1. T HE L EAHY -S MITH A MERICA I NVENTS A CT The Toledo Intellectual Property Law Association Presented By: November 16, 2011

2. TIPLA Legislative History 108 th Congress (2003-2004)  Federal Trade Commission issues a report on patent reform  National Academies of Science issues a report on patent reform 109 th Congress (2005-2006)  S.3818 introduced by Senate  H.R.2795 introduced by House 110 th Congress (2007-2008)  S.1145 introduced by Senate Bill is adopted but never reaches the floor  H.R.1908 passed by House 111 th Congress (2009-2010)  S.515 introduced by Senate Senate Judiciary Committed Amends and Reports out S.515  H.R.1260 introduced by House

3. TIPLA Legislative History (cont’d) 112 th Congress  S.23 passed by Senate (March 8, 2011)  H.R.1249 passed by House (June 23, 2011)  Senate passed H.R. 1249 (September 8, 2011) Pub. Law 112-29 signed by President Obama ** September 16, 2011 **

4. TIPLA H.R. 1260 Table of Contents Sec. 1. – Table of Contents Sec. 2. – Definitions Sec. 3. – First Inventor to File Sec. 4. – Oath or Declaration Sec. 5. – Prior Commercial Use Sec. 6. – Post-grant Review Sec. 7. – PTAB Sec. 8. – Third Party Submissions Sec. 9. – Venue Sec. 10. – Fee Setting Authority Sec. 11. – Patent Fees Sec. 12. – Supplemental Examination Sec. 13. – Funding Sec. 14. – Tax Strategies as Prior Art Sec. 15. – Best Mode Sec. 16. – Marking Sec. 17. – Advice of Counsel Sec. 18. – Business Method Patents Sec. 19. – Jurisdiction Sec. 20. – Technical Amendments Sec. 21. – Travel Expenses Sec. 22. – USPTO Funding Sec. 23. – Satellite Offices Sec. 24. – Detroit Office Sec. 25. – Priority Examination Sec. 26. – Study on Implementation Sec. 27. – Study on Genetic Testing Sec. 28. – Small Business Concerns Sec. 29. – Study Diversity of Applicants Sec. 30. – Sense of Congress Sec. 31. – Study on Int’l. Protection Sec. 32. – Pro Bono Program Sec. 33. – Limitation in Issuance Sec. 34. – Study of Patent Litigation Sec. 35. – Budgetary Effects Sec. 36. – Patent Term Extension

5. TIPLA First-Inventor-to-File System  35 U.S.C. §100, §102, §103 Derivation Proceedings  35 U.S.C. §135, §291 Oaths and Declarations  35 U.S.C. §115, §118 Prior Commercial Use Defense  35 U.S.C. §273 Inter Partes Reviews  35 U.S.C. §311-319 Post-Grant Review  35 U.S.C. §321-329 Patent Trial and Appeal Board  35 U.S.C. §6 Third Party Submissions  35 U.S.C. §122 Fee Setting Authority Micro Entity  35 U.S.C. §123 Supplemental Examination  35 U.S.C. §257 Tax Strategies → Prior Art Best Mode Requirement  35 U.S.C. §282 Virtual Marking  35 U.S.C. §287 Key Provisions Amendments to title 35, U.S.C.

6. TIPLA Key Provisions (cont’d) Advice of Counsel  35 U.S.C. §298 Business Method Patents Jurisdiction in Civil Actions  28 U.S.C. §1295, §1338, §1454 Joinder of Parties  35 U.S.C. §299 USPTO Funding  35 U.S.C. §42 Satellite Offices  3 or more Offices  Detroit Office Priority of Examination  35 U.S.C. §2(b)(2) USPTO Studies  Implementation  Genetic Testing  Diversity of Applicants  Small Business Protection (Int’l)  Patent Litigation Patent Ombudsman Pro Bono Program Patentable Subject Matter Effective Dates

7. TIPLA § 3 First-Inventor-to-File 35 U.S.C. § 100 - Definitions  Inventor “… the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”  Joint Inventor or Co-inventor “… any 1 of the individuals who invented or discovered the subject matter of the joint invention.”  Joint Research Agreement “… a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.”

