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Practical Implications of the Leahy-Smith America Invents Act Prosecution Aspects

Practical Implications of the Leahy-Smith America Invents Act Prosecution Aspects. ALAN J. KASPER. AIPLA AIPPI/Italy Milan, Italy February 10, 2012. Patent Reform 2011. OVERVIEW. Snapshot of Patent Reform History. Activity In 2011 - Senate Passes Legislation (S 23) March 8, 2011

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Practical Implications of the Leahy-Smith America Invents Act Prosecution Aspects

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  1. Practical Implications of the Leahy-Smith America Invents ActProsecution Aspects ALAN J. KASPER AIPLA AIPPI/Italy Milan, Italy February 10, 2012

  2. Patent Reform 2011 OVERVIEW © AIPLA 2012

  3. Snapshot of Patent Reform History • Activity In 2011 - • Senate Passes Legislation (S 23) • March 8, 2011 • House Passes Legislation (HR 1249) • June 23, 2011 • Similar but NOT Identical Legislation • Senate Accepts House Text • September 8, 2011 • President Signs • September 16, 2011 • Effective Dates • Provisions become effective on various dates • Immediate or delayed - according to specific provisions • Generally 1 year from signing (September 16, 2012) • FITF – 18 months from signing (March 16, 2013) © AIPLA 2012

  4. WHAT IS THE IMPACT OF THE AIA? SCOPE OF PATENT PROTECTION • Balanced – no clear winners or losers • Applicants • Third Parties • Patentees • Public INTERNATIONALLY • Harmonization • First Inventor to File • Unilateral movement by the US removes decades-old barrier BUDGETS • Fees - Immediately increased • Costs - Additional Staff and Services RISKS • Uncertainty and Liability • Operating under parallel and dramatically different legal standards for the next 20 years JOBS • Politically - a Jobs Bill • New investment in R&D • New products to consumers • New high wage jobs • Economic recovery • Practically – a Jobs Bill for some • Patent Prosecutors • Patent Litigators • Patent Staff – inside and outside • Patent Applicants • Patent support firms • Patent search firms • Monitoring firms • CLE Providers • Industry - it remains to be seen! © AIPLA 2012

  5. Patent Reform 2011 -Key IssuesAddressed • Additional Key Reforms • PTO Fee Setting (§10) • Discounts for Micro Entities [89] • Priority Examination Fee (§11) • Supplemental Examination – Correcting Bases for Inequitable Conduct (§12) • 15% Surcharge (§13) • PTO Revenue Diversion (§22) • Deceptive Intent is removed from the statute (inventorship, reissue, disclaimer, foreign filing license, etc.) • Other Provisions • Restrict Patents on Tax Strategies (§14) • Virtual Marking and False Marking Limits (§16) • Business Method Patent Opposition (§18) • Establishment of Satellite Offices (§23 and §24) • Detroit specified • Prioritize Examination of Important Inventions (§25) • Creation of Ombudsman (§28) • Others –Studies, etc .(§25-34) Filing Reforms • First Inventor to File (§3)* • Repeal Hilmer • Assignee Filing (§4) • Penalty for Paper filing (§10) • Best Mode Requirement diluted (§15) • Human Organism Patents Prohibited (§33) • Examination Reforms • Definition of Prior Art (§3) • Inventor Grace Period – publication (§3) • Third Party Reforms • Expand Prior User Rights (§5) • University exceptions • Expand Post Grant Review (§6) • New Opposition System [56]** • 9 month window after grant • “more likely than not” std. • Any ground under §282(b) – §101, §102, §103, §112, etc. • Estoppel “ raised or reasonably could have raised”” • Reform Inter Partes Reexam [40] • Inter Partes Review • After 9 month window • “Reasonable likelihood petitioner would prevail” std. • Only patented or published art (§102 §103) • Estoppel if “raised or reasonably could have raised” • Third Party Submissions (§8) • Limit Use of Opinions (§17) • *reference in parens is to sections of HR 1249 as published • ** reference in brackets is to page of HR 1249 as published © AIPLA 2012

