1. 1 1 AIPLA Firm Logo American Intellectual Property Law Association Imminent Changes to the US Patent Law Pre-Grant Patent Practice Under the AIA Alan J. Kasper IP Practice in Europe Committee European Tour March 11-15, 2013

2. 2 2 AIPLA Firm Logo Imminent Changes Under the AIA Key Prosecution Provisions –Grace Period and Prior Art Derivation Proceedings Third Party Submissions Fees Key Tips

3. 3 3 AIPLA Firm Logo 5 Key Take-Aways 3

4. 4 4 AIPLA Firm Logo KEY Prosecution Provisions

5. 5 5 AIPLA Firm Logo New Standards For Filing 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 – where Section 112 disclosure is satisfied –Interferences - are eliminated except for applications filed before the effective date –Derivation Investigation Proceeding - is created 5

6. 6 6 AIPLA Firm Logo First-to-Invent vs. First-Inventor-to-File X CONCEIVEDX FILED Y CONCEIVED X RTP Y RTP Y FILED First-to-Invent: X Can Win First-Inventor-to-File: Y Wins (If Independent Inventor) 6

7. 7 7 AIPLA Firm Logo What You Should be doing Now! Inventor Identification – maintain current practices and records of invention to comply with old and new law Effective Filing Date – establish guidelines to ensure that all application filings in all countries comply with 35 USC 112 Interferences – continue to consider a part of a competitive strategy for several years Derivation Investigation Proceeding – establish systems for (1) keeping records of disclosures (private and public) by inventors and (2) independent development of inventions – lab notebooks are still important 7

8. 8 8 AIPLA Firm Logo New Standards for Novelty Revised Definition of Prior Art –Eliminates Content of Original Sections 102(a) and 102(c) – 102(g) –New Section 102(a)(1) and Old Section 102(b) standards Keeps "On Sale" & "Public Use" –ISSUE: can a confidential offer for sale be prior art under the AIA? PTO Guidelines say: NO!! What about the Courts ??? Keeps "Published and Patented" Broadens by Adding “otherwise available to public” 8

9. 9 9 AIPLA Firm Logo New Standards for Novelty Revised Definition of Prior Art –New Section 102(a)(2) includes earlier filed application naming another inventor ( substitute for old 102(e) –But Section 102(b) and (c) Excludes earlier inventor-derived information or inventor derived public disclosure Excludes commonly owned patents and applications Excludes joint research agreements (CRADA) 9

10. 10 AIPLA Firm Logo Elimination of Hilmer Doctrine - §102(d) Eliminates the need for Current foreign applicant practice for prior art date: –file U.S. provisional application at the same time as foreign priority application to get earliest § 102(e) date. Following US application publication, the disclosure has retroactive availability as prior art as of the effective filing date Available as prior art for both novelty and obviousness purposes 10

11. 11 AIPLA Firm Logo FITF Framework 11 Prior ArtExceptionsLabel §102(a)(1)§102(b)(1)(A)Grace Period Inventor Disclosures & Grace Period Non-Inventor Disclosures §102(b)(1)(B)Grace Period Intervening Disclosures §102(a)(2)§102(b)(2)(A)Non-inventor Disclosures §102(b)(2)(B)Intervening Disclosures §102(b)(2)(C)Commonly Owned Disclosures

12. 12 AIPLA Firm Logo New Grace Period More Limited Grace Period Under New Section 102(b) –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 another who obtained from inventor – e.g., Assignee Disclosure (including in applications) by or derived from the Inventor IF Previously Publicly Disclosed by the Inventor If Commonly Owned before filing –Owned or subject to duty to assign –ISSUE: can publically disclosed subject matter have more than an insignificant difference from application content?? 12

13. 13 AIPLA Firm Logo Narrow §102(b)(1)(B) and §102(b)(2)(B) Grace Period Under New Examination Guidelines For Exception to Apply, subject matter previously publicly disclosed by inventor: –Need NOT be made using the same "mode" as an intervening disclosure –Need NOT be a verbatim disclosure of the intervening disclosure –Need NOT be of same scope as intervening disclosure – the subject matter of the intervening disclosure may be broader –BUT – subject matter in intervening disclosure that was not previously publicly disclosed by inventor is available 13