8. TIPLA § 3 First-Inventor-to-File Definitions (cont’d)  Effective Filing Date (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention (B) the filing date of the earliest application for which the patent or application is entitled to a right of priority or the benefit of an earlier filing date  Claimed Invention “… the subject matter defined by a claim in a patent or an application for patent.”

9. TIPLA § 3 First-Inventor-to-File 35 U.S.C. §102 Conditions for patentability; novelty §102 Subsections  §102(a) - Novelty; Prior Art  §102(b) - Exceptions  §102(c) - Common Ownership Under Joint Research Agreements  §102(d) - Patents and Publications Applications Effective as Prior Art

10. TIPLA § 3 First-Inventor-to-File 35 U.S.C. §102(a) NOVELTY; PRIOR ART  A person is entitled to 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 under Section 151, or in an application for patent published or deemed published under Section 122(b), for which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

11. TIPLA § 3 First-Inventor-to-File 35 U.S.C. §102(a) A invents B discloses invention A files an application Disclosure by B is prior art (A cannot “swear behind”)

12. TIPLA Comments  Eliminates the term “known or used by others in this country” in the previous §102(a) No longer a territorial limitation on prior art  Adds the catch-all phrase “otherwise available to the public” Term is not defined  Critical date is “effective filing date” and no longer the date of “the invention” Heart of the First-Inventor-to-File system § 3 First-Inventor-to-File 35 U.S.C. § 102(a)

13. TIPLA EXCEPTIONS (1) Disclosures made 1 year or less before the effective filing date of the claimed invention (2) Disclosures appearing in applications and patents § 3 First-Inventor-to-File 35 U.S.C. § 102(b)

14. TIPLA § 3 First-Inventor-to-File 35 U.S.C. § 102(b)(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTIONS – A disclosure made 1 year or less before the effective filing date shall not be prior art under subsection (a)(1) if: (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 (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.

15. TIPLA § 3 First-Inventor-to-File 35 U.S.C. §102(b)(1) A discloses invention B discloses or files an application A files an application 1 year grace period A is entitled to U.S. patent

16. TIPLA § 3 First-Inventor-to-File 35 U.S.C. §102(b)(1) A invents B invents and discloses A files an application 1 year grace period B is entitled to U.S. patent B files an application

17. TIPLA § 3 First-Inventor-to-File 35 U.S.C. §102(b)(1) A discloses B disclosesA files an application 1 year grace period A is entitled to U.S. patent B files an application

18. TIPLA Comments  Maintains a 1 year grace period for “disclosures” in limited circumstances (i.e. inventor’s own work)  “Disclosure” is not defined Does it cover all prior art described in subsection (a)(1)? Enablement requirement?  Subject matter obtained “indirectly from the inventor” is not defined  Applies only to U.S. patent filings!! § 3 First-Inventor-to-File 35 U.S.C. § 102(b)(1)

19. TIPLA § 3 First-Inventor-to-File 35 U.S.C. § 102(b)(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS – A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if: (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

20. TIPLA Comments  Subject Matter and the Claimed Invention Must be owned by the same person or subject to an assignment to the same person  On or before the effective filing date  Can the claimed invention subsequently be assigned to avoid effect of prior art?  Not limited to disclosure by inventor or co-inventor § 3 First-Inventor-to-File 35 U.S.C. § 102(b)(2)

21. TIPLA COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS Subsection (b)(2)(C) applies if: (1) the subject matter disclosed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention; (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. § 3 First-Inventor-to-File 35 U.S.C. § 102(c)

22. TIPLA PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART For purposes of determining whether a patent or application is prior art under subsection (a)(2), such patent or application shall be considered to have been effectively filed: (1) if paragraph (2) does not apply, as of the actual filing date of the patent or application; or (2) if the patent or application is entitled to claim a right of priority or the benefit of an earlier filing date…, based on 1 or more prior filed applications, as of the filing date of the earliest such application that describes the subject matter. § 3 First-Inventor-to-File 35 U.S.C. § 102(d)

23. TIPLA Comments  Prior art as of the effective filing date regardless of the language the application was filed in  Foreign filing date can now be used both as a priority date and as a prior art date § 3 First-Inventor-to-File 35 U.S.C. § 102(d)

24. TIPLA Conditions for patentability; non-obvious subject matter “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.” § 3 First-Inventor-to-File 35 U.S.C. § 103

