april 26, 2012 charles. r. macedo, esq. partner amster rothstein & ebenstein llp intellectual...

April 26, 2012

Charles. R. Macedo, Esq.Partner

AMSTERROTHSTEIN& EBENSTEIN LLP

Intellectual Property Law

90 PARK AVENUE, NEW YORK, NEW YORK 10016 / 212 336 8000 / www.arelaw.com

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Intellectual Property LawCharles R. Macedo, Partner with Amster, Rothstein and Ebenstein, LLP and author of The Corporate Insider’s Guide to U.S. Patent Practice (published by Oxford University Press). Mr. Macedo advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation.Mr. Macedo develops patent strategies intended to prevent infringement challenges from arising in the future. J.D. 1989, Columbia Law School; B.S./M.S., Physics, 1986; former Law Clerk to Hon. Daniel M. Friedman at U.S. Court of Appeals for the Federal Circuit.

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Agenda

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One of the most sweeping changes of the Act is to change the U.S. Patent Law from a “first-to-invent” priority system to a “first-to-file” priority system. (See Sec. 3. FIRST INVENTOR TO FILE.).

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One of the most sweeping changes of the Act is to change the U.S. Patent Law from a “first-to-invent” priority system to a “first-to-file” priority system. (See Sec. 3. FIRST INVENTOR TO FILE.).

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Under current U.S. Patent Law, as to many categories of prior art, the determination whether a reference is prior art is based on whether the reference pre-dates the date of the patent applicant’s “invention.”(See, e.g., 35 U.S.C. §§ 102(a) & (e)).

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35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.A person shall be entitled to a patent unless –(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

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35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.A person shall be entitled to a patent unless –***(e) the invention was described in - (1) an application for patent, published *** by another filed in the United States before the invention by the applicant for patent ****

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S M T W R F S1 2 3 4 5 6 7

8 9 10 11 12 13 14

15 16 17 18 19 20 21

22 23 24 25 26 27 28

Conceive Invention

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S M T W R F S1 2 3 4 5 6 7

8 9 10 11 12 13 14

15 16 17 18 19 20 21

22 23 24 25 26 27 28

Conceive Invention Working on making invention

Working on making inventionMake

Invention

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S M T W R F S1 2 3 4 5 6 7

8 9 10 11 12 13 14

15 16 17 18 19 20 21

22 23 24 25 26 27 28



Invention

File Patent Application

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S M T W R F S1 2 3 4 5 6 7

8 9 10 11 12 13 14

15 16 17 18 19 20 21

22 23 24 25 26 27 28



Invention


Invention Date

Invention Date

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Under the Act, the determination of whether a particular reference is prior art will instead be based on whether the reference pre-dates the “effective filing date of the claimed invention.” (See new 35 U.S.C. § 102(a)(1) & (2)).

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§ 102. Conditions for patentability; novelty(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or***

Under the Act, the determination of whether a particular reference is prior art will instead be based on whether the reference pre-dates the “effective filing date of the claimed invention.” (See new 35 U.S.C. §102(a)(1) & (2)).

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§ 102. Conditions for patentability; novelty(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— ***(2) the claimed invention was described in a patent issued ***, or in an application for patent published ***, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

Under the Act, the determination of whether a particular reference is prior art will instead be based on whether the reference pre-dates the “effective filing date of the claimed invention.” (See new 35 U.S.C. §102(a)(1) & (2)).

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S M T W R F S1 2 3 4 5 6 7

8 9 10 11 12 13 14

15 16 17 18 19 20 21

22 23 24 25 26 27 28



Invention


Invention Date

Invention Date

Filing DateFiling Date

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Under current U.S. Patent Law, as to many categories of prior art, the determination whether a reference is prior art is based on whether the reference pre-dates the date of the patent applicant’s “invention.”(See, e.g., 35 U.S.C. §§102(a) & (e)).

Under the Act, the determination of whether a particular reference is prior art will instead be based on whether the reference pre-dates the “effective filing date of the claimed invention.” (See new 35 U.S.C. § 102(a)(1) & (2)).

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Section 3 will not become effective until March 16, 2013 (18 months after enactment). This provision will apply only to applications which have an earliest effective filing date after March 16, 2013. (See Sec. 3(n)).

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Implementation of First Inventor to File

(n) Effective Date-(1) IN GENERAL- Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time--(A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

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Agenda

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Under current U.S. Patent Law, prior art includes:* Patents anywhere + before invention

(35 U.S.C. §§ 102(a)).

