Presentation is loading. Please wait.

Presentation is loading. Please wait.

© COPYRIGHT 2011. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. The Leahy-Smith America Invents Act: Changes to United States Patent Law and Practice Steven.

Similar presentations


Presentation on theme: "© COPYRIGHT 2011. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. The Leahy-Smith America Invents Act: Changes to United States Patent Law and Practice Steven."— Presentation transcript:

1 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. The Leahy-Smith America Invents Act: Changes to United States Patent Law and Practice Steven Weisburd Dickstein Shapiro LLP

2 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 2 Leahy-Smith America Invents Act (AIA) Enacted: September 16, 2011

3 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 3 Overview Major changes to substantive patent law –Comes close to harmonizing American Laws with International Standards Creates several new Post-Grant proceedings allowing third parties to challenge the validity of issued patents before the USPTO Modifies the law to discourage troll litigation Various changes to USPTO structure and funding

4 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 4 Substantive Changes

5 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 5 Substantive Patent Law First to File/First to publically disclose Definition and Scope of Prior Art Grace Period for Inventor Disclosure Prior User Rights New Limitations on Statutory Subject Matter Derivation Proceedings Best Mode False Marking Primary Substantive ChangesSecondary Substantive Changes

6 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 6 First to File The Act creates a two tiered system: –First to invent claims (old law): A claim with an effective filing date on or before March 16, 2013, or A claim in a patent application which at any time claimed U.S. priority to such an application. –First to file claims (new law): For all claims with an effective filing date after March 16, 2013, a first to file system will apply. This is really a first to publically disclose/first to file system. The statute defines the “effective filing date” as the earliest U.S. or foreign (i.e., PCT or foreign national) application to which the application is entitled priority.

7 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 7 Practice Tip In some cases you may be better off with the old law than the new: –If you have an early invention date. –If there is public activity outside of the U.S. which would invalidate the patent under the new statute. In these cases you can ensure that the old rules will apply by simply claiming priority to an earlier application with an effective filing date prior to March 16, You do not actually have to have a right to claim priority. You must merely do so. This was inserted in the statute to avoid an avalanche of filings prior to the effective date of the statute.

8 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 8 Practice Tip Examples U.S. filing date of continuing application Original U.S. application filing date Foreign national application Prior art disclosure Prior invention date First to file system: Not patentableFirst to invent system: Patentable

9 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 9 Practice Tip Examples U.S. filing date of continuing application Original U.S. application filing date Foreign national application Prior sale in Germany First to file system: Not patentableFirst to invent system: Patentable

10 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 10 Prior art in first to file applications §102(a)(1): Before the effective filing date, the claimed invention was: –Patented –Described in a printed publication –In public use –On sale –Otherwise “available to the public” –These activities are not limited to the U.S. They could have happened anywhere in the world. §102(a)(2): The claimed invention was described in an issued or published U.S. application, which: –Names another inventor; –has an effective filing date prior to the application’s effective filing date; and –is not commonly owned.

11 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED Month Grace Period For Earlier Disclosures in First to File Applications Prior disclosure by the inventor: –Public disclosure by the inventor, a co-inventor or anyone directly or indirectly obtaining the disclosure from the inventor during the 12-month grace period prior to the effective filing date is not prior art. Prior disclosure by a third party: –Public disclosure by a third party who did not obtain the subject matter from the inventor during the 12-month grace period will not prevent the inventor from obtaining a patent IF the inventor made a public disclosure of the subject matter first. This is a “first to disclose” standard. Query: What is a public disclosure?

12 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 12 First to file system Example 1 Inventor’s disclosure 2/1/10 U.S. filing date 10/1/11 foreign filing date 10/1/10 3 rd party disclosure 6/1/10 12 months 3 rd party disclosure 6/1/09 Not patentablePatentableNot patentable

13 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 13 First to file system Example 2 3 rd party disclosure 12/1/08 U.S. filing date 10/1/11 Foreign national filing date 4/1/09 12 months PCT filing date 4/1/10 18 months12 months Inventor’s disclosure 7/1/07 PatentableNot patentable Inventor’s disclosure 5/1/08

14 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 14 Prior User Rights – first to file applications A party who commercially used the process (or a machine, manufacture or product used in the process) in the U.S. at least one year before the effective filing date of the patent shall be free to continue using the invention. –Can be a secret use. Personal defense for: –Person who used or directed performance of the commercial use. –Any entity that controls, is controlled by, or is under common control with such person. The sale or disposition of a “useful end result” by a person entitled to this defense exhausts the patent owner’s rights with respect to the useful end result. –Removes right of patent owner to assert claim against customers.

