Christopher J. Fildes Fildes & Outland, P.C. Derivation Proceedings and Prior User Rights

Leahy-Smith America Invents Act (AIA) Section 3 of the AIA, in part... Amends Section 135 of the Code to replace interference practice with derivation proceedings Amends Section 291 of the Code to replace interference actions with derivation actions Section 7 of the AIA renames the Board of Patent Appeals and Interferences (BPAI) as the Patent Trial and Appeal Board (PTAB) © AIPLA Fildes & Outland, P.C.

Leahy-Smith America Invents Act Elimination of interference practice and implementation of derivation proceedings coincides with change from a first-to- invent system to a first-inventor-to-file system © AIPLA Fildes & Outland, P.C.

New Section 135 – Derivation Proceeding Institution of Proceeding – Section 135(a) An applicant for patent may file a petition to institute a derivation proceeding in the USPTO Petition must “set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed” © AIPLA Fildes & Outland, P.C.

New Section 135 – Derivation Proceeding Institution of Proceeding – Section 135(a) The petition must be made under oath The petition must be supported by “substantial evidence” The petition must be filed “within the 1-year period beginning on 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” © AIPLA Fildes & Outland, P.C.

New Section 135 – Derivation Proceeding Institution of Proceeding – Section 135(a) The Director’s decision to institute (or not institute) a derivation proceeding is final and nonappealable © AIPLA Fildes & Outland, P.C.

New Section 135 – Derivation Proceeding Determination by PTAB – Section 135(b) Parties must provide sufficient evidence to prove and rebut a claim of derivation PTAB must determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application PTAB must determine whether the earlier application claiming such invention was filed without authorization © AIPLA Fildes & Outland, P.C.

New Section 135 – Derivation Proceeding Determination by PTAB – Section 135(b) Remedy – the PTAB may correct the naming of the inventor in any application or patent at issue © AIPLA Fildes & Outland, P.C.

New Section 135 – Derivation Proceeding Deferral of Decision – Section 135(c) PTAB may defer action on a petition for a derivation proceeding three months from the issue date of a patent that includes the claimed invention that is the subject of the petition PTAB may defer action on a petition, or stay a proceeding after it has been instituted, until the termination of an ex parte reexamination, post-grant review, or inter partes review involving the patent of the earlier applicant © AIPLA Fildes & Outland, P.C.

New Section 135 – Derivation Proceeding Effect of Final Decision – Section 135(d) The final decision of the PTAB, if adverse to claims in an application for patent, constitutes the final refusal by the USPTO on those claims The final decision of the PTAB, if adverse to claims in a patent, and if no appeal or other review of the decision is taken, constitutes cancellation of those claims © AIPLA Fildes & Outland, P.C.

New Section 135 – Derivation Proceeding Settlement – Section 135(e) The parties may terminate a proceeding by filing an agreement of the parties as to the correct inventors of the claimed invention in dispute Arbitration – Section 135(f) The parties to a derivation proceeding may agree to submit to arbitration to determine any or all aspects of the derivation proceeding © AIPLA Fildes & Outland, P.C.

Proposed Rulemaking for Derivation Proceedings The USPTO projects that the proposed rules for derivation proceedings will be published in the Federal Register by mid- to late January 2012 © AIPLA Fildes & Outland, P.C.

New Section 291 – Derived Patents Creates a civil action for derivation Owner of a patent may have relief against the owner of another patent if... The other patent claims the “same invention” The other patent has an earlier effective filing date The invention claimed in the other patent was derived from the inventor of the invention claimed in the patent owned by the party seeking relief © AIPLA Fildes & Outland, P.C.

New Section 291 – Derived Patents Timing A derivation action must be filed “before the end of the 1-year period beginning on the date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor” © AIPLA Fildes & Outland, P.C.

Effective Date for Derivation Changes to Sections 135 and 291 of the Code are effective March 16, 2013 Changes to Sections 135 and 291 are not retroactive Derivation applies only to applications (and any patent issuing thereon) having an effective filing date on or after March 16, 2013 Interference practice continues to apply to applications (and patents) having an effective filing date before March 16, 2013 © AIPLA Fildes & Outland, P.C.

Interference Statistics © AIPLA Fildes & Outland, P.C.

Interference Statistics Majority of Interferences are currently in TC 1600 (Biotechnology & Organic Chemistry) and TC 1700 (Chemical & Materials Engineering) Assuming that derivations are a subset of current interferences, the number of derivation proceedings instituted per year is likely to be low It appears that it is even more unlikely for a derivation to involve an invention that is outside of the art areas of TC 1600 and TC 1700 © AIPLA Fildes & Outland, P.C.

New Section Prior User Rights Leahy-Smith America Invents Act Section 5 of the AIA amends Section 273 of the Code (Defense to infringement based on prior commercial use) The previous “prior user defense” that was available for a person accused of infringing a business method patent is now extended to all patentable subject matter under Section 101 © AIPLA Fildes & Outland, P.C.

New Section Prior User Rights Exception Defense not applicable if the claimed invention was developed by a nonprofit institution of higher education or an affiliated technology transfer organization whose primary purpose is to facilitate the commercialization of technology developed by such institutions of higher education © AIPLA Fildes & Outland, P.C.

New Section Prior User Rights To apply the defense, the alleged infringer must show that “[A]cting in good faith, [the alleged infringer] commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use” © AIPLA Fildes & Outland, P.C.

New Section Prior User Rights To apply the defense, the alleged infringer must also show that The commercial use occurred at least 1 year before the earlier of the effective filing date of the claimed invention, or the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b) Burden of proof – clear and convincing evidence © AIPLA Fildes & Outland, P.C.

Conclusion Thank you Leahy-Smith America Invents Act, Public Law (September 16, 2011), is accessible at l pdf © AIPLA Fildes & Outland, P.C.