1. 2011 US Patent Law Reform & A Global Prosecution Strategy by Lowe Hauptman Ham & Berner LLP Suite 300 1700 Diagonal St Alexandria VA 22314 Tel. (703) 684-1111 Fax. (703) 518-5499 www.ipfirm.com © 2011 – All Rights Reserved

2. Lowe Hauptman Ham & Berner, LLP 2011 U.S. Patent Law Reform 2/18 The 2011 America Invents Act (“AIA”) –On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act, H.R. 1249, 112th Cong. (2011) –Seeking to harmonize U.S. patent laws with other systems around the world and promote strong patents to spur economic growth, the AIA represents the first major overhaul to the U.S. patent system in sixty years.

3. Lowe Hauptman Ham & Berner, LLP Patent Law System Harmonization Many of the changes would harmonize U.S. patent laws with those of Europe, China and other nations. – –First-Inventor–to-File system: First-Inventor-to-File Amendments New Definition of Prior Art Derivation Proceedings BK

4. Lowe Hauptman Ham & Berner, LLP First-Inventor-to-File Amendments – –The first inventor to file, subject to a grace period, will be entitled to a patent regardless of another’s prior invention. – –The first-inventor-to-file regime impacts applications with an effective filing date on or after March 16, 2013, eighteen months from the enactment of the Reform Act. BK

5. Lowe Hauptman Ham & Berner, LLP New Definition of Prior Art – –35 U.S.C. § 102 (a) “ 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 …, or in an application for [U.S.] patent published or deemed published …, 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.” BK

6. Lowe Hauptman Ham & Berner, LLP – –What’s Different in the New §102(a)? Focus now on “effective filing date” Removal of territorial restrictions – –Public Use or On Sale activities outside of United States may now constitute prior art Elimination of the Hilmer doctrine – –An application's foreign filing date under §119 could be used to antedate prior art but could not be used as affirmative prior art under current§102(e). In re Hilmer, 53 C.C.P.A.1288. (1966) – –Under AIA, an application is "effectively filed" for the purposes of §102(a)(2) (analogous to current § 102(e)) on the date of actual filing in the U.S. or on the date that an application under §119 was filed. BK

7. Lowe Hauptman Ham & Berner, LLP – –Grace Period Applicable – –Inventor was first to disclose – –Inventor’s “disclosure” was within one year of filing date A patentee’s disclosures about his or her invention will not act as prior art that potentially invalidates the patent. These early disclosures may serve to inoculate the patent from third-party prior art during the period from the disclosure to the patent’s effective filing date (up to one full year). BK

8. Lowe Hauptman Ham & Berner, LLP Derivation Proceedings – –Replacing interference proceedings with derivation proceedings – –A new PTO procedure at s. 135 heard before Patent Trademark and Appeal Board – –Petition to USPTO stating that the inventor of an earlier-filed patent application derived the invention from an inventor named in the later-filed patent application. “within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention” BK

9. Lowe Hauptman Ham & Berner, LLP Benefits to Chinese Applicants: First-Inventor-to-File Simplifying and reducing costs associated with the patenting process in certain respects, e.g., by removing the necessity for interference proceedings The filing strategies under the Hilmer doctrine, e.g., abolishing the foreign filings altogether in favor of filing U.S. provisional applications or filing concurrent foreign and U.S. provisional applications, will no longer be required under the AIA BK

10. Lowe Hauptman Ham & Berner, LLP Strategies to Develop: First-Inventor-to-File Although AIA brings the U.S. closer to the first-to-file system, the U.S.'s incomplete removal of the concept of inventorship requires Chinese patent applicants and practitioners to face with another, albeit similar, system. Strategies to develop: – –Short window to educate inventors about elimination of grace period and importance of filing application prior to public disclosures – –Immediately develop safeguards against inadvertent public disclosures – –Beware of enablement and written description issues — in the rush to get a filing date, it may be difficult to quickly generate an adequate description of the invention and methods of making or using the invention BK

11. Lowe Hauptman Ham & Berner, LLP Early Challenges to Patents AIA provides distinct procedures, or "windows" of opportunity, to allow early challenges to pending applications and newly issued patents : – –Preissuance submissions by third parties. – –Post-Grant Review – –Inter Partes Review BK

12. Lowe Hauptman Ham & Berner, LLP Preissuance submissions by third parties – –A revised procedure that allows a third party to submit materials to the USPTO that are of potential relevance to the examination of a pending application, along with a concise description of the asserted relevance of each submitted document. – –Timing: before the earlier of a notice of allowance or the later of (1) six months after the date of first publication or (2) the date of the first rejection. BK