25. TIPLA Comments  §103 is simplified by removing subsections (b) and (c) §103(c) is theoretically retained in new §102(c)  Defines “claimed invention” as opposed to “subject matter sought to be patented” as in old §103  Knowledge of an ordinary person skilled in the art “before the effective filing date” § 3 First-Inventor-to-File 35 U.S.C. § 103

26. TIPLA § 3 First-Inventor-to-File Repealed Sections 35 U.S.C. §104  Requirements for Inventions Made Abroad 35 U.S.C. §157  Statutory Invention Registrations

27. TIPLA § 3 First-Inventor-to-File Effective Date 18 months from the date of enactment  March 16, 2013 Applies to any application or patent issuing thereon that contains or contained at any time:  (A) a claim that has an effective filing date that is on or after the effective date; or  (B) a specific reference under section 120, 121, 365(c) to any patent or application that contains or contained at any time such a claim.

28. TIPLA § 3 Derivation Proceedings 35 U.S.C. § 135 INSTITUTION OF PROCEEDING  An applicant for patent must file a petition.  Must be filed within 1-year from the date of the first publication of a same or substantially the same claim.  Petition shall set forth with particularity the basis for finding derivation of the claimed invention, without authorization.  Petition shall be made under oath and supported by substantial evidence.  Director determines whether or not to institute a derivation proceeding. Determination is final and non-appealable

29. TIPLA § 3 Derivation Proceedings 35 U.S.C. § 135 (cont’d) DETERMINATION BY PTAB  The Patent Trial and Appeal Board (PTAB) determines whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application  The PTAB may correct the naming of the inventor in any application or patent at issue  Director to issue regulations

30. TIPLA § 3 Derivation Proceedings 35 U.S.C. § 135 (cont’d) DEFFERAL OF DECISION  The PTAB may defer action on a petition until: the expiration of 3 months for the issuance of the patent, or the termination of a post-grant review, inter partes review, or reexamination

31. TIPLA § 3 Derivation Proceedings 35 U.S.C. § 135 (cont’d) FINAL DECISION  If adverse to the claims, the final decision constitutes the final refusal by the Office  If adverse to the claims and no appeal or other review has been or can be taken, the final decision shall constitutes cancellation of the claims

32. TIPLA § 3 Derivation Proceedings 35 U.S.C. § 135 (cont’d) SETTLEMENT  Parties may terminate the proceeding by filing a written statement reflecting an agreement to correct the named inventors  PTAB is to act consistent with the agreement unless the agreement is inconsistent with the record  The agreement can be confidential if requested

33. TIPLA § 3 Derivation Proceedings 35 U.S.C. § 135 (cont’d) ARBITRATION  The entire derivation proceeding or any aspect thereof may be determined by arbitration  Notice of any arbitration award is to be given to the Director  Determination is dispositive of the issues to which it relates  The Director is not precluded from determining the patentability of the claimed inventions involved in the proceedings.

34. TIPLA § 3 Derived Patents 35 U.S.C. § 291 The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section.

35. TIPLA § 3 Derived Patents 35 U.S.C. § 291 (cont’d) FILING LIMITATION  An action under this section may be filed only 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.

36. TIPLA § 3 Derivation Proceedings Effective Date 18 months from date of enactment  March 16, 2013 Applies to any application or patent issuing thereon that contains or contained at any time:  (A) a claim that has an effective filing date that is on or after the effective date; or  (B) a specific reference under section 120, 121, 365(c) to any patent or application that contains or contained at any time such a claim.

37. TIPLA § 3 Derivation Proceedings Effective Date INTERFERING PATENTS  Interference proceedings in effect on the day before the 18-month effective date apply to each claim of an application or issued patent that contains or contained at any time: (A) a claim that has an effective filing date that occurs before the effective date; or (B) a specific reference under section 120, 121, 365(c) to any patent or application that contains or contained at any time such a claim.

38. TIPLA § 4 Oath or Declaration 35 U.S.C. § 115, 118 Oath or declaration may be included with an executed assignment Assignee of the invention may file an application for patent  Patent may be granted to the real party in interest  Notice is provided to the inventor Effective Date  1 year from date of enactment  September 16, 2012  Applies to any patent filed on or after effective date

39. TIPLA § 5 Defense to Infringement Based on Prior Commercial Use 35 USC 273 Provides a person accused of infringing a claim a defense if they developed the invention and have been using it.