14. 14 AIPLA Firm Logo Narrow §102(b)(1)(B) and §102(b)(2)(B) Grace Period Under New Examination Guidelines Exception Applicable to Subject matter disclosed- USPTO interpretation is that: –The "subject matter disclosed" previously by inventor (or joint inventor or another who obtained subject matter disclosed by the inventor or joint inventor) must be the "same subject matter" as the prior art disclosure, and –Exception does not apply if there are more than "mere insubstantial changes, or only trivial variations" between the "subject matter" disclosed by the inventor and the "subject matter" in the intervening disclosure prior art –IN SUM - NO Grace Period for Obvious Variants!! 14

15. 15 AIPLA Firm Logo New Procedure to Disqualify Prior Art Under New Rule 130 Affidavit or Declaration to demonstrate attribution or prior public disclosure of inventor's own work before filing - facts not conclusions! –Unequivocal statement he/she invented the subject matter –Detailed explanation of what was disclosed if not a publication –Reasonable explanation of additional authors Similar to disqualification procedure in MPEP 2132.01 15

16. 16 AIPLA Firm Logo Public use (12 mos.) U.S. Patent Effective Filing Date Public use NEW Grace Period: §102(b)(1)(A) and (B) Apply Disclosure “by or obtained from” an INVENTOR Later Disclosure by ANYONE § 102(b)(1)(A) § 102(b)(1)(B) 16

17. 17 AIPLA Firm Logo A Pat. App. Filed 12 mos. B’s U.S. Patent B's Public Use NEW Prior Art Provisions: Sword/Shield Disclosure “by or obtained from” Inventor B Filing by independent Inventor A § 102(b)(1)(A) § 102(b)(2)(B) § 102(a)(1) Effective Filing Date of B’s Patent App. 17

18. 18 AIPLA Firm Logo Strategy for Filing New Applications: New Filing of regular, provisional, PCT or foreign application to get old law grace period Act Signed Section 3(n)(1)(A) provides an 18 month window before new §102 applies to new applications Applications claiming priority from applications filed in the Window may have old law grace period 18 -month Window Closes Continuation, Divisional and CIP Filing to get old law grace period – no claim with effective filing date (Section 101(i)) after the window closes 18

19. 19 AIPLA Firm Logo New USPTO Rules for Transition Period For applications, filed on or after March 16, 2013, new 37 CFR 1.55 (foreign priority) and 37 CFR 1.78 (domestic benefit) would require a statement that the application includes: –At least one claim with an effective filing date on or after March 16, 2013; or –No claims with an effective filing date on or after March 16, 2013, but discloses subject matter not in the previous application. 19

20. 20 AIPLA Firm Logo New USPTO Rules The statement would be required: –within 4 months of US filing date, or –within 16 months of earliest effective filing date (whichever is later) Example statements: –“upon reasonable belief, this application contains at least one claim with an effective filing date on or after March 16, 2013” –“upon reasonable belief, this application contains subject matter not also disclosed in application no. XXX” 20

21. 21 AIPLA Firm Logo What You Should be doing Now File on or before March 15, 2013 –New applications and CIPs NOTE – pre-AIA Section 102(g) also will apply if there is any claim having an effective filing date before March 16, 2013 or is a Con/Div/CIP of an application having a claimed invention with such effective filing date Develop a strategy for using pre-deadline filed applications as a basis for interferences 21

22. 22 AIPLA Firm Logo DERIVATION PROCEEDINGS 22

23. 23 AIPLA Firm Logo Derivation Proceedings 35 USC §135(a) - (HR 6621) What Patents or Applications – any earlier filed pending application or issued patent What Submission – Petition to Initiate Derivation Proceeding Who Can Submit –Applicant of a pending application Application may be filed after publication of earlier one When – Within one (1) year of the deriving application’s first publication of claimed invention : –(1) U.S. Application –(2) PCT Application naming the US (may not be in English) –(3) US Patent 23

24. 24 AIPLA Firm Logo Derivation Proceedings What Content –Support by Substantial Evidence Date of Invention Sufficient Access by Deriver Earlier filing was Unauthorized –Claim-by-claim showing Petitioner’s pending claim is substantially same as Respondents claim Respondent’s claimed invention was actually disclosed to Respondent –Concise description of asserted relevance of each document –Fee ($400) –Corroborated Affidavit Demonstrating Communication of the claimed invention to the Earlier Applicant 24

