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by David W. Hill AIPLA Immediate Past President Partner Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Overview of the America Invents Act
Major Areas for Change 1. First Inventor to File 2. Limited Grace Period for Inventor 3. Prior User Rights 4. Patent Office Fee Income 5. 3 rd party submissions of prior art 6. Post Grant Review 7. Inter Partes Review 8. Supplemental Examination 9. Transitional Program for Business Method Patents 2 © AIPLA 2012
Right of First Inventor to File Inventor must be an individual who invents or discovers and must be named Effective Filing Date includes domestic and foreign priority dates Interferences are eliminated except for applications filed before effective date Derivation Investigation Proceeding is created 3 © AIPLA 2012
Limited Grace Period Absolute Bar if More than One Year before Effective Filing Date for All Persons Bar if Less than One Year with Exception for Inventor and Assignee Exception only for Public Disclosure by or derived from the Inventor Exception for Commonly Owned Inventions Owned or subject to duty to assign 4 © AIPLA 2012
Prior User Rights Significantly extends prior user rights beyond business methods Includes any process, machine, manufacture or composition of matter Subject matter would have infringed if used at least 1 year before patentee filing date or date disclosed to the public for prior art exception under new Section 102(b) PTO must submit report to Congress on rights in other countries 5 © AIPLA 2012
Patent Office Fees Current Fees for Patent Services Made Statutory – change more difficult Director Given General Power to Set Fees New Procedures Provide Director Sets Fees Fees may determine degree of use Fees reasonably related to services provided Surcharge of 15% Prioritized Examination Fee - $4800 Electronic Filing Incentive - $400 if paper Reduced Fees Small Entity – 50% Micro Entity – 75% (includes universities) 6 © AIPLA 2012
3 rd Party Submissions (from Sept. 16, 2012) Any patent, published patent application, or other printed publication of potential relevance to examination of application can be submitted by any 3 rd party if submission is made in writing before earlier of date notice of allowance is given or mailed ; or the later of 6 months after the date application is first published by the Office, or date of first rejection of any claim by examiner during examination of application 7 © AIPLA 2012
Post Grant Review (PGR) May be filed by anyone NOT owner of the patent Request to cancel one or more claims Within 9 months from issuance of patent or reissue Identify real party in interest (no straw man PGRs) Based on patent(s) or printed publication(s) Patent Owner MAY file preliminary response to petition 8 © AIPLA 2012
Post Grant Review (PGR) PTO Threshold: More likely than not that at least 1 claim is unpatentable, OR Petition raises novel or unsettled legal question that is important to other patents or patent applications PTO initial decision within 3 months from patent owner response or due date for such a response Initial decision NOT appealable PGR cannot be instituted if civil action challenging validity is filed before petition is filed by petitioner or real party 9 © AIPLA 2012
Post Grant Review (PGR)/Estoppel After final written decision, no later proceeding by same party on ground that petitioner raised or reasonably could have raised during that post-grant review AND may not assert in civil action or in ITC proceeding that claim is invalid on any ground petitioner raised or reasonably could have raised during that post-grant review. 10 © AIPLA 2012
Post Grant Review (PGR)/Regulations PTO Director shall issues regulations: Must address public accessibility, standards for submission of supporting information, discovery of relevant information, sanctions for abuse, protective orders, oral hearings, etc. Must issue final decision in 1 year (1 ½ years in complex cases) Appeals to CAFC (No Section 145 action allowed) 11 © AIPLA 2012
PGR Limitations Amendments effective September 16, 2012 apply only to patents issued on or after that date. Director may impose a limit on number of post-grant reviews that may be instituted during each of the 4 years following effective date. What happens when limit exceeded? 12 © AIPLA 2012
Inter Partes Review (IPR) Any person Not the patent owner Petition for inter partes review Request to cancel at least 1 claim as unpatentable Only on 102 or 103 grounds based on patent(s) or printed publication(s) Filed more than 9 months after patent issues Same basic requirements as PGR Threshold: reasonable liklihood that petitioner would prevail as to at least 1 challenged claim 13 © AIPLA 2012
Inter Partes Review (IPR) Initial decision within 3 months from patent owner’s response or due date for response Initial decision not appealable No IPR if civil action filed by petitioner before petition is filed Provision for automatic stay if civil action filed by petitioner after IPR is filed IPR cannot be filed more than 1 year after civil action by patent owner for infringement is served 14 © AIPLA 2012
Inter Partes Review (IPR)/Estoppel After final written decision in IPR, petitioner cannot file another proceeding before PTO on any ground raised or that reasonably could have been raised during inter partes review After final written decision in IPR, petitioner cannot assert in civil action or in ITC case that a claim is invalid on any ground that petitioner raised or reasonably could have raised during inter partes review. 15 © AIPLA 2012
IPR Limitations IPR effective September 16, 2012 and applies to all patents issued before, on, or after such date, except that new “reasonable liklihood to prevail” standard was effective immediately upon signing Inter partes reexam request under old law filed prior to September 16, 2012 continues under old law Director may impose limit on the number of inter partes reviews that may be instituted during each of the first 4 years following the effective date, provided that such number shall in each year be equivalent to or greater than number of inter partes reexaminations ordered in the last full fiscal year prior to effective date. 16 © AIPLA 2012
Supplemental Examination Allows submission of prior art in your own patents Cannot submit art already raised in district court or ITC litigation For PTO “to consider, reconsider, or correct information believed relevant to the patent” Patent shall not be held unenforceable on basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent. 17 © AIPLA 2012
Transitional Program for Covered Business Method Patents If charged with infringement or sued for infringement based on a “covered business method patent,” party may initiate transitional PGR Transitional program ends 8 years after regulations take effect For purposes of this section, term ‘‘covered business method patent’’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions 18 © AIPLA 2012
19 © AIPLA 2012 Thank you!
© Kolisch Hartwell 2013 All Rights Reserved, Page 1 America Invents Act (AIA) Implementation in 2012 Peter D. Sabido Intellectual Property Attorney Kolisch.
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Disclaimer The following presentation is provided for informational purposes only and should not be construed as legal advice for your particular legal.
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