Patent Law Under the America Invents Act Peter J. Timbers, PhD Patent Attorney Casper, Wyoming Schwartz, Bon, Walker & Studer, LLC

Disclaimer This presentation is provided for general informational only. The information is not legal advice for your particular legal needs. Always, always, always consult with an attorney for specific related to your specific business and intellectual property needs. All images of trademarked, copyrighted, and/or patented material in this presentation is for informational and educational purposes only.

PATENT VARIETIES Utility Patent – Protects inventions. Useful systems, methods, apparatus and formulations Design Patent – Protects ornamental designs Plant Patent – Protects invented or discovered and asexually reproduced distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state.

PATENT PROCESS Search – Use Wyoming Research Product Center to search publication databases Provisional Patent Application – ONE year only must disclose - Enabling Non-Provisional Patent Application – Claims, Claims, Claims - Enabling USPTO Rejections – a battle Issuance – The WAR

Claims ???

ENABLEMENT

PRIOR ART ????? All information that has been available to the public in any form before a given date that might be relevant to a patent's claims of novelty and non-obviousness. If an invention has been described in the prior art, a patent on that invention is not valid. DISCLOSURE, NOT CLAIMS

America Invents Act Conception – filing – derivation – grace period – public use – onsale

America Invents Act March 16, 2013

America Invents Act NOW First-to-File “First-to-Invent” - novelty and non-obviousness determining at conception, not filing. The rest of the world is first to file. NOW “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.”

Prior Art Prior art is now the effective filing date of the application-in-question and dates of conception and reduction to practice are no longer relevant. – except for grace period and derivation. Someone else invented your idea first ??? - Irrelevant , except for: derivation proceeding; and/or whether that other party created prior art. (Prior commercial users will have limited prior user rights.)

Derivation Proceedings A derivation proceeding requires that an applicant for patent file a petition to institute the proceeding. The petition must set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner. The petition must be made under oath and supported by substantial evidence. The petition must be filed within 1 year of 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. In a petition for a derivation proceeding, the petitioner must (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application. A derivation may be instituted where the petition sets forth a basis for finding that the inventor named in an earlier application derived the claimed invention and there is substantial evidence to support the allegations raised in the petition. The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensuing derivation proceeding.

102 (b) Grace Period Pre-filing disclosures of the “claimed invention" by the patent applicant are not prior art against the inventor as long as the application is filed within one year. Despite that "claimed invention" safe-harbor language, disqualify all inventor-disclosed subject matter, even if the disclosure only suggests portions of the invention or motivations behind the invention. Extreme caution for publish-early strategy - that publication will likely negate the possibility of non-US patent rights.

102 continued A prior-filed US patent application will continue to serve as prior art once it is either published or patented and will have a prior art date of its earliest priority filing date that includes the relevant disclosure. Foreign applications will only count as prior art as of their publication date unless versions of those applications are filed in the US. Example: Korean patent application considered prior art in the US as of its publication date. However, if a US application is filed that claims priority to that Korean application then the US application (once it publishes) is considered prior art as of the date that the Korean application was filed.

102 continued Large companies filing many patent applications receive additional relief from their own prior art under 102(b)(2)(C) and 102(c). Basically, a company's prior filed patent application will not count as prior art (for any reason) against the company's later-filed application (so long as the prior application has not published or issued as of the filing date of the later application). If the later-filed application was developed as part of a joint research agreement, then the law will negate the prior art status of prior filed applications of any of the parties to the joint research agreement (so long as the prior application(s) were unpublished as of the filing date of the later application).

Publication prior to filing application: One year grace period before invention falls into public domain – No rights attached. Publication prior to filing application: Patent application filed within one year Possible foreign patent rights implications An early public disclosure by the inventor can prevent a later disclosure or application of another from barring the patentability of the inventor’s subsequent application directed to the earlier-disclosed subject matter and filed within the grace period.

Strategic Considerations Race to the Patent Office to be first to file. Tension with disclosure requirements in § 112, to provide sufficient enabling description and to support full breadth of claims Commonly-owned patents will be exempt as 102(a)(2) prior art Consider whether to file follow-on applications as stand-alones (rather than as CIPs) to maximize patent term Prior art searching How to identify worldwide sales and public uses Laboratory notebook practices

“Public Use” & “On Sale” “On sale” and “public use” activities are claim elements found from prior art arising from anywhere in the world. The USPTO interprets "on sale" activity to be: 1. public sales or 2. public offers for sale.

AIA Assignee prosecution: Inventors can assign (e.g. sell or transfer) their patent rights to a third party entity. Traditionally these third parties (assignees) could move the application through the Patent Office with certain authorizations from the inventor. Original inventor still identified. Assignment to a third party, authorizes third party to take control the application as it moves through the Patent Office. Resultant patent issues in the third party’s name.

America Invents Act Personal infringement defense based on prior use. The act provides a broader “prior use” defense, for use in cases in which a business is using a process or machine as part of a process, and has been doing so for more than one year prior to the effective filing date of a patent that would cover the process or machine. The defense is personal to the user, and can only be transferred with the business to which the process or machine relates. The defense addresses situations in which private first-users have been accused of infringement of another’s later-filed patent, where the non-public first use cannot be used to invalidate the patent.

America Invents Act Post-grant review of patents: Two separate proceedings are created by the new law: The “inter partes” review permits allegations of invalidity pertaining to prior art. The “post-grant” review permits allegations of invalidity on any ground in the statute, and must be filed within nine months of the patent’s issuance.

America Invents Act Supplemental examination: Supplemental examination is not a Re-examination. However, if the Patent Office discovers a substantial new question of patentability during a supplemental examination, a re-examination will be ordered using the current re-examination procedure. A supplemental examination can be used to “cure” what might be inequitable conduct in the original prosecution, if the previously unconsidered or incorrect information was considered or corrected in the supplemental examination.

America Invents Act Micro Entity Filing fees: 75% Discount on Large Entity Fees A “micro entity no more than 4 applications, and h as an income that is less than certain specified limits. $250 for filing, examination and search fees.

America Invents Act Prioritized Examination Technologies important to American competitiveness $4,800 fee.

America Invents Act Satellite Offices and Pro Bono Congress requires the USPTO to establish three satellite offices within three years of the date of enactment Increase outreach activities, enhance employee retention, improve recruiting, decrease the application backlog, and improve examination quality.  Dallas, San Jose, Detroit Establish pro bono programs for financially under-resourced inventors and small businesses.  A pilot program in Minnesota was launched in June of 2010 to provide legal services to help such individuals and businesses obtain solid patent protection. 

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