America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D.

1. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY America Invents Act and Its Impact on Universities America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

2. Change from “first to invent” to “first to file” Post grant review Other procedural changes Changes affecting patent litigation “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY America Invents Act America Invents Act and Its Impact on UniversitiesGokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

3. Public disclosure - subject matter made available to the public by any means Earlier U.S. patent filings later published - information available to the public Grace period: 1 year Removal of geographic limitation for “prior use” “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY First to File America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

4. Can publish research results as long as a patent application is filed within 1 year of the publication - however be careful with other jurisdictions since majority of countries still use “absolute novelty” If you disclose, you are prior art against yourself (in other jurisdictions) Should still use a lab notebook to capture the invention - although interference procedure is going away, new derivation procedure will require extrinsic evidence to prove that the other inventor derived the invention from applicant’s original invention - “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY How Does First to File Affect Universities? America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

5. If B (publishes or applies after you disclose but before you file) makes variation on your invention it could be cited as a section 103 (obviousness) rejection of your application If a researcher intends to use a disclosure at an event, such as an academic conference, to establish U.S. patent rights under the grace period in the AIA, the information presented should be sufficiently complete and detailed “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY How Does First to File Affect Universities? America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

6. A disclosure that does not enable PHOSITA (person having ordinary skill in the art) to practice the invention may not anticipate third party’s filing In order to qualify as a grace period-starting disclosure, a disclosure need to be enabling “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY The Effect of Non-Enabling Disclosure America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

7. Because university researchers generally choose to publish first, the new AIA system gives universities an advantage. It creates an incentive for university researchers to publish first not only because of the university "publish or perish" tenure model, but also because public disclosure by publication is often much cheaper and quicker than preparing a patent application. Disclosure must be enabling to take advantage of the priority date “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY The Effect of Disclosure America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

8. Although the new law has a grace period for disclosures, it is a better practice to file before disclosure because of the uncertainties and litigation costs involved Consider filing provisional application. This will eliminate the situation where your own disclosure is used as a prior art against you in other jurisdictions If disclosed be sure that the disclosure is an enabling disclosure to claim priority “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Best Practice America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

9. Ex-parte reexamination - stays the same Patent owner or a 3rd party can file but 3rd party cannot participate in reexamination Patents and printed publications Threshold: substantial new question “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Post Grant Proceedings America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

10. Post-grant review - a new procedure Any ground can be raised Within 9 months of patent grant Threshold: it is more likely than not that at least one claim is unpatentable “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Post Grant Proceedings America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

11. Inter partes review - replaces the current inter partes reexamination 3rd party can file and can participate in the proceeding Estoppel applies 9 months after patent grant or after the conclusion of post grant proceeding Threshold: reasonable likelihood of success required for petition grant “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Post Grant Proceedings America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

12. Micro entity - 75% discount on fees Supplemental examination - by patent owner, no inequitable conduct issue Derivation proceedings - replaces interference proceeding Submission of prior art - by 3rd party, must be filed with the Patent Office before the earlier of either a notice of allowance or the later of 1) 6 months after publication of the patent application or 2) the date of the first rejection during examination. This provision will apply retroactively to all pending patent applications. Prioritized examination - $4,800 for large entity, $2,400 for small entity “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Other Changes America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

13. Prior use defense - any subject matter not only business method Limitation on joinder - questions of fact common to all defendants False marking -only the US has standing to sue for the statutory penalty Venue limitations - new venue is US District Court for the Eastern District of Virginia Best mode - no longer a litigation defense under Section 112 Advice of a counsel – lack of advice of a counsel cannot be used as a circumstantial evidence to show willful infringement “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Changes Affecting Litigation America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

14. Can be used as a defense against other patent owners other than universities Applies to patents issued on or after date of enactment of act “University exception” included, preventing assertion of this defense against patents on inventions which, at the time the invention was “made,” belonged to universities and technology transfer organizations Any subject matter not only business method patents For joint venture cases it may be better practice to assign the ownership to university to take advantage of the exception to the prior use right “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Prior Use Defense- What Does It Mean For Universities? America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

15. Started university technology transfer Universities and small businesses retain title to inventions under federally funded research programs Universities must: grant licenses rather than assign disclose government interest in the patent share income with inventors use residual income for research grant non-exclusive license to the government “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Bayh-Dole Act of 1980 America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

16. Since enactment: more than 5,000 new companies formed around university research over 3,000 patents a year approximately 30% value of NASDAQ rooted in university-based technology “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Bayh-Dole Act of 1980 America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

17. Upon enactment (September 16, 2011) Gives the USPTO authority to set fees Eliminates qui tam actions for false marking Prohibits claiming human organisms Eliminates “tax strategy patents” Changes inter partes reexamination standard Prohibits best mode defense in litigation Establishes limitations on joinder of defendants “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Effective Dates America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

