The America Invents Act: Eighteen Months After Enactment

1. The America Invents Act: Eighteen Months After Enactment March 20, 2013 Janet Gongola Patent Reform Coordinator Janet.Gongola@uspto.gov Direct dial: 571-272-8734

2. Purpose of the AIA • “This long-overdue reform is vital to our ongoing efforts to modernize America’s patent laws and reduce the backlog of 700,000 patent applications – which won’t just increase transparency and certainty for inventors, entrepreneurs and businesses, but help grow our economy andcreate good jobs.” -President Barack Obama

3. Intellectual Property and the Economy: Industries in Focus(Data for 2010) • Entire U.S. economy relies on some form of IP • 40 million jobs tied to IP-intensive industries • $5.06 trillion, or 34.8% of U.S. gross domestic product, attributable to IP-intensive industries • 42% higher wages in IP-intensive industries • 60.7% of all exports, or $775 billion, from IP-intensive industries

4. Pillars of AIA Implementation • Transparency • AIA micro-site: www.uspto.gov/AmericaInventsAct • AIA subscription center • Public participation • 17 roadshows • >500 AIA presentations • Collaboration • >750 public comments

5. AIA EnactmentTimeline 60 Days Nov 15, 2011 12 Months Sept 16, 2012 Day of Enactment Sept 16, 2011 10 Days Sept 26, 2011 18 Months Mar 2013 Oct 1, 2011 Reexamination transition for threshold Tax strategies are deemed within prior art Best mode Human organism prohibition OED statute of limitations Inventor’s oath/declaration Preissuance submission Supplemental examination Citation of prior art in a patent file Inter partes review Post-grant review Covered business method review Prioritized Examination 15% transition Surcharge Reserve Fund Electronic filing incentive First-inventor-to-file Derivation proceedings Repeal of statutory invention registration New patent fees Micro entity discount Provisions are enacted

6. First-Inventor-to-File • Harmonizes the U.S. patent law with other industrialized countries: • Critical date = effective filing date of the claimed invention • Eliminates the geographic restriction on sales and uses • Eliminates the use of secret sales as prior art • Treats a U.S. patent or published patent application as prior art as early as the filing date of the foreign priority application

7. First-Inventor-to-File • Retains—and even expands—the grace period • Inventor’s public disclosure of his work in the one year period before the inventor files for a patent application will not be available as prior art • Third party’s disclosure of the claimed invention during the grace period will not be available as prior art if the third party obtained the claimed invention directly or indirectly from the inventor

8. FITF Statutory Framework

9. 35 U.S.C. 102(a)(1): Prior Art • Precludes a patent if a claimed invention was, before the effective filing date of the claimed invention: • Patented; • Described in a Printed Publication; • In Public Use; • On Sale; or • Otherwise Available to the Public

10. 35 U.S.C. 102(b)(1)(B): Grace Period Intervening Disclosure Exception • Second exception for prior art under 35 U.S.C. 102(a)(1) found in 35 U.S.C. 102(b)(1)(B) • A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) if: • the subject matter disclosed was, before such disclosure, publicly disclosed by: • the inventor or joint inventor; or • another who obtained the subject matter directly or indirectly from the inventor or joint inventor

11. Example A’s Grace Period July 15, 2013 July 15, 2014 B publishes X A files patent application claiming X A publishes X • B’s publication is prior art under 102(a)(1), but knocked out by the exception in 102(b)(1)(B) as a grace period intervening disclosure • A’s publication is prior art under 102 (a)(1), but knocked out by the exception in 102(b)(1)(A) as a grace period inventor disclosure

12. Example A’s Grace Period July 15, 2013 July 15, 2014 B publishes X and Y A publishes X A files patent application claiming X • B’s publication is prior art under 102(a)(1), but knocked out by the exception in 102(b)(1)(B) as grace period intervening disclosure as to subject matter X only. B’s publication is prior art as to subject matter Y per proposed rule • A’s publication is prior art under 102 (a)(1), but knocked out by the exception in 102(b)(1)(A) as grace period inventor disclosure

13. Applicability of FITF Filed before March 16, 2013; Priority/Benefit claim before March 16, 2013 Filed after March 16, 2013; Priority/Benefit claim before March 16, 2013 Filed after March 16, 2013; Priority/Benefit claim after March 16, 2013 AIA application Transitional application pre-AIA application

14. Fee Setting • Ensure patent fee schedule generates sufficient aggregate revenue to recover aggregate costs of USPTO operations • Individual fees set using agency discretion • http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm • Goals: • Optimize patent timeliness and quality; • Implement a sustainable funding model for operations; • Encourage innovation; • Facilitate administration of patent system; and • Offer prosecution options to applicants

15. Comparison of Current to Final Fees: Filing through Issue $4,144 $3,330 80% of Cost Note: In each of the following summary pages, from the Current to the Final Rule fee structures, the fees paid could also increase by (a) $170 for each independent claim in excess of 3; (b) $18 for total claims in excess of 20; and (c) $320 for each multiple dependent claim.

16. Comparison of Current to Final Fees: Filing through 3rd Stage Maintenance $12,190 366% of Cost 366% of Cost $4,147 294% of Cost

17. Micro Entity Discount • Entitled to a 75% discount on fees for “filing, searching, examining, issuing, appealing, and maintaining” patent applications/patents • 2 ways to be eligible: • Limited income and limited number of patent filings; or • Employment or assignment to institution of higher education • Must certify micro entity eligibility before paying a fee in the micro entity amount

18. Prioritized Exam Statistics (Data from Sept 26, 2011 to Feb19, 2013)

19. Preissuance Submissions(Data from Sept 16, 2012 to Feb 28, 2013)

20. Preissuance Submission (Data from Sept 16, 2012 to Feb 15, 2013)

21. Preissuance Submission (Data from Sept 16, 2012 to Feb 15, 2013)

22. Preissuance Submission Services • Patent Stack Exchange • Uses crowd sourcing to collect potential printed publications • http://patents.stackexchange.com/ • Commercial vendors • IP.com • Patronus • http://gary-gerttula.squarespace.com/pre-issuance-tracking-and-submissions/

23. Patent Stack Exchange: Example

24. Patent Stack Exchange: Example

25. Supplemental Examination(Data from Sept 16, 2012 to Feb 28, 2013)

26. Supplemental Examination (Data from Sept 16, 2012 to Mar 11, 2013) • Supplemental Examination Completed: 3 • Reexamination Ordered: 2 • Reexamination Not Ordered: 1 • Supplemental Examination in Progress: 6

27. Inter Partes Review(Data from Sept 16, 2012 to Feb 28, 2013)

28. Covered Business Method Review (Data from Sept 16, 2012 to Feb 28, 2103)

29. Petitions (Data from Sept 16, 2012 to Mar 7, 2013)

30. Patent Owner Preliminary Response(Data from Sept 16, 2012 to Mar 7, 2013)

31. Trial Institution and Settlement(Data from Sept 16, 2012 to Mar 7, 2013)

32. Satellite Office Program • Terminal Annex Federal Building • Temporary Space opening soon • Opened in July • 62 patent examiners • 11 patent law judges • Byron G. Rogers Building • Temporary space in Lakewood • Michelle Lee new director • Zeroing in on appropriate location

33. AIA Help Center • 1-855-HELP-AIA (1-855-435-7242) • HELPAIA@uspto.gov

34. Thank You Janet Gongola Patent Reform Coordinator Janet.Gongola@uspto.gov Direct dial: 571-272-8734