15 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 15 Prior User Rights – first to file applications Limited transferability: –A Prior User Right is not transferrable “except as an ancillary and subordinate part of a good faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates.” Limited license: –You only have a right to continue making the product (or using the method) you were making at least one year before the effective filing date of the asserted patent and improvements in the claimed subject matter that do not infringe additional specifically claimed subject matter of the patent.

16 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 16 Bar to Patents Covering Certain Subject Matter Tax-Based Inventions: –Any patent filed that has a claim covering any strategy for reducing, avoiding, or deferring tax liability is deemed insufficient to differentiate a claimed invention from the prior art. –This does not apply to (1) systems and methods for preparing a tax filing or organizing that data; and (2) methods and systems for financial management. Human Organisms: –Patents with a claim directed to or encompassing a human organism are not permitted. –The USPTO has indicated that they do not believe that this change in the statute changes the present practice of the Office.

17 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 17 Derivation Practice – first to file applications Only the inventor is entitled to a patent. If someone obtains a disclosure from the inventor, either directly or indirectly, he is not entitled to a patent on the invention. Two types: –PTO Proceeding: application v. application/patent –Civil Action: patent v. patent PTO Proceeding: –Must be filed within 1 year from the date the application was published. –PTO can defer and/or stay the derivation proceeding pending: Issuance of the allegedly derived patent Reexamination of the allegedly derived patent Civil Action: –A civil action must be filed within 1 year from the issuance of the patent

18 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 18 Derivation Proceeding in the PTO – first to file applications Settlement: –Parties in a derivation proceeding in the PTO can settle/arbitrate any claims of derivation: Must provide a copy of the settlement agreement to the PTO Must notify PTO of arbitration award to make arbitration award enforceable

19 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 19 Practice Tip Set up a patent/published application monitoring service on inventions in your field of business so that you have an opportunity to identify “derived” inventions. This will also help your client determine if there are any issued patents which it would like to subject to a post- issuance challenge before the USPTO.

20 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 20 Best Mode There is still a requirement that your U.S. application disclose the best mode. –Examiner’s rarely reject a claim on this ground. –ASSUME BEST MODE IS DISCLOSED UNLESS THERE IS EVIDENCE TO THE CONTRARY The examiner should assume that the best mode is disclosed in the application, unless evidence is presented that is inconsistent with that assumption. It is extremely rare that a best mode rejection properly would be made in ex parte prosecution. The information that is necessary to form the basis for a rejection based on the failure to set forth the best mode is rarely accessible to the examiner, but is generally uncovered during discovery procedures in interference, litigation, or other inter partes proceedings. MPEP §

21 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 21 Best Mode The failure to disclose the best mode can no longer be the basis for challenging the validity of a claim in a civil action. This section applies to all law suits filed on or after September 16, It is no longer necessary for foreign applications to disclose the inventors’ best mode in order to be entitled to priority.

22 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 22 Post-Grant Proceedings

23 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 23 Post-Grant Procedures Ex Parte Reexamination Supplemental Examination Post-Grant Review Inter Partes Review Review of Financial Industry Patents

24 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 24 Ex Parte Reexamination Ex parte reexamination procedures will remain in effect. Can be filed by anyone, including patent owner. Can only cite patents or printed publications as prior art. The current threshold of “substantial new question of patentability” will continue.

25 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 25 Supplemental Examination The ABC’s When effective: –Comes into effect on September 16, Which patents subject to examination: –All patents subject to Supplemental Reexamination. Who can file: –Only patent owner can initiate a Supplemental Examination. Purpose of Examination: –The purpose of this new procedure is to allow the patent owner to have the USPTO “consider, reconsider, or correct information believed to be relevant to the patent.”

