1 (cont.)New definitions of novelty/prior art under § 102(a):§ 102(a). Conditions for patentability. Novelty; prior art—A person shall be entitled to a patent unless:(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 of the claimed invention; 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 of the claimed invention.
8“First-Inventor-to-File” System, and Other Pre-Filing Concerns Section 1 (cont.)New one-year disclosure grace period for inventor’s own disclosures, including all publically available disclosures (e.g., inventor’s own publications)Expanded in for matters involving foreign priorities and provisional applications§ 102(b)(1). Conditions for patentability; Exceptions—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—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
9“First-Inventor-to-File” System, and Other Pre-Filing Concerns Section 1 (cont.)Other prior art exceptions under (b)(2):§ 102(b)(2). Conditions for patentability; Exceptions—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;(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.
10“First-Inventor-to-File” System, and Other Pre-Filing Concerns Section 1 (cont.)Expanded definition of prior artEffective as of March 16, 2013In re Hilmer Rule eliminated“Effectively filed” will include foreign priority dates; not just U.S. filing datesPrior art now includes:Foreign public use or on sale activitiesDisclosures “otherwise available to the public,” including anywhere in U.S. and abroadPriority date will become effective date for purposes of novelty-defeating art and obviousness
11“First-Inventor-to-File” System, and Other Pre-Filing Concerns Section 1 (cont.)New non-obvious subject matter definition:§ 103. Conditions for patentability; non-obvious subject matter.—A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
12Changes to Application Process, New Filing Programs Section 2New Filing FeesEffective September 26, 2011USPTO director has fee-setting authority, subject to review by Public Advisory Committee and CongressIncreases many fees by as much as 15% on patents and trademarksFee schedule available atElectronic Filing IncentiveEffective November 15, 2011Essentially a penalty by adding an additional $400 ($200 for small entities) for each original patent not filed electronically
13Changes to Application Process, New Filing Programs Section 2 (cont.)New “Micro Entity” StatusAvailable as of September 26, 2011Directed towards individual and small company applicants:Applicants who:(1) qualify as a small entity under 35 U.S.C. § 41(h)(1);(2) have not been named as inventor on more than four previous U.S. applications;(3) gross annual income of at or less than 3x U.S. median household income(4) have not assigned, granted, or conveyed (or under obligation to do so) license or other ownership interest in application to entity that had gross income in excess of 3x the U.S. median household income35 U.S.C. § 123(d). Institutions of Higher Education.—For purposes of this section, a micro entity shall include an applicant who certifies that:(1) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined by [20 U.S.C. § 1001(a)]; or(2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education.NOTE: “Institute of Higher Education” under 20 U.S.C. § 1001(a) does not include independent research institutesEntitles qualifying applicants to 75% discount on USPTO fees
14Changes to Application Process, New Filing Programs Section 2 (cont.)Pro Bono ProgramsSuccessfully launched pilot program in Minnesota in June 2010Five new regional programs launched in 2012 in Denver, California, Texas, Washington D.C. metro area, and New York City metro areaPotentially ten new programs opening in 2013Eligibility and acceptance determined by initial screening process based upon factors, such as:(1) applicant’s knowledge of patent system,(2) potential patentability of invention, and(3) income qualificationsCreation of new satellite USPTO OfficesOpening in Detroit, Dallas-Fort Worth, Denver, and Silicon Valley
15Prosecution/Pre-issuance Matters Section 3Third-Party Pre-issuance SubmissionsEffective September 12, 2012Allows any member of public to file to submit patents, published patent applications, or other printed publications of potential relevance to patent applicationMust include concise state of relevance of each item, along with copy of item submitted35 U.S.C. § 122(e)—Submissions must be made by:(1) later of(i) six months after date of publication, or(ii) date of first Office Action on merits rejecting any claims, or(2) before date of notice of allowance, if earlier
