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Experience and Issues After the AIA Two Years Later

Experience and Issues After the AIA Two Years Later. AIPLA IP Practice in Europe Committee March 10-14, 2014 Alan J. Kasper akasper@sughrue.com. Key Changes Under the AIA and PLT. Key Filing Provisions Oath and Declaration Recovery of Priority - PLT Key Prosecution Provisions

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Experience and Issues After the AIA Two Years Later

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  1. Experience and Issues After the AIATwo Years Later AIPLA IP Practice in Europe Committee March 10-14, 2014 Alan J. Kasper akasper@sughrue.com

  2. Key Changes Under the AIA and PLT • Key Filing Provisions • Oath and Declaration • Recovery of Priority - PLT • Key Prosecution Provisions • Grace Period and Prior Art • Derivation Proceedings • Third Party Submissions • PGR and Inter partes Review • Supplemental Examination

  3. Oath, Declaration and Priority

  4. Applicant/Oath & Declaration • Who is Applicant - Need NOT be the Inventor • BUT – Application MUST Name All Inventors • What is Required • Only Three Statements Required of each Inventor: • Belief declarant is an original inventor • Application authorized by declarant • Acknowledgement of criminal penalty for false statements • Statements concerning duty of disclosure and read/understand are optional – but recommended • Combined Oath/Dec and Assignment Permitted • Who Signs • Each Inventor • Third Person Can Execute and File • Substitute Statement Permitted – important for continuations/divisionals • Timingfor Oath/Dec or Substitute Statement • Can be delayed until payment of issue fee • BEST PRACTICE – file as early as possible

  5. Application Data Sheet & Power of Attorney • ADS • ALL Relevant Data NOW Provided by the Application Data Sheet (ADS) • All Relevant data including inventorship now easily corrected by use of the ADS • IN SUM - USPTO Procedures and Requirements are Liberalized – challenges left to litigation • POA • Best Practice - from real party in interest • General Power from Assignee • Specific Power from Assignee or Inventor • Separate from Oath/Dec

  6. What Issues May Arise? • Oath or Declaration • Validity of patent if incorrect O&D filed and accepted by the USPTO and the patent issues? • Validity of patent if text is defective – one or more of the 3 statutory requirements is missing? • Validity of patent if two USPTO acknowledgments (Duty of Disclosure and Read/Understood) are not given by inventor? • Validity of patent if Substitute Statement signed without reasonable effort to locate inventor? • Combined Declaration and Assignment Documents • Can original Company Invention Disclosure Form with (1) detailed disclosure, (2) statement of 3 statutory requirements (3) assignment of all rights to the Company and (4) inventor signature satisfy the Oath and Dec requirements? • Application Data Sheet • Effect on patent validity and enforcement of errors in ADS listing of priority, inventor data and names of joint inventors? • Effect if ADS not signed by authorized individual or at all? • POA • Attorney responsibility/liability where only Inventor gives POA but real party in interest alone provides instructions for prosecution?

  7. Key PLT-Based Changes • Patent Law Treaties Implementation Act of 2012 • Effective December 18, 2013 • Implementing legislation for the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“the Hague Agreement”), allows applicants to file a single international design application to acquire global protection. • Implementing Legislation for the Patent Law Treaty • Restoration of Priority - Delayed filing of an Application • PLT and PLTIA provide for : • Restoration of right of foreign priority in applications filed more than twelve months (six months in designs) after the filing date of the foreign application. • Restoration of domestic benefit of a provisional application in applications filed more than twelve months after the filing date of the provisional application. • Unintentional Standard • Two month grace period • Fee required • Similar standard for abandoned application or patent (unavoidable standard removed) • Applies to issued patents and pending applications • Two Month Minimum for Reply • Restrictions, non-compliant notices, etc. • No Claims Required for Filing Date • Filing date is date on which specification alone is filed • Filing by Reference • Minimum requirement is reference to prior specification in any country

  8. KEY Prosecution provisions

  9. First-to-Invent vs. First-Inventor-to-File First-to-Invent: X Can Win X CONCEIVED X RTP X FILED Y FILED Y CONCEIVED Y RTP First-Inventor-to-File: Y Wins (IfIndependentInventor)