40. TIPLA § 5 Defense to Infringement Based on Prior Commercial Use Pre-amendment: Defense for a person accused of infringing a business method patent if the person had reduced the subject matter to practice 1 year before the filing date, and had commercially used the subject matter before the effective filing date.

41. TIPLA § 5 Defense to Infringement Based on Prior Commercial Use Amended: The defense is available to a person accused of infringing any patent that issues on or after September 16, 2011. The person must have commercially used the subject matter... In the US, at least 1 year before: 1. The effective filing date, and 2. The date the invention was publically disclosed

42. TIPLA § 5 Defense to Infringement Based on Prior Commercial Use Timeline: Patent Filing Date Qualifying commercial use 1 year Too late

43. TIPLA § 5 Defense to Infringement Based on Prior Commercial Use Limitations Personal defense Transferrable – Only with entire enterprise Site restrictions – Transferee may not claim the defense at new sites Derivation – May not assert defense if the use was derived from the patentee

44. TIPLA § 5 Defense to Infringement Based on Prior Commercial Use Limitations – con’t Not a general license of the patent – Only extends to specific subject matter that was in qualifying use. Variations in quantity or volume of that use are allowed. Abandonment – May not claim defense based on a use that was abandoned

45. TIPLA § 5 Defense to Infringement Based on Prior Commercial Use Limitations – con’t Non-profit research lab – May continue noncommercial use University Exception – If the claimed invention, when invented, was owned or obligated to be assigned to a University, this defense does NOT apply. Exception to the Exception – If the claimed invention could not have been done with Federal funds.

46. TIPLA § 5 Defense to Infringement Based on Prior Commercial Use Limitations – con’t Unreasonable Assertion – If a person pleads this defense, is found to infringe, and fails to demonstrate a reasonable basis for asserting the defense, then the case is exceptional for purposes of awarding attorney fees.

47. TIPLA § 6 Post-grant Review Proceedings 35 USC 311 Provides mechanisms to invalidate claims in issued patents.

48. TIPLA § 6 Post-grant Review Proceedings Pre-amendment: Inter Partes Reexamination Remain available until September 16, 2012. Change the standard for review: Instead of “a substantial new question of patentability,” the standard is now “reasonable likelihood that the requester would prevail.”

49. TIPLA § 6 Post-grant Review Proceedings Amended: Post-grant review & Inter partes review Timeline: Patent Filing Date Patent Grant Date Inter partes review 9 months Post-grant review

50. TIPLA § 6 Post-grant Review Proceedings – Post-grant review Post-grant review & Inter partes review Timeline: A post-grant review petition must be filed no later than 9 months after the grant of the patent Patent Filing Date Patent Grant Date 9 months Post-grant reviewInter partes review

51. TIPLA § 6 Post-grant Review Proceedings – Post-grant review What patents are subject to Post-grant review? Only patents that have an effective filing date later than 18-months after September 16, 2011. Sept. 16, 2011 March 16, 2013 18 months Patent effective filing date...

52. TIPLA § 6 Post-grant Review Proceedings – Post-grant review Petition – Request to cancel one or more claims of a patent The petition must identify the real parties in interest, and must identify with particularity each claim challenged, the grounds of the challenge, and evidence. Fee – To be set by the Director Rutherford B. Hayes

53. TIPLA § 6 Post-grant Review Proceedings – Post-grant review Petition – Request to cancel one or more claims of a patent on any grounds that can be raised under 282(b)(2) and (3) (A) any requirement of section 112, except that 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; or (B) any requirement of section 251. (Reissue) (2) Invalidity on any ground specified in Part II Includes 35 U.S.C. 100 – 35 U.S.C. 212 (3) Invalidity for failure to comply with:

54. TIPLA § 6 Post-grant Review Proceedings – Post-grant review Question – If failure to disclose the best mode can not be used as a basis to invalidate the patent, why should I disclose the best mode? It is a requirement to get a patent under 112, but how would the Examiner know if I did not disclose? Is 18 U.S.C. § 1001 : US Code - Section 1001: Statements or entries generally a deterrent?

55. TIPLA § 6 Post-grant Review Proceedings – Post-grant review Preliminary response to Petition – The patentee may object based on failure of the petition to meet any of its requirements The details on the timing of the preliminary response are to be set by the Director.

