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AMERICA INVENTS ACTA Look Into The Future

Todd R. Walters Buchanan, Ingersoll & Rooney PC

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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

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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

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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

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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

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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

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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.)

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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—

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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

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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

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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

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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”

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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

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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

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Old Law / New Law

Old Prior Art Laws Apply

•Application has an actual filing date prior to March 16, 2013

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APPLICATION FILED

MARCH 16, 2013

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Old Law / New Law

Old Prior Art Laws Apply

•Application has an actual filing date prior to March 16, 2013

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PARENTFILED

MARCH 16, 2013

APPLICATION FILED

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Old Law / New Law

New Prior Art Laws Apply

•First application is filed on or after March 16, 2013

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MARCH 16, 2013

APPLICATION FILED

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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

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MARCH 16, 2013

PARENTFILED

APPLICATION FILED

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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

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MARCH 16, 2013

PARENTFILED

APPLICATION FILED

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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

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MARCH 16, 2013

PARENTFILED

CIP FILED

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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

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MARCH 16, 2013

PARENTFILED

CIP FILED

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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

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MARCH 16, 2013

PARENTFILED

AMENDMENTFILED

CIP FILED

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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

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MARCH 16, 2013

PARENTFILED

APPLICATIONFILED

CIP FILED

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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

MARCH 16, 2013

PARENTFILED

APPLICATIONFILED

CIP FILED

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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

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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

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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

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Old Law / New Law

§§102(g), 135 and 291 Apply

•Application has an actual filing date prior to March 16, 2013

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APPLICATION FILED

MARCH 16, 2013

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Old Law / New Law

§§102(g), 135 and 291 Do Not Apply

•First application is filed on or after March 16, 2013

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MARCH 16, 2013

APPLICATION FILED

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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

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MARCH 16, 2013

PARENTFILED

APPLICATION FILED

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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

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MARCH 16, 2013

PARENTFILED

CIP FILEDGRANDPARENTFILED

ALL CLAIMS SUPPORTED BY

PARENT

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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

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MARCH 16, 2013

PARENTFILED CIP FILEDGRANDPARENT

FILED

NO CLAIM SUPPORTED BY PARENT

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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

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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.

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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

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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

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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

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Comparison of New Procedures

Preissuance Submission

Ex Parte Reexam

Derivation Proceedings

Post-Grant Review

Inter Partes Review

When to initiate

Limited time before

allowance After grant

Within 12 months of

earlier patent grant

Within 9 months of

grant

9 months after grant or after date of PGR termination

Initiator’s Threshold

Burden N/A

Substantial new

question of patentability

Substantial evidence of derivation

More likely than not that

at least 1 claim

unpatentable

Reasonable likelihood of

success

Identification of Initiator Required No No Yes Yes Yes

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Comparison of New Procedures

Preissuance Submission

Ex Parte Reexam

Derivation Proceedings

Post-Grant Review

Inter Partes Review

Estoppel Applies? None None Yes Yes Yes

Adjudicated By Examiner

Examiner in Central Reexam

UnitPatent Trial and Appeal Board

Patent Trial and Appeal

BoardPatent Trial and Appeal Board

Basis for Attack Prior Art Prior Art Derivation Only Any ground Prior Art

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Comparison of New Procedures

Preissuance Submission

Ex Parte Reexam

Derivation Proceedings

Post-Grant Review

Inter Partes Review

Duration Case dependentCase

Dependent Unknown 1 to 1 ½ years 1 to 1 ½ years

Available Appeals

Only patentee can appeal to

Board and then Federal Circuit

Only patentee can

appeal to Board and

then Federal Circuit

Both parties can appeal to

District Court or Federal Circuit

Both parties can appeal to Federal Circuit

Both parties can appeal to Federal Circuit

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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

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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

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Supplemental Examination

New 35 U.S.C. § 257□ Requested by patent owner □ Concluded in 3 months □ Substantial new question of patentability

– Beware of Reexamination

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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).

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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.

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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.

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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.

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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

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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.

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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

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Best Mode

Sec. 15: Best Mode Requirement□ “the failure to disclose the best mode shall not

be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable”

□ USPTO retains the option to reject applications for failure to identify the best mode

□ Best Mode rejections are rare□ Effective Upon Enactment

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Patent Marking

Sec. 16: Marking□ Allows for virtual marking; effective upon

enactment– Provides for updated marking without updated

packaging

□ Eliminates lawsuits for false marking– Inserts “Only the United States may sue for the

penalty authorized by this subsection.”

□ Effective Upon Enactment

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Advice of Counsel

Sec. 17: Advice of Counsel□ Failure of infringer to seek advice of counsel,

or failure of infringer to present such advice to the court, may not be used to prove that the accused infringer willfully infringed the patent

□ Effective 12 months after enactment

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Are Opinions Still Necessary?

Opinions Are Still Important

□ Proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness. In re Seagate Tech., 497 F.3d 1360, 1371 (Fed. Cir. 2007).

□ Consultation with counsel may be evidence that an infringer did not engage in objectively reckless behavior.

– Aspex Eyewear, Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305, 1313 (Fed. Cir. 2010);

– Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1339 (Fed. Cir. 2008)

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Effective Date Review

Effective One Year after enactment□ Inventor’s oath (Sec. 4) □ Preissuance submission by 3rd parties (Sec. 8)□ Post-Grant Review and IPR (Sec. 6) (unless exception, PGR

review will only apply to FITF applications which will not begin until 18 months)

□ Patent Trial and Appeal Board (Sec. 7),□ Business method patents (Sec. 18)(8-year sunset clause)

Supplemental examination (Sec. 12)(applies to patents filed before, on, or after effective date)

□ Advice of counsel (Sec. 17), □ Priority examination for important technologies (Sec. 25),□ Patent Ombudsman (Sec. 28)

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Effective Date Review

Effective 18 Months after enactment□ First-inventor-to-file applies to applications

containing a claim with an effective filing date 18 months after enactment

– New §102 – Amended §103– Repeal of §104, – Derivation – Repeal of Statutory Invention Registration (Sec. 3)

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Questions?