1. AMERICA INVENTS ACT A Look Into The Future
Todd R. Walters
Buchanan, Ingersoll & Rooney PC
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2. First-Inventor-to-File (FITF)
Old Law: First-to-Invent
New Law: First-Inventor-to-File
Partially harmonize with Europe & Japan
Effective for applications containing a claim with an effective filing date 18 months after enactment 2
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3. Old Law: First-to-Invent
35 U.S.C. § 102: Novel, unless…
(a) “before the invention thereof by the applicant”
known or used by others in this country,
patented or described in a printed publication in this or a foreign country,
(b) “more than one year prior to the date of the application for patent in the United States”
patented or described in a printed publication in this or a foreign country
In public use or on sale in this country 3
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4. New Law: FITF 35 U.S.C. § 102: Novel, unless…
(a)(1) “before the effective filing date of the claimed invention” the claimed invention was
patented,
described in a printed publication,
in public use,
on sale, or
otherwise available to the public 4
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5. New Law: FITF 35 U.S.C. § 102: Novel, unless…
(a)(2) the claimed invention was described in
a patent, or
a published application for patent
which
names another inventor and
was effectively filed before the effective filing date of the claimed invention 5
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6. FITF: Significant Changes
Removes geographic limitations on acts
No longer “used in this country/described in a foreign country”
“Effective filing date” controls
No antedating of prior art references
Applies only to applications containing or that contained a claim with an effective filing date 18 months after enactment 6
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7. Hilmer Overruled
Old law allows only the earliest U.S. filing date for claim defeating purposes
New law allows foreign priority date for claim defeating purposes
New law is not geographically limited.
Foreign applications can be used as sword and shield
This legislatively overrules old law established in In re Hilmer, 359 F.2d (C.C.P.A. 1966) (Rich, J.) 7
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8. FITF: Grace Period § 102(b)(1): A disclosure if—
made 1 year or less before the effective filing date of a claimed invention
shall not be prior art to the claimed invention under subsection (a)(1)
if— 8
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9. FITF: Grace Period (A) the disclosure was made
by the inventor or joint inventor or
by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or 9
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10. FITF: Grace Period
(B) the subject matter disclosed had, before such disclosure,
been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor 10
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11. FITF: Grace Period One-year Grace Period applies to all “disclosures”
Maintains protections for small entities who disclose early
May result in strategic public disclosures
Effective for applications containing a claim with an effective filing date 18 months after enactment 11
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12. FITF: Changes to Obviousness
§ 103: Conditions for patentability: non-obvious subject matter
A patent may not be obtained if differences between claimed invention and prior art are such that claimed invention would have been obvious before the effective filing date to a person having ordinary skill in the art
Changes standard from “at the time the invention was made” 12
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13. New Prior Art Provisions
Provisions Apply to Applications and Patents
Applies to any application for patent, and to any patent issuing thereon
That contains or that contained at any time a claim to invention that has an effective date on or after March 16, 2013 13
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14. New Prior Art Provisions (cont’d)
Provisions Apply to Applications and Patents Claiming Priority
A specific reference under 120, 121 or 365(c) of Title 35 to any patent or application
That contains or that contained at any time a claim to an invention that has an effective date on or after March 16, 2013 14
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15. Old Prior Art Laws Apply
Old Law / New Law
Old Prior Art Laws Apply
Application has an actual filing date prior to March 16, 2013 15
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16. Old Prior Art Laws Apply
Old Law / New Law
Old Prior Art Laws Apply
Application has an actual filing date prior to March 16, 2013 16
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17. New Prior Art Laws Apply
Old Law / New Law
New Prior Art Laws Apply
First application is filed on or after March 16, 2013 17
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18. Old Prior Art Laws Apply to Later Application IF
Old Law / New Law
Old Prior Art Laws Apply to Later Application IF
All claims in the later application at all times have an
Effective filing date prior to March 16, 2013 18
