1 1 AIPLA Firm Logo American Intellectual Property Law Association Update on AIA Implementation Especially post grant processes Alan J. Kasper AIPLA/JPO Patent Meeting Tokyo, Japan April 8, 2013

2 2 AIPLA Firm Logo Agenda Filing New Applicaitons Pre-issuance Submissions by Third Parties Post Patent Grant Proceedings Supplemental Examination

3 3 AIPLA Firm Logo Filing New Applications

4 4 AIPLA Firm Logo RULEMAKING STATUS 4 Rulemaking Status [enlarge] [enlarge] [enlarge]enlarge

5 5 AIPLA Firm Logo Filing New Patent Applications after March 15, 2013: New Filing of regular, provisional, PCT or foreign application to get old law grace period Act Signed Section 3(n)(1)(A) provides an 18 month window before new §102 applies to new applications Applications claiming priority from applications filed in the Window may have old law grace period 18 -month Window Closed Paris Convention, National Stage, Continuation, Divisional and CIP Filing to get old law grace period – no claim with post Window effective filing date 5

6 6 AIPLA Firm Logo New USPTO Rules for Transition Period Statement Required - For applications, filed on or after March 16, 2013, new 37 CFR 1.55 (foreign priority) and 37 CFR 1.78 (domestic benefit): –Includes a claim that has a priority date on or after March 16, 2013 No requirement if a reasonable belief that there is no such claim. –Possible Problems - Paris Convention applications that are modified prior to US filing – 6

7 7 AIPLA Firm Logo New USPTO Rules for Transition Period When Statement is Required: –within 4 months of US filing date, or –within 16 months of earliest effective filing date (whichever is later) What - Example statement: –“upon reasonable belief, this application contains at least one claim with an effective filing date on or after March 16, 2013” 7

8 8 AIPLA Firm Logo PRE-ISSUANCE SUBMISSIONS BY THIRD PARTIES 8

9 9 AIPLA Firm Logo Third Party Submissions 35 USC §122(e) 37 CFR What Applications – any pending or abandoned application –No issued patents, reissue applications or reexamination proceedings What Material - Any printed publication of relevance –Patent, published application or publication –Need not be prior art – i.e., office action or reply in another country Who Can Submit –Any third party – no duty of disclosure –ID of real party not required – ID of submitter is required 9

10 AIPLA Firm Logo Third Party Submissions When – Before earlier of: –(1) Allowance and –(2) Later of: (A) 6 months after publication or (B) first rejection What Content –Copies (non-USPTO documents) and translations –Concise description of asserted relevance of each document –Fee (first 3 or fewer free; every 10 documents $180) –Statement of Compliance –Listing (PTO/SB/429) How –Dedicated web interface or paper – no fax –NO service on applicant required 10

11 AIPLA Firm Logo Submission Considered by Examiner USPTO Reviews Submission for Compliance with 35 U.S.C. § 122(e) and 37 C.F.R. § Submission Made of Record and Applicant Notified if E-Office Action Participant Submission Discarded Non-compliant Compliant Processing Third Party Submissions Third Party Notified if Address Provided with Request for Notification 11

12 AIPLA Firm Logo THIRD PARTY SUBMISSIONS 12

13 AIPLA Firm Logo POST PATENT GRANT PROCEEDINGS 13

14 AIPLA Firm Logo PTAB RULEMAKING STATUS 14 Rulemaking Status [enlarge] [enlarge] [enlarge]enlarge

15 AIPLA Firm Logo 15 Post Grant Review Post Grant Review - Initiation of Proceedings Petition to cancel any claim – stated standard is “more likely than not unpatentable.” – better than Grounds - any related to invalidity (§101,§102, §103, §112, DP ) Real Parties in interest identified Forum - Patent Trial and Appeal Board to Conduct Timing ONLY ONE Window - at 9 months from issuance Fee - $12,000 petition and $18,000 institution Civil Action - None pending involving the patent

16 AIPLA Firm Logo 16 Post Grant Review (cont.) Post Grant Review - Conduct of Proceedings Amendments - permitted – no enlargement Intervening Rights if Amended Discovery – limited discovery, sanctions and protective orders Burden of Proof – preponderance – no presumption of validity Stay - Automatic Stay of Civil Actions Deadline - One year to decision (extendable by 6 months) Appeal - only to CAFC – no Section 145 action Estoppel – for litigation and other proceedings (ITC) same grounds actually raised or could have been raised) Effective Date – applies to all patents issued 1 year after enactment

17 AIPLA Firm Logo Director Initiates Proceeding Discovery and Prosecution At least 1 chance for Petitioner to reply One Year Patent Issues 6 Months Maximum Extension for Good Cause Decision by Director 3 months after Owner Reply No appeal Preliminary Reply by Patent Owner Period to be set by Director Petition to cancel claim(s) In 9 months after grant Copies of patents and pubs Declarations and Expert Opinions Fee Maximum Time to Decision Petition Filed 9 Months Max Preliminary Activity Time Line for PGR – only FITF inventions 17

18 AIPLA Firm Logo Inter partes Review Inter partes Review - Initiation of Proceedings Petition - to cancel any claim – stated standard is “reasonable likelihood that petitioner would prevail” as to one challenged claim 50:50 or less Grounds - Limited to those related to invalidity ( §§ 102 and 103 only) Parties - Real Parties in interest identified Preclusion - if more than 1 year after patentee sues Forum - Patent Trial and Appeal Board to Conduct Fee - $9,000 petition and $14,000 institution – no discount Timing –Any time from grant for first to invent patents »First ones already filed –Nine months after grant for first to file patents »And after Completion of any Opposition 18