New definitions of prior art: Types of Prior Art – Issued patent


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Under current U.S. Patent Law, prior art includes:* Patents anywhere + more than 1 year before first U.S. application date

(35 U.S.C. §§ 102 (b)).

New definitions of prior art:

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.A person shall be entitled to a patent unless – ***(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

Types of Prior Art – Issued patent

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Under the Act, prior art will include:* Patents anywhere + before effective filing date

(new 35 U.S.C. §102(a)(1)).



Types of Prior Art – Issued patent

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Under current U.S. Patent Law, prior art includes:* Patents anywhere + before invention + more than 1 year before first U.S. application date

(35 U.S.C. §§ 102(a) & (b)).

New definitions of prior art:Types of Prior Art – Issued patent

Under the Act, prior art will include:* Patents anywhere + before earliest effective filing date

(new 35 U.S.C. §102(a)(1)).

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Under current U.S. Patent Law, prior art includes:* Earlier filed U.S. and PCT patent applications(35 U.S.C. §§ 102(e)).

Under the Act, prior art will include:* Earlier filed U.S. and PCT patent applications(new 35 U.S.C. §102(a)(2)).

New definitions of prior art:Types of Prior Art – Patent applications

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§ 102. Conditions for patentability; novelty(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— ***(2) the claimed invention was described in a patent issued ***, or in an application for patent published ***, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.


Under the Act, an issued patent or published patent application is prior art as of its effective filing date. (See new 35 U.S.C. §102(a)(1) & (2)).

Types of Prior Art – Patents and patent applications

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PRIOR ART AS OF:December 25, 2007

Issue Date

July 27, 2003Filing Date

January 27, 2005 Publication Date

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PRIOR ART AS OF:December 25, 2007

Issue Date



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PRIOR ART AS OF:



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PRIOR ART AS OF:



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PRIOR ART AS OF:May 26, 2006

Publication Date

To extent U.S. is designated

July 16, 2004PCT Filing Date

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PRIOR ART AS OF:

March 3, 2008 Publication And

Grant Date(87) International publication number:

WO 2003/070456 (28.08.2003 Gazette 2003/35)

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Under current U.S. Patent Law, prior art includes:* Printed Publications anywhere + before invention

(35 U.S.C. §§ 102(a)).



Types of Prior Art – Described in printed publication

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Under current U.S. Patent Law, prior art includes:* Printed Publications anywhere + more than 1 year before first U.S. application date

(35 U.S.C. §§ 102 (b)).




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Under the Act, prior art will include:* Printed Publications anywhere + before effective filing date

(new 35 U.S.C. §102(a)(1)).




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Under current U.S. Patent Law, prior art includes:* Printed Publications anywhere + before invention + more than 1 year before first U.S. application date

(35 U.S.C. §§ 102(a) & (b)).

New definitions of prior art:Types of Prior Art – Described in printed publication

Under the Act, prior art will include:* Printed Publications anywhere + before earliest effective filing date

(new 35 U.S.C. §102(a)(1)).

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Key considerations

• Form of “publication”• “Accessibility”• Timing

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Printed Publications can be

INDUSTRIAL PUBLICATIONS•Magazines•Catalogs•Brochures•User manuals•Product description handouts

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Printed Publications can be

INDUSTRIAL PUBLICATIONS•Magazines•Catalogs•Brochures•User manuals•Product description handouts

ACADEMIC PUBLICATIONS•Electronic documents•Doctorial dissertations•Presentations at conferences•Abstracts•Journal publications

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Public Accessibility Is A Touchstone of “Printed Publications”“upon a satisfactory showing that it has been disseminated or otherwise made available to the extent that persons interested and of ordinary skill in the subject matter or art, exercising reasonable diligence can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.”

In re Wyer, 655 F.2d 221, 226 (CCPA 1981).

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Cataloging Impacts Accessibility

Ph.D. Dissertations of Department

Ph.D. Dissertations of Department

John’s DissertationJohn’s Dissertation

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Limitations on Access Impact Prior Art Status

Limiting Access And Placing Confidentiality Restrictions impact prior art status

USER NAME: __________PASSWORD: ___________USER NAME: __________PASSWORD: ___________

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Date Publication Received Is Prior Art Date

ReceivedJune 10, 2012

ReceivedJune 10, 2012

Prior art as of June 10, 2012, when received by Library

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Presentations when made, depending upon access restrictions

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Under current U.S. Patent Law, prior art includes:* Prior Public Use in the U.S. + before invention

(35 U.S.C. § 102(a)).

