SEVEN THINGS YOU MAY NOT KNOW ABOUT THE NEW PATENT REFORM LAW (SOON TO BE UPON US)

1. SEVEN THINGS YOU MAY NOT KNOW ABOUT THE NEW PATENT REFORM LAW(SOON TO BE UPON US) PROF. PAUL JANICKE UNIVERSITY OF HOUSTON LAW CENTER SEPTEMBER 2011

2. 1. WE ARE NOT GOING TO A “FIRST TO FILE” SYSTEM • THE SENATE FLOOR REMARKS AND THE HOUSE REPORT MAKE CLEAR THAT THE RULE WILL BE: • IN A CONTEST BETWEEN INDEPENDENT INVENTORS, THE VALID CLAIM WILL GO TO THE FIRST TO PUBLICLY DISCLOSE

3. FIRST-TO-FILE IS THE DEFAULT RULE • WHERE NO ONE HAS PUBLICLY DISCLOSED, THE FIRST TO FILE WINS • MEANING OF “DISCLOSE” IS NOT 100% CLEAR • PROBABLY INTENDED TO COVER ALL THREE TYPES OF PRIOR ART: • PATENTS AND PRINTED PUBLICATIONS • PUBLIC USES • PUBLICLY ACCESSIBLE OFFERS FOR SALE

4. EXAMPLE • JANUARY A INVENTS • FEBRUARY B INVENTS • MARCH B PUBLICLY USES • APRIL A FILES • MAY B FILES • B WINS, EVEN THOUGH A WAS FIRST TO INVENT AND FIRST TO FILE • A IS BARRED BY THE PUBLIC USE • B IS SAVED BY HIS “GRACE PERIOD”

5. SOME PROCEDURAL STICKINESS • PTO KNOWS NOTHING ABOUT THE PUBLIC USE • PTO WILL ISSUE A’S PATENT (INVALIDLY) • WHEN B’S APPLICATION IS EXAMINED, B WILL NEED TO ESTABLISH THAT HE WAS FIRST TO PUBLICLY DISCLOSE [NEW TYPE OF “RULE 131” AFFID.] • B’S APPL. SHOULD THEN BE ALLOWED

6. 2. MOST ONE-YEAR CLOCKS FOR TIME BARS WILL BE ABOLISHED • OFFERS FOR SALE AND PUBLIC USES WILL NOW BE WORLD-WIDE • THEY INSTANTLY BAR ANYONE WHO IS NOT ALREADY ON FILE SOMEWHERE (PRIORITY DATE), EXCEPT WHERE AN INVENTOR TRIGGERED THE BAR

7. THE GRACE PERIOD ONLY FOR FIRST-INVENTOR-TO-PUBLISH • WHERE AN INVENTOR’S WORK TRIGGERED THE BAR, DIRECTLY OR THROUGH AN INTERMEDIARY: • HE GETS A ONE-YEAR GRACE PERIOD IN WHICH TO FILE • ANY PARIS CONVENTION FILING WILL DO

8. 3. INVENTION DATE IS HERE TO STAY FOR QUITE SOME TIME • THE PHASE-IN OF “NEW” PRIOR ART PROVISIONS IS PAINFULLY SLOW • NEW APPLICATIONS FILED AFTER MAR. 16, 2013, WITH NO EARLIER PRIORITY CLAIM, ARE UNDER “NEW” PRIOR ART • BUT >>>

9. ALL NOW-EXISTING PATENTS • ALL APPLICATIONS NOW PENDING • AND PATENTS ISSUING THEREON • ALL APPLICATIONS FILED UP TO MAR. 16, 2013 • AND PATENTS ISSUING THEREON • ALL LATER APPLICATIONS, IF THERE IS ANY CLAIM TO EARLIER PRIORITY • AND PATENTS ISSUING THEREON • ARE UNDER THE OLD LAW!

10. RESULT: • WE SHOULD EXPECT TO SEE LITIGATION DEFENSE OF EARLIER INVENTORSHIP BEING ADJUDICATED UNTIL ABOUT 2025; MAYBE LONGER • WE SHOULD NOT SAY INTERFERENCES HAVE BEEN ABOLISHED, OR ARE EVEN OBSOLESCENT, UNTIL AT LEAST 2020

11. 4. BEST MODE CAN NOW BE CONCEALED • EVEN DELIBERATELY • § 15 OF THE BILL: • “. . . EXCEPT THAT THE FAILURE TO DISCLOSE THE BEST MODE SHALL NOT BE A BASIS ON WHICH ANY CLAIM OF A PATENT MAY BE . . . HELD INVALID OR OTHERWISE UNENFORCEABLE” >>>

12. WHY DID THEY KEEP BEST MODE IN § 112? • DOES IT HAVE SOME LINGERING EFFECT? • PTO HAS INDICATED AN INTENTION TO CONTINUE TO ENFORCE IT (SOMEHOW)

13. 5. PENITENCE“SUPPLEMENTAL EXAMINATION” § 10 OF H.R. 1249, NEW 35 U.S.C. § 257(c) • INEQUITABLE CONDUCT CAN NOW BE CURED BY A POST-GRANT CLEANSING PROCEDURE • ANY WITHHELD INFORMATION CAN BE BROUGHT FORWARD TO PTO • IF CLAIMS ARE RE-ALLOWED, THIS INFO IS BLOCKED IN COURT