  6. Key IssuesOmittedFrom Bill • Third Party Protection Reforms Omitted • 18 Month Publication of all applications • Experimental Use Exceptions • Limits on Injunctive Relief • Restriction on Damages • Restriction on Venue • Ex parte Reexam • current system maintained • Additional Key Issues Omitted • Applicant Quality Submission • PTO General Regulatory Authority • Interlocutory Appeals to CAFC • “Trigger based” on JPO/EPO adopting a similar grace period • Filing Reforms Omitted: • None • Examination Reforms Omitted: • Stricter Obviousness Standard • Supreme Court KSR Decision © AIPLA 2012

  7. Effective Dates for Various Sections • §5 – Prior User Rights(35 USC 273) • Patent issued on or after 9/16/11 • §6 – Post Grant Review • New Interpartes reexam standard becomes effective 9/16/11 (35 USC §312) • Ex Parte appeals under 35 USC§145 eliminated (35 USC §306) • §11 – Fees • 15% Surcharge (9/26/11) • Accelerated Exam fee (9/26/11) • Paper Filing Fee (11/15/11) • §14 – Tax Strategies Provisions • §15 – Best Mode Changes • Suit started on or after 9/16/11 • §16 – Marking • False Marking – cases pending on or started after 9/16/11 • Virtual Marking (35 USC 273) • §19 – Jurisdiction and Procedural • Joinder of defendants restricted (35 USC §306) • §22 – PTO Funding • §4 – Oath or Declaration (35 USC §118) • §6 – Post Grant Review Procedures • New Opposition – limited number first 4 years • New Inter partes Review – limited number - 4 years • §8 – 3rd Party Submissions (35 USC §122(c)) • §12 – Supplemental Exam • §18 – Business Methods Patent Review • §35 – General Effective Date • §3 – First Inventor to File • New §102 and 103 applies Act Signed (9/16/11) One Year 9/16/12) 18 Months 3/16/13) 7 Patent Reform 2011 Sughrue Mion PLLC

  8. USPTO Rulemaking Schedule

  9. Group 2 Rulemakings Schedule

  10. Patent Reform 2011 KEY PROSECUTION PROVISIONS

  11. Track 1 Prioritized Examination Requirements (Section 11(h)) Application original utility or plant non-provisional (Con/Div) no international design, reissue or reexam can file with an RCE Fee - $4800 Claim Limitation – 4 or fewer independent and 30 total Prior Art no search or comment required Good knowledge of prior art relevant to claims Form – PTO/SB/424 recommended Prosecution Time to respond to OA – see MPEP 710.02(b) Final Rejection, NoAll. or RCE terminates special status Final Regulations – 12/19/11 – (over 1400 as of 11/17/11) USPTO Goal – final disposition in 12 months © AIPLA 2012

  12. Prioritized Examination : WhatYouShould be Doing Now! Evaluate invention disclosures and pending Applications for qualification for Prioritized Examination Become familiar with published rules Tailor new and newly filed applications for program requirements Consider use with RCE's Develop and execute your strategy © AIPLA 2012

  13. New Standards For Filing Right of First Inventor to File (Section 3) Inventormust be an individual who invents or discovers (§3(a)) and must be named (§4(a)) Effective Filing Dateincludes domestic and foreign priority dates – where Section 112 disclosure is satisfied (§3(a)) Interferencesare eliminated except for applications filed before the effective date (§3(j) and §3(n)) Derivation Investigation Proceeding is created (§3(i)) May be instituted only within 1 year after first publication Modified Interference-type proceeding Corroborated proof of (1) prior conception, and (2) communication to the deriver sufficient to enable actual reduction to practice of claimed invention © AIPLA 2012

  14. 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 (If Independent Inventor) 14 Patent Reform 2011

  15. First Inventor to File : WhatYouShould be doing Now! Right of First Inventor to File (Section3) Inventor Identification–maintain current practices and records of invention to comply with old and new law Effective Filing Date –establish guidelines to ensure that all application filings in all countries comply with 35 USC 112 Interferences– should still be considered part of a competitive strategy for several years Derivation Investigation Proceeding–establish systems for (1) keeping records of disclosures (private and public) by inventors and (2) independent development of inventions © AIPLA 2012