56. TIPLA § 6 Post-grant Review Proceedings – Post-grant review Institution of Post-Grant Review – The Director shall determine whether to institute the review within 3 months of receiving a preliminary response. This decision is final and nonappealable. The review can be authorized if “it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable,” or “by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.”

57. TIPLA § 6 Post-grant Review Proceedings – Post-grant review Relation to Other Proceedings or Actions Civil Action - If the petitioner or real party files a civil action for invalidity first, he may NOT subsequently institute a post-grant review. If the petitioner or real party files a post-grant review petition first, any subsequent civil action for invalidity is stayed. A counterclaim for invalidity does NOT count as a civil action for invalidity for this subsection.

58. TIPLA § 6 Post-grant Review Proceedings – Post-grant review Relation to Other Proceedings – con’t Civil Action – Stay Exception If a civil action alleging infringement is filed within 3 months of the patent granting, and the patent owner moves for preliminary injunction, the civil action will NOT be stayed on the basis of a post-grant review petition or proceeding.

59. TIPLA § 6 Post-grant Review Proceedings – Post-grant review Estoppel Once a post-grant review has reached a final written decision regarding a claim, a petitioner or real party is estopped: Before the PTO – from maintaining a proceeding with respect to that claim, on any ground that was raised or reasonably could have been raised Civil Actions – in any patent case, from asserting invalidity of the claim, on any ground that was raised or reasonably could have been raised

60. TIPLA § 6 Post-grant Review Proceedings – Post-grant review Conduct of the Review The review shall be conducted by the Patent Trial and Appeal Board. The petitioner has the burden to prove unpatentability by a preponderance of the evidence. The patent owner may, by right, file one motion to amend to cancel any challenged claim, and propose a reasonable number of substitute claims for each challenged claim. The amendment may NOT enlarge the scope of the claims.

61. TIPLA § 6 Post-grant Review Proceedings - Post-grant review Conduct of the Review – con’t The final determination of the review shall be issued within 1 year of the date that the review was instituted. The Director may extend this by 6 months, for good cause. All the other details – To be prescribed by the Director.

62. TIPLA § 6 Post-grant Review Proceedings - Post-grant review Settlement A petitioner and the patent owner may settle, in a filed writing, before the merits of the proceeding. There is no estoppel attaches if the review is settled.

63. TIPLA § 6 Post-grant Review Proceedings - Post-grant review Decision of the Board Final written decision Director shall issue a certificate: Canceling unpatentable claims, Confirming patentable claims, and Incorporating new or amended claims Appeal Any party to the proceeding may appeal the final written decision to the Federal Circuit.

64. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Post-grant review & Inter partes review Timeline: An inter partes review petition may be filed after the later of: 9 months after grant of the patent, or the end of a post-grant review Patent Filing Date Patent Grant Date 9 months Post-grant reviewInter partes review

65. TIPLA § 6 Post-grant Review Proceedings – Inter partes review What patents are subject to inter partes review? Was the rules go into effect, any patent are subject to inter partes review. Sept. 16, 2011 Sept. 16, 2012 1 year

66. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Petition – Request to cancel one or more claims of a patent The petition must identify the real parties in interest, and must identify with particularity each claim challenged, the grounds of the challenge, and evidence. Fee – To be set by the Director

67. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Petition – Request to cancel one or more claims of a patent... 1. on grounds that could be raised under 102 or 103, and 2. only on the basis of prior art patents or printed publications.

68. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Preliminary response to Petition – The patentee may object based on failure of the petition to meet any of its requirements The details on the timing of the preliminary response are to be set by the Director.

69. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Institution of Inter Partes Review – The Director shall determine whether to institute the review within 3 months of receiving a preliminary response. This decision is final and nonappealable. The review can only be authorized if there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”

70. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Relation to Other Proceedings or Actions Civil Action - If the petitioner or real party files a civil action for invalidity first, he may NOT subsequently institute an inter partes review. If the petitioner or real party files an inter partes review petition first, any subsequent civil action for invalidity is stayed.

71. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Petitioner is served with infringement complaint Inter partes review available 1 year Inter partes review not available on a petition filed after one year Patent Owner’s Action

72. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Relation to Other Proceedings – con’t A counterclaim for invalidity does NOT count as a civil action for invalidity for this subsection.

73. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Petitioner is served with infringement complaint 1 year Patent Owner’s Action Petitioner counterclaims for invalidity Petitioner requests inter partes review

74. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Estoppel Once an inter partes review has reached a final written decision regarding a claim, a petitioner or real party is estopped: Before the PTO – from maintaining a proceeding with respect to that claim, on any ground that was raised or reasonably could have been raised Civil Actions – in any patent case, from asserting invalidity of the claim, on any ground that was raised or reasonably could have been raised

75. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Conduct of the Review The review shall be conducted by the Patent Trial and Appeal Board. The petitioner has the burden to prove unpatentability by a preponderance of the evidence. The patent owner may, by right, file one motion to amend to cancel any challenged claim, and propose a reasonable number of substitute claims for each challenged claim. The amendment may NOT enlarge the scope of the claims.

76. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Conduct of the Review – con’t The final determination of the review shall be issued within 1 year of the date that the review was instituted. The Director may extend this by 6 months, for good cause. All the other details – To be prescribed by the Director.

77. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Settlement A petitioner and the patent owner may settle, in a filed writing, before the merits of the proceeding. There is no estoppel attaches if the review is settled.

78. TIPLA § 6 Post-grant Review Proceedings - Inter partes review Decision of the Board Final written decision Director shall issue a certificate: Canceling unpatentable claims, Confirming patentable claims, and Incorporating new or amended claims Appeal Any party to the proceeding may appeal the final written decision to the Federal Circuit.

79. TIPLA § 6 Post-grant Review Proceedings Patent Filing Date Patent Grant Date 9 months Post-grant reviewInter partes review More time to file Smaller variety of invalidity claims may be raised Post-grant review Shorter time to file Greater variety of invalidity claims may be raised The Director may limit the number of reviews instituted during the first four 1-year periods (2012-2016)

80. TIPLA § 6 Post-grant Review Proceedings – Pending Interferences The Post-grant Review Proceedings rules go into effect on September 16, 2012. The Director shall create regulations regarding how to deal with any interference pending that date. The interferences may continue under the pre-amendment rules, or may be dismissed without prejudice.

81. TIPLA § 18 Transitional Program for Covered Business Method Patents This is one response to Business Method patents - A special instance of Post-grant review A post-grant review of a “covered business method patent” may be filed over a longer time frame than other post-grant reviews

82. TIPLA § 18 Transitional Program for Covered Business Method Patents Patent Grant Date Post-grant review of a covered business method patent is available 8 years after these regulations go into effect Petitioner is served with infringement complaint

83. TIPLA § 18 Transitional Program for Covered Business Method Patents A “covered business method patent” means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.

84. TIPLA § 18 Transitional Program for Covered Business Method Patents The petitioner must have been sued for infringement of the business method patent. There is a more limited set of prior art that an invalidity claim under 102 or 103 may be based on. The details of the regulations shall be established by the Director by September 16, 2012.

85. TIPLA § 7 Patent Trial and Appeal Board Director Deputy Director Commissioner for Patents Commissioner for Trademarks Administrative patent judges  Appointed by Secretary and Director Board of Patent Appeals and Interferences = PTAB

86. TIPLA § 7 PTAB Duties Review adverse decisions of examiners Review appeals of reexaminations Conduct derivation proceedings Conduct inter partes reviews and post-grant reviews Appeals, derivation proceedings, post-grant reviews, and inter partes reviews shall be heard by at least 3 members of the PTAB (designated by Director) TIPLA

87. § 7 APPEAL Examinations - Applicant may appeal the PTAB’s decision to the U.S. Court of Appeals for the Federal Circuit Reexaminations, Post-Grant, and Inter Partes reviews – applicant may appeal only to the U.S. Court Appeals for the Federal Circuit Derivation Proceedings – appeal to U.S. Court of Appeals for the Federal Circuit  Appeal dismissed if adverse party within 20 days files notice that the party elects to have further proceedings conducted as provided in section 146.  30 days to file civil action or PTAB’s decision governs further proceedings TIPLA

88. § 7 Effective Date The Amendments take affect on the expiration of the 1-year period beginning on the date of the enactment of the Act Exception  Reexaminations – effective on date of enactment of the Act TIPLA