14. CONDITIONS FOR CLEANSING • CANNOT COMMENCE OR CONTINUE SUPPLEMENTAL EXAM IF PATENTEE HAS BROUGHT A PENDING INFRINGEMENT ACTION • FILING OF SUIT TERMINATES THE SUPPLEMENTAL PROCEEDING • CANNOT COMMENCE SUPPLEMENTAL EXAM IF A D.J. SUIT IS PENDING AND THE CHALLENGER HAS PLEADED INEQ. CONDUCT “WITH PARTICULARITY”

15. 6. DECEPTIVE INTENT • “WITHOUT DECEPTIVE INTENTION” HAS BEEN REMOVED FROM THE STATUTE • CHANGE OF INVENTORSHIP (§§ 116, 256) • ERROR IN REISSUE (§ 251) • FILING A DISCLAIMER (§ 253) • SUING ON A PATENT CONTAINING AN INVALID CLAIM (§ 288) • FOREIGN FILING WITHOUT A LICENSE (§§ 184, 185)

16. WHY? • MAYBE: TOO MANY MENTAL STATES FOR A MODERN COMMERCIAL STATUTE • MAYBE: HARMONIZATION ATTEMPT

17. 7. PUBLIC SUBMISSION OF PRIOR ART AND OTHER INFO • WE HAVE LONG HAD 35 USC § 301: • ANY PERSON, AT ANY TIME, CAN SEND IN PRIOR PATENTS OR PUBLICATIONS FOR CONSIDERATION RE. SOMEONE ELSE’S APPLICATION • IF EXPLANATION IS GIVEN, WILL BE PLACED IN THE FILE • AMENDED § 301 ADDS A WRINKLE THAT COULD BE IMPORTANT >>>

18. A PERSON CAN NOW SUBMIT CLAIM-SCOPE POSITION STATEMENTS PREVIOUSLY MADE BY PATENTEE • THESE CAN BE USED FOR PURPOSES OF CONSTRUING A CLAIM IN • AN INTER PARTES REVIEW [LATE TYPE] • A POST-GRANT REVIEW [EARLY TYPE] • A REEXAM • CAVEAT PATENTEE: BROAD CLAIM- SCOPE ASSERTIONS CAN BITE!

19. AND WILL NOW BE ALLOWED TO ATTACK PENDING APPLICATIONSH.R. 1249 §8, ADDING 35 U.S.C. §122(e) • SUBMISSIONS OF PRIOR PATENTS AND PUBLICATIONS • SOME TIME CONSTRAINTS: • BEFORE NOTICE OF ALLOWANCE • OTHER LIMITS BASED ON APPL. PUBLICATION DATE OR CLAIM REJECTION

20. THE STATUTE SAYS THESE SUBMISSIONS ARE “FOR CONSIDERATION AND INCLUSION IN THE OFFICIAL RECORD” • EXPLANATIONS ARE REQUIRED • THEORETICALLY, THESE ARE NOT OPPOSITION PROCEEDINGS • PRE-GRANT OPPOSITIONS ARE STILL PROHIBITED BY 35 U.S.C. §122(c)

21. THINGS IN THE REFORM LEGISLATION THAT YOU PROBABLY DO KNOW ABOUT • ASSIGNEE FILING (FINALLY) • POST-GRANT REVIEW: • MUST FILE WITHIN 9 MONTHS OF ISSUE • ANY GROUND OF INVALIDITY • 3-JUDGE DECISION • BROAD PRECLUSIVE EFFECT – ANY GROUND THAT WAS “RAISED OR REASONABLY COULD HAVE BEEN RAISED”

22. INTER PARTES REVIEW: • CAN BE FILED ONLY AFTER 9 MONTHS FROM GRANT • GROUNDS: PATENTS AND PRINTED PUBLICATIONS ONLY • 3-JUDGE DECISION • BROAD PRECLUSIVE EFFECT RE. ITEMS THAT WERE OR COULD HAVE BEEN RAISED (PATENTS AND PRINTED PUBLICATIONS)

23. QUI TAM ACTIONS FOR MISMARKING ABOLISHED • ONLY U.S. CAN SUE IN GENERAL • A DAMAGED PRIVATE ENTITY CAN SUE FOR THE AMOUNT OF HARM CAUSED • BUT NO ONE CAN SUE FOR MISMARKING WITH AN EXPIRED PATENT NUMBER

24. TAX STRATEGY PATENTS ABOLISHED • “DEEMED TO BE WITHIN THE PRIOR ART” [BILL § 14] • WHY NOT AMEND § 101? • REJECTIONS WILL NOW BE UNDER §102?

25. TWO MINDS NEEDED! • FOR THE NEXT 15 YEARS OR SO, WE WILL BE LITIGATING OLD PATENTS UNDER THE OLD STATUTE • FOR THOSE CASES, PRIOR ART IS UNDER THE OLD RULES, WITH ONE-YEAR CLOCKS, ON-SALE AND PUBLIC-USE BARS THAT WORK ONLY IN THE U.S. • FOR THOSE CASES, INVENTION DATE COULD BE IMPORTANT