  16. New Standards for Novelty Revised Definition of Prior Art (Section3(b)) Eliminates Content of Original Sections 102(a) and (c) – (g) New Section 102(a)(1) keeps Section 102(b) standards On Sale & Public Use Published and patented Adds “otherwise available to public” New Section 102(b) excludes from "prior art" public disclosures by inventor less than 1 year New Section 102(a)(2) includes earlier filed application naming another inventor ( substitute for old 102(e)) Excludes inventor-derived information or public disclosure Excludes commonly owned patents and applications Excludes joint research agreements (CRADA) © AIPLA 2012

  17. New 35 U.S.C. § 102(a): Defines Prior Art Under the AIA §102 Conditions for patentability (a) NOVELTY; PRIOR ART. A person shall be entitled to a patent unless— (1) the claimed invention was patented [anywhere in the world], described in a printed publication [anywhere in the world], or in public use [anywhere in the world], on sale [anywhere in the world], or otherwise available to the public [anywhere in the world]before the effective filing date of the claimed invention; ~ OR … ~ © AIPLA 2012

  18. 35 U.S.C. § 102(a) – Cont’d §102 Conditions for patentability (a) NOVELTY; PRIOR ART. A person shall be entitled to a patent unless— … (2) the claimed invention was described in a [US] patent issued under section 151,or in an application for [US or PCT application designating the US (§374)] patent published or deemed published under section 122(b) [US or PCT designating the US], in which the [US] patent or [US or PCT designating the US] application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. [see §102(d)(next slide): effective filing date can be earliest foreign priority document] [§102(a)(2)somewhat like old §102(e); filed before effective filing date but not disclosed before effective filing date, otherwise would be under §102(a)(1)] © AIPLA 2012

  19. §102(a)(2)/§102(d) §102(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed inventionunder subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter describedin the[US]patent or[US or PCT designating the US]application- “(2) if the patent or application for patent is entitledto claim a right of priority under section 119, 365(a), or 365(b), or[entitled] to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application thatdescribesthe subject matter.”[“entitlement” trumps “describes”- therefore enablement is required?] ‘‘(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent” Earlier-Filed but Later-Published [US]Patent Documents Somewhat like old §102(e) - but cannot be antedated by earlier invention. Following publication, the disclosure has retroactive availability as prior art as of effective filing date Available as prior art fornovelty and obviousness purposes © AIPLA 2012

  20. Hilmer Doctrine Abolished by §102(d) §102(d) eliminates need for foreign applicants to file provisional applications by establishing that an application is “effectively filed” on the date an application was filed under §119 or § 365. Hilmer Doctrine evidenced bias of U.S. law against inventions originating outside the U.S. Based on two U.S. litigations (Hilmer I and II) that held that the foreign right of priority of a U.S. patent does not provide a prior art effect under § 102(e) as of that foreign priority date, nor does inventive work outside the U.S. have a prior art effect under § 102(g). Rather, one needed a U.S. filing date to have a prior art effect. Created “shield vs. sword” distinction Foreign applicant needed to file in the U.S. to get a § 102(e) or § 102(g) prior art effect date – e.g., provisional. © AIPLA 2012

  21. Impact of § 102(d)(2) – Prior Art Date Prior art date Pub. Appl. USPAT U.S. Prov. Appl. U.S. Appl. Non-Prov. English Prior art date Pub. Appl. USPAT UK PCT (U.S.) English Pub. Appl. Prior art date USPAT FR PCT (U.S.) French • NO geographical or language distinction • Assuming entitlement to date benefit of US Prov App., UK app., and FR app.