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19. New Prior Art Laws Apply to Later Application IF
Old Law / New Law
New Prior Art Laws Apply to Later Application IF
Any claim in the later application at
Any time has or had an
Effective filing date on or after March 16, 2013 19
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20. Old Prior Art Laws Apply to Later Application IF
Old Law / New Law
Old Prior Art Laws Apply to Later Application IF
All claims in the later application at all times have an
Effective filing date prior to March 16, 2013 20
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21. New Prior Art Laws Apply to Later Application IF
Old Law / New Law
New Prior Art Laws Apply to Later Application IF
Any claim in the later application at
Any time has or had an
Effective filing date on or after March 16, 2013 21
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22. New Prior Art Laws Apply to CIP Application IF
Old Law / New Law
New Prior Art Laws Apply to CIP Application IF
Any claim in the CIP application is amended at
Any time so as to have an
Effective filing date on or after March 16, 2013 22
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23. Old Prior Art Laws Apply to Later Application IF
Old Law / New Law
Old Prior Art Laws Apply to Later Application IF
All claims in the CIP at all times and
All claims in the later application have always had an
Effective filing date prior to March 16, 2013 23
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24. New Prior Art Laws Apply to Last Application IF
Old Law / New Law
New Prior Art Laws Apply to Last Application IF
Even though every claim in the last application has an effective filing date before March 16, 2013
Any claim in the CIP application at any time had an effective filing date on or after March 16, 2013 24
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25. Prior User Defense Sec. 5: Defense to Infringement
Protection against infringement liability for first inventors who did not pursue patent protection
Expands prior user rights infringement defense to cover all technology (instead of just Business Method patents) used in the United States
“Commercial Uses” include premarketing regulatory review and nonprofit laboratory use
Does not allow defense against patents owned by academic entities
Does not affect pending litigation
Effective Upon Enactment 25
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26. Pre-Grant Challenges Sec. 8: Preissuance Submission
Any third party may submit prior art for consideration and inclusion in the record
Before allowance and
Within 6 months of publication or
Before date of first rejection
Must include description of relevance of each submitted document
Effective 12 months after enactment 26
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27. Interference Proceedings
Interference Proceedings Remain Relevant
§§102(g), 135 and 291 Apply
To each claim of an application or patent IF
Such application or patent contains or contained at any time:
A claim to an invention having an effective filing date prior to March 16, 2013 OR
A reference under 120, 121 or 365(c) to any patent or application that contains or contained at any time such a claim 27
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28. Old Law / New Law §§102(g), 135 and 291 Apply
Application has an actual filing date prior to March 16, 2013 28
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29. Old Law / New Law §§102(g), 135 and 291 Do Not Apply
First application is filed on or after March 16, 2013 29
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30. Old Law / New Law §§102(g), 135 and 291 Apply
Due to claim of priority to parent application having effective filing date prior to March 16, 2013 30
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31. Old Law / New Law §§102(g), 135 and 291 Apply to CIP
Due to claim of priority to parent application having effective filing date before March 16, 2013 31
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32. Old Law / New Law §§102(g), 135 and 291 Apply to CIP
Due to claim of priority to parent application having effective filing date before March 16, 2013 32
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33. Derivation Proceedings
Derivation proceedings remain
Previously a subset of interference proceedings
Owner of patent A (later filing date) may have relief against owner of patent B
If both A and B claim the same invention;
If the invention claimed in B was derived from the inventor of the invention claimed in A; and
If action filed within 1 year of issue of B
District Court/Federal Circuit appeals
Effective for applications containing a claim with an effective filing date 18 months after enactment 33
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34. Reissues Remain Reissue practice remains intact under 35 U.S.C 251
Reasons for reissue
a defective specification or drawing, or
the patentee claiming more than he had a right to claim in the patent
the patentee claiming less than he had a right to claim in the patent
Obligations for reissue
surrender of patent
payment of the fee
Life of Reissue limited to unexpired part of the term of the original patent.
No new matter shall be introduced into the application for reissue.