  10. New Standards for Novelty • Revised Definition of Prior Art • Eliminates Content of Original Sections 102(a) and 102(c) – 102(g) • Uses New Section 102(a)(1) and Old Section 102(b) standards: • Keeps "On Sale" & "Public Use" • ISSUE: can a confidential offer for sale be prior art under the AIA? PTO Guidelines say: NO!! What about the Courts ??? • Keeps "Published and Patented" • Broadens by Adding “otherwise available to public” • Broadens by eliminating Hilmer doctrine

  11. New Limited Grace Period • More Limited Grace Period Under New Section 102(b): • Absolute Barfor All Persons, if §102(a)(1) activity More than One Year before Effective Filing Date • Barif §102(a)(1) activity is Less than One Year before Effective Filing Date - BUTException • For Disclosures by Inventor or another who obtained from inventor – §102(b)(1)(A) activity • IF Previously Publicly Disclosed by the Inventor or another who obtained from the Inventor - §102(b)(1)(B) activity, or • Bar if §102(a)(2) filing is earlier (no 1 year period) and describes the claimed invention - BUTException • Forsubject matter Obtained From the Inventor or joint inventor – §102(b)(2)(A) activity • IF subject matter wasPreviously Publicly Disclosed by the Inventor or another who obtained from the Inventor - §102(b)(2)(B) activity, or • IFsubject matter and claimed invention were Commonly Owned before filing -§102(b)(2)(C) activity • Owned or subject to duty to assign – e.g., agreement or statutory requirement

  12. B's Public Disclosure B wins U.S. Patent 12 mos. NEW Prior Art Provisions: Sword/Shield Disclosure “by or obtained from”Inventor B Filing by independent Inventor A §102(b)(1)(A) §102(a)(1) §102(b)(2)(B) A Pat. App. Filed Effective Filing Date of B’s Patent App.

  13. New Filing of regular, provisional, PCT or foreign application to get old law grace period Transition Period for New Applications Act Signed 18 -month Window Now Closed Section 3(n)(1)(A) provides an 18 month window before new §102 applies to new applications Applications claiming priority from applications filed in the Window may have old law grace period Paris Convention, National Stage, Continuation, Divisional and CIP Filing to get old law grace period – no claim with post Window effective filing date

  14. USPTO Rules for Transition Period • Statement Required - For applications, filed on or after March 16, 2013 under new 37 CFR 1.55 (foreign priority) and 37 CFR 1.78 (domestic benefit): • No Requirement - if a reasonable belief that there is no such claim. • Caution -for Paris Convention applications that are modified prior to US filing – • Avoid adding new matter (even minor editing) • Avoid failing §112 written description • Caution – for Continuation applications • File with original claims of parent and add new claim set the next day • Caution - pre-AIA Section 102(g) also will apply if there is any claim having an effective filing date before March 16, 2013

  15. What Issues May Arise? • Novelty and Grace Period • Is a confidential offer of sale a prior art event? • What are the boundaries of "other wise available to the public"? • What is the effect of adding new subject matter to inventor derived information that is published by a third party? • What is the definition of "commonly owned," does it include companies that are part of a family? • What are the requirements for a CRADA to qualify for the exception? • What is "subject matter" and how close does the inventor's published work have to be to the intervening prior art? • What is the scope of the exceptions under Section 102(b)? • What is the content of a proper Declaration under Rule 130, and what is the effect on validity if the required scope is not met? • Transition Period Applications • When does a claim of a priority or domestic benefit application have a post-window effective filing date? • What is the effect on validity and enforceability if the required Statement is not made but should have been? • What is the effect on validity and enforceability if the Statement is erroneously made?

