AMERICA INVENTS ACT

Changes to Patent Law

Devan Padmanabhan—Shareholder, Winthrop & Weinstine

American Invents Act of 2011 Enacted on September 16, 2011

Effective date for most provisions was September 16, 2012

Generally applies to patents filed on or after the effective date

Notable exceptions:

False marking: retroactive

First-to-file: March 16, 2013

Major Provisions: Pre-Grant Converts U.S. from First-to-Invent to First-to-File system

Extends time period for third-party submission of prior art during application

Major Provisions: Post-Grant Creates new inter partes review proceedings, replacing reexamination

Creates new “post-grant” review proceedings option

Creates patent owner supplemental examination procedures

Establishes a transitional business method patent review program

Major Provisions: Litigation Limits false-marking suits to U.S. government or parties suffering competitive

injury

Permits virtual marking by Internet link

Eliminates best mode as a defense

Inequitable conduct generally may not be asserted as to information considered in a patent owner’s supplemental examination request

Precludes use of infringer’s failure to obtain/offer advice of counsel as evidence of willful infringement

Court cannot stay preliminary injunction based on post-grant reviews

Prohibits raising invalidity arguments on same grounds raised in post-grant review after decision is rendered

Pre-Grant Provisions

First-to-File System

First inventor to file application generally is entitled to patent

Prior art dates to application filing date

Prior art includes public use or sale in a foreign country

Cannot “swear behind” prior art

Conception, diligence, reduction to practice, and abandonment no longer relevant to priority

First-to-File System One year grace period for inventor-related disclosures of the invention

Includes derived disclosures

Incentive to disclose during grace period: any subsequent third party disclosure is not prior art

Interference proceedings replaced by “derivation proceedings” to determine whether the applicant of an earlier-filed application was the proper applicant

Effective: Eighteen months after enactment (March 16, 2013)

First-to-File System: Practical Considerations Race to the Patent Office

Added Costs?

Prior art considerations in obviousness determinations can remain different in foreign examination

U.S. – filing date vs. Foreign – publication date

What constitutes a “disclosure” for prior art and exceptions?

“Non-public” sales & commercialization?

Prior Art Submission Third parties may currently submit prior art in published applications within

two months of publication of application

AIA extends time period to earlier of (i) notice of allowance or (ii) later of 6 months after publication or date of first rejection

Submission must include description of relevance

Post-Grant Provisions

Inter Partes Review Replaces current inter partes reexamination

An inter partes post-grant proceeding may be instituted only if:

The Petition is filed after the later of 9 months from patent issuance or termination of a post-grant review;

Must be anticipation or obviousness based on patents or printed publications

Cannot be initiated if:

Petitioner filed a civil action challenging validity; or

It has been more than six months since the petitioner was served with a Complaint

Inter Partes Review The standard of review for initiation is “a substantial new question of

patentability”

Review proceeding would be conducted by a patent judge, not examiner

Includes discovery and oral hearing

Appeal directly to Federal Circuit

Final determination is mandated to be not later than one year after the proceeding is instituted, or eighteen months for good cause

Prior to decision, parties may file written settlement and request termination

Effective: September 16, 2012 (Current reexaminations will continue)

Post-Grant Review Additional option to current ex parte reexamination

Within nine months of patent issuance, third party may request cancellation of any claims on any grounds

Same petition requirements

Similar procedure and effect as inter partes review

Supplemental Examination Patent owner may request supplemental examination to consider,

reconsider or correct information relevant to patent

USPTO must decide within 3 months whether to order reexamination based on substantial new question of patentability

Patent may not be held unenforceable based on information that is considered or reconsidered

Transitional Business Method Review Program

Accused infringers may institute post-grant review of business method claims

Generally subject to new post-grant procedures without time and “first-to-file” restrictions

Estoppel from reasserting invalidity claim on same grounds after final decision

Four-year sunset

Effective: September 16, 2012

Litigation Provisions

False Marking Only the United States or a person suffering competitive injury may file civil

action for “damage adequate to compensate for injury”

Qui tam actions of any person are eliminated

Effective: Upon enactment, including pending suits

Virtual Marking Instead of listing patent numbers, the designation of “Patent” or “Pat.” may

be used with Internet domain name address that includes relevant patents

Beneficial where it is undesirable to include a long list of patent numbers on products

Effective: Suits commenced after enactment

Multiple Defendants Can’t sue multiple based solely on the allegation that each party infringes

the same patent

Best Mode Failure to disclose best mode cannot be used to invalidate patent

Effective: Upon enactment, including pending suits

Advice of Counsel: Willfulness ‘‘The failure of an infringer to obtain the advice of counsel with respect

to any allegedly infringed patent or the failure of the infringer to present such advice to the court or jury may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.”

Codifies In re Seagate Technology

Stays, Estoppel & Damages Court may not stay preliminary injunction motion based on a petition for ex

parte post-grant review if the patent owner files suit within three months of patent issuance

Post-grant final written decisions estop claiming invalidity of subject patent (except as to grounds that could not otherwise have been reasonably raised)

Stays, Estoppel & Damages Supplemental review insulates patent owners from unenforceability on

remedied deficiencies (with noted FDA and defense exceptions)

All limitations on damages struck