America Invents Act (AIA)

1. America Invents Act (AIA) Changes in Patent Law That Impact Companies May Mowzoon: Mowzoon Law Office, PLLC

2. Overall Effect of the AIA On Company Procedures • TIMING: First-to-File provision; • EXPEDITING EXAMINATION: Prioritized Examination; • OFFENSIVE/DEFENSIVE PTO CHALLENGES: Post and pre-grant review; • MARKING: Virtual Marking; • BUDGETS; • PRACTICE TIPS. May Mowzoon: Dana Legal Services

3. First-to-File • As of March 16, 2013 an inventor that files first, rather than invents first, will be eligible to get a patent; • The inventor’s patent eligibility can be defeated by the inventor or an independent third-party’s: • public disclosure of the claimed invention, • pending or issued US (or pending PCT listing US) patent disclosing the claimed invention – as of earliest priority date, • sale of the claimed invention, or • otherwise making available claimed invention to the public, which predate the effective filing date of the application. • The inventor still has a one year “grace period” to file the application after a public disclosures by the inventor or by another who obtained the subject matter disclosed from the inventor (subsequent non-inventor public disclosure or filing also exempt); • Open question - if an inventor’s sale that does not make the claimed invention public falls within the grace period (e.g., claimed method that is not detectable in the sale of the corresponding product); => AIA significantly expands the scope of prior art that can be cited against an application. May Mowzoon: Dana Legal Services

4. First-to-File TestBarred or Not? Scenario 2 Scenario 1 A publishes A invents A invents A invents A files A files Time Time 1 year B invents B files B invents B files B has the opportunity to get a patent; A (solid and dashed) is barred A has the opportunity to get a patent; B is barred May Mowzoon: Dana Legal Services

5. The Transition Period and Mixed Bag Applications Prov. 1 Prov. 2 Utility w/ Prov 1 & 2 Claims • Patent applications entitled to a priority filing date prior to March 16, 2013 will be examined under the current first-to-invent rules; • Applications having even one claim with an effective filing date after March 15, 2013 will fall under the new first-to-file rules. Practice Tip: • Consider filing two applications at the time of the utility, where one application includes only pre-March 16, 2013 claims and subject matter (e.g., claims fully supported by Prov. 1 above). First-to-File X Time 3/16/13 Prov. A Utility w/Prov. A Claims First-to-Invent May Mowzoon: Dana Legal Services

6. EXPIDITED EXAMINATION Prioritized Examination (New) • Fast track exam for applications filed on or after 11/26/2011; • Final disposition in 12 months (3 months to first Office action); • Petition costs $4,800 fee + $1250 filing fee + $130 processing fee + $300 publication fee; • Limited to first 10,000 requests per fiscal year; • No extensions are permitted; • Does not carry over to continuing applications. Accelerated Examination (Established 8/26/2006) – cheaper but more involved; prioritizes and accelerates prosecution (1 month to first Office action, if don’t respond application is abandoned) Patent Prosecution Highway Under the Patent Prosecution Highway (PPH), an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF • Example: PCT Patent Prosecution Highway Program (Extended to 2014) May Mowzoon: Dana Legal Services

7. OFFENSIVE/DEFENSIVE PTO CHALLENGES May Mowzoon: Dana Legal Services PRE-AIA Published Appl. Submissions Ex partereexamination Inter partesreexamination AIA Published Appl. Submissions Supplemental examination Ex partereexamination Inter partes review Post grant review Covered business method review

8. OFFENSIVE/DEFENSIVE PTO CHALLENGES PATENTEE • Supplemental examination – request filed anytime after issuance for a PTO examiner to consider, reconsider, or correct any information the patentee considers to be relevant to the patent (e.g., correct misconduct by seller of purchased patents, …etc.); • Reissue – to correct defects; if filed within 2 years from issuance can broaden claims; THIRD-PARTY • Pre-issue submissions –submissions filed anytime “for consideration and inclusion in the record”; • Derivation Proceeding – Applicant with later effective filing date petitions the PTO Board that an earlier filed application was derived from him, must be filed within 1 year of the date of the first publication on a claim to an invention that is the same as his; • Post grant review (PGR to challenge patents issued under first-to-file rules & financial business method patents) –request filed with in 9 months from issuance for PTO Board to review based on argument that it is more likely than not that a claim is unpatentable; • Inter partes review - request filed after 9 months from issuance or after PGR for PTO Board to review patent based on argument that there is a preponderance of evidence that prior art patents and printed publications raise a substantial new question of patentability of a claim, third party continues to be part of prosecution after initial request; ANYONE • Post-issue submissions –submissions that are merely added to record; • Ex partereexamination – request filed anytime for three PTO examiners to reexam the patent based on patents and printed publications that raise a substantial new question of patentability, third-party requester is not part of reexamination ($12,000). May Mowzoon: Dana Legal Services

9. MARKING • Marking a product with a patent number gives the public constructive notice of a patent. If a patented product is not marked with the patent number, damages for infringement will be calculated from the period after the patent owner gives actual notice to an infringer; • Under the AIA, rather than printing the patent number on a product, a patent owner can display “patent” or "pat." together with the URL of a Web page listing each patented article in association with its patent number(s). See example: http://www.callawaygolf.com/global/en-us/legal/callaway-golf-patents.html May Mowzoon: Dana Legal Services

10. BUDGETS • AIA authorizes the Director of the USPTO to set or adjust patent fees; • A 15 percent surcharge was added to certain patent fees as of September 26, 2011; • There will be a fee increase effective March 19, 2013 (new fee schedule available at: http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm). May Mowzoon: Dana Legal Services

11. PRACTICE TIPS 4. Strengthen Portfolio • consider supplemental reexamination • maintain free web-site use for virtual marking • file electronically 5. Keep Competitive Edge • keep regular watch of competitive holdings • consider various validity review procedures 1. Expedite internal disclosure • streamline disclosure process and work with counsel to ensure expeditious filings • prioritizing technology and inventions 2. Early public disclosure for Non-Trade Secrets • preclude other filers • establish derivation claim • consider disclosures of competitor’s technology • initiate grace period 3. Evaluate Filing Procedure • consider simultaneous disclosure/filing • file one or more provisionals (consider stacking) • develop application template • consider non-publication request May Mowzoon: Dana Legal Services