dealing strategically with the america invents act
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DESCRIPTIONOn Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Mr. Chen joined Knobbe Martens attorneys Gerard von Hoffmann, Brent Babcock and Scott Smith and presented on "Dealing Strategically with the America Invents Act", one of three presentations given during the seminar. The America Invents Act (AIA), enacted in September 2011, made significant changes to patent law that go into effect September 2012 and March 2013. The U.S. Patent and Trademark Office recently published over a thousand pages of rules dealing with the AIA . View this presentation to learn what hightech companies need to know about the AIA and what you should be doing to implement the right IP strategy at your company.
- 1. Dealing Strategically with thePanel: Ray Chen, Gerard von Hoffmann,America Invents ActBrent Babcock Moderator: Scott SmithThe recipient may only view this work. No other right or license is granted.
2. Topics Brief Overview First Inventor to File Third-Party Submissions Post-Grant Proceedings Post-Grant and Inter Partes Review Derivation Proceedings Supplemental Examination 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2 3. America Invents Act 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3 4. America Invents Act (AIA) Signed into law September 16, 2011 General Themes Harmonization Simplify and reduce cost of patent litigation Reduce influence of non-practicing entities Varying effective dates Some uncertainty 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4 5. September 2011 Prosecution-Focused ProvisionsPrioritized examination Inter partes reexam threshold $4800 fee for request Reasonable likelihood that requester would prevail with Any new, non-national phase respect to 1 claim application Must be complete at filing Patentable subject matter < 10,000 apps/year No tax strategies No human organismsMicro-entity status 75% fee reduction Virtual marking Small entity; less than 4 Mark using website unassigned previously filed US nonprovisional applications; revenue in previous year < 3 times median household income Employee of or assigned to institution of higher learning 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.5 6. Accelerated Exam v. Prioritized ExamAccelerated Exam (old) Prioritized Exam (new) Petition + $130 fee + search Petition + $4,800 fee + $130 and support documentation fee + all application formalities at time of filling Maximum 20 claims with 3 independent Maximum 30 claims with 4 independent 1 month OA response period and abandonment if not met 3 month OA response period; kicked back to regular Average pendency: 186 daysdocket if not met No plant applications Expected pendency: 12 No limit to numbermonths No design, reissue or provisional applications 10,000 applications per fiscal year (852 filed 2011) 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.6 7. September 2011 Litigation-Focused ProvisionsNo invalidation based upon Prior user rights failure to disclose best mode Personal to accused infringerFalse marking lawsuits Not just business methods Plaintiff must suffer competitive Defense to infringement based injury on earlier commercial use Marking with expired patent no Must be >1 year from effectivefiling date or patentees longer basis disclosure date Applies to all lawsuits pending Any patent issuing after or filed on or after September 16, September 16, 2011 2011 Joinder/Consolidation Fed. Cir. has exclusivejurisdiction over compulsorycounterclaims Need more than commoninfringed patent for joinder 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7 8. Recent and Upcoming ChangesSeptember 16, 2012 March 16, 2013Third-Party Submissions First-Inventor-to-File Prior art and statement in Change from first to invent pending applications Derivation ProceedingsPost-Grant Proceedings Change from interferences Post-Grant Review Inter Partes ReviewSupplemental ExaminationChanged rules re declarations, assignments and filing formalities 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.8 9. First Inventor To File 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 9 10. First Inventor to FileA person shall be entitled to a patent unless 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 inventionLimited 1 year grace period for disclosure by inventor and disclosure or application filed by others after a public disclosure by the inventorEarlier filed applications are not prior art if 1) derived from inventor 2) filed after public disclosure by inventor or 3) commonly owned by same person at the time of filingApplies to any claim with an effective date after March 16, 2013 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.10 11. First Inventor to File March 16, 2013 Should our company change its patent filing practices? File more/faster provisional apps? How to remain cost effective and minimize distraction? Should we rush to file applications before March 16? Any particular circumstances in which we should beat the deadline? How will continuation and continuation-in-partapplications be treated? 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.13 12. Take Home Points File before March 16, 2013 if possible File more often and more quickly after March 16, 2013 File before public disclosure/sale File many provisional applications Implement internal infrastructure to promote disclosures Dont throw away lab notebooks 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 14 13. Third PartySubmissions 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15 14. Third Party Submissions in Pending ApplicationsOld Rule New Rule Limited ability to submit prior art Can submit patents, published patent applications or other Prior art must be submitted printed publications within 2 months following publication of the application Can submit anonymously Can only submit up to 10 pieces Must be accompanied by of prior artconcise description of asserted relevance of each submitted Cannot submit explanation of thedocument relevance of the prior art Must be filed prior to the earlier of: (1) a notice of allowance; or (2) the later of:(a) 6 months after the date of first publication; or(b) the date the first rejection of any claim 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.16 15. Third Party Submissions, Questions Should I use this process to challenge competitorpatent applications? Should I use the third-party submission process or wait until my competitors patent issues and challenge it via post-grant review or in litigation? What is the downside risk? How should I decide which of my competitorsapplications to challenge? 