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HOW WILL THE AMERICA INVENTS ACT (AIA) CHANGE THE WAY WE PROTECT AMERICAN IMAGINEERING?. April 24, 2012. Disney ’ s Grand Californian Hotel. Michael A. Guiliana. AIA Makes 3 Major Changes. AIA Changes. Consider…. “ First-to-File ” Eliminates Interferences Post Grant Oppositions.
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HOW WILL THE AMERICA INVENTS ACT (AIA) CHANGE THE WAY WE PROTECT AMERICAN IMAGINEERING? April 24, 2012 Disney’s Grand Californian Hotel Michael A. Guiliana
AIA Makes 3 Major Changes AIA Changes Consider… • “First-to-File” • Eliminates Interferences • Post Grant Oppositions • Accelerate Patent Filing Process • Segregate Patent Applications re March 16, 2013 Deadline • Last Call for Interferences • Revise Pre-Litigation Checklist with Post Grant PTO Options • Consider Monitoring Policy
Patent Reform – what needed reforming? What are YOUR thoughts?
Patent Applications Under First-to-Invent Inventor B Invents Files Patent Fast INVENTOR A WINS! • Committee Review of IDF • Searching • Market Analysis Inventor A Invents IDF Decision to Draft and File Patent App. USPTO Procedures Filing Date Patent Filing Lag (Can Be Long) “Swear Behind” (37 CFR § 1.131) -or- Interference
Patent Applications Under First-to-FileStarting March 16, 2013 Inventor B Invents Files Patent Fast INVENTOR B WINS! • Committee Review of IDF • Searching • Market Analysis Inventor A Invents IDF Decision to Draft and File Patent App. USPTO Procedures Filing Date Patent Filing Lag (Can Be Long) “Swear Behind” (37 CFR § 1.131) -or- Interference
Preparations for First-to-File System • Reduce Your Patent Lag • Provisional Applications - IDFs • Patent Application Training Inventor B Invents Files Patent Fast INVENTOR A WINS! • Inventor A Invents • IDF and: • Files Patent App., or • Files Provisional App. • Committee Review of IDF • Searching • Market Analysis Decision to Draft and File Patent App. USPTO Procedures Filing Date Patent Filing Lag (Can Be Long)
Preparations for First-to-File System Reducing Patent Filing Lag / File First – Vet Later • Train R&D Staff to Assist Writing Patent Applications • File IDFs as Provisional Applications • Segregate Unnecessary Information • PTO Fee < $100 • 10 Months Available for: • Searching • Market Research • Prototyping • Foreign Filing Decisions
Invention Tracking – Prior Use Defense Prior Commercial Use is a Defense to ANY Patent Infringement • Invention Disclosure Forms are Vehicle for Capturing Evidence • Revise IDFs to include “Date of First Commercialization” • Keep IDF Open Until DFC Established (even if no patent filing) • Preserve All IDFs (even if no patent filing) • Defense Potentially Available Even if Commercial Use of Invention is Trade Secret
Simplified Product Marking • 35 U.S.C. § 287(a) – Virtual Marking • The word ‘patent’ or the abbreviation ‘pat.’ AND • A website address “accessible to the public without charge” • Must associate “the patented article with the number of the patent”
Challenging Patent Applications in the PTO – New Reasons to Monitor Challenging Pending Patent Applications • “Third Party Submissions” 35 U.S.C. § 122(e)(2) • TP Can Submit Patent/Published App., Printed Pub. + • Argument • Deadline – A Very Narrow Window: • Before Allowance, AND • Within 6 Months After Publication, or • Before First Rejection • Monitoring is the ONLY Way to Identify Opportunities
Challenging Patents in the PTO – More Reasons to Monitor Challenging Issued Patents • Post Grant Review: • Requester can use ANY Prior Art/Any Basis for Invalidity • (except failure to disclose Best Mode) • Deadline: • 9 Months from Issuance • Monitoring Only Practical Way to Identify Opportunities • Appealable/Estoppel
Challenging Patents in the PTO – More Reasons to Monitor Challenging Issued Patents • Inter Partes Review: • Prior Art Limited to Printed Publications/Patents • At Least 9 Months After Issuance/After Post Grant Review • Appealable + Estoppel
Best Mode Requirement – Dead? • Disclosure of Best Mode Still Required 35 U.S.C. § 112, 1st • Failure to Disclose Best Mode No Longer Grounds for Invalidity • 35 U.S.C. 282 • Not Clear if Duty of Candor to the PTO will Have Any Effect • Patent Attorney Subject to OED • Possibly No Recourse Against Inventor or Patent Owner¶
Michael A. Guiliana michael.guiliana@knobbe.com 949.721.6384