26 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 26 Supplemental Examination The ABC’s Grounds for grant: –Any grounds related to patentability based on “information” relevant to the patent. Query: What is “information”? Standard for grant: –The standard for granting the request is whether or not the request “raises a substantial new question of patentability.” Procedures: –Once the request is granted, the patent is reexamined following the procedures for ex parte reexamination.

27 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 27 Supplemental Examination – Inequitable Conduct Can be used to purge inequitable conduct and unenforceability claims, except: –those that have already been pled with particularity in a civil action, and –those that have already been set forth with particularity under the Food, Drug & Cosmetic Act before the filing of the Supplemental Examination Request. The purge is not effective until the Supplemental Examination proceeding is concluded. The mere fact that a request for Supplemental Examination was or was not made cannot be used as relevant to enforceability of a patent. If PTO becomes aware of fraud, the matter may be referred (confidentially) to the Attorney General for further investigation.

28 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 28 Post-Grant Review (“PGR”) The ABC’s Similar to a European Opposition Proceeding. When effective: –September 16, What patents are subject to PGR: –All patents. Who can file: –Any third party.

29 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 29 Post-Grant Review (“PGR”) The ABC’s When to file: –Petition must be filed within 9 months from the issuance of an original or reissue patent –but before any DJ action by the Requester challenging validity of any claims of the patent Counterclaims for invalidity do not prevent a party from petitioning for PGR.

30 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 30 Post-Grant Review (“PGR”) The ABC’s Grounds for invalidity: –All grounds. Standard for grant: –PGR will be granted if it is “more likely than not” that at least one of the claims challenged is unpatentable, or if the petition raises a “novel or unsettled legal question” that is important to other patents. Burden of proof: –Preponderance of the evidence.

31 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 31 Post-Grant Review – Procedures Speed: –PRG to be completed within 1 year (can be extended by up to six months for good cause shown) and conducted before a newly formed Patent Trial and Appeal Board. Evidence: –Introduced by way of affidavit or declaration. –Expert opinions. Discovery: –Will be permitted but limited to “evidence directly related to factual assertions advanced by either party in the proceeding.” –USPTO will promulgate rules and regulations.

32 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 32 Post-Grant Review – Procedures Amendments: –Patent owner can petition to amend patent claims, but cannot broaden scope of original claims. Intervening Rights: –Intervening rights apply to any substantive amendments made to the claims. Appeal: –Either party can appeal the final decision of the PTAB to the Federal Circuit. –Either party can participate in the appeal of the other party. –The parties will be entitled to an oral hearing.

33 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 33 Post-Grant Review – Interaction with Litigation Stays: –Any civil action filed by petitioner (or real party in interest) after filing petition for PGR is automatically stayed until: the patent owner moves the court to lift the stay; the patent owner files a civil action or counterclaim alleging that the petitioner infringes the patent; or the petitioner moves the court to dismiss the action.

34 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 34 Post-Grant Review – Estoppel Estoppel: –Petitioner (and the real party in interest as well as those in privy with them) cannot raise issues in a civil action or ITC proceeding that: were or could reasonably have been raised in the Post-Grant Review proceeding; and once a final written decision of the Patent Trial and Appeal Board is issued (despite pending appeal). –Petitioner (and the real party in interest as well as those in privy with them) cannot raise issues in another USPTO proceeding that it raised or could reasonably have been raised in the PGR. –What issues “reasonably could have been raised”? Is it limited to defenses based upon facts that the petitioner was aware of? How much searching is required before you get past the “reasonably could have been raised” standard?

35 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 35 Post-Grant Review – Consolidation and Settlement Consolidation: –If multiple parties file petition for PRG for the same patent, then those petitions may be consolidated in a single review. Settlement: –PRG can be settled, but a copy of the settlement agreement, and any agreements mentioned in the settlement agreement, must be filed with the PTO. Agreement may be treated as confidential business information at the request of a party. The PGR will terminate. The estoppel provisions will not apply.