25. 25 AIPLA Firm Logo Derivation: What You Should be Doing Now! Establishing Procedures and Protocols –For monitoring and reviewing published applications of (1) joint researchers, (2) employers of departed researchers, (3) competitors that may merit prior art searching and submissions –Recording all inventive activity and disclosure activity –For timely identification of (1) derived inventions, (2) identification of own relevant pending applications or filing new applications and (3) submission of petition with other relevant documents to the USPTO Establishing Teams –Staff or vendors that can provide the necessary functions Establishing Necessary Budget 25

26. 26 AIPLA Firm Logo PREISSUANCE SUBMISSIONS BY THIRD PARTIES 26

27. 27 AIPLA Firm Logo Third Party Submissions - 35 USC §122(e) 37 CFR 1.290 What Applications – any pending or abandoned application –No issued patents, reissue applications or reexamination proceedings What Material - Any printed publication of relevance –Patent, published application or publication –Need not be prior art – i.e., office action or reply in another country Who Can Submit –Any third party – no duty of disclosure –ID of real party not required – ID of submitter is required 27

28. 28 AIPLA Firm Logo Third Party Submissions When – Before earlier of: –(1) Allowance and –(2) Later of: (A) 6 months after publication or (B) first rejection What Content –Copies (non-USPTO documents) and translations –Concise description of asserted relevance of each document –Fee (first 3 or fewer free; every 10 documents $180) –Statement of Compliance –Listing (PTO/SB/429) How –Dedicated web interface or paper – no fax –NO service on applicant required 28

29. 29 AIPLA Firm Logo Submission Considered by Examiner USPTO Reviews Submission for Compliance with 35 U.S.C. § 122(e) and 37 C.F.R. § 1.290 Submission Made of Record and Applicant Notified if E-Office Action Participant Submission Discarded Non-compliant Compliant Processing Third Party Submissions Third Party Notified if Email Address Provided with Request for Notification 29

30. 30 AIPLA Firm Logo TIPS: What You Should be Doing Now! Establishing Procedures and Protocols –For monitoring and reviewing published applications of competitors that may merit prior art searching and submissions –For searching or identifying prior art relevant to target applications –For timely submission of prior art and other relevant documents to the USPTO – giving time for resubmission if original is rejected Establishing Teams –Staff or vendors that can provide the necessary functions Establishing Necessary Budget 30

31. 31 AIPLA Firm Logo FEES 31

32. 32 AIPLA Firm Logo NEW USPTO FEES - Effective March 19, 2013 New Fees Generally Set at Cost Recovery –Exceptions to incent Applicant Behavior –Some fees not required to consider cost (Extensions of Time) –New Fees Retain Small Entity Discount (50%) –New Fees Include Micro Entity Discount (75%) Examples of Above Cost Fees: –Issue Fee ($960) –Maintenance fees ($1600 – 1 st stage) 32

33. 33 AIPLA Firm Logo NEW USPTO FEES - Effective March 19, 2013 Examples of Below Cost Fees: –Filing, Search & Examination ($1,600) –RCE ($1,200 – first; $$1,700 – second) –Appeal ($800) after Examiner Answer ($2,800) –Ex parte Reexamination ($12,000) –Inter Partes Review ($23,000 - $9K/$14K – no discount) –Post Grant Review ($30,000 – $12K/$18K - no discount) –Supplemental Examination ($$16,500) 33

34. 34 AIPLA Firm Logo KEY Tips - Prosecution

35. 35 AIPLA Firm Logo Key Actions - Prosecution DERIVATION, GRACE PERIOD AND PRIOR RIGHTS –Maintain records of invention activity –Maintain records of public disclosure NEW PRIOR ART DEFINITIONS – March 16, 2013 –Develop a Filing Schedule and Strategy for Using Old Law –Evaluate Possibility of Interferences Under Old Law THIRD PARTY SUBMISSIONS –Develop a Policy and Strategy for identifying competitor published applications and possibly relevant prior art and submitting art to the USPTO –Budget for New Expenses 35

36. 36 AIPLA Firm Logo Thanks for your attention! Questions? Alan J. Kasper Partner Sughrue Mion PLLC 2100 Pennsylvania Ave. Washington DC 20037 +1-202-293-7060 +1-202-368-5259 (mobile) akasper@sughrue.com