Joint Meeting of PIPLA and NJIPLA February 7, 2012 Kenneth N. Nigon RatnerPrestia 1

Overview  10 Year / 1 Year Statute of Limitations for Disciplinary Proceedings  Oaths and Declarations  Supplemental Examination 2

Disciplinary Proceedings  Disciplinary Proceeding Must Be Commenced By The Earlier Of 10 years after the date of the misconduct 1 year after the date on which the misconduct is made known to the PTO  Timeline 3 Complaint Preliminary Screening Practitioner Response Investigate Submit Case to Committee on Discipline 60 Days30 Days 7 Months SOL Begins

Disciplinary Proceedings  Start of Statute of Limitations After Receiving Practitioner’s Response Balances Need for Speedy Resolution Opportunity for Thorough Review  Statute: “1 year after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office”  PTO Justifies 90 Day Delay As Needed To Determine If Allegation Has Merit 4

Oath and Declaration  Inventorship Important For Examination Determines prior art Inventorship needs to be established before examination  Power of Attorney Power from a parent application is valid in the child application if no new inventors in child Power granted by inventors is invalid if an inventor is added Power granted by assignee remains valid 5

Oath and Declaration  Inventor Is Deceased Or Incapacitated Essentially the same as current practice No petition for assignee  Inventor Cannot Be Located or Refuses to Sign Essentially the same as current practice Need to prove proprietary interest Need to show that you could not contact the inventor after diligent effort Need to send non-signing inventor a copy of the application papers 6

Oath and Declaration  Changes Assignee or, if necessary to preserve rights, person showing proprietary interest may sign declaration on behalf of non-signing inventor Non-signing inventor who later signs an oath or declaration cannot revoke power of attorney 7

Oath and Declaration  Correction of Inventorship  “No Deceptive Intent” statement no longer required  National Phase Application Same procedures may be used as under rule 48(a) to correct inventorship  Foreign Priority No longer required on Declaration Now required on Application Data Sheet 8

Oath and Declaration  Oath and Declaration No longer need to be “first inventor” Still need to be “original inventor” Name simplified; Citizenship no longer required Statement that inventor has reviewed and understands the application must be true for any child application including CIP’s if copy of declaration is used Declaration statements may be made in an assignment 9

Oath and Declaration  Reissues  Assignee May Sign Declaration  Must Identify Any Broadened Claims New Declaration from Inventors  “No Deceptive Intent” Statement No Longer Required 10

11 Supplemental Examination  Method to Cleanse Patent Supplemental Examination Timeline Supp Exam Request Complete 3 mo Certificate Issued SNQ No SNQ Ex Parte Reexam*

Supplemental Examination  Two Phases  Supplemental Examination Fee - $5,180 + $16,120 = $21,300. If no SNQ $16,120 Will Be Refunded Other Requirements listed in 37 C.F.R. § 1.610(b)(1) – (b)(12) 10 “Items of Information” Detailed explanation of how each Item of Information is relevant to each issue Multiple Requests (Each With a Separate Fee) May Be Filed If More Than 10 Items 12

Supplemental Examination  Items of Information Must Be In Writing Supporting Documents Containing Information Relevant to Examination - Examples Publication Corrected 132 Declaration Statement Concerning § 101 or § 112 Non-English Documents Must Be At Least Partially Translated Documents Longer Than 50 Pages Must Be Summarized 13

Supplemental Examination  Only Patent Owner May File  No Third Party Involvement  No Amendments  No Interviews  Certificate Issued Three Months After Complete Request Is Received  Does Substantial New Question of Patentability (SNQ) Exist? 14

Supplemental Examination  Ex Parte Reexamination if SNQ is found No Patent Owner’s Statement Not Limited to Printed Publications Increased Petition Fees - $1,930 Applies to Ex Parte and Inter Partes Reexams  New Fees for Ex Parte Reexamination Not Associated With Supplemental Examination $17,750 All But $4,320 Refunded if Request is Refused 15

Supplemental Examination  Fraud  If The PTO Becomes Aware of Material Fraud During Supplemental Examination or Ex Parte Reexamination It Shall Refer The Matter To The Attorney General  “Material Fraud” For Purposes of The Statute Is Narrower Than Therasense Inequitable Conduct 16

Supplemental Examination  Fees  Fees set under 37 C.F.R. §41(d)(2) Must be set to recover average cost of service  Also have fee setting authority under §10(d) and (e) of AIA Rules for this authority are not in place  Fees will be reviewed when rules for §10 authority are final 17

Supplemental Examination  Estoppel  Patent Shall Not Be Held Unenforceable For Information Reviewed In Supp Exam and Associated Ex Parte Reexam Proceeding  Two Exceptions Actions under Food, Drug and Cosmetics act brought before Supplemental Examination Defenses in ITC and Patent actions considered in a Supp Exam unless Supp Exam (and Reexam) completed before Action 18

Thank You 19