  16. DERIVATION PROCEEDING

  17. Derivation Proceedings35 USC §135(a) - (HR 6621) • What Patents or Applications – any earlier filed pending application or issued patent • What Submission – Petition to Initiate Derivation Proceeding • Who Can Submit • Applicant of a pending application • Application may be filed after publication of earlier one • When – Within one (1) year of the deriving application’s firstpublication of claimed invention : • (1) U.S. Application • (2) PCT Application naming the US (may not be in English) • (3) US Patent

  18. Derivation Proceedings • What Content • Support by Substantial Evidence • Date of Invention • Sufficient Access by Deriver • Earlier filing was Unauthorized • Claim-by-claim showing • Petitioner’s pending claim is same or substantially same as Respondents claim (including how construed – reference to spec as appropriate) • Respondent’s claimed invention was actually disclosed to Respondent • Concise description of asserted relevance of each document • Fee ($400) • Corroborated Affidavit Demonstrating Communication of the claimed invention to the Earlier Applicant

  19. What Issues May Arise? • Derivation Proceedings • Can an original inventor who has not filed an application when seeing a published US or PCT publication or issued patent simply copy the entire document and file as his own application to qualify for initiating the derivation procedures • How strict will the requirements for initiating the procedure be enforced? • How much corroboration is need to demonstrate the communication of the claimed invention to the earlier applicant?

  20. Pre-issuance Submissions by Third Parties

  21. Third Party Submissions35 USC §122(e)37 CFR 1.290 • What Applications – any pending or abandoned application • No issued patents, reissue apps or reexams • What Material - Any printed publication of relevance • Patent, published application or publication • Need not be prior art – i.e., office action or reply in another country • Who Can Submit • Any third party – no duty of disclosure • ID of real party not required – ID of submitter is required

  22. Processing Third Party Submissions USPTO Reviews Submission for Compliance with 35 U.S.C. § 122(e) and 37 C.F.R. § 1.290 Submission Made of Record and Applicant Notified if E-Office Action Participant Submission Considered by Examiner Compliant Non-compliant Third Party Notified if Email Address Provided with Request for Notification Submission Discarded

  23. Third Party submissions

  24. What Issues May Arise? • THIRD PARTY SUBMISSIONS • What is the scope of material that can be submitted? • What is the duty of the Examiner to consider the submission and what if such duty is not fulfilled? • What estoppels arise from such submission? • Can better art be held back for later litigation?

  25. Post Patent GRANT Provisions

  26. PGR, IPR, CBM, DER

  27. Post Grant Review Post Grant Review - Initiation of Proceedings Petition to cancel any claim – stated standard is “more likely than not unpatentable.” – better than 50-50 Grounds - any related to invalidity (§101,§102, §103, §112, DP) Real Parties in interest identified Forum - Patent Trial and Appeal Board to Conduct Timing ONLY ONE Window - at 9 months from issuance Fee - $12,000 petition and $18,000 institution – no discount Civil Action- None pending involving the patent

  28. Post Grant Review (cont.) Post Grant Review - Conduct of Proceedings Amendments - permitted – no enlargement Intervening Rights if Amended Discovery – limited discovery, sanctions and protective orders (§326) Burden of Proof – preponderance – no presumption of validity (§326) Stay- Possible Stay of Civil Actions Deadline - One year to decision (extendable by 6 months) (§326) Appeal - only to CAFC – no Section 145 action Estoppel – for litigation and other proceedings (ITC) same grounds actually raised or could have been raised Effective Date – applies to all patents issued 1 year after enactment

  29. Time Line for PGR Patent Issues • Petition to cancel claim(s) • In 9 months after grant • Copies of patents and pubs • Declarations and Expert Opinions • Fee • Preliminary Reply by Patent Owner • Period to be set by Director Maximum Time to Decision • Decision by Director • 3 months after Owner Reply • No appeal Maximum Extension for Good Cause • Director Initiates Proceeding • Discovery and Prosecution • At least 1 chance for Petitioner to reply 9 Months Max One Year Preliminary Activity 6 Months Petition Filed

