What you should know when entering the Patent Forest
1. Pursuing patents
2. Attacking patents
3. Avoiding patents
4. Stopping Patent Thieves
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1. Pursuing patents
First to File replaces First to Invent - March 16, 2013 Applies to:
1) Applications with any claim at any time not entitled to earlier date► Cannot cure by canceling claim or filing continuation
2) Applications that claim priority to (1) Does not apply to applications with all claims entitled to earlier
date
First to File and First to Invent will run concurrently for quite a while
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Prior Art Expansion / Grace Period Contraction
Prior art activities are no longer limited to the US Public use, on sale or otherwise available to the public anywhere
in the world before the effective filing date A patent or application is entitled to its foreign priority date when
used as prior art
Broader scope of patent prior art as compared to other countries EP/Japan – prior filed/later published case only prior art for
novelty AIA – a patent or application is prior art as of its effective filing
date for both novelty and obviousness
One year grace period is limited to inventor’s own activities (or activities of third party who obtained invention from inventor) Still broader than many other countries
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First to File . . . or to Publish?
Incentive for inventors to publish?
1/1/13 5/1/13 8/1/13 1/1/14
A publishes B publishes B files A files
But, what if B’s filing contains more disclosure than A’s
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Events that may lead to the loss of foreign rights and may trigger the running of the one year grace period in the U.S.
Literature publication Inclusion in a thesis or other accessible
document deposited in a library Posting the details on the Internet Oral or written disclosure at
scientific meetings Disclosing your invention to any
visitors confidential manner, including posters in corridors
Mention of your invention in sufficient detail in any booklet available from a funding body to which you have applied
Leakage of information from experimental trials
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First to File strategy tips
File as early and as completely as possible Encourage early internal disclosure by scientists Review all disclosures before any outside
communications Understand that priority application must satisfy
§112 Avoid encouraging competitors to file or publish on related
inventions Ensure collaboration agreements include provisions
requiring advance notification of any proposed public disclosures
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35 USC. 112, 1st paragraph (written description, enablement and best mode requirements)
“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such a full clear, concise, and exact terms so to enable any person skilled in the art to which it pertains…to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”
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Satisfying 35 USC§112 first paragraph in order to secure priority
Enablement Standard: Whether a person skilled in the art would have to conduct
undue experimentation to make and use the invention Factors that Examiner will consider
breadth of the claims state of the art predictability in the art extent of disclosure working examples
In the US, additional data may be submitted after filing
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Satisfying 35 USC§112 first paragraph in order to secure priority
Written Description Must convey possession of the invention In an unpredictable art where there are widely variant species, one
species is rarely sufficient to support a broad generic claim Literal support for the claims not required, but… Obviousness not sufficient Inherency, however, is acceptable
By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it
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2. Attacking PatentsEx parteReexam
Inter partesReview
Post GrantReview
SupplementalExamination
Can file anonymously
Real party in interest Real party in interest Patentee only
Any time After 9 months or PGR1 yr after complaint*
9 month window* Any time
Any patent Any patent Patents w/ efd after 3/15/13
Any patent
Prior art only Prior art only All grounds Any information; limited to 10 items
No estoppel Estoppel Estoppel No shield after civil pleading
SNQ “Reasonable likelihood… prevail”
“More likely than not” or novel Q
SNQ
*Not after civil suit challenging validity
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Third Party Submissions
A third party may submit to the USPTO any patent, published patent application or printed publication of “potential relevance”
Time period for submission expanded to before earlier of (i) Notice of Allowance or (ii) six months after publication (or first rejection if later)
No longer 10 document limit Submissions may now include a brief statement explaining relevance of
submission
Recommendations Monitor third party patent application publications (US and PCT) Weigh submission against risk of reducing value of submission during any
later litigation
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3. Avoiding Patents
Prior user rights defense requires commercial use (internal commercial use or arm’s length sale of useful end result) of patented subject matter in the US at least one year before effective filing date of patent issued on or after September 16, 2011 or date invention was disclosed to public in a manner that qualified for exception from prior art
Prior user defense is expanded to cover all inventions, not just business methods
Defense cannot be licensed; can be assigned in connection with transfer of entire business to which defense relates; limited to sites where invention was used prior to critical date
University exception Prior user rights defense cannot be asserted if the claimed invention was
owned by technology transfer organization of university Recommendations
Document important inventions that you plan to keep as trade secrets Consider risk of asserting defense in litigation
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4. Stopping Patent Thieves
Derivation replaces interference But, applications and patents that contain or contained at any time a claim
with an EFD < March 16, 2013 – interferences still apply also
Must file petition within one year following publication of a claim that is the same or substantially the same
Also, a patentee can seek relief via civil action by filing within one year of issuance of the earlier filed patent
Must include at least one affidavit addressing communication and lack of authorization; showing of communication must be corroborated
Maintaining notebooks still necessary? Yes (need substantial evidence) Maintain record of correspondence with third-parties Monitor space and applications of third-parties with whom you discuss the
invention
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Do’s for Laboratory Notebooks
DO use bound books and staple attachments DO sign and date on the front cover and each entry DO have an independent but knowledgeable witness sign and date
each entry at least on a periodic basis DO use permanent ink DO use past tense to describe experiments that were actually
performed DO explain abbreviations and non-standard terms DO outline new experiments DO record all lab meeting discussions and attendees DO save completed notebooks and maintain a catalog
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Don’ts for Laboratory Notebooks
DON’T leave blank spaces and cross through gaps to prevent subsequent entries
DON’T modify prior entries at a later date DON’T remove originals DON’T speculate or provide opinions DON’T make harmful comments and avoid using
words like “obvious” and “prior art” DON’T offer opinions or statements relating to patent
infringement DON’T erase or white out
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Key Strategies
File patent application prior to any disclosure, sale or manuscript submission
Ensure that provisional applications satisfies §112 Monitor competitor’s patent application publications and patents for
possible third party attack Take steps to protect trade secrets and maintain records to
establish use of key technologies when you decide not to file Maintain reliable record of invention and disclosure of invention to
others Signed, dated, countersigned laboratory notebooks and copies of