  22. Definition of Prior Art: Scenario 1 X FILED X PUBLISHED IN US Y FILED Old: Y Could Antedate X with evidence of earlier invention. New: Since X filed first, X is Prior Art to Y (for § § 102 and 103 purposes) Assuming§102(b)(2) exceptions do not apply. 22 Sughrue Mion PLLC Patent Reform 2011

  23. Definition of Prior Art: Scenario 2 X SOLD IN EUROPE (Confidential???) Y FILED Old: Sale of X Not Prior Art to Y because not in US. New: Sale of X Is Prior Art to Y. [§102(a)(1) only] Consider if 102(b)(1) exception applies. 23 Sughrue Mion PLLC Patent Reform 2011

  24. Definition of Prior Art: Scenario 3 X PUBLICLY USED: ex US > 1 Year Y INVENTED Y FILED Old: Public use outside US was not prior art. New: X’s use outside the 1-year period is prior art to Y wherever it occurred; exception under §102(b)(2) cannot apply because no patent or patent application. 24 Sughrue Mion PLLC Patent Reform 2011

  25. Definition of Prior Art: Scenario 4 X PUBLICLY USED < 1 Year Y INVENTED Y FILED Old: Y could antedate X’s use. New: X’s use inside the 1-year period may be prior art to Y wherever it occurred: grace period exception under 102(b)(1) may apply. 25 Sughrue Mion PLLC Patent Reform 2011

  26. New Definition of the Grace Period More Limited Grace Period (Section 3(b)) Absolute Bar if More than One Year before Effective Filing Date for All Persons Bar if Less than One Year with Exception for Inventor and Assignee Only for Public Disclosure by or derived from the Inventor Only for Commonly Owned Inventions Owned or subject to duty to assign © AIPLA 2012

  27. New 35 U.S.C. § 102(b) – Exceptions to Prior Art §102 (b) EXCEPTIONS. (1) Disclosures [anywhere in the world] made 1 year or less before the effective filing date [anywhere in the world; see §100(i)(1)] of the claimed invention shall not be prior art under (a)(1) if: (A) made by an inventor or by another who obtained the subject matter directly or indirectly from an inventor, or (B) if the subject matter had been previously publicly disclosed by an inventor or one who obtained it from an inventor These exceptions define what is notprior art under §§ 102(a)(1) and (a)(2), respectively, and are generally personal to the inventor Provision twins with § 102 (a)(1) © AIPLA 2012

  28. New 35 U.S.C. § 102(b) – Cont’d §102 (b) EXCEPTIONS – … (2) Disclosures appearing in[US or PCT designating the US] applications and[US]patents are not prior art under (a)(2) if: (A) obtained directly/indirectly from an inventor; (B) the subject matter was publicly disclosed before filing by an inventor or one obtained it directly or indirectly from an inventor; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Provision twins with § 102 (a)(2) NOTE: NO RECITATION OF “ONE YEAR OR LESS” © AIPLA 2012

  29. How the NEW U.S. Grace Period Will Work: §102(b)(1)(A) and (B) Respectively Apply Grace Land Public use U.S. Patent 12 mos. Disclosure “by or obtained from” an INVENTOR Disclosure by ANYONE §102(b)(1)(A) §102(b)(1)(B) Public use Effective Filing Date 29 Sughrue Mion PLLC Patent Reform 2011

  30. How the NEW U.S. Prior Art Provisions Will Work:A Sword and A Shield Public use B’s U.S. Patent 12 mos. Disclosure “by or obtained from” Inventor B Filing by independent inventor A §102(b)(1)(A) §102(b)(2)(B) A Pat. App. Filed §102(a)(1) A’s US application published Effective Filing Date of B’s Patent App. B avoids public use through §102(b)(1)(A); B’s public use avoids A’s publication through §102(b)(2)(B) and defeats A through § 102(a)(1); First inventor to file loses because other inventor disclosed first. 30 Sughrue Mion PLLC Patent Reform 2011

  31. US Patent Reform: Effect on §103 New law modifies §103 to read: would have been obviousbefore the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains… Present §103 reads: would have been obvious at the time the invention was madeto a person having ordinary skill in the art to which said subject matter pertains Hence, the new US law switches from “at the time the invention was made” (earlier or equal to filing date) to the time “before the effective filing date of the claimed invention” Generally broadens the scope and content of the prior art in the U.S. – primarily based on elimination of the Hilmer Rule Effective date March 16, 2013 (same as for § 102). © AIPLA 2012

