Presentation on theme: "Cross Border Patent Protection November 18, 2014"— Presentation transcript:
1 Cross Border Patent Protection November 18, 2014 Dr. Keith D. WeissPresented toCross-Border Institute&Law, Technology, & Entrepreneurship Clinic (LTEC)University of WindsorForeign Entity Filing in U.S.U.S. Patent RequirementsThe Process of Obtaining a U.S. PatentAmerica Invents Act (AIA) – Key Changes
2 Foreign Entity Filing in U. S Foreign Entity Filing in U.S Contracting Countries to Paris ConventionNational Treatment – each country will provide same protection to nationals of all contracting states that it provides to its own nationalsRight of Priority – applicant may file application in any contracting state within 12 months of first national application and be given priority date of first national applicationCommon Rules – (a) Patents that are issued are country specific(b) Inventors have the right to be named
3 Foreign Entity Filing in U. S Foreign Entity Filing in U.S Patent Cooperation Treaty (PCT) Member Countries (in Blue)
5 “ByPass” Continuation Foreign Entity Filing in U.S.35 U.S.C. § 37135 U.S.C. §363"[a]n international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office....”National StageCommencementSpecification is same as international phase, change requires preliminary amendmentIDS only needed if PCT search results not submitted to USPTOCertified copy of priority document only needed if not submitted to USPTOTreated as the same application as the PCT“ByPass” ContinuationSpecification does not have to be the same, i.e. no preliminary amendment requiredNew IDS neededCertified copy of priority document not required (*can submit copy and link from WIPO)Treated as a new application
6 Foreign Entity Filing in U.S. Summary of Benefits371ContinuationEasier changes to specification/claims✔New matterNo IDSProvisional rightsLower preparation costsDelayed payment of feesTotal USPTO fees✔*Non-English language applicationReduced USPTO delaysEasier restriction practicePatent Term Adjustment (PTA)Accelerated Examination
7 UNITED STATES CONSTITUTION Article I, Section 8, Clause 8 A contract with the U.S. government.Inventor discloses and describes the invention.The U.S. government gives the inventor a 20 year right to exclude others from making, using, or offering the claimed invention for sale.Does not provide permission to manufacture and sell.Patent rights are for U.S. only.A U.S. Patent Is…UNITED STATES CONSTITUTIONArticle I, Section 8, Clause 8Congress Shall Have the Power …..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;U.S. Patent Act USC SectionsA legal tool which permits the inventor or assignee to protect theinvestment of time, money, and resources expended in contributingto the advancement of technology for a period of time reasonable to realize a monetary return.
8 How PATENTS Create Value Protects Product/ServiceDiscourages competitors from entering marketSue infringersCreates licensing opportunities Builds Image as Technology LeaderHowPATENTSCreate ValueImportant to Seek Protection for Your Invention
9 (Example: 3-legged stool vs. 4-legged chair) How are Patent Rights Protected?An inventor’s right to exclude others from practicing the invention is protected from infringement. A party whom makes, uses, or sells the invention without the consent of the inventor can be held liable to pay damages. If the infringing party continues to infringe upon an invention after being notified, they may be liable for triple damages and attorney fees.A typical defense used in court is to have the patent or specific claims declared invalid due to prior art. A Federal District Court has jurisdiction to render a decision.Polaroid vs. KodakPolaroid sued Kodak for infringing on 12 patents protecting their instant photography products. The court ruled in Polaroid’s favor and stopped Kodak from making such cameras. Kodak’s losses included a cash settlement with Polaroid, the inability to provide film for 16M cameras already sold, and the rendering of $200M in plant equipment useless.Obtaining a patent does not grant the right to make, use or sell the invention. The non-existence of dominating patents must be determined.(Example: 3-legged stool vs. 4-legged chair)
10 What is an Invention? Statute (35 U.S.C. 101-103) Any new, useful, and non-obvious process, device (+ improvements) or composition of matter, provided it is different from prior art of which you are aware. Except…..1. Printed matter or arrangement2. Scientific principle, equation, law of nature3. Naturally occurring substance4. Method of doing business5. A mental processUseful (Utility): You must demonstrate that the invention hasan intended purposeNew (Novelty): The invention can not be known or used byothers prior to submitting an applicationNOTE: U.S. (only) allows 1 year leewayNon-Obvious: The differences between the invention and priorart are great enough that the basic concept isnot obvious to anyone of ordinary skill.(Inventive Step)
11 Patent RequirementsThe statute defines things that the patent office considers prior art. Prior Art is a term used to describe existing knowledge found within the public domain in the form of ….Issued patentsPublished patent applicationsPrinted publications or articlesProducts or items in public useor for sale2. In the United States, an inventor’s own activities may not destroy novelty so long as a patent application is filed within one year of the activity (12-month grace period).3. Many countries, however, have an absolute novelty requirement—there is no grace period. Thus, file application before public disclosure.Duty of CandorAnyone involved with a patent application (e.g., inventors, attorneys, etc.) must disclose to the patent office any pertinent prior art to which they are personally aware of.