Enlarging claim scope –two year limit. 34
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35. Reexaminations Ex Parte Reexaminations remains intact
Inter Partes Reexaminations abandoned in favor of Inter Partes Review
Heightened burden of proof immediate
Old Standard--Substantial new question of patentability
New Standard--Reasonable likelihood of success 35
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36. Post-Grant Review Sec. 6: Chapter 32: Post-Grant Review
Filed by anyone other than the patentee
Filed not later than 9 months after the date of grant or the date of a broadening reissue
Request to cancel as unpatentable 1 or more claims for any reason in § 282 (invalidity of patent or claim)
Must identify all real parties in interest
May submit patents or printed publications and affidavits or declarations of evidence and opinion
Effective 12 months after enactment, but
Applicable only to applications subject to FITF examination unless falling into exception 36
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37. Inter Partes Review Sec. 6: Chapter 31: Inter Partes Review
Filed by anyone other than the patentee
Filed after the later of 9 months following date of grant or the date of reissue, or, after the date of termination of Post-Grant Review
Request to cancel as unpatentable 1 or more claims under § § 102 or 103
Must identify all real parties in interest
May submit patents, printed publications, affidavits and declarations
Available for all patents
Effective 12 months after enactment 37
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38. Comparison of New Procedures
Preissuance Submission
Ex Parte Reexam
Derivation Proceedings
Post-Grant Review
Inter Partes Review
When to initiate
Limited time before allowance
After grant
Within 12 months of earlier patent grant
Within 9 months of grant
9 months after grant or after date of PGR termination
Initiator’s Threshold Burden
N/A
Substantial new question of patentability
Substantial evidence of derivation
More likely than not that at least 1 claim unpatentable
Reasonable likelihood of success
Identification of Initiator Required No
Yes 38
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39. Comparison of New Procedures
Preissuance Submission
Ex Parte Reexam
Derivation Proceedings
Post-Grant Review
Inter Partes Review
Estoppel Applies?
None
Yes
Adjudicated By
Examiner
Examiner in Central Reexam Unit
Patent Trial and Appeal Board
Basis for Attack
Prior Art
Derivation Only
Any ground 39
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40. Comparison of New Procedures
Preissuance Submission
Ex Parte Reexam
Derivation Proceedings
Post-Grant Review
Inter Partes Review
Duration
Case dependent
Case Dependent
Unknown
1 to 1 ½ years
Available Appeals
Only patentee can appeal to Board and then Federal Circuit
Both parties can appeal to District Court or Federal Circuit
Both parties can appeal to Federal Circuit 40
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41. Board of Patent Appeals and Interferences
Current Responsibilities
Review of appeals from decisions of examiners
Interferences to decide who is the first inventor
Responsibilities Under the New Law
Ex-parte appeals
Post-Grant Review
Inter-Partes Review
Derivation Proceedings
Continuing interferences for applications and patents containing claims with effective filing dates prior to the new law 41
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42. Board Statistics (Sept. 2011)
4995 final decisions published YTD (16 Sept. 2011)
Ex-Parte Appeals
23800 appeals currently docketed
12517 appeals received YTD
6478 appeals disposed of YTD
9374 appeals have been docketed more than 14 months
Interferences
51 pending interferences
47 have been pending less than 20 months
51 interferences declared YTD 42
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43. Supplemental Examination
New 35 U.S.C. § 257
Requested by patent owner
Concluded in 3 months
Substantial new question of patentability
Beware of Reexamination 43
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44. Supplemental Examination
To consider information
Known prior to issuance of the patent, or
That patent owner may wish to have officially considered by the PTO with the possibility of avoiding a full reexamination.
To reconsider information
Inadequately considered during prosecution (e.g., to avoid the appearance of knowing reliance on a material misunderstanding).