36 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 36 Inter Partes Review (IPR) The ABC’s When effective: –September 16, What patents are subject to IPR: –All patents. Who can file: –Third parties.

37 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 37 Inter Partes Review (IPR) The ABC’s When to file: –9 months or more after patent is granted/reissued –if a Post-Grant Review has been filed, the date of termination of a Post- Grant Review proceeding –but before any DJ action by the Requester challenging validity of the claims at issue Counterclaims for invalidity do not prevent a party from petitioning for IPR –Within one year after the petitioner is served with a complaint for infringement of the patent

38 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 38 Inter Partes Review (IPR) The ABC’s Grounds for invalidity: –Limited to novelty and nonobviousness based on prior art patents and printed publications. Standard for grant: –A “reasonable likelihood” that petitioner would prevail with respect to at least one claim. Burden of proof: –Preponderance of the evidence.

39 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 39 Inter Partes Review (IPR) Procedures Speed: –IPR to be completed within 1 year (can be extended by six months for good cause shown) and conducted by the Patent Trial and Appeal Board. Evidence: –Introduced by way of affidavit or declaration. –Expert opinions. Discovery: –Witnesses submitting affidavit or declaration. –Otherwise necessary in the interest of justice. –PTO will promulgate rules and regulations.

40 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 40 Inter Partes Review (IPR) Procedures Amendments: –Patent owner can petition to amend patent claims, but cannot broaden the scope of original claims. Intervening Rights: –Intervening rights apply to any substantive amendments made to the claims. Appeal: –Either party can appeal the final decision of the PTAB to the Federal Circuit. –Either party can participate in the appeal of the other party. –The parties will be entitled to an oral hearing.

41 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 41 Inter Partes Review (IPR) Interaction with litigation Stay of civil actions: –Any civil action filed by petitioner on the same day as or after the petition for IPR is filed is automatically stayed until: The patent owner moves to lift the stay; The patent owner files a civil action or counterclaims alleging infringement; or The petitioner (or real party in interest) moves the court to dismiss the civil action.

42 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 42 Inter Partes Review Estoppel Estoppel: –Petitioner (and the real party in interest as well as those in privy with them) cannot raise issues in a civil action or ITC proceeding that: were or could reasonably have been raised in the Post-Grant Review proceeding; and once a final written decision of the Patent Trial and Appeal Board is issued (despite pending appeal). –Petitioner (and the real party in interest as well as those in privy with them) cannot raise issues in another USPTO proceeding that it raised or could reasonably have been raised in the IPR. –What issues “reasonably could have been raised”? Is it limited to defenses based upon facts that the petitioner was aware of? How much searching is required before you get past the “reasonably could have been raised” standard?

43 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 43 Inter Partes Review Consolidation and Settlement Consolidation: –If multiple parties file petition for PRG for the same patent, then those petitions may be consolidated in a single review. Settlement: –IPR can be settled, but a copy of the settlement agreement, and any agreements mentioned in the settlement agreement, must be filed with the PTO. Agreement may be treated as confidential business information at the request of a party. The IPR will terminate. The estoppel provisions will not apply.

44 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 44 Review of Financial Industry Patents Only a transitional procedure: –Takes effect 1 year after enactment and expires 8 years thereafter. An important lobbying force. Covered patents: –A patent that claims a method or apparatus for performing data processing or other operations used in the practice, administration, or management of financial products or services. –It does not include patents for “technological inventions.” Grounds for invalidity: –Any ground.

45 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 45 Review of Financial Industry Patents Who may file: –Petitioner must be the real party in interest that has been sued or charged with infringement under the patent. Procedures: –Proceedings are same as Post-Grant Review and are conducted by the Patent Trial and Appeal Board. Estoppel: –Petitioner cannot raise issues in a civil action that were raised in the proceeding once a final written decision of the Patent Trial and Appeal Board is issued.

46 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 46 Review of Financial Industry Patents Stays: –When either party requests a stay in a civil action, the court shall decide on whether or not to grant the stay based upon the following factors: Whether a stay will simplify the issues in question and streamline the trial. Whether discovery is complete and whether a trial date has been set. Whether a stay would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party. Whether a stay will reduce the burden of litigation on the parties and on the court. –A party may take an interlocutory appeal to the Federal Circuit to “ensure consistent application of established precedent.” –The review on appeal is de novo.