12 Patent Requirements Non-Obvious is a Subjective Judgment... Factors Used to Evaluate Non-Obviousness1. The knowledge disclosed by prior art(issued patents, published articles, existingproducts for use/sale, etc.)2. The differences that exist between theinvention and the prior art3. Resolution of what should be consideredordinary skill4. Secondary considerations, e.g., commercialsuccess of the invention
13 Patent RequirementsWritten Description and Enablement (35 U.S.C. § 112)“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which itpertains, or with which it is most nearly connected, tomake and use the same, and shall set forth the BEST MODE contemplated by the inventor of carrying out his invention.”Enablement requirement requires that the public knowledge is enriched by the specification commensurate in scope with the claims.3. The written description requirement is construed so that the claims do not cover more than that which the inventor described.
14 Patent RequirementsClaims - Apparatus, Composition, Method (making or using)Claims are the legal “metes and bounds” defining a patent holder’s rights and what a patent holder can exclude someone else from doing during the term of the patent.Claims define elements of the invention and their interrelationship to one another.iv. Claims include independent and dependent claims.1. An independent claim is necessarily broader in its scope than any claim that depends from the independent claim. (Think of a genus.)Dependent claims depend from other dependent claims or an independent claim. (Think of a subgenus or species.)v. Each claim stands on its own for purposes of assessing patentability, enforceability, and infringement.
15 The Patenting ProcessProtect the Invention Before the Patent Application is Filed …Do not publish invention in any public forum (either as a written document or presented as a seminar)Do not offer invention for saleProperly use a Confidentiality Agreement with potential customers. Document the relationship and any sample testing as EXPERIMENTAL. (“This will avoid any secret offer for sale”)Label all samples and documents as Confidential
16 The Patenting ProcessWhat Happens After a Patent Application is Submitted?(1) A patent examiner is assigned from an appropriate technical area(2) Examiner conducts a search for existence of prior art(3) Examiner may reject invention in part or whole as being similar to and/or obvious; Examiner may also reject due to unclear invention description(4) Applicant/Attorney files a formal response to Examiner’s action; A reduction in scope of the claims may result(5) Steps (3) and (4) repeat until a decision is reached or a final rejection is received(6) Either a PATENT ISSUES or a decision is made to file a continuation or an appeal to the Patent Appeal Board
17 American Invents Act (AIA) First-Inventor-to-File Prior to passage of the American Invents Act (AIA), the U.S. employed a “First to Invent” system.The AIA changed that standard to a first-inventor-to-file system on March 16, 2013.- Not a true “first-to-file” system- Named inventor must be a true inventor; filing by a non-inventor is still prohibited.- The application with earlier “effective filing date” prevails.
