1 / 57

AMERICA INVENTS ACT A Look Into The Future

AMERICA INVENTS ACT A Look Into The Future. Todd R. Walters Buchanan, Ingersoll & Rooney PC. First-Inventor-to-File (FITF). Old Law: First-to-Invent New Law: First-Inventor-to-File Partially harmonize with Europe & Japan

mick
Download Presentation

AMERICA INVENTS ACT A Look Into The Future

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. AMERICA INVENTS ACTA Look Into The Future Todd R. Walters Buchanan, Ingersoll & Rooney PC BIPC.COM

  2. First-Inventor-to-File (FITF) • Old Law: First-to-Invent • New Law: First-Inventor-to-File • Partially harmonize with Europe & Japan • Effective for applications containing a claim with an effective filing date 18 months after enactment 2 BIPC.COM

  3. Old Law: First-to-Invent • 35 U.S.C. § 102: Novel, unless… • (a) “before the invention thereof by the applicant” • known or used by others in this country, • patented or described in a printed publication in this or a foreign country, • (b) “more than one year prior to the date of the application for patent in the United States” • patented or described in a printed publication in this or a foreign country • In public use or on sale in this country 3 BIPC.COM

  4. New Law: FITF • 35 U.S.C. § 102: Novel, unless… • (a)(1) “before the effective filing date of the claimed invention” the claimed invention was • patented, • described in a printed publication, • in public use, • on sale, or • otherwise available to the public 4 BIPC.COM

  5. New Law: FITF • 35 U.S.C. § 102: Novel, unless… • (a)(2) the claimed invention was described in • a patent, or • a published application for patent which • names another inventor and • was effectively filed before the effective filing date of the claimed invention 5 BIPC.COM

  6. FITF: Significant Changes • Removes geographic limitations on acts • No longer “used in this country/described in a foreign country” • “Effective filing date” controls • No antedating of prior art references • Applies only to applications containing or that contained a claim with an effective filing date 18 months after enactment 6 BIPC.COM

  7. Hilmer Overruled • Old law allows only the earliest U.S. filing date for claim defeating purposes • New law allows foreign priority date for claim defeating purposes • New law is not geographically limited. • Foreign applications can be used as sword and shield • This legislatively overrules old law established in In re Hilmer, 359 F.2d (C.C.P.A. 1966) (Rich, J.) 7 BIPC.COM

  8. FITF: Grace Period • § 102(b)(1): A disclosure • made 1 year or less before the effective filing date of a claimed invention • shall not be prior art to the claimed invention under subsection (a)(1) if— 8 BIPC.COM

  9. FITF: Grace Period (A) the disclosure was made • by the inventor or joint inventor or • by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or 9 BIPC.COM

  10. FITF: Grace Period • (B) the subject matter disclosed had, before such disclosure, • been publicly disclosed by the inventor or a joint inventor or • another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor 10 BIPC.COM

  11. FITF: Grace Period • One-year Grace Period applies to all “disclosures” • Maintains protections for small entities who disclose early • May result in strategic public disclosures • Effective for applications containing a claim with an effective filing date 18 months after enactment 11 BIPC.COM

  12. FITF: Changes to Obviousness • § 103: Conditions for patentability: non-obvious subject matter • A patent may not be obtained if differences between claimed invention and prior art are such that claimed invention would have been obvious before the effective filing date to a person having ordinary skill in the art • Changes standard from “at the time the invention was made” 12 BIPC.COM

  13. New Prior Art Provisions Provisions Apply to Applications and Patents • Applies to any application for patent, and to any patent issuing thereon • That contains or that contained at any time a claim to invention that has an effective date on or after March 16, 2013 13 BIPC.COM

  14. New Prior Art Provisions (cont’d) Provisions Apply to Applications and Patents Claiming Priority • A specific reference under 120, 121 or 365(c) of Title 35 to any patent or application • That contains or that contained at any time a claim to an invention that has an effective date on or after March 16, 2013 14 BIPC.COM

  15. Old Law / New Law Old Prior Art Laws Apply • Application has an actual filing date prior to March 16, 2013 15 BIPC.COM

  16. Old Law / New Law Old Prior Art Laws Apply • Application has an actual filing date prior to March 16, 2013 16 BIPC.COM

  17. Old Law / New Law New Prior Art Laws Apply • First application is filed on or after March 16, 2013 17 BIPC.COM

  18. Old Law / New Law Old Prior Art Laws Apply to Later Application IF • All claims in the later application at all times have an • Effective filing date prior to March 16, 2013 18 BIPC.COM

