HOW WILL THE AMERICA INVENTS ACT (AIA) CHANGE THE WAY WE PROTECT AMERICAN IMAGINEERING? Michael A. Guiliana April 24, 2012 Disney’s Grand Californian Hotel

2 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. AIA Makes 3 Major Changes 1.“First-to-File” 2.Eliminates Interferences 3.Post Grant Oppositions Accelerate Patent Filing Process Segregate Patent Applications re March 16, 2013 Deadline Last Call for Interferences Revise Pre-Litigation Checklist with Post Grant PTO Options Consider Monitoring Policy AIA ChangesConsider…

3 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Patent Reform – what needed reforming? What are YOUR thoughts?

4 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Kappos on Keeping Up With the Speed of Business

5 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Kappos on Litigation

6 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Is this what needed reform?!

7 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Patent Monetization Landscape – Key Players

8 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Patent Applications Under First-to-Invent Inventor A Invents IDF Decision to Draft and File Patent App. Filing Date Committee Review of IDF Searching Market Analysis Patent Filing Lag (Can Be Long) USPTO Procedures Inventor B Invents Files Patent Fast “Swear Behind” (37 CFR § 1.131) -or- Interference INVENTOR A WINS!

9 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Patent Applications Under First-to-File Starting March 16, 2013 Inventor A Invents IDF Decision to Draft and File Patent App. Filing Date Committee Review of IDF Searching Market Analysis USPTO Procedures Inventor B Invents Files Patent Fast INVENTOR B WINS! “Swear Behind” (37 CFR § 1.131) -or- Interference Patent Filing Lag (Can Be Long)

10 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Preparations for First-to-File System Inventor A Invents IDF and: Files Patent App., or Files Provisional App. Decision to Draft and File Patent App. Filing Date Committee Review of IDF Searching Market Analysis USPTO Procedures Inventor B Invents Files Patent Fast INVENTOR A WINS! Patent Filing Lag (Can Be Long) Reduce Your Patent Lag Provisional Applications - IDFs Patent Application Training

11 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Preparations for First-to-File System Reducing Patent Filing Lag / File First – Vet Later Train R&D Staff to Assist Writing Patent Applications – File IDFs as Provisional Applications Segregate Unnecessary Information – PTO Fee < $100 – 10 Months Available for: Searching Market Research Prototyping Foreign Filing Decisions

12 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Invention Tracking – Prior Use Defense Prior Commercial Use is a Defense to ANY Patent Infringement Invention Disclosure Forms are Vehicle for Capturing Evidence – Revise IDFs to include “Date of First Commercialization” – Keep IDF Open Until DFC Established (even if no patent filing) – Preserve All IDFs (even if no patent filing) Defense Potentially Available Even if Commercial Use of Invention is Trade Secret

13 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Simplified Product Marking 35 U.S.C. § 287(a) – Virtual Marking – The word ‘patent’ or the abbreviation ‘pat.’ AND – A website address “accessible to the public without charge” Must associate “the patented article with the number of the patent”

14 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Challenging Patent Applications in the PTO – New Reasons to Monitor Challenging Pending Patent Applications “Third Party Submissions” 35 U.S.C. § 122(e)(2) – TP Can Submit Patent/Published App., Printed Pub. + – Argument – Deadline – A Very Narrow Window: Before Allowance, AND Within 6 Months After Publication, or Before First Rejection Monitoring is the ONLY Way to Identify Opportunities

15 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Challenging Patents in the PTO – More Reasons to Monitor Challenging Issued Patents Post Grant Review: – Requester can use ANY Prior Art/Any Basis for Invalidity (except failure to disclose Best Mode) – Deadline: 9 Months from Issuance Monitoring Only Practical Way to Identify Opportunities – Appealable/Estoppel

16 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Challenging Patents in the PTO – More Reasons to Monitor Challenging Issued Patents Inter Partes Review: – Prior Art Limited to Printed Publications/Patents – At Least 9 Months After Issuance/After Post Grant Review – Appealable + Estoppel

17 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. Best Mode Requirement – Dead? Disclosure of Best Mode Still Required 35 U.S.C. § 112, 1 st Failure to Disclose Best Mode No Longer Grounds for Invalidity – 35 U.S.C. 282 Not Clear if Duty of Candor to the PTO will Have Any Effect – Patent Attorney Subject to OED – Possibly No Recourse Against Inventor or Patent Owner¶

©2012 Knobbe Martens, Olson & Bear, LLP all rights reserved. ©2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 18 Thank You!

Michael A. Guiliana