18. Less than a year after enactment On September 26, 2011 15% surcharge is applied to patent-related fees Track I priority examination is reinstated On November15, 2011 $400 surcharge is imposed for patent applications not filed electronically “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Effective Dates America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

19. One year after enactment Inter partes review procedures are applicable to any patent issued before, on, or after the one year date Post-grant review procedures take effect, but apply only to patents on applications filed 18 months after enactment Transitional post-grant review procedures available for covered business method patents Filing by assignee is applicable to any application Third-party prior art submissions are available “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Effective Dates America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

20. After 18 months from enactment First-to-file is applicable to applications with an effective filing date on or after the 18-month date Derivation proceedings are applicable to any application with an effective filing date on or after the 18-month date “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Effective Dates America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

21. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Thank You America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

22. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Back Up America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

23. Qualifies as a small entity Has not been named on 5 or more previously filed patent applications, not including applications filed in another country, provisional applications under section 111(b), or international applications filed under the treaty defined in section 351(a) for which the basic national fee under section 41(a) was not paid; Did not in the prior calendar year have a gross income, as defined in section 61(a) of the Internal Revenue Code (26 U.S.C. 61(a)), exceeding 3 times the most recently reported median household income, as reported by the Bureau of Census; “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Micro Entity America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

24. and has not assigned, granted, conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the particular application to an entity that had gross income, as defined in section 61(a) of the Internal Revenue Code (26 U.S.C. 61(a)), exceeding 3 times the most recently reported median household income, as reported by the Bureau of the Census, in the calendar year proceeding the calendar year in which the fee is being paid, other than an entity of higher education where the applicant is not an employee, a relative of an employee, or have any affiliation with the entity of higher education. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Micro Entity (cont.) America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

25. A patent owner can ask for supplemental examination to consider new or corrected information believed to be relevant to the patent If the patent owner’s request raises “a substantial new question of patentability,” a reexamination similar to existing ex parte reexamination is instituted No inequitable conduct allegations can be based upon the information considered, reconsidered, or corrected during a supplemental examination Provides an alternative to having a court consider misconduct and validity issues in a later patent infringement litigation. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Supplemental Examination America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

26. Initiated by patent applicant in USPTO (35 U.S.C. § 135) An applicant may file a petition to institute a derivation proceeding in the USPTO on grounds that the inventor of an earlier patent application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application was filed Must be filed within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention Must be supported by “substantial evidence” “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Derivation Proceedings America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

27. Director determines whether a petition meets the standards and then may institute a derivation proceeding – this determination by the Director is final and non-appealable Initiated by patentee in court (35 U.S.C. § 291) A patent owner may file a civil action against an 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 Must be filed 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 an inventor “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Derivation Proceedings (cont.) America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

28. A “covered business method patent” is a “patent that claims a method or corresponding apparatus for performing data processing operations or other operations utilized in the practice, administration or management of a financial product or service, except that the term shall not include patents for technological inventions” The Act provides for a post-grant review proceeding to determine the validity of these patents Eligible petitioners are entities who have been sued for or charged with infringement of the patent Provision expires eight years after enactment “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Transitional Post Grant Validity Review of Covered Business Method Patents America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

29. Plaintiff must show that questions of fact common to all defendants will arise in the action; common questions of law alone are insufficient; An allegation that all defendants infringe the same patent is no longer sufficient to justify suit against multiple unrelated defendants Accused infringers may waive the requirement Joinder section is effective for civil actions commenced on or after September 16, 2011 “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Limitation on Joinder America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

30. New venue is United States District Court for the Eastern District of Virginia These provisions are: 35 U.S.C. § 32 (Suspension or exclusion from practice); § 145 (Civil action to obtain patent); § 146 (Civil action in case of interference); §154(b)(4)(A) (Provisional rights, Appeal of patent term adjustment determination); and § 293 (Nonresident patentee; service and notice on patentees not residing in the U.S.) Changes apply to cases filed after enactment “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Venue Limitation America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

31. 35 U.S.C. § 282 is amended to carve out the failure to disclose the best mode from the other § 112- based litigation defenses The Act does not eliminate the best-mode requirement from § 112 for patent applications As a result, a patent applicant must disclose the best mode to get a patent but seemingly cannot be penalized for failing to do so once a patent is issued This section takes immediate effect, but only applies to cases commenced on or after the date of enactment “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Best Mode America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

32. Section § 292 eliminates private citizen standing to bring cases to recover the statutory penalty Only the United States has standing to sue for the statutory penalty Private suits to recover actual damages for competitive injury still permitted Goes into immediate effect as to all cases pending or commenced on or after the date of enactment “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY False Marking America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.

33. Failure to seek or produce advice of counsel no longer may be used to prove willfulness or induced infringement New § 298 codifies Federal Circuit case law that there is no affirmative obligation for alleged infringers to obtain advice of counsel. See In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc) ; Knorr-Bremse Sys. v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc) “IP Management @ Universities”Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Seeking Counsel’s Advice America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D. Patent Attorney U.S.A.