New definitions of prior art:Types of Prior Art -- Prior public use


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Under current U.S. Patent Law, prior art includes:* Prior Public Use in the U.S. + more than 1 year before first U.S. application date

(35 U.S.C. §§ 102(b)).

Types of Prior Art -- Prior public use

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Under the Act, prior art will include:* Prior public use anywhere + before effective filing date

(See new 35 U.S.C. §102(a)(1)).



Types of Prior Art -- Prior public use

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Under current U.S. Patent Law, prior art includes:* Prior public use in the U.S. + before invention + more than 1 year before first U.S. application date

(See 35 U.S.C. §§ 102(a) & (b)).

New definitions of prior art:Types of Prior Art -- Prior public use

Under the Act, prior art will include:* Prior public use anywhere + before effective filing date

(See new 35 U.S.C. §102(a)(1)).

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Public Demonstrations

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Hidden Invention

Hidden Invention

Public Demonstrations

Even when the invention is hidden it could potentially be in public use.

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Laboratories

Considerations•Are laboratories locked?•Is access restricted?•Are NDA agreements executed and enforced?

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Under current U.S. Patent Law, prior art includes:* Prior Public Knowledge in U.S. + before invention

(See 35 U.S.C. §§ 102(a)).

New definitions of prior art: Types of Prior Art – Prior public knowledge


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Under the Act, prior art will include:* Otherwise available anywhere + before effective filing date

(See new 35 U.S.C. §102(a)(1)).

New definitions of prior art:Types of Prior Art – Otherwise available


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Under current U.S. Patent Law, prior art includes:* Prior sale in the U.S. + more than 1 year before first U.S. application date

(See 35 U.S.C. § 102(b)).

New definitions of prior art:Types of Prior Art – On sale


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Under the Act, prior art will include:* On sale anywhere + before effective filing date

(See new 35 U.S.C. §102(a)(1)).

New definitions of prior art:Types of Prior Art – On sale


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Under current U.S. Patent Law, prior art includes:* Patents anywhere* Printed Publications anywhere* Prior Use in the U.S.* Prior Public Knowledge in U.S.* Prior sale in the U.S. more than 1 year prior(35 U.S.C. §§ 102(a) & (b)).

Under the Act, prior art will include:* Patents anywhere* Printed Publications anywhere* Prior public use anywhere* Otherwise available anywhere* On sale anywhere(new 35 U.S.C. § 102(a)(1)).

New definitions of prior art:Types of Prior Art

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Under current U.S. Patent Law, prior art includes:* Earlier filed U.S. and PCT patent applications(35 U.S.C. §§ 102(e)).

Under the Act, prior art will include:* Earlier U.S. and PCT filed patent applications(new 35 U.S.C. § 102(a) (2)).

New definitions of prior art:Types of Prior Art

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Prior Conception, Reduction to Practice and Diligence Is No Longer Prior Art

• 35 U.S.C. §102 Conditions for patentability; novelty and loss of right to patentA person shall be entitled to a patent unless

• (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or

• (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

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Prior Conception, Reduction to Practice and Diligence Is No Longer Prior Art

NO MORE 102(g) PRIOR ART

• 35 U.S.C. §102 Conditions for patentability; novelty and loss of right to patentA person shall be entitled to a patent unless

• (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or

• (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

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Agenda

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The Act retains a limited one-year “grace period” under the “exceptions” provision for “disclosures” and “public disclosures” made one year or less before the effective filing date of the claimed invention “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.” (new 35 U.S.C. § 102(b)(1)).

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§ 102. Conditions for patentability; novelty

(b) EXCEPTIONS.—(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—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—

(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(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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Examples of Application of Exceptions under new 102(b)

One yearOne year

Effective filing date of claim to ABC filed by Mr. X as inventor

Publication by Mr. X of ABC

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One yearOne year

Effective filing date of claim to ABC filed by Mr. X as inventor


§ 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 *** if—(A) the disclosure was made by the inventor ***

Exception to prior art

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One yearOne year

Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors


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One yearOne year



§ 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 *** if—(A) the disclosure was made by the *** joint inventor ***


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One yearOne year


Mr. X discloses ABC under an NDA to Ms. Z

Ms. Z publishes an article disclosing ABC

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One yearOne year



Not prior art


§ 102. (a) A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

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One yearOne year



§ 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 *** if—(A) the disclosure was made *** by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

Not prior art



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One yearOne year



§ 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 *** if—(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.