  19. Old Law / New Law New Prior Art Laws Apply to Later Application IF • Any claim in the later application at • Any time has or had an • Effective filing date on or after March 16, 2013 19 BIPC.COM

  20. Old Law / New Law Old Prior Art Laws Apply to Later Application IF • All claims in the later application at all times have an • Effective filing date prior to March 16, 2013 20 BIPC.COM

  21. Old Law / New Law New Prior Art Laws Apply to Later Application IF • Any claim in the later application at • Any time has or had an • Effective filing date on or after March 16, 2013 21 BIPC.COM

  22. Old Law / New Law New Prior Art Laws Apply to CIP Application IF • Any claim in the CIP application is amended at • Any time so as to have an • Effective filing date on or after March 16, 2013 22 BIPC.COM

  23. Old Law / New Law Old Prior Art Laws Apply to Later Application IF • All claims in the CIP at all times and • All claims in the later application have always had an • Effective filing date prior to March 16, 2013 23 BIPC.COM

  24. Old Law / New Law New Prior Art Laws Apply to Last Application IF • Even though every claim in the last application has aneffective filing date before March 16, 2013 • Any claim in the CIP application at any time had aneffective filing date on or after March 16, 2013 24 BIPC.COM

  25. Prior User Defense • Sec. 5: Defense to Infringement • Protection against infringement liability for first inventors who did not pursue patent protection • Expands prior user rights infringement defense to cover all technology (instead of just Business Method patents) used in the United States • “Commercial Uses” include premarketing regulatory review and nonprofit laboratory use • Does not allow defense against patents owned by academic entities • Does not affect pending litigation • Effective Upon Enactment 25 BIPC.COM

  26. Pre-Grant Challenges • Sec. 8: Preissuance Submission • Any third party may submit prior art for consideration and inclusion in the record • Before allowance and • Within 6 months of publication or • Before date of first rejection • Must include description of relevance of each submitted document • Effective 12 months after enactment 26 BIPC.COM

  27. Interference Proceedings • Interference Proceedings Remain Relevant • §§102(g), 135 and 291 Apply • To each claim of an application or patent IF • Such application or patent contains or contained at any time: • A claim to an invention having an effective filing date prior to March 16, 2013 OR • A reference under 120, 121 or 365(c) to any patent or application that contains or contained at any time such a claim 27 BIPC.COM

  28. Old Law / New Law §§102(g), 135 and 291 Apply • Application has an actual filing date prior to March 16, 2013 28 BIPC.COM

  29. Old Law / New Law §§102(g), 135 and 291 Do Not Apply • First application is filed on or after March 16, 2013 29 BIPC.COM

  30. Old Law / New Law §§102(g), 135 and 291 Apply • Due to claim of priority to parent application havingeffective filing date prior to March 16, 2013 30 BIPC.COM

  31. Old Law / New Law §§102(g), 135 and 291 Apply to CIP • Due to claim of priority to parent application havingeffective filing date before March 16, 2013 31 BIPC.COM

  32. Old Law / New Law §§102(g), 135 and 291 Apply to CIP • Due to claim of priority to parent application havingeffective filing date before March 16, 2013 32 BIPC.COM

  33. Derivation Proceedings • Derivation proceedings remain • Previously a subset of interference proceedings • Owner of patent A (later filing date) may have relief against owner of patent B • If both A and B claim the same invention; • If the invention claimed in B was derived from the inventor of the invention claimed in A; and • If action filed within 1 year of issue of B • District Court/Federal Circuit appeals • Effective for applications containing a claim with an effective filing date 18 months after enactment 33 BIPC.COM

  34. Reissues Remain • Reissue practice remains intact under 35 U.S.C 251 • Reasons for reissue • a defective specification or drawing, or • the patentee claiming more than he had a right to claim in the patent • the patentee claiming less than he had a right to claim in the patent • Obligations for reissue • surrender of patent • payment of the fee • Life of Reissue limited to unexpired part of the term of the original patent. • No new matter shall be introduced into the application for reissue. • Enlarging claim scope –two year limit. 34 BIPC.COM

  35. Reexaminations • Ex Parte Reexaminations remains intact • Inter Partes Reexaminations abandoned in favor of Inter Partes Review • Heightened burden of proof immediate • Old Standard--Substantial new question of patentability • New Standard--Reasonable likelihood of success 35 BIPC.COM

