Transcript

19-04-23 Side 1

Andrew Chin

[email protected]

A Quick Survey of the America Invents Act

Patent Law

October 12, 2011

19-04-23 Side 2

Andrew Chin

[email protected]

Passage

• Product of six years of Congressional activity

• Enacted September 16

• Effective dates vary

19-04-23 Side 3

Andrew Chin

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Changes to the Patent Act

Today:• First Inventor to File (or Publicly Disclose)• Prior User Rights• Best Mode

Not covered:• USPTO Processes and Fees• Judicial Procedures (venue, etc.)• Other Minor Modifications

19-04-23 Side 4

Andrew Chin

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First to File

• First filer wins [102(a)], unless [102(b)]:• (i) the second filer was first to “publicly

disclose” the invention• (ii) the first filer obtained the invention

directly or indirectly from the second filer• (iii) the first filer abandoned the

application prior to publication or issuance

• Effective date: Applies to all applications filed on or after March 16, 2013

19-04-23 Side 5

Andrew Chin

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Old Doctrines in New Statutes

• Major changes:• No geographic restrictions on prior art• 102(a): Prior art = prior to effective

filing date• 102(b): Defined exceptions; one-year

grace period

19-04-23 Side 6

Andrew Chin

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Six Categories of Prior Art

§ 102(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(2) the claimed invention was described in a patent issued [to another] … or in [another’s] application for patent published … [that] was effectively filed before the effective filing date of the claimed invention.

19-04-23 Side 7

Andrew Chin

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“Otherwise Available to the Public”

• Seems