  30. Inter partes Review Inter partes Review - Initiation of Proceedings Petition - to cancel any claim – stated standard is “reasonable likelihood that petitioner would prevail” as to one challenged claim 50:50 or less Grounds - Limited to those related to invalidity (§§102 and 103 only) Parties - Real Parties in interest identified Preclusion - if more than 1 year after patentee sues Forum - Patent Trial and Appeal Board to Conduct Fee - $9,000 petition and $14,000 institution – no discount Timing Any time from grant for first to invent patents Over 900 already filed Nine months after grant for first to file patents And after Completion of any Opposition

  31. Inter Partes Review Inter partes Review - Conduct of Proceedings Amendments - permitted – no enlargement Intervening Rights if Amended Discovery – limited discovery - Sanctions and Protective Orders Provided (§316) Burden of Proof – preponderance – no presumption of validity (§316) Stay- Possible Stay of Civil Actions Deadline - One year to decision (extendable by 6 months) (§316) Appeal - only to CAFC – no Section 145 action Estoppel – for litigation and other proceedings (ITC) same grounds actually raised or could have been raised) Effective Date – applies currently to all patents issued anytime Delay for first to file patents

  32. Time for Inter Partes Review First to invent – upon grant First to file -9 months minimum after grant • Petition to cancel claim(s) • More than 9 months after grant • Copies of patents and pubs • Declarations and Expert Opinions • Fee Maximum Time to Decision • Preliminary Reply by Patent Owner • Period to be set by Director • Decision by Director • 3 months after Owner Reply • No appeal Maximum Extension for Good Cause • Director Initiates Proceeding • Discovery and Prosecution • At least 1 chance for Petitioner to reply and amend 6 Months One Year

  33. What Issues May Arise? • POST GRANT PROCEDURES • What is the scope of the standards for implementing PGR and IPR, and how do they differ?? • What is the scope of permitted amendments to claims? • What is the proper limit on discovery under the Umbrella Rules? • What is the scope of the estoppel under PGR and IPR , especially grounds that "could have been raised"? • What is the definition of a "real party in interest," especially as to affiliated entities and the impact of estoppels? • What happens if the proceeding does not reach decision within the statutory period of 18 months?

  34. SUPPLEMENTAL EXAMINATION

  35. Supplemental Examination Supp Exam – Initiation of Proceedings Patentee intending to enforce in litigation can correct errors and omissions that may be: (1) a basis for an inequitable conduct defense Missing Prior Art Erroneous Declarations Erroneous Argument (2) a basis for substantive defense Sections 101, 102, 103, 112, etc. ONLY Patentee Can File for Supplemental Exam Test - Substantial New Question of Patentablilty (SNQ) Fee has 2 parts – petition ($4,400) and reexamination ($12,100) Fraud, if discovered, is referred to Attorney General

  36. Time Line for Supplemental Examination • Issued Patent is being considered for enforcement • Review of file history or negotiations raise concern about omissions or errors in submitted art, declarations or argument • Suit has not yet been filed Petition Filed Supp Exam Finished Re exam Finished • Director concludes supplemental examination to determine SNQ • Certificate issued re SNQ • If SNQ, Director Orders Ex-parte Reexamination Proceeding • Address each SNQ • If No SNQ – no unenforceability for reviewed conduct • Patentee files request to consider, reconsider or correct information believed relevant to patent • Supplemental Examination conducted – does information raise a substantial new question (SNQ) of patentability? • Patent not Unenforceable for reviewed conduct • 3 months to decide if SNQ Litigation Ex-parte Reexamination Conducted

  37. What Issues May Arise? • SUPPLEMENTAL EXAMINATION • What is the scope and effect on a defendant's inequitable conduct defense activity during litigation? • What is the effect of a withholding of relevant material during the Supplemental Examination process? • Can the SNQ involve all statutory and non-statutory bases for attack, including erroneous small entity claims, etc.? • What is the scope of the USPTO reexamination once a SNQ has been identified in response to a Supp Exam petition? Can it be broadened? Can the patentee object?

  38. Thanks for your attention! Questions? Alan J. Kasper Partner Sughrue Mion PLLC 2100 Pennsylvania Ave. Washington DC 20037 +1-202-293-7060 +1-202-368-5259 (mobile) akasper@sughrue.com

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