1. Prosecution Group Luncheon March, 2011

2. S.23: Patent Reform Act of 2011 Senate passed 95-5 (3/8); no House action as yet First to File Virtual (Internet) Marking Post-grant Review Supplemental Examination on Owner’s Request Elimination of Best Mode as Invalidity Basis Transitional Review Procedure for Bus. Method Patents Third-party Citation of Art

3. S.23: Patent Reform Act of 2011--First to File Filing Date Prior Art: Did art exist < effective filing date? –Items “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” Nonobvious Subject Matter: analysis as of “effective filing date,” not “time the invention was made” Narrow One-Year Grace Period: exception to prior art –Negates pre-filing disclosures (1) by inventor, (2) derived from inventor, or (3) after inventor had publicly disclosed Patent Races: First-filed wins, not first-to-invent –No more interferences, conception, diligence, RTP, abandon/suppress/conceal –Derivation redressable in court or PTO No Prior User Rights Provision: invalidation via prior invention eliminated; prior user potentially liable for infringement

4. S.23: Patent Reform Act of 2011--“Oppositions” “Inter Partes” Review and “Post-Grant” Review Restrictions if a suit has been filed on patent PTO must provide regulations for proceeding Estoppel Settlement provision (precludes estoppel) Owner may amend claims during proceeding

5. S.23: Patent Reform Act of 2011--“Oppositions” Differences Basis for request –Inter Partes: Under 102/103, based on prior art patents, printed publications –Post-grant: Any ground under section 282(b) [e.g. 102, 103, 112 except best mode] Timing –Inter partes: File after the later of (1) 9 months after grant, or (2) end of post-grant review –Post-grant: File within 9 months after grant

6. False Marking Statute Cut Down Unique Product Sol’ns Ltd. v. Hy-Grade Valve Inc. (N.D. Ohio 2/23/2011) 35 U.S.C. 292: Qui tam suit for false marking, split recovery with U.S. Defendant challenged under “take care” clause of U.S. Constitution Court: 292 “represents a wholesale delegation of criminal law enforcement power to private entities with no control exercised by the Department of Justice”--unconstitutional