16Prosecution/Pre-issuance Matters Section 3 (cont.)Prioritized ExaminationAvailable for utility and plant patent applicationsAccords special prosecution status to select applications before the USPTOProvides a final determination of patentability within 12 months after receiving prioritized statusUSPTO limits requests for prioritized examination limited to 10,000/year, subject to adjustmentsInclusion of Oath and DeclarationEffective as of September 26, 2012Inventor must include oath or declaration that states:(1) individual is an original inventor of the claimed invention; and(2) application was made or authorized to be made by declarant, andNo longer required to state that(1) individual is first inventor of claimed invention(2) application is made without deceptive intent(3) provide individual’s country of citizenship35 U.S.C. § 115—Authorizes individual under obligation of assignment to include required statements in the assignment in lieu of separately filing oath or declaration
17Post-Grant/“Inter Partes” Review Section 4Supplemental ExaminationEffective as of September 16, 2012Used to “consider, reconsider, or correct information believed to be relevant to patentPatent owner (excludes third-parties) may submit any information relevant to patent and grounds for patentabilityHas the ability to immunize patent against allegations of inequitable conduct, so long as supplemental examination and ex parte reexamination are completed before any suit is filedWithin three months of request, USPTO will make determination by issuing certificate indicating whether a “substantial new question of patentability” (SNQ)SNQ = showing that a reasonable examiner would consider the item of information important in determining the patentability of the claimsIf SNQ raised by one or more items of information in request, then reexamination will be orderedReexamination conducted pursuant to ex parte reexamination procedures
18Post-Grant/“Inter Partes” Review Section 4 (cont.)Post-Grant ReviewEffective as of September 16, 2012Must be done within nine months of grant or issuance of reissue of patentAllows any person, including third-parties, to petition for review upon any invalidity theory under § 282(b)(2) and (3)Challenger must overcome presumption of patentability by demonstrating that it is “more likely than not that at least one of the claims is unpatentable”If successfully challenged, patent owner will have one opportunity to amend (may seek consent of petitioner for additional amendments)
19Post-Grant/“Inter Partes” Review Section 4 (cont.)New “Inter Partes” ReviewEffective as of September 16, 2012; replaces old inter partes patent reexaminationReviews patentability of one or more claims upon grounds permitted by §§ 102, 103Third-party petition may not be filed until later of:(1) termination of post-grant review, or(2) within nine months of issuancePetition granted if USPTO determines that there is a “reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition”Replaces previous “substantial question of patentability” standard
20Post-Grant/“Inter Partes” Review Section 4 (cont.)Derivation ProceedingEffective March 16, 2013Used to determine whether:(i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and(ii) the earlier application claiming such invention was filed without authorizationPetition must be filed within one year of date of first publication of claim to invention that is the same or substantially the same as the earlier application’s claim to the inventionTransitional Program for Business Method Patent ReviewEffective September 16, 2012Subject to sunset for new TPCBM petitions on September 16, 2012Limited to “covered business method patents”Petition for TPCBM proceeding may not be filed unless person or real party in interest has been sued for or charged with infringement of patent
21Amendments to Post-Grant Litigation Matters Section 5Misjoinder of defendantsJoinder of multiple parties in a single patent infringement lawsuit only if:(1) cause of action arises out of same transaction, occurrence, or series of transactions or occurrences, and(2) there is exists questions of fact common to all defendants or counterclaim defendantsNo longer sufficient to have merely infringed the same patentFalse Marking ClaimsRemoves qui tam (i.e., whistleblower) provision of false marking statuteLimits standing and damages to only those parties that suffer a competitive injury as a result of the alleged false markingDamages only permitted from the time alleged infringer was put on notice of another’s patent, including making product or service with corresponding patent number
22Amendments to Post-Grant Litigation Matters Section 5 (cont.)New “Prior Commercial Use” DefenseApplies to patents issued on or after September 16, 2011Exempts certain subject matter from a finding of patent infringement if claimed subject matter is:“a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process”Asserting party must establish, by clear and convincing evidence, that P.C.U. occurred at least one year before the earlier of:(1) effective filing date, or(2) inventor’s disclosure that establishes a prior art grace periodRepeal of “Best Mode” DefenseAIA removes previously-recognized defense to infringement for failure to disclose the “best mode” to practice the claimed inventionNow, examiner may simply reject application that fails to disclose “best mode” during prosecution of application
23QUESTIONS, COMMENTS? For more information… Contact Dr. Edwin S. Flores at (214) oror,Visit the USPTO’s website at