13. Lowe Hauptman Ham & Berner, LLP Post-Grant Review – –A procedure similar to the EPO opposition proceeding – –Within nine months after grant or reissue, a Petitioner may request to cancel one or more claims of a patent on any ground except the best mode requirement. Inter Partes Review – –After the nine month window closes, third parties will be able to challenge a patent through an inter partes review to be conducted by Patent Trial and Appeal Board within one year. BK

14. Lowe Hauptman Ham & Berner, LLP Post-Grant Review V.S. Inter Partes Review BK Post-Grant ReviewInter Partes Review Timingwithin 9 months of issuance after 9 months from issuance or the termination of post- grant review Available arguments any basis for invalidityprior art patents and printed publications Threshold for institution: It is “more likely than not that at least 1 of the claims challenged” is unpatentable. “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims.” Discoveryevidence directly related to factual assertions depositions of witnesses,and what is otherwise necessary

15. Lowe Hauptman Ham & Berner, LLP Benefits to Chinese Applicants: Early Challenges to Patents Cost savings: Challenging a patent in prosecution is more cost effective than challenging a patent in litigation A new opportunity: at least for post-grant review, a new opportunity to challenge an issued patent based on any invalidity theory BK

16. Lowe Hauptman Ham & Berner, LLP Strategies to Develop: Early Challenges to Patents Implement a system of monitoring the applications of competitors to allow the entity to submit a concise description of each submitted document during patent prosecution and thus make the Examiner aware of relevant prior art. Entities should first consider post-grant review as an initial strategy. Due to the higher standard for granting Inter Partes review and the limited scope of review allowed therein, the benefits of inter partes review should be carefully considered. BK

17. Lowe Hauptman Ham & Berner, LLP Benefits to Chinese Applicants: Other notable changes Micro Entity –75% reduction in applicable fees –Requirements for micro entity status Small entity Not named on more than 4 previous US applications Gross income in previous year < 3 x median household income Has not transferred and under no obligation to transfer ownership interest to non micro entity Prioritized Examination: – –a fee of $4800 (50% reduction for small entity) –Application given “special” status Maximum 4 Independent claims; 30 total claims Maximum of 10,000 requests granted per year No extensions of time allowed during prosecution BK

18. Lowe Hauptman Ham & Berner, LLP Benefits to Chinese Applicants: Other notable changes Supplemental Examination by Patentee – –Patent owner may provide potentially material prior art to the PTO after the patent is granted. – –The information must be brought to the PTO and the supplemental examination must be completed prior to litigation. Best Mode – –Eliminates “failure to disclose the best mode” as a basis for invalidity of an issued patent. BK

19. Lowe Hauptman Ham & Berner, LLP A Global Prosecution Strategy Synchronization prosecution in multiple jurisdictions – –Filing in multiple jurisdictions; – –Getting Office Actions from multiple jurisdictions at the same time; – –Making responses with the same information and at the same time. BK

20. Lowe Hauptman Ham & Berner, LLP SynchronizationProsecution Synchronization Prosecution The tools of synchronization - make possible – –a request for examination must be made separately from the filing of the application. – –accelerated examination allowed. Example: Synchronization prosecution in USPTO, JPO, and KIPO – –The synchronization prosecution is not limited to application in these countries. Right now, many jurisdictions, including, the UK, Germany, and Europe, have PPH pilot programs. BK

21. Lowe Hauptman Ham & Berner, LLP 21/18 A step-by-step guide to synchronization prosecution JPO/KIPO [Defer the examination] USPTO [Office action is issued] JPO/KIPO [Accelerate the examination] USPTO [Delay the response (by up to six months)] JPO/KIPO [Office actions are issued (two to three months)] ALL Respond to all office actions at the same time considering all cited references

22. Lowe Hauptman Ham & Berner, LLP Benefits: – –Providing a more complete picture of the prior art to take into consideration when crafting amendments and arguments – –Time-saving and needlessly duplicated work avoided – –Improving consistency of responses and claims BK

23. Lowe Hauptman Ham & Berner, LLP Synchronization Prosecution : For Chinese Applicants Statistics on applications to USPTO, JPO, KIPO by Chinese Applicants BK

24. Lowe Hauptman Ham & Berner, LLP Quality? – –Not all patents are equally effective at protecting IP. Beyond merely obtaining a registration, it is vital to obtain a strong patent that can stand up to validity attacks and survive litigation. BK

25. Lowe Hauptman Ham & Berner, LLP Applicable of synchronization prosecution for Chinese applicants – –No acceleration examination system in China – –A foreign prosecution policy for Chinese companies to apply outside China. BK

26. Lowe Hauptman Ham & Berner, LLP Thank You!