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The U.S. Patent System is Changing – A Summary of the New Patent Reform Law. The ACC, Wine, and U.S. Patent Law Reform. The ACC, Wine, and U.S. Patent Law Reform. U.S. Patent Des. 127,007 "Design for a Wine Bottle". U.S. Patent No. 8,061,538 "Wine Rack" . “Patent Reform” is Here.
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The U.S. Patent System is Changing –A Summary of theNew Patent Reform Law
“Patent Reform” is Here • The America Invents Act was passed by Congress late summer. It was signed by the President (and therefore enacted) on September 16, 2011. • So, the biggest change in our patent system since 1952 is now going to happen. (In fact, some parts of the law are already in effect.) • When signing the law, the President said: “I am pleased to sign the America Invents Act. This much-needed reform will speed up the patent process so that innovators and entrepreneurs can turn a new invention into a business as quickly as possible.”
Key Provisions • Changes U.S. to a First-to-File System • Effective March 16, 2013 • Changes what is Prior Art • Effective March 16, 2013 • Now for Prior User Defense • More Review Procedures in the Patent Office to Challenge Validity • Effective Sep. 16, 2012 • Other Provisions of Interest • Effective now (Marking and Prioritized Examination) • Effective Sep. 16, 2012 (Assignee filing)
First-to-File • The First-to-File System comes into effect 18 months after enactment (March 16, 2013). Until then, the current system remains in effect. • “Race to the Patent Office” • Eliminates interference proceedings (no longer litigate "first to invent" issues) • Changes definition of “prior art” to eliminate the ability to "swear behind" prior art cited against patent application • First-to-File system will not apply to any applications with a proper claim of priority earlier than March 16, 2013.
Prior Art • Changes go into effect with First-to-File • The “prior art” against which patentability is judged has been expanded. • Anywhere (scope expansion) in the world before the filing date (time expansion): • Patented • Described in a printed publication • In public use • On sale • Otherwise available to the public (new-scope expansion- expect litigation on this point)
Prior Art • “Prior art” also includes U.S. patent applications (or PCT applications designating the U.S.) that are later patented or published • These are prior art as of their earliest effective filing date, which can be a foreign application • Prior law limited this to the earliest actual U.S. filing date • Cannot “swear behind” as allowed under prior law
Prior Art • Obviousness • Judged as of effective filing date (rather than “at the time the invention was made”) • Patent applications, even if "secret," considered as of filing and before published (most other countries base on publication except for novelty) Reform: Obviousness includes secret prior art. Effective Filing Date
Prior User Defense • The Prior User Defense has been expanded. • Previously limited to methods of doing or conducting business • Now covers any “invention” • Effective now (i.e., applies to all patents issued after September 16, 2011) • Provides a defense to infringement if -- • Accused infringer made commercial use of the invention in the U.S, and • The commercial use occurred more than 1 year before effective filing date
Prior User Defense • This is a “personal” defense • Cannot be licensed or assigned by itself (or expanded by acquisition) • Must show continuous use • Not a general license for the entire patent (only extends to the thing that was used) • Interplay with Trade Secrets • May increase the value and desirability of maintaining trade secrets • If successful, allows continued commercial use of anything later patented by a third party
Validity Challenges and Reexamination • Third-Party Pre-Issuance Submissions • Ex Parte Reexamination • Inter Partes Reexamination • Post Grant Review (PGR) • Inter Partes Review (IPR) • Supplemental Examination • The new procedures take effect September 16, 2012
Challenges Pre-Issuance Submissions (before earlier NOA or later of first rejection/publication + 6 mths ) Ex Parte Reexam (continues as normal) Post-Grant Review (only by a third party and up 9 months after patent issues) Inter Partes Review (after the later of 9 months after issuance or after post-grant review) Patent Grant
Pre-Issuance Submissions • Any third party can file (can be a “straw man”) • Patent applications, patents, or other printed publication of potential relevance • Time limit -- earlier of (i) allowance or (ii) later of 6 months after publication or first rejection • Must include description of each document's relevance • Filer cannot otherwise communicate with the patent examiner • Applies to all applications pending on or after September 16, 2012
Post-Grant Review Post-Grant Review Inter Parties Review • Standard • "more likely than not" that at least 1 of the challenged claims is unpatentable • Grounds • Any section 102/103 prior art • Section 112 (enablement and definiteness) • Some discovery available • Standard • Substantial new question of patentability • Grounds • Prior art patents and printed publications • Anticipation or obviousness • Some discovery available • Any third party can file -- do not need to be threatened. But, there is a preclusion against using the same defenses later in litigation. • The fee to file one of these may be very steep, such as $40,000 or more. But, cheaper (and faster) than litigation.
Supplemental Examination • By Patent Owner • Consider, reconsider, or correct information believed to be relevant to patent • Patent Office has 3 months to determine if substantial new question of patentability • If initiated, addresses all identified substantial new questions (without limitation to patents and printed publications). So broader than current ex parte reexamination. • Would typically be used to “fix” a patent about to be enforced
Patent Office Procedures • Prioritized Examination • Patent Office Funding
Prioritized Examination • Can request “prioritized examination” of an application for a fee of $4800 • Request must be filed at the time the application is filed • No need to give a reason • Moves to the top of the Examiner’s queue • In effect now, but currently limited to 10,000 per year
Patent Office Funding • PTO has authority to set its own fees • The fees to approx. actual PTO costs • Immediate 15% surcharge • Proposed Fee Increases • Suppl. Exam- $5,180 + $16,120= $21,300 • Reexams – Ex parte Reexam increased from $2,520 to $17,750 • Inter Partes Review - $48,000?
Patent Marking • False Marking and Virtual Marking. • False marking penalties reformed. • Can “mark” products via reference to a website. • Effective now.
Observations • First to File makes the U.S. patent system more similar to other countries • March 16, 2013 (critical date) • Expect companies may file more provisional applications • Even with First to File, detailed inventor records remain important. • Because of the Post-Grant Review time limit, early notice of competitor patents is even more critical— consider Monthly patent watch and assessment. • Virtual Marking – consider for patent marking • Supplemental Examination – consider before litigating