47 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 47 Summary of Options Options for patent owner: –File an ex parte reexamination to ask the USPTO to reconsider the validity of the claim over the prior art. –File a Supplemental Examination to ask the USPTO to consider, reconsider or correct information believed to be relevant to the patent and which raises a substantial new question of patentability. Options for third parties: –File an ex parte reexamination to ask the USPTO to reconsider the validity of the claim over the prior art. –File a Post-Grant Review (but only within 9 months from grant/reissue) challenging the validity of the patent on any grounds. –File an inter partes review (but only after the 9 month period is over and within one year of being sued for infringement) challenging the validity of the patent over the prior art.

48 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 48 Summary of Post-Grant Procedures Ex Parte Reexam Supplemental Examination Post-Grant Review Inter Partes Review Financial Industry proceeding Who can file? anyonepatent ownerthird party only third party sued or accused of infringement Basis patents and printed publications any grounds patents and printed publications any grounds Threshold substantial new question of patentability (1) more likely than not or (2) novel or unsettled legal question reasonable likelihood (1) more likely than not or (2) novel or unsettled legal question Timing any time after grant within 9 months from patent grant later of 9 months after grant or date of termination of a Post-Grant Review (and within 1 year after being sued) any time after grant Estoppel none yes – issues that were or could reasonably have been raised yes – any ground raised

49 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 49 Litigation-Related Changes Joinder Marking and False Marking Advice of Counsel

50 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 50 Joinder Parties that are accused infringers may be joined in one action only if: and –the parties relate to the same accused product or process; and –common questions of fact will arise for all defendants. Basis for joining unrelated parties can not just be because they all are alleged to infringe the same patent. Applies to all civil actions filed on or after September 16, 2011.

51 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 51 Affect on Venue Convenience of the parties Case brought in ED Texas – three parties located in Texas Three parties located in California Three parties in New York

52 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 52 Marking Virtual Marking Effective Date: –These changes are effective immediately and apply to all pending law suits as well as any brought in the future. Virtual Marking –While marking is still a requirement to obtain damages before the infringer has actual notice of the patent, you can now provide a “virtual marking” on the internet. –You must include the word Patent (or “Pat.”) plus a link to the URL containing the notice.

53 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 53 Marking False Marking False Marking –Qui Tam Actions: The Patent Statute provides a fine of no more than “$500 per occurrence” for each case of falsely marking a product with a patent marking. In the past, an individual or company could bring a “qui tam” action on behalf of the government to collect this fine. The award was split between the government and the party bringing the action. The statute has been amended to limit such actions to those brought by the government. Not a violation of the statute to list an expired patent. –Private Actions: Private parties can sue for damages, but this requires proof of a competitive injury.

54 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 54 Advice of Counsel Until about four years ago, an infringer had an affirmative duty to obtain advice of counsel. In the Seagate case the Federal Circuit reversed this requirement. The statute has codified the Seagate decision and states that the failure to obtain advice of counsel “may not be used to prove that the accused infringer willfully infringed that patent or that the infringer intended to induce infringement of the patent.” This provision is effective as of September 16, An opinion can still be helpful in establishing a lack of intent to induce infringement. Of course, an opinion remains important for clients to properly assess their legal position and potential economic exposure.

55 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 55 Patent Office Changes

56 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 56 PTO Practice, Operations, Fees and Funding Prioritized Examination Inventor Oath and Assignee Filing Pre-issuance Submissions of Prior Art PTO Fees New Micro Entity Status

57 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 57 Prioritized Examination The PTO is to “provide for prioritization of examination of applications for products, processes, or technologies that are important to the national economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization.” Directed towards so-called “green technologies.” Additional $4,800 fee (50% discount for small entities). Goal is to provide a first substantive response from the PTO within 12 months of patent application filing.