Not prior art



Ms. W independently publishes an article disclosing ABC

Exception to Prior art

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One yearOne year



Not prior art

Ms. Z discloses to Ms. W ABC under NDA

Still Not prior art


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One yearOne year




Not prior art

Ms. Z discloses to Ms. W ABC under NDA

Still Not prior art

Ms. W publishes an article disclosing ABC


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One yearOne year


Mr. X discloses AB under an NDA to Ms. Z


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One yearOne year



Not prior art



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One yearOne year



§ 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 *** if—(A) the disclosure was made *** by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

Not prior art

Ms. Z publishes an article disclosing ABC Exception to

prior art?

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One yearOne year


Mr. X publicly discloses ABC Ms. Z publishes

an article disclosing ABC

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One yearOne year


Mr. X publicly discloses ABC


Ms. Z publishes an article disclosing ABCNot prior art

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One yearOne year


Mr. X publicly discloses ABC


Ms. Z publishes an article disclosing ABCNot prior art Not prior art

Poor Man’s Provisional

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One yearOne year


Mr. X publicly discloses ABC Ms. Z sells

article ABC

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One yearOne year



article ABC


Not prior art

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One yearOne year



article ABC


Not prior art Prior Art ?

Sale = Disclosure ?

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Major Open Question:•What is “a disclosure” / “public disclosure”?

– Discussions or information exchanged under NDA?– Written Presentations distributed to audience?– Oral Presentations to audience?– Sale of to be patented item?

• Capable of reverse engineering?• Not capable of reverse engineering?

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Agenda

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Replacement of interferences with derivation

In addition, the Act has eliminated “interference” practice, which under the current law may be used to determine the priority of invention between two applicants for the same invention based on which applicant invented the subject matter first. Instead, the Act provides for a new “Derivation Proceeding” to prevent an invention from being patented by anyone other than the “first inventor to file.”

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An applicant may succeed in the derivation proceeding against the owner of another patent or patent application that claims the same invention and has an earlier effective filing date, if he can establish that the invention claimed in the other patent or patent application was derived from the inventor of the later-filed patent application. (See new 35 U.S.C. §135).

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A petition for a derivation proceeding may be filed “only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.”

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A petition for a derivation proceeding may be filed “only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.”

Considerations:• Monitoring publications?• What about published applications

with new claims? Do you have to monitor pair?

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Derivation Proceedings (§3)

Derivation proceedings to establish that inventor in earlier application derived invention from inventor in petitioner's application Must file petition within 1 year of publication of claim

that is “the same or substantially same” as claim in earlier application

Derivation determined by Patent Trial and Appeal Board, which may defer action until 3 months after patent directed to claimed invention issues

Parties to proceeding may terminate proceeding by filing agreement to correct inventorship

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Agenda

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Unfortunately .....

• While the PTO has issued some helpful guidance on other parts of the AIA, the PTO has not gotten to this one yet .....

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Agenda

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New Law•Expanded Scope•Hurts TTOs who don’t make products!•Available now for any process-oriented technology, not just business methods•Prior use must be commercial (internal, arm’s length sale, commercial transfer)•Use must be over 1 year before effective filing date•Prior user rights cannot invalidate a patent•Personal defense only; may not be transferred unless M&A, etc•Applies to patents filed on or after September 16, 2011

Old Law•Very limited availability•Defense could only be asserted for business method patents

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Agenda

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Transition Applications

• Try to convert provisional applications to nonprovisional applications before March 16, 2013 implementation date.

• For inventions which have been published, but no provisional or nonprovisional applications have been filed, if timely, file provisional or nonprovisional applications after March 16, 2013.

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Proposed policies for TTOs to implement in advance of March 2013

• File early. All public disclosures will become absolute bars to patent unless the disclosure originated “directly or indirectly” from the inventor.

• No commercial offer of sale should be made until after the patent application has been filed

• Even confidential disclosures can potentially lead to bars to patent protection after one year

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Earlier Filed Applications Become More Important

• Put procedures in place that ensure provisional applications are converted to nonprovisional applications well in advance of the 1 year deadline in order to avoid effective filing date ambiguities.

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Role of Provisional Applications

Best Practices•File Provisional Applications before publications•Even if you can’t afford a patent attorney, file as a provisional any papers before submitted•Follow up on important inventions

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Controlling public disclosures of the invention

• Public disclosures can be an offensive weapon. (A poor man’s provisional).

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Questions?

– Please utilize the public chat box located at the lower portion of your screen.

– Press “01” on your touch tone phone.

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Thank You For Attending

• To purchase this program on: – CD– On demand video – PDF Transcript

Please call 877-729-0959 or visit www.technologytransfertactics.com

april 26, 2012 charles. r. macedo, esq. partner amster rothstein & ebenstein llp intellectual...

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