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 17 16. Take Home Points Inexpensive way to potentially narrow a competitors claims($180 fee for up to 10 prior art references) No estoppel (but presumption of validity) Risk = patent examiner considers submitted prior art and allowsbroad claims anyway Discuss with your patent attorney the pros and cons of holdingback best prior art for potential post-grant challenges 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 18 17. Post-Grant and InterPartes Review 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 19 18. Changes to Post-Issuance DisputesBefore AIA After AIA Inter Partes Reexam Post-Grant Review Ex Parte Reexam Inter Partes Review Interferences Derivation Proceedings Ex Parte Reexam Interferences (Legacy) Transitional Program for Covered Business Method Patents 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.20 19. Summary of Post Issuance Review Post-Grant Review Inter Partes Review Basis Any basis used in litigationOnly patents and printed publications WhenWithin 9 months of grantAfter 9 months from grant or end of Post Grant review or within 12 + before civil action filed month of civil action Targets Priority on/after 3/16/2013 Any Effective 3/16/2013 9/16/2012 Discovery Yes Yes including depositions Bar Yes Yes EstoppelYes Yes 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 21 20. Trial Proceedings Timeline PO PetitionerPOdiscovery discoverydiscovery periodperiod periodPetitionerPOreply responsePO to POsto decisionPOOral WrittenPetitionprelim.Decision responsereply hearing decision responsemotionoppn to to amend motion 3 mo. 3 mo.3 mo.3 mo.1 mo. Trial begins 1 year 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 22 21. Post-Issuance Review, QuestionsWhen should I use post-grant review or inter partes review rather than litigation?How should I decide between post-grant review and inter partes review?If you settle during post-grant proceedings, what happens?Is there anything I can do to prevent post-grant review or inter partes review of my companys patents?If I have been sued for infringement of one patent by a competitor and see that a second patent might be coming, should I challenge it using post-grant review or just wait and challenge it in the litigation? 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.27 22. Advantages of Inter Partes Review vs. LitigationLower Burden of Proof (preponderance of the evidence)Lower Cost (FRCP do not apply) Limited discovery Professionalism strictly enforced Fewer ancillary battles (venue, jurisdiction, discovery, etc.)Quicker (1-2 years)Better informed decision maker (both technical & legal) 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.28 23. Advantages of Litigation vs. Inter Partes ReviewInfringement can be adjudicatedFull scope of claims and defensesFull discovery opportunitiesEstoppel effect of USPTO Inter Partes proceedingsMore expensive to opponentJury presents potentially more risk to opponent 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 29 24. Take Home Points Consider Post-Grant Review and Inter Partes Review as lessexpensive alternatives to litigation Monitor competitors pending applications if Post-GrantProcedures are a possibility Assess risk of potential Post-Grant Procedures against yourpatents by third parties Set aside budget Keep continuation pending File many/quality dependent claims If post-grant challenge is likely and prior art is known, considerstrengthening patent via supplemental examination 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 30 25. DerivationProceedings 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 31 26. Derivation ProceedingsAddress stolen inventions Eventually will replace interferencesRequires petition to explain facts surrounding theftTwo options Civil action b/w 2 patents Filed w/in 1 year of issuance of derived patent Derivation proceeding at PTO b/w 2 pending apps Filed w/in 1 year of publication of the derived applicationRemedy Cancelation of claims Inventor name corrections 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 32 27. Take Home Points Invention documentation is still important labnotebooks, etc. Important to monitor IP of competitors and potentialcompetitors Keep good records of what you disclose tocollaborators 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 33 28. Supplemental Exam 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 34 29. Supplemental ExaminationPatent owner may request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patentPTO decides if information raises a substantial new question of patentability May result in ex parte reexaminationRequest may address any condition for patentability (patentable subject matter, anticipation, obviousness, double patenting, definiteness, etc.) Information is not limited to patents and printed publicationsNo third party involvement 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.36 30. Benefit and Exceptions Patent cannot be held unenforceable on informationconsidered Benefit does not apply to: Allegations pled in a civil action prior to date of supplemental examination request Notice (for abbreviated drug application) received by patentee prior to date of supplemental examination request Defenses to patent infringement, unless supplemental examination and any resulting ex parte reexamination are completed before civil action is brought 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.37 31. Costs Proposed Sept. 10, 2012 PTO Filing Fees Large Small Micro $18,000 $9,000$4,500 Refund if ex parte reexamination not orderedLarge SmallMicro$13,600 $6,800 $3,400 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.38 32. Supplemental Examination QuestionsWhen should I consider using supplemental examination?What are the risks?Are there specific circumstances when I definitely should NOT use supplemental examination? 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 39 33. Take Home Points Therasense decision likely decreased the importance ofsupplemental examination Declaratory Judgment (DJ) Actions If aware of possible DJ against patent, consider filing supplementalexamination before DJ is filed ANDA Litigation If patent will be listed in Orange Book, consider filing supplementalexamination as part of due diligence, or at a minimum, prior toreceiving notice Enforcement If planning to enforce the patent, consider filing supplementalexamination with sufficient time to complete any ex partereexamination before filing suit 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 40 34. Action Item List 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 45 35. Action Item List Consider prioritized examination Keep post-grant challenges in mind when preparing patent Consider whether micro-entityapplications. Keep continuationsstatus applies pending and consider setting Evaluate current invention aside funds for defending.harvesting procedures for speed Consider supplemental exam forand efficiency strengthening patents Consider filing more/faster Obtain assignments ofprovisional applications provisional applications before Implement patent/publication filingmonitors for possible prior art Continue documentingsubmissions and post-grant inventions and developmentsaction Consider implementing virtual Consider using new proceduresmarking programto challenge pendingapplications and issued patents 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 46 36. Thank you!