  32. Effect on §103 and §104 Additional Changes to Section 103 and Deletion of Section 104 (Section 3(c) and (d)) Section 103 also revised to eliminate exceptions Common assignment provisions are now in Section 102 Section 103(b) on non-obviousness of biotech processes is deleted Section 104 is deleted © AIPLA 2012

  33. New Filing of regular, provisional, PCT or foreign application to get old law grace period Strategy for Filing New Applications: Act Signed 18 -month Window Closes 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 Continuation, Divisional and CIP Filing to get old law grace period – no claim with effective filing date (Section 101(i)) after the window closes 33 Patent Reform 2011 Sughrue Mion PLLC

  34. Straddling the Effective Date PCT Filing First to Invent System Applies Enactment: Sept. 16, 2011 “First To Invent” System or “First Inventor to File” System? (see SEC. 3(n)(1)(A)) PCT Filing Priority Date Scenario 1: no claims entitled to priority date: first-to-file Scenario 2: all claims entitled to priority date: first-to-invent Scenario:3: at least 1 claimnot entitled to priority date: first-to-file Enactment: Sept. 16, 2011 Priority Date PCT Filing “First Inventor to File” System Applies Enactment: Sept. 16, 2011 Effective Date: March 16, 2013 Assumes “priority date” is ex-US 34

  35. WhatYouShould be doing Now File before 18 months after enactment (on or before March 15, 2013) New applications; CIPs; New claims (disclosed but not previously claimed)? Develop a strategy for using pre-deadline filed applications as a basis for interferences (§2(n)(2)) BEWARE THE IDES OF MARCH! © AIPLA 2012

  36. Key Actions to be Taken-Prosecution FEES Adjust budgets for 15% surcharge Instruct Filing Electronically (save $400 fee) ASSIGNEE FILING Redraft Employee Agreements and Disclosure Forms to: Provide clear obligation to assign all rights Authorize preparation of Application Include required statements (belief to be original inventor) DERIVATION, GRACE PERIOD AND PRIOR RIGHTS Maintain records of invention activity and public disclosure NEW PRIOR ART DEFINITIONS – 18 months after enactment Develop a Filing Schedule and Strategy for Using Old Law Evaluate Possibility of Interferences Under Old Law © AIPLA 2012

  37. Key Actions to be Taken-Prosecution PRIORITIZED EXAMINATION Discuss and Develop a Strategy for use of Enhanced Examination Develop a System to Review filed and unfiled applications and invention disclosures for qualification for Enhanced Examination Budget for New Expenses THIRD PARTY SUBMISSIONS Develop a Policy and Strategy for identifying competitor published applications and possibly relevant prior art and submitting art to the USPTO Budget for New Expenses © AIPLA 2012

  38. Thank you! akasper@sughrue.com. © AIPLA 2012

  39. Alan J. Kasper is a senior partner in the International IP law firm Sughrue Mion, PLLC, where he has been practicing law since 1985. Alan’s practice focuses on patent matters and consists primarily of prosecution, litigation, licensing, opinions and counseling on patent strategies for a wide variety of clients in the advanced electrical, optical, semiconductor, computer-based and mechanical technologies, and he presently manages the firm’s International Department. He graduated from the State University of New York with a B.S. in Electrical Engineering and obtained a JD at the Georgetown University Law Center. He initially worked as an Examiner in the U.S. Patent and Trademark Office and later served as Assistant General Counsel and head of the corporation's Patent Department for the internationally known telecommunications satellite company, COMSAT. Alan is active in several professional associations, including A.I.P.P.I., F.I.C.P.I., ABA, IPO and A.I.P.L.A, where he served last year as President and now is a member of the Board of Directors. He also is a Vice President of AIPPI-US. Alan has lectured internationally on U.S. patent and commercial matters, and has authored numerous articles published in the U.S. and elsewhere in the world. • He can be reached by email at akasper@sughrue.com. © AIPLA 2012

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