89. § 8 PREISSUANCE SUBMISSIONS BY THIRD PARTIES “Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application…” Requirements  Concise description of the asserted relevance of the documents  Fee  Statement of compliance TIPLA

90. § 9 VENUE Strike U.S.D.C. for the District of Columbia and replace with U.S.D.C. for the Eastern District of Virginia  Sections 32, 145, 146, 154(b)(4)(A) and 293 of title 35  Section 21(b)(40 of the Trademark Act Effective on Date of enactment of the Act TIPLA

91. § 10 FEE SETTING Fees set and adjusted by the Director Fees must be set only to recover the aggregate estimated costs to the Office Every fiscal year the Director will consult with the Patent Public Advisory Committee on the advisability of reducing any fees, then may reduce fees Proposed fees must be sent to the PPAC or TPAC Publication in the Federal register Public Comment Period TIPLA

92. § 10 MICRO ENTITY Requirements  Qualifies as small entity  Inventor on no more than 4 previously filed U.S. utility patent applications  Gross income did not exceed 3 times the median household income for preceding calendar year  Ownership NOTE: Institutions of Higher Education TIPLA

93. § 10 ELECTRONIC FILING INCENTIVE Additional fee of $400 for not filing electronically  Does not include design, plant, and provisional patents  Takes effect 60 days after enactment of the Act TIPLA

94. § 11 FEES See handout TIPLA

95. § 12 SUPPLEMENTAL EXAMINATION A patent owner may request supplemental examination 3 months to conduct examination and issue a certificate Reexamination order “A patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent.”  Exceptions Effective 1 year after date of enactment of the Act TIPLA

96. § 14 TAX STRATEGIES DEEMED WITHIN PRIOR ART “…any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown … shall be deemed insufficient to differentiate a claimed invention from the prior art.” Exclusions Effective Date – date of enactment of the Act TIPLA

97. § 15 BEST MODE Section 282 of title 35 - Presumption of Validity; Defense Additional language:  “…except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be cancelled or held invalid or otherwise unenforceable…” TIPLA

98. § 16 MARKING Virtual Marking Effective Date – date of enactment Report False marking  Civil penalty  Civil action for damages Expired Patents TIPLA

99. § 17 ADVICE OF COUNSEL “The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.” TIPLA

100. § 18 TRANSITIONAL PROGRAM FOR COVERED BUSINESS METHOD PATENTS Transitional post-grant review proceeding established by Director to review the validity of covered business method patents Only if sued for/charged with infringement Once final written decision is issued, can’t assert that a claim is invalid on any grounds raised during transitional proceeding Effective Date – 1 year from date of enactment TIPLA

101. § 19 JURISDICTION AND PROCEDURAL MATTERS State Court Jurisdiction  No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights Court of Appeals for the Federal Circuit Patent, plant variety protection, and copyright cases Joinder of parties  Joinder of Accused Infringers TIPLA

102. § 22 USPTO FUNDING Patent and Trademark Fee Reserve Fund Effective Date – October 1, 2011 TIPLA

103. § 23 SATELLITE OFFICES Subject to available resources Within 3 years, 3 or more satellite offices Detroit  “Elijah J. McCoy United States Patent and Trademark Office” TIPLA

104. MISC. SECTIONS § 26 - Study of Implementation § 27 - Study on Genetic Testing § 28 - Ombudsman Program § 29 - Diversity of Applicants § 31 - International Patent Protections for Small Businesses TIPLA

105. § 30 SENSE OF CONGRESS “It is the sense of Congress that the patent system should promote industries to continue to develop new technologies that spur growth and create jobs across the country which includes protecting the rights of small businesses and inventors from predatory behavior that could result in the cutting off of innovations.” TIPLA

106. § 32 Pro Bono Program The Director shall work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.

107. TIPLA § 33 Limitation on Issuance of Patents No patent may issue on a claim directed to or encompassing a human organism. This shall not affect the validity of any patent issued before the enactment of this Act. Patent pending!

108. TIPLA § 34 Study of Patent Litigation The Comptroller General of the United States shall conduct a study of the consequences of litigation by non-practicing entities, or by patent assertion entities. Report to Congress - including recommendations for any changes to laws and regulations that will minimize any negative impact of patent litigation that was the subject of such study.

109. TIPLA Thank You! Questions?