Presentation Transcript

1. Patenting in the Age of Crowdsourcing: An Expanded Opportunity for Third Party Participation

   Law Review CLE April 2013 Sherry L. Murphy Myers Bigel Sibley & Sajovec Raleigh, North Carolina
2. Patent Prosecution Ex Parte procedure Between Applicant and the Patent Office Normally an exchange between Applicant’s representative and an Examiner Few instances where a third party may intervene
3. Patent Prosecution – 3rd Party Options for Comment Old Rule 1.99: third party submission of art Restricted ability to submit relevant art within 2 month window from publication Limited to 10 pieces of art No comments or notations allowed $180 fee
4. Patent Prosecution – 3rd Party Options for Comment Very rarely used Can bypass rule compliance by sending references directly to attorney of record, relying on Rule 56 duty compliance for the attorney to submit them to the Patent Office No guarantee the refs will actually be submitted
5. Patent Prosecution – 3rd Party Options for Comment 37 CFR 1.291 – Protests Filed before publication or notice of allowance Can file protest after publication if patent owner consents Patents, publications, or other information No limits on number of documents Concise explanation of relevance required
6. Citations in Patent Files 37 CFR 1.501 Submit patents or printed publications in file of issued patent Statement believe pertinent to patentability of a claim Serve on patent owner Can remain anonymous
7. America Invents Act Signed into law September 16, 2011 A multitude of changes to many statutes with various effective dates Update procedures and bring more consistency with patent systems in other countries in the world
8. America Invents Act Section 8 third party art submission provisions took effect September 16, 2012 Final rules published July 17, 2012 Art submission provisions apply to: Any application filed before, on, or after this date i.e., Any application within the publication/examination timing requirements,even if abandoned (pendency not required) Any non-provisional utility, design, and plant application, as well as any continuing application
9. Patent Reform Under the AIA – More Public Participation “[M]ost patent applications will not only be promptly published, but members of the public will have the opportunity to submit information relevant to patentability that the patent examiner must consider before making a decision to issue a patent.” Robert A. Armitage, Understanding the America Invents Act and Its Implications for Patenting, AIPLA Q.J. vol. 40:1, Winter 2012
10. Patent Reform Under the AIA – Improving Patent Quality “This provision provides a mechanism for third parties to contribute to the quality of issued patents by submitting to the Office, for consideration and inclusion in the record of patent applications, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application.” Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, Fed. Reg. Jan. 5, 2012
11. Crowdsourcing Patents
12. Crowdsourcing Patents Crowdsourcing: obtaining ideas, content or services from a large and undefined group of people, such as an online community, rather than from more traditional employees or service providers
13. What is submitted 35 U.S.C. 122(e) Any patent, published patent application, or other printed publication of potential relevance to the examination of the application (need not be prior art) Must include a concise description of the asserted relevance of each submitted document Statement confirming the submission made in compliance with the statute
14. What is Submitted
15. What is Submitted
16. What is Submitted
17. Examiner treatment Examiner must consider any proper submission Treated like an IDS, and same format requirements for listings of references References considered will be printed on the face of the patent along with other references considered during prosecution
18. Third Party Submissions: Old Versus New
19. Third Party Submissions: Old Versus New – Cont’d
20. But: Will We Use It? Patent practitioners/competitor companies Other members of the public
21. Strategic Advantages to Submitting Art in Another’s Application? Help guard against patents related to your business that are overbroad More favorable standards of review Broadest reasonable interpretation of claims No presumption of validity No estoppel effect
22. Hypothetical During a freedom to operate search for her company’s new widget, Ann Attorney comes across a pending patent application with extremely broad claims Claims possibly read on the widget Ann does a prior art search to probe validity should the broad claims ultimately issue
23. Hypothetical Ann finds three references that she is excited about because they seem to build a strong case of obviousness against the claims Ann decides to take advantage of the new opportunity under the AIA to submit the references in the application She can submit anonymously through a firm No fee required because it is her first submission and there are only 3 references Her concise statement of relevance makes it easy for examiner to apply them to a rejection
24. What may happen? The examiner picks up the submissions and proceeds to reject the application over the three references
25. What may happen? The examiner considers the references and statement, but does not decide to use them, but rather applies the same art he is more familiar with and has been using in other, similar cases
26. Results Patent Applicant is provided opportunity to study the references and argue/amend, and include additional fall back positions in dependent claims May no longer read on widget; or May still read on widget
27. Results Applicant may also think application is more valuable and be encouraged to put more effort into the patent family then they otherwise would have
28. Results References are formally considered by the examiner and printed on the face of the patent, and the claims enjoy a presumption of validity over the references
