Joint Meeting of PIPLA and NJIPLA February 7, 2012 Kenneth N. Nigon RatnerPrestia

1. Joint Meeting of PIPLA and NJIPLA February 7, 2012 Kenneth N. Nigon RatnerPrestia knnigon@ratnerprestia.com

2. Overview • 10 Year / 1 Year Statute of Limitations for Disciplinary Proceedings • Oaths and Declarations • Supplemental Examination

3. Disciplinary Proceedings • Disciplinary Proceeding Must Be Commenced By The Earlier Of • 10 years after the date of the misconduct • 1 year after the date on which the misconduct is made known to the PTO • Timeline SOL Begins 7 Months 60 Days 30 Days Submit Case to Committee on Discipline Complaint Practitioner Response Investigate Preliminary Screening

4. Disciplinary Proceedings • Start of Statute of Limitations After Receiving Practitioner’s Response Balances • Need for Speedy Resolution • Opportunity for Thorough Review • Statute: “1 year after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office” • PTO Justifies 90 Day Delay As Needed To Determine If Allegation Has Merit

5. Oath and Declaration • Inventorship Important For Examination • Determines prior art • Inventorship needs to be established before examination • Power of Attorney • Power from a parent application is valid in the child application if no new inventors in child • Power granted by inventors is invalid if an inventor is added • Power granted by assignee remains valid

6. Oath and Declaration • Inventor Is Deceased Or Incapacitated • Essentially the same as current practice • No petition for assignee • Inventor Cannot Be Located or Refuses to Sign • Essentially the same as current practice • Need to prove proprietary interest • Need to show that you could not contact the inventor after diligent effort • Need to send non-signing inventor a copy of the application papers

7. Oath and Declaration • Changes • Assignee or, if necessary to preserve rights, person showing proprietary interest may sign declaration on behalf of non-signing inventor • Non-signing inventor who later signs an oath or declaration cannot revoke power of attorney

8. Oath and Declaration • Correction of Inventorship • “No Deceptive Intent” statement no longer required • National Phase Application • Same procedures may be used as under rule 48(a) to correct inventorship • Foreign Priority • No longer required on Declaration • Now required on Application Data Sheet

9. Oath and Declaration • Oath and Declaration • No longer need to be “first inventor” • Still need to be “original inventor” • Name simplified; Citizenship no longer required • Statement that inventor has reviewed and understands the application must be true for any child application including CIP’s if copy of declaration is used • Declaration statements may be made in an assignment

10. Oath and Declaration • Reissues • Assignee May Sign Declaration • Must Identify Any Broadened Claims • New Declaration from Inventors • “No Deceptive Intent” Statement No Longer Required

11. Supplemental Examination • Method to Cleanse Patent Supplemental Examination Timeline No SNQ 3mo Supp Exam Request Complete SNQ Ex ParteReexam* Certificate Issued

12. Supplemental Examination • Two Phases • Supplemental Examination • Fee - $5,180 + $16,120 = $21,300. If no SNQ $16,120 Will Be Refunded • Other Requirements listed in 37 C.F.R. § 1.610(b)(1) – (b)(12) • 10 “Items of Information” • Detailed explanation of how each Item of Information is relevant to each issue • Multiple Requests (Each With a Separate Fee) May Be Filed If More Than 10 Items

13. Supplemental Examination • Items of Information • Must Be In Writing • Supporting Documents Containing Information Relevant to Examination - Examples • Publication • Corrected 132 Declaration • Statement Concerning § 101 or § 112 • Non-English Documents Must Be At Least Partially Translated • Documents Longer Than 50 Pages Must Be Summarized

14. Supplemental Examination • Only Patent Owner May File • No Third Party Involvement • No Amendments • No Interviews • Certificate Issued Three Months After Complete Request Is Received • Does Substantial New Question of Patentability (SNQ) Exist?

15. Supplemental Examination • Ex Parte Reexamination if SNQ is found • No Patent Owner’s Statement • Not Limited to Printed Publications • Increased Petition Fees - $1,930 • Applies to Ex Parte and Inter PartesReexams • New Fees for Ex Parte Reexamination Not Associated With Supplemental Examination • $17,750 All But $4,320 Refunded if Request is Refused

16. Supplemental Examination • Fraud • If The PTO Becomes Aware of Material Fraud During Supplemental Examination or Ex Parte Reexamination It Shall Refer The Matter To The Attorney General • “Material Fraud” For Purposes of The Statute Is Narrower Than Therasense Inequitable Conduct

17. Supplemental Examination • Fees • Fees set under 37 C.F.R. §41(d)(2) • Must be set to recover average cost of service • Also have fee setting authority under §10(d) and (e) of AIA • Rules for this authority are not in place • Fees will be reviewed when rules for §10 authority are final

18. Supplemental Examination • Estoppel • Patent Shall Not Be Held Unenforceable For Information Reviewed In Supp Exam and Associated Ex Parte Reexam Proceeding • Two Exceptions • Actions under Food, Drug and Cosmetics act brought before Supplemental Examination • Defenses in ITC and Patent actions considered in a Supp Exam unless Supp Exam (and Reexam) completed before Action

19. Thank You