58 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 58 Inventor Oath and Assignee Filing Applications can be filed by the assignee of the invention. –Applies to persons to whom the inventor has assigned or has an obligation to assign the invention. –The assignee will be considered to be the applicant. –A person who “otherwise shows sufficient proprietary interest in the matter” may file the application on behalf of the inventor. [Similar to present practice.] –The patent will be granted to the “real party in interest.” –If a patent issues to such an applicant, the Director must give “sufficient notice” to the inventor.

59 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 59 Inventor Oath and Assignee Filing Each inventor must provide a “statement” that he or she believes: –“Himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.” The statement can be made by way of declaration or oath or in an assignment of the invention to the applicant. Savings Clause: –Failure to comply with the inventor oath requirement of § 115 will not be a basis for invalidity or unenforceability and may be remedied at any time by filing a supplemental or corrected statement. Effective Date: applications filed on or after September 16, 2012.

60 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 60 Pre-issuance Submissions of Prior Art Any third party may submit written prior art for consideration and inclusion in the record. Written submission must be before the earlier of: –the date of allowance; –six months after the publication of the application; or –the date of the first rejection of any claim. The submission must be accompanied by a “concise description” of the relevance of the prior art.

61 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 61 PTO Fees Gives permission for the PTO to set and adjust its fees. There will be a 15% surcharge on almost all fees, including maintenance fees, effective 10 days after enactment (effective on September 26, 2011). Implements a $400 fee for non-electronic filing.

62 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 62 Micro Entity Status The Act also establishes a new “micro entity.” A micro entity is entitled to a 75% discount of many PTO fees. Micro entity is generally a person who is employed by an institution of higher education, or has not been named on more than 4 prior applications and meets certain income requirements.

63 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. 63 Steven Weisburd Steven Weisburd is the Deputy Group Leader of Dickstein Shapiro’s Intellectual Property Practice. Since 1974, Mr. Weisburd has concentrated in the areas of patent, trademark, copyright, and computer law. He has represented clients in litigation, licensing, the development of strategies for protection and the acquisition of intellectual property rights. He is licensed to practice before the U.S. Patent and Trademark Office (USPTO) and various federal and state courts. His experience in the IP field is quite diverse, and his practice covers many areas of technology, including computers, image processing, communications, piezoelectrics, finance, surveillance, and musical instruments. Among his major clients are NEC Corporation; Maidenform, Inc.; Murata Manufacturing Corporation; Verint Corporation; ICAP Plc.; Olympus Corporation; and Yamaha Corporation. AREAS OF CONCENTRATION As an advisor to some of the largest international companies, he has negotiated license agreements involving hundreds of millions of dollars; litigated patent, trademark, and copyright cases before the federal courts (including the Court of Appeals for the Federal Circuit); structured and carried out major licensing programs that resulted in the licensing of an entire industry; and has been involved extensively in patent and trademark prosecution matters. In addition to counseling clients, Mr. Weisburd has been an active lecturer on numerous IP issues. He is presently the national chair for PLI’s nationally presented program “Handling Intellectual Property Issues in Business Transactions” and has presented lectures on diverse IP topics involving litigation, intellectual property management, and prosecution matters to various groups throughout the world. PROFESSIONAL ACTIVITIES Mr. Weisburd is admitted to practice in Pennsylvania (1974), the U.S. District Court for the Eastern District of Pennsylvania (1974), New York (1976), the U.S. District Court for the Southern District of New York (1980), and before the U.S. Supreme Court (1980), and the U.S. Court of Appeals for the Federal Circuit (1982). He also is licensed to practice before the U.S. Patent and Trademark Office (1975). In , Mr. Weisburd was honored by Lawdragon magazine as a “Leading Lawyer,” in a list that represents less than one percent of the legal profession and is determined based on a combination of independent research and peer reviews. Steven I Weisburd Dickstein Shapiro LLP 1633 Broadway New York, New York United States of America Phone:

64 © COPYRIGHT DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. Thank you


Download ppt "© COPYRIGHT 2011. DICKSTEIN SHAPIRO LLP. ALL RIGHTS RESERVED. The Leahy-Smith America Invents Act: Changes to United States Patent Law and Practice Steven."

Similar presentations


Ads by Google