18 American Invents Act (AIA) Effective Filing Date Actual filing date of the patent or application for patentOREarliest claimed priority dateParis Convention priorityPCT practiceU.S. continuation and divisional practice
19 AIA – Inter Partes Review (IPR) Created by AIA, effective September 16, 2012 (but applicable to all patents)Replaces Inter Partes ReexaminationTribunal is the Patent Trial and Appeal Board (PTAB) in USPTOWho can request? Anyone not the patent owner (must identify real party in interest)What is the basis? Prior art under Sections 102 and 103 consisting of patents or printed publicationsWhat is the standard to initiate? “A reasonable likelihood” of invalidity of at least one challenged claimClaims are given their “broadest reasonable construction in light of the specification”What is the cost? A request fee of $9,000 (partially refunded if IPR not ordered), and $14,000 if a review is institutedWho participates? Once an IPR is initiated, both the patent owner and the requester participate
20 AIA – Inter Partes Review (cont.) When can IPR be requested? Anytime, except:Not within nine months of grant or until a PGR has concludedNot if petitioner has filed a civil action challenging validity of a claim of the patentNot if petitioner was sued for infringement of the patent more than one year beforeHow long can an IPR last? One year by statute, with a 6-month extension for “good cause”What is the petitioner’s burden of proof? Must prove unpatentability by a preponderance of the evidenceIs there estoppel? Yes, if the IPR results in a final decisionAs to any ground raised or that reasonably could have been raisedOn claim-by-claim basisIn the USPTO, a civil action, and the ITC
21 AIA – Inter Partes Review (cont.) Discovery is available but limitedNo “fishing expeditions”A protective order is available to protect confidential informationClaim amendments by the patent owner are limitedOne motion to cancel a challenged claim and/or propose a reasonable number of substitute claimsClaims cannot be broadenedIntervening rights available for amended claimsSettlement is possible between the patent owner and a requesterIn writing and filed with the USPTONo estoppel appliesAppeal of a final PTAB decision is to the Court of Appeals for the Federal Circuit (CAFC)
22 AIA – Inter Partes Review (cont.) Benefits:Compared to a patent litigation in federal court, IPR is:Faster (12-18 months versus years)Less expensive ($100, ,000 versus 10X that, or more)Focused on validityHandled by a tribunal experienced with patents and technology (versus a judge or jury)No presumption of validity (prove invalidity by preponderance of evidence versus clear and convincing evidence)Claims given “broadest reasonable construction” versus interpretation by one skilled in the artDisadvantages:More costly than ex parte reexaminationEstoppel applies (but estoppel also applies in litigation)Much more limited discovery than in litigation
23 AIA - Post-Grant Review (PGR) Created by AIA, effective September 16, 2012 (but only applies to patents with an effective filing date of March 15, 2013 or later)Tribunal is the PTABWho can request? Anyone not the patent owner (must identify real party in interest)What is the basis? Any ground of invalidity under:Section 101 (patentable subject matter)Section 102, 103 (prior art)Section 112 (enablement, written description - - but not best mode)“A novel or unsettled legal question that is important to other patents or patent applications”What is the cost? A request fee of $12,000, plus $18,000 if a review is instituted
24 AIA - Post-Grant Review (cont.) When can a PGR petition be filed? Only within nine months of patent issuance, except:Not if petitioner has filed a civil action challenging validity of a claim of the patentWhat is the standard to initiate? Invalidity of at least one challenged claim is “more likely than not”Like IPR, claims are given their “broadest reasonable construction in light of the specification”Is there estoppel? Yes, if the PGR results in a final decisionAs to any ground raised or that reasonably could have been raisedOn claim-by-claim basisIn the USPTO, a civil action, and the ITC
25 AIA - Post-Grant Review (cont.) Like an IPR, a PGR:Must conclude within one year (with a 6-month extension possible for “good cause”)Imposes a burden of proving invalidity by a preponderance of the evidenceAllows both the patent owner and the requester to participateAllows limited discoveryAllows the patent owner to make a motion to cancel any challenged claim and/or add a reasonable number of (not broader) substitute claimsProvides intervening rights for amended or new claimsAllows for settlementMay be appealed to the CAFC
26 AIA - Post-Grant Review (cont.) Benefits:Generally the same as for IPR, but more invalidity grounds may be assertedCan track competitors’ patent applications and “oppose” dangerous patents when they issueDisadvantages:Generally the same as for IPR, but estoppel is broader (because more invalidity grounds are available)Limited window of time to request (9 months)