19 AIPLA Firm Logo Inter Partes Review Inter partes Review - Conduct of Proceedings Amendments - permitted – no enlargement Intervening Rights if Amended Discovery – limited discovery - Sanctions and Protective Orders Provided Burden of Proof – preponderance – no presumption of validity Stay - Automatic Stay of Civil Actions Deadline - One year to decision (extendable by 6 months) Appeal - only to CAFC – no Section 145 action Estoppel – for litigation and other proceedings (ITC) same grounds actually raised or could have been raised) Effective Date – applies currently to all patents issued anytime Delay for first to file patents 19

20 AIPLA Firm Logo Director Initiates Proceeding Discovery and Prosecution At least 1 chance for Petitioner to reply and amend One Year First to invent – upon grant First to file -9 months minimum after grant 6 Months Maximum Extension for Good Cause Decision by Director 3 months after Owner Reply No appeal Preliminary Reply by Patent Owner Period to be set by Director Petition to cancel claim(s) More than 9 months after grant Copies of patents and pubs Declarations and Expert Opinions Fee Maximum Time to Decision Time for Inter Partes Review 20

21 AIPLA Firm Logo Some Statistics 21

22 AIPLA Firm Logo Difficult Challenges for Patentee Preponderance of the evidence standard for finding invalidity –vs. clear and convincing evidence standard in litigation Broadest reasonable interpretation of claims Challenger has more time to prepare Very short time frame for Patentee to respond –Only 3 months from Petition to Preliminary Response –Entire IPR/PGR proceeding –12 months from Decision on Petition to conclusion (18 mo. possible) 22

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25 AIPLA Firm Logo Trial Rules Inter Partes Review §§ – Post-Grant Review §§ – Covered Business Method Patent Review §§ – Derivation Proceeding §§ – Umbrella Trial Rules §§ 42.1 –

26 AIPLA Firm Logo Trial – Motions Practice 26

27 AIPLA Firm Logo Discovery Mandatory notices and disclosures –Due, from challenger, with petition –Due, from patentee, in 21 days Routine discovery –No authorization required to obtain: Exhibits Cross-examination of declarants Inconsistent information (non-privileged) Discovery related to mandatory initial disclosure –Presenter pays witness expenses Additional discovery per FRCP –By agreement or motion –Granted if in “interest of justice” (IPR) or for “good cause” (PGR) 27

28 AIPLA Firm Logo Discovery Depositions –Limited in time, location and procedure for efficiency –Transcript prepared / video recording authorized –Sanctions available Document Production –FRE 502 applies -Inadvertent disclosure –E-discovery – permitted –Duty to preserve evidence applies To date – disputes handled efficiently and effectively 28

29 AIPLA Firm Logo Discovery Recent Guidance from PTAB on "Necessary in the Interest of Justice" Standard ( Garman v Cuozzo ) –More than a possibility and Mere Allegation – to find something useful –Litigation positions and underlying basis for positions is not necessary –Ability to generate equivalent to requested information by other means –Easily understandable instructions –Requests not overly burdensome to answer- given expedited nature of the proceeding 29

30 AIPLA Firm Logo SUPPLEMENTAL EXAMINATION 30

31 AIPLA Firm Logo Supplemental Examination Supp Exam – Initiation of Proceedings Patentee intending to enforce in litigation can correct errors and omissions that may be: (1) a basis for an inequitable conduct defense Missing Prior Art Erroneous Declarations Erroneous Argument (2) a basis for substantive defense Sections 101, 102, 103, 112, etc. ONLY Patentee Can File for Supplemental Exam Test - Substantial New Question of Patentablilty (SNQ) Fee has 2 parts – petition and reexamination Fraud, if discovered, is referred to Attorney General 31

32 AIPLA Firm Logo Supplemental Examination Supp Exam – Conduct of Proceedings USPTO Conducts Supplemental Examination –USPTO has 3 months to decide whether or not submitted information raises a SNQ of patentability –USPTO Issues a Certificate of SNQ If SNQ, Director Orders Ex-parte reexamination –Patentee cannot file a statement under 304 (art or claims) before first Office Action –All SNQ addressed – including 101, 102, 103, 112, etc. –No time limit specified Inequitable conduct defense in litigation precluded for submitted information –If no SNQ on the information or –If reexam successfully concluded 32

33 AIPLA Firm Logo Fees for Supplemental Examination ServiceCost Filing fee (for processing and treating a request for supplemental examination) Plus any applicable document size fees $ 4,400 Reexamination fee (for ex parte reexamination ordered as a result of supplemental examination) $12,100 TOTAL$16,500 REFUND (if the Office decides not to order an ex parte reexamination proceeding) $12,100 33

34 AIPLA Firm Logo Director concludes supplemental examination to determine SNQ Certificate issued re SNQ If SNQ, Director Orders Ex-parte Reexamination Proceeding Address each SNQ If No SNQ – no unenforceability for reviewed conduct Petition Filed Ex-parte Reexamination Conducted 3 months to decide if SNQ Patentee files request to consider, reconsider or correct information believed relevant to patent Supplemental Examination conducted – does information raise a substantial new question (SNQ) of patentability? Issued Patent is being considered for enforcement Review of file history or negotiations raise concern about omissions or errors in submitted art, declarations or argument Suit has not yet been filed Patent not Unenforceable for reviewed conduct Supp Exam Finished Re exam Finished Litigation Time Line for Supplemental Examination 34

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36 AIPLA Firm Logo Thanks for your attention! Questions? Alan J. Kasper Partner Sughrue Mion PLLC 2100 Pennsylvania Ave. Washington DC (mobile)