Side 1 Andrew Chin AndrewChin.com A Quick Survey of the America Invents Act Patent Law October 12, 2011

Side 2 Andrew Chin AndrewChin.com Passage Product of six years of Congressional activity Enacted September 16 Effective dates vary

Side 3 Andrew Chin AndrewChin.com Changes to the Patent Act Today: First Inventor to File (or Publicly Disclose) Prior User Rights Best Mode Not covered: USPTO Processes and Fees Judicial Procedures (venue, etc.) Other Minor Modifications

Side 4 Andrew Chin AndrewChin.com First to File First filer wins [102(a)], unless [102(b)]: (i) the second filer was first to “publicly disclose” the invention (ii) the first filer obtained the invention directly or indirectly from the second filer (iii) the first filer abandoned the application prior to publication or issuance Effective date: Applies to all applications filed on or after March 16, 2013

Side 5 Andrew Chin AndrewChin.com Old Doctrines in New Statutes Major changes: No geographic restrictions on prior art 102(a): Prior art = prior to effective filing date 102(b): Defined exceptions; one-year grace period

Side 6 Andrew Chin AndrewChin.com Six Categories of Prior Art § 102(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— (1) 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; or (2) the claimed invention was described in a patent issued [to another] … or in [another’s] application for patent published … [that] was effectively filed before the effective filing date of the claimed invention.

Side 7 Andrew Chin AndrewChin.com “Otherwise Available to the Public” Seems similar to “known or used by others”

Side 8 Andrew Chin AndrewChin.com “Public Use”/“On Sale” Caselaw Are Metallizing, etc. still good law? Probably: Statutory reenactment No clear legislative history to the contrary

Side 9 Andrew Chin AndrewChin.com 102(b) Grace Period 102(b) May file within one year after: (1)(A) Any disclosure “directly or indirectly” from the applicant (1)(B) Disclosures by others that occurred after “public” disclosure by the applicant (2)(A) First filer derived invention from second filer (2)(B) First filer filed after “public” disclosure by applicant/second filer

Side 10 Andrew Chin AndrewChin.com (A) Grace Period Events Hypos Jacob files on 10/1/2013. What if: Jacob publishes article disclosing invention on 5/1/2013? Marc steals Jacob’s notes and places an embodiment of the invention on sale on 2/1/2013? Marc steals Jacob’s notes and uses them to file a U.S. patent application on 4/1/2013?

Side 11 Andrew Chin AndrewChin.com (B) Grace Period Events Hypos Elliott publishes an article disclosing invention on 1/1/2014 and files application claiming invention on 12/1/2014. What if: Aaron independently publishes an article disclosing the same invention on 2/1/2014? Aaron files a patent application claiming the same invention based on his own independent research on 4/1/2014?

Side 12 Andrew Chin AndrewChin.com For discussion Is the new grace period more or less favorable to inventors? In other words: Does “disclosure” in new 102(b)(1)(A) and (2)(A) include every activity by the applicant that would generate prior art under 102(a)(1)? Does “disclosure” in new 102(b)(1)(B) and (2)(B) include every activity by a third party that would generate prior art under 102(a)(1)?

Side 13 Andrew Chin AndrewChin.com More 102 Hypos Thomas conceives and reduces to practice on 8/1/2012 Thomas files 6/1/2013 On 5/1/2013, Andrew had published a journal article disclosing the material later claimed by Thomas. Can Thomas get the patent?

Side 14 Andrew Chin AndrewChin.com More 102 Hypos Aaron enters into a confidential agreement with Matt’s company to sell units of Aaron’s invention on 6/1/2013 How long does Aaron have to file?

Side 15 Andrew Chin AndrewChin.com More 102 Hypos Aaron enters into a confidential agreement with Matt’s company to sell products produced using Aaron’s secret process invention on 6/1/2013 Alex independently discovers the same process and publishes an article disclosing it on 8/1/2013 Aaron files a patent application on 9/1/2013 Can Aaron get the patent?

Side 16 Andrew Chin AndrewChin.com More 102 Hypos Aaron enters into a confidential agreement with Matt’s company to sell products produced using Aaron’s secret process invention on 6/1/2013 Alex independently discovers the same process and publishes an article disclosing it on 8/1/2013 Aaron files a patent application on 9/1/2013 Alex files a patent application on 7/1/2014 Who gets the patent?

Side 17 Andrew Chin AndrewChin.com More 102 Hypos Aaron enters into a confidential agreement with Matt’s company to sell products produced using Aaron’s secret process invention on 6/1/2013 Alex independently discovers the same process and publishes an article disclosing it on 8/1/2013 Aaron files a patent application on 9/1/2013 Alex files a patent application on 7/1/2014 Aaron can prove a public disclosure on 7/15/2013 Who gets the patent?

Side 18 Andrew Chin AndrewChin.com Prior User Rights Effective date: Applies to all litigation filed on or after September 16, 2011 Prior user right is a personal defense to infringement liability; it does not invalidate a patent Cannot be asserted against universities or their ancillary technology transfer organizations

Side 19 Andrew Chin AndrewChin.com Prior User Rights Elements Prior commercial use More than one year before filing Clear and convincing evidence No subject matter limitation

Side 20 Andrew Chin AndrewChin.com Best Mode Failure to state best mode: Can be basis for PTO rejection PTO can enforce through litigation Cannot be pleaded as invalidity or unenforceability defense