  36. Post-Grant Review • Sec. 6: Chapter 32: Post-Grant Review • Filed by anyone other than the patentee • Filed not later than 9 months after the date of grant or the date of a broadening reissue • Request to cancel as unpatentable 1 or more claims for any reason in § 282 (invalidity of patent or claim) • Must identify all real parties in interest • May submit patents or printed publications and affidavits or declarations of evidence and opinion • Effective 12 months after enactment, but • Applicable only to applications subject to FITF examination unless falling into exception 36 BIPC.COM

  37. Inter Partes Review • Sec. 6: Chapter 31: Inter Partes Review • Filed by anyone other than the patentee • Filed after the later of 9 months following date of grant or the date of reissue, or, after the date of termination of Post-Grant Review • Request to cancel as unpatentable 1 or more claims under § § 102 or 103 • Must identify all real parties in interest • May submit patents, printed publications, affidavits and declarations • Available for all patents • Effective 12 months after enactment 37 BIPC.COM

  38. Comparison of New Procedures 38 BIPC.COM

  39. Comparison of New Procedures 39 BIPC.COM

  40. Comparison of New Procedures 40 BIPC.COM

  41. Board of Patent Appeals and Interferences • Current Responsibilities • Review of appeals from decisions of examiners • Interferences to decide who is the first inventor • Responsibilities Under the New Law • Ex-parte appeals • Post-Grant Review • Inter-Partes Review • Derivation Proceedings • Continuing interferences for applications and patents containing claims with effective filing dates prior to the new law 41 BIPC.COM

  42. Board Statistics (Sept. 2011) • 4995 final decisions published YTD (16 Sept. 2011) • Ex-Parte Appeals • 23800 appeals currently docketed • 12517 appeals received YTD • 6478 appeals disposed of YTD • 9374 appeals have been docketed more than 14 months • Interferences • 51 pending interferences • 47 have been pending less than 20 months • 51 interferences declared YTD 42 BIPC.COM

  43. Supplemental Examination • New 35 U.S.C. § 257 • Requested by patent owner • Concluded in 3 months • Substantial new question of patentability • Beware of Reexamination 43 BIPC.COM

  44. Supplemental Examination • To consider information • Known prior to issuance of the patent, or • That patent owner may wish to have officially considered by the PTO with the possibility of avoiding a full reexamination. • To reconsider information • Inadequately considered during prosecution (e.g., to avoid the appearance of knowing reliance on a material misunderstanding). • To correct information (e.g., to correct errors in statements to the PTO that were relied upon during prosecution). 44 BIPC.COM

  45. Supplemental Examination • Effect of Supplemental Examination • Patent cannot be held unenforceable on the basis of information considered during supplemental examination • Except if • An allegation is plead in a civil action • An allegation is made in a paragraph IV notice • A patent enforcement action is filed in the ITC or civil court before the conclusion of supplemental examination and any reexamination. 45 BIPC.COM

  46. Supplemental Examination • Fraud Will Be Referred to the Attorney General • If the Director becomes aware that a material fraud may have been committed • The Director shall refer the matter to the Attorney General • The referral is confidential. • Unless the person is charged with a criminal offense. 46 BIPC.COM

  47. Supplemental Examination • Supplemental examination only requires belief that information is relevant • Inequitable conduct requires clear and convincing proof • That information is material • Therasense Inc. v. Becton Dickinson and Co., 649 F.3d 1276, 99 U.S.P.Q.2d 1065 (Fed. Cir. 2011) • “[A]s a general matter, the materiality required to establish inequitable conduct is but-for materiality.” Id. • “[T]he reference may be material if it would have blocked patent issuance under the PTO's [lower] evidentiary standards.” Id. • Of intent to deceive • “[T]o meet the clear and convincing evidence standard, the specific intent to deceive must be “the single most reasonable inference able to be drawn from the evidence.” Id. 47 BIPC.COM

  48. Supplemental Examination • No Presumption Flows From Requesting (or not Requesting) Supplemental Examination • Making a request for supplemental examination OR • Not making a request for supplemental examination IS • Not relevant to enforceability of the patent 48 BIPC.COM

  49. Supplemental Examination • Pros • Preempt inequitable conduct allegations as pre-litigation strategy. • Preempt an accused infringer from using prior art to provoke ex parte reexamination, perhaps even without actually provoking a reexamination. • Quickly resolve problems discovered during M&A due diligence. • Quick procedure may neutralize arguments that infringer is relying on for leverage in negotiations. 49 BIPC.COM

  50. Supplemental Examination • Cons • A request for supplemental examination means that information is “believed to be relevant” by patent owner. • May provide ammunition to accused infringer. • There is no guarantee that the information can not be used in another way. • e.g., combined with other information or presented with expert testimony to provoke reexamination or inter partes review 50 BIPC.COM

More Related