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CHANGES: TURN AND FACE THE STRANGER - MODERN TRENDS IN PATENT LAW IN VIEW OF AIA IP Domnitz Law Firm, PLLC Attorneys at Law 3355 West Alabama, Suite 240.

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Presentation on theme: "CHANGES: TURN AND FACE THE STRANGER - MODERN TRENDS IN PATENT LAW IN VIEW OF AIA IP Domnitz Law Firm, PLLC Attorneys at Law 3355 West Alabama, Suite 240."— Presentation transcript:

1 CHANGES: TURN AND FACE THE STRANGER - MODERN TRENDS IN PATENT LAW IN VIEW OF AIA IP Domnitz Law Firm, PLLC Attorneys at Law 3355 West Alabama, Suite 240 Houston, Texas Phone:

2 Ira Domnitz – Partner IP Domnitz Law Firm, PLLC Attorneys at law 3355 West Alabama, Suite 240 Houston, Texas Phone: Admissions and Certifications:  USPTO Certified Patent Attorney  Texas Bar – 2002  Massachusetts Bar – 2001  United States District Court- Southern, Eastern and Northern Districts of Texas  United States Court of Appeal – Federal Circuit Work experience: Stephens & Domnitz, PLLC Winstead, PC, Seyfarth Shaw, LLP Duane Morris LLP, The Matthews Firm Sheehy, Serpe & Ware PC Education: Boston University School of Law, Juris Doctorate, May 2000 University of Wisconsin-Milwaukee, December 1995

3 WHAT IS A PATENT VS. TRADEMARK VS COPYRIGHT? In nonstatutory terms here is the difference: Patents protect new inventions, methods, compositions, and innovations. Basically, the science stuff. Trademarks- Act as identifiers of source of goods. You know you are buying a certain product by the brand. Copyrights protect works of art in a tangible medium. Basically the artwork we see and love.

4 CAN YOU HAVE PROTECTION FOR A PRODUCT IN ALL THREE AREAS OF IP? Yes, you can. Take for example a videogame. It can use patentable microchip technology, have copyrightable art and visuals, and feature a branded character such as Mario or Zelda.

5 SO WHY ARE WE HERE? WHAT IS THE AIA? WHY DO WE CARE? The AIA stands for the America Invents Act passed in One of the key aspects of this act is that it modified the patent laws that existed in our country. We should care about this because patents, copyrights and trademarks permeate everything we do, see, and hear about everyday. Your phone. Your car. Your shopping experience. The program I am using to present to you right now.

6 ON MARCH 16, 2013 EVERYTHING CHANGED IN PATENT LAW! THE AIA Actually, everything thing has changed since the passage of the act, but the main focal points of laws concerning patents changed the most drastically on March 16, These include *First to File * Claimed invention * New Obviousness * Derivation proceedings * Prior Commercial Use Defense *Citation of Prior Art and Written Statements

7 FIRST TO INVENT V. FIRST TO FILE – THE BIG RACE Then – Inventor who invents first (with some restrictions) is entitled to get the patent Now- First person to file gets the patent Possible Effects- 1.The small inventors may not have the money to file first. So they may lose their patent rights. 2.The big inventors can rush to the patent office if they even get wind of a potential invention. 3. Is this what we want? How will this affect people?

8 The term “claimed invention” means the subject matter defined by a claim in a patent or an application for a patent” – Sec. 3(j) The term “effective filing date” for a claimed invention in a patent or application for patent means- (a) if subparagraph (b) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or (b) The filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a) or 365(b) or to the benefit of an earlier filing date under section 120, 121 or 365(c) – Sec. 3(i)

9 Why is “claimed invention” defined after the term is used? Under (a) now put claims in provisional applications. Under the old way, you didn’t need to. Under (b) it basically says “see provisional applications” ergo 35 USC 119. Since the term “claimed” is so rampant now, best practice is to probably draft a provisional as complete as a full bore utility application with claims and in the utility style. Provisional vs. Nonprovisional- what is the difference? What should we do? What does it mean?

10 NEW OBVIOUSNESS ?? WHAT IT SAYS?? New Law 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. 35 U.S.C § 103(a). Old Law A patent may not be obtained... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains U.S.C. § 103(a).

11 NEW OBVIOUSNESS – WHAT IT MEANS? Subject matter v. Claimed invention Not so much case law yet. Does it follow KSR? Is the TSM test still there? Do we only look at claims now? In the Prior Art too? Also what does “manner in which the invention was made” mean? The real world effect on prosecution is not as substantive as first feared.

12 New Law The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section. 35 U.S.C. § 291.

13 It seems to say that if Inventor 1 gets a patent but Inventor 2 also gets a patent that was derived from Inventor 1, with an earlier “born on date” that Inventor 1 can sue Inventor 2 in a derivation proceeding. Huh? Doesn’t this just mean that if Inventor 2 steals from Inventor 1 that Inventor 1 can sue him? Isn’t Inventor 2 just conducting fraud on the USPTO? Why was this important for the AIA?

14 PRIOR COMMERCIAL USE DEFENSE- WHAT IT SAYS A person shall be entitled to a defense under section 282(b) with respect to subject matter consisting of a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted against the person if— (1)such person, acting in good faith, commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use; and (2)such commercial use occurred at least 1 year before the earlier of either— (A)the effective filing date of the claimed invention; or (B)the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b). 35 U.S.C. § 273

15 PRIOR COMMERCIAL USE DEFENSE 1) commercially used the subject matter in the United States internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use; and (2)such commercial use occurred at least 1 year before the earlier of either— (A)the effective filing date of the claimed invention; or (B)the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b). 35 U.S.C. § 273 So you need to be practicing it one year before the patent was filed!!!! So how do you know on any filed application if it will be granted? Should you stop using a potentially infringing device once a patent is published?

16 CITATION OF PRIOR ART AND WRITTEN STATEMENTS 35 USC § 122 – Preissuance Submissions § 122(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.— (1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—patent application writing (A) the date a notice of allowance under section 151 is given or mailed in the application for patent; orapplication (B) the later of— (i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or (ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent. (2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall— (A) set forth a concise description of the asserted relevance of each submitted document; (B) be accompanied by such fee as the Director may prescribe; and (C) include a statement by the person making such submission affirming that the submission was made in compliance with this section. 35 U.S.C. § 122 – What it says –

17 Old Way - Patent issues prior to inter partes examination. New Way – Start fighting a patent application the minute it publishes. Effect – Big inventors can send in prior art whenever they want and force small inventors to fight for the patent or abandon it. Effect – Big Inventors will fight each other too trying to keep patents from issuing on key technologies.

18 The patent law has changed. The first to file system will probably favor the big inventor The ability to cite to prior art prior to issuance favors big inventors The prior art use defense is actually convoluted and may even be incomprehensible

19 CONCLUSIONS There is minimal case law yet on these issues. Patent filings should be done quickly and fully. Prepare for challenges outside of the USPTO from third parties.


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