To correct information (e.g., to correct errors in statements to the PTO that were relied upon during prosecution). 44
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45. Supplemental Examination
Effect of Supplemental Examination
Patent cannot be held unenforceable on the basis of information considered during supplemental examination
Except if
An allegation is plead in a civil action
An allegation is made in a paragraph IV notice
A patent enforcement action is filed in the ITC or civil court before the conclusion of supplemental examination and any reexamination. 45
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46. Supplemental Examination
Fraud Will Be Referred to the Attorney General
If the Director becomes aware that a material fraud may have been committed
The Director shall refer the matter to the Attorney General
The referral is confidential.
Unless the person is charged with a criminal offense. 46
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47. Supplemental Examination
Supplemental examination only requires belief that information is relevant
Inequitable conduct requires clear and convincing proof
That information is material
Therasense Inc. v. Becton Dickinson and Co., 649 F.3d 1276, 99 U.S.P.Q.2d 1065 (Fed. Cir. 2011)
“[A]s a general matter, the materiality required to establish inequitable conduct is but-for materiality.” Id.
“[T]he reference may be material if it would have blocked patent issuance under the PTO's [lower] evidentiary standards.” Id.
Of intent to deceive
“[T]o meet the clear and convincing evidence standard, the specific intent to deceive must be “the single most reasonable inference able to be drawn from the evidence.” Id. 47
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48. Supplemental Examination
No Presumption Flows From Requesting (or not Requesting) Supplemental Examination
Making a request for supplemental examination OR
Not making a request for supplemental examination IS
Not relevant to enforceability of the patent 48
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49. Supplemental Examination
Pros
Preempt inequitable conduct allegations as pre-litigation strategy.
Preempt an accused infringer from using prior art to provoke ex parte reexamination, perhaps even without actually provoking a reexamination.
Quickly resolve problems discovered during M&A due diligence.
Quick procedure may neutralize arguments that infringer is relying on for leverage in negotiations. 49
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50. Supplemental Examination
Cons
A request for supplemental examination means that information is “believed to be relevant” by patent owner.
May provide ammunition to accused infringer.
There is no guarantee that the information can not be used in another way.
e.g., combined with other information or presented with expert testimony to provoke reexamination or inter partes review 50
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51. Best Mode Sec. 15: Best Mode Requirement
“the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable”
USPTO retains the option to reject applications for failure to identify the best mode
Best Mode rejections are rare
Effective Upon Enactment 51
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52. Patent Marking Sec. 16: Marking
Allows for virtual marking; effective upon enactment
Provides for updated marking without updated packaging
Eliminates lawsuits for false marking
Inserts “Only the United States may sue for the penalty authorized by this subsection.”
Effective Upon Enactment 52
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53. Advice of Counsel Sec. 17: Advice of Counsel
Failure of infringer to seek advice of counsel, or failure of infringer to present such advice to the court, may not be used to prove that the accused infringer willfully infringed the patent
Effective 12 months after enactment 53
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54. Are Opinions Still Necessary?
Opinions Are Still Important
Proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness. In re Seagate Tech., 497 F.3d 1360, 1371 (Fed. Cir. 2007).
Consultation with counsel may be evidence that an infringer did not engage in objectively reckless behavior.
Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305, 1313 (Fed. Cir. 2010);
Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1339 (Fed. Cir. 2008) 54
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55. Effective Date Review Effective One Year after enactment
Inventor’s oath (Sec. 4)
Preissuance submission by 3rd parties (Sec. 8)
Post-Grant Review and IPR (Sec. 6) (unless exception, PGR review will only apply to FITF applications which will not begin until 18 months)
Patent Trial and Appeal Board (Sec. 7),
Business method patents (Sec. 18)(8-year sunset clause) Supplemental examination (Sec. 12)(applies to patents filed before, on, or after effective date)
Advice of counsel (Sec. 17),
Priority examination for important technologies (Sec. 25),
Patent Ombudsman (Sec. 28) 55
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56. Effective Date Review Effective 18 Months after enactment
First-inventor-to-file applies to applications containing a claim with an effective filing date 18 months after enactment
New §102
Amended §103
Repeal of §104,
Derivation
Repeal of Statutory Invention Registration (Sec. 3) 56
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57. Questions?
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