29. Presumption of Validity As a general matter, every patent is presumed valid, and each claim of any patent is presumed valid irrespective of the validity of any other claim Given this statutory presumption, a patent challenger has the burden of proving invalidity by clear and convincing evidence "Clear and convincing” evidence is that which gives the finder of fact an abiding conviction that the truth of the proponent’s factual contentions are “highly probable” AstrazenecaAB v. Mylan Labs., Inc. (In re Omeprazole Patent Litig.), 490 F. Supp. 2d 381, 500 (S.D.N.Y. 2007)
30. Presumption of Validity When a party asserts invalidity of a patent based on prior art references that were before the patent examiner when he allowed the patent claims, the difficulty of overcoming the presumption of validity is greater than it would be if the evidence relied on was not before the examiner The party attacking validity has the burden of overcoming the deference that is due to a governmental agency presumed to have done its job properly
31. Hypothetical – no submission Ann, instead, decides to hold the references in a file along with her opinion that any patent issuing on widget is invalid, and the company is advised to go forward with sales Patent application may be abandoned, or issue on more narrow claims no longer covering widget, with no continuation filed; or Patent issues covering widget
32. Hypothetical – no submission Patent issues covering widget Infringement may never be detected Company may decide to stop selling widget Patent owner may not litigate; may seek to license or assign Litigation is expensive, and there are other options that may be pursued short of litigation Ann should not rely on the pursuit of another strategy, however, and discount the costs and commitment of litigation Patent owner may also assign his patent to a more aggressive party (e.g., competitor or NPE)
33. Hypothetical – no submission Patent owner alleges infringement References were not considered during prosecution, so no deference based on examiner’s consideration But, claims still have presumption of validity Many months and high cost before issue is even reached in litigation More limited ability for patent owner to amend claims to get around references at this point Owner cannot file broadening amendments in reissue if more than 2 years from issuance Owner can request reexamination, but costly May be intervening rights
34. Hypothetical – no submission Ann could challenge the issued patent with inter partes review Replaces inter partes reexamination under the AIA Available for all patents, regardless of priority date Prior art limited to patents and printed publications Can be brought by the Company within 1 year of a litigation being asserted against it; litigation may be stayed Limited discovery; final decision in about 18 months
35. But: Will We Use It? Patent practitioners/competitor companies Other members of the public
36. Criticisms Who wants to spend their spare time to do an art search and put together a formal IDS submission in a patent application? Will a non-attorney be able to submit a legally sound description of the relevance of the submitted references? Ability to read and properly construe the pending claims? Understanding of patentability requirements?
37. A joint project between the New York Law School and the USPTO Funded by GE, HP, IBM, Article One Partners, Microsoft, Open Innovation Network, Red Hat, Intellectual Ventures Original pilot ran June 2007 to June 2009 Limited to 400 applications Limited to software and business methods 2,700 registered reviewers from more than 140 countries (most from U.S.) Examiners used art in about 20% of applications
38. Second pilot ran Oct. 2010 to Sept. 2011 Expanded to biotech, telecommunications, others USPTO sent notices encouraging applicants to elect to participate
39. Declared itself a success in third-party participation to improve patent quality The project was “so successful that the America Invents Act (AIA) makes provision for the USPTO to implement a Peer-to-Patent type system. And that is just what is happening.” “Best of all, you will no longer be limited in the areas of technology for which prior art my be submitted. Everything is fair game!”
40. Article One Partners Organization offering cash rewards to public patent searchers who uncover the best evidence A client pays to set up a research project, or “study,” for registered searchers to conduct Normally used for patents involved in litigation or pre-litigation research
41. Applications are now open to third-party submissions After September 16, 2012 Must comply with IDS-like formatting requirements Pay fee for submitting more than three references
42. Applications are now open to third-party submissions Examiner-initialed reference listing may be the only formal indication to Applicant Participants of e-Office Action program may be notified of third-party submissions Check initialed listings against prosecution records
43. Third Party Submissions – Initial Statistics As of December 2012, 270 third party submissions had been received, in 111 applications, in the three months since the new program started in September The art unit receiving the most was Technology Center 3700, which includes many software-related inventions such as those in electronic gaming devices and medical equipment
44. Third Party Submissions – Initial Statistics PTO Director, David Kappos, noted, “when looking at the spread of submissions as a whole, it’s important to note that there are not a lot of classifications untouched.” Director Kappos concludes that this demonstrates (along with the use of the new post-grant review procedure) that the public finds valuable the new ways to interact with the PTO and they will contribute quickly to improved patent quality
45. What Has Happened thus Far? Almost all of the submissions are filed by a registered practitioner (patent attorney or patent agent) Many are filed after a first Office Action has been received Most cite only 1-5 references Most are not used by the Examiner One examiner commented that the reference submitted was no more relevant than the art already applied in the Office Action
46. General Impressions Thus Far Most have no impact on examination There were, however, a couple that did make a difference in the examiner’s rejections and/or the applicant’s amendments
47. Europe – a comparison Article 115 EPC and Rule 114 EPC Third party submissions can be made during prosecution any time after publication Can remain anonymous, and no estoppel Observations can be as short or as long as desired, though the EPO favors “well-structured and concise third-party observations” *With comments from Dr. Richard Gibbs, Marks & Clerk LLP, Glasgow
48. Europe – a comparison Third party observations are filed in writing in an official language of the European Patent Office (English, French or German) and state the grounds on which they are based Observations will be communicated to the applicant, who may comment on them Often application that issues will also have an opposition filed
49. Europe – a comparison Opposition – inter partes proceeding that can be filed within 9 months after grant Real Party in Interest can remain anonymous Longer wait, more expensive it can become Oppositions only after patent is granted, much more expensive, and the process of getting a hearing can take several more years After validation, have to address patent on a country-by-country basis
50. Europe – a comparison Validation – when the EPO patent becomes a patent in individual European countries Some national courts give deference to the EPO, others will assess the facts independently
51. Europe – a comparison More flexibility in the issues raised in third party observations as compared to opposition Observations may be directed to anything concerning the patentability of the invention, e.g., novelty, inventive step (nonobviousness), sufficiency, unallowable amendments (added matter), and clarity In Opposition clarity cannot be raised as an initial ground to challenge the patent
52. A Word About Post-grant Review There is a new “post-grant review” in the US under the AIA that may be initiated within 9 months of grant of a US patent Rather than a next step in challenging a patent after third party observations, however, as perhaps an opposition in Europe may be considered, it is more like a mini-trial Real party in interest must be identified Limited Discovery Estoppel applies
53. Europe - Is it used? In practice, third party observations are rarely filed About 0.75% of examined applications, though rate has been increasing More common in biotech/chem cases than other technologies Parties submitting observations do not become party to the proceedings, and thus in practice can have little or no influence on the way the Examiner considers or decides the issues raised However, third party can monitor the proceedings and submit further observations
54. Europe - Is it used? Though no estoppel, there is concern that something raised in observations during prosecution and ignored and easily rebutted may make the same argument more difficult later The same or similar arguments may not be given much weight later in an opposition Therefore, some prefer to wait for opposition, where third party is able to participate and argue the case
55. Europe - Is it used? More than 80% of cases in which observations are filed receive only one observation, and most are not accompanied by reasoned argument More than half of the time examiners have made use of the observations About a third of applications in which observations have been filed are opposed after grant
56. Europe - Is it used? EPO promoting third party observations by included new tab when looking at the status of an application to an online fillable form for ease of submission Personal details of the submitter are not required to be provided, but the third party could choose to do so to be given opportunity to correct any formal deficiencies in the submission
57. PCT Applications WIPO introduced July 2, 2012 Can submit 3rd party observations in PCT applications in the PatentScope search system Searchers will notice a button marked for such submissions
58. PCT Applications Timing: From time of publication until 28 months from priority date Content: Submit relevant art for novelty and inventive step Submit statement of relevance Must have WIPO account and indicate real party in interest, though may elect to keep confidential with respect to applicant and public records Each party may only submit observations once in an application Can submit comments in any of the 10 PCT languages and references in any language
59. PCT Applications What happens: Applicant may, but is not required to, respond Art will be forwarded to ISA if search report is not yet released, which may or may not use it Designated states are notified Eliminates need to separately file third party observations in multiple jurisdictions But how many PCT applications actually enter the national stage?
60. WIPO Comments on PCT system “This additional feature is an example of using the power of the Internet to assist in quality outcomes in the patent process.” “As of mid-September, 18 third-party observations had been submitted via the system. While relatively small, the seriousness of the submissions thus far vindicates the usefulness of the new facility.”
61. Third Party Submissions – Will We Use It in the U.S.? Perhaps under the right circumstances Clearly unpatentable claims, need FTO clearance or want to aid in limiting portfolio of competitor
62. Third Party Submissions – Will We Use It in the U.S.? May become more common than current practice, but will likely still be relatively rare Though more time is provided, still restricted to provide references and comments before examination has begun or less than 6 months after publication Examiners not accustomed to using such submissions
63. Third Party Submissions – Will We Use It in the U.S.? Active competitors monitoring for similar patent applications Maybe by volunteers/searchers funded by a nonprofit organization who are actively seeking applications that fit into the time periods
64. Third Party Submissions – Will We Use It in the U.S.? May be better, strategically, to wait and let examination run its natural course instead of providing opportunity and impetus for Applicant to craft claims around references Time and expense inherent in the patent prosecution process in many cases is its own limiting factor on the issuance of patents
65. Time Will Tell Questions? Comments? http://www.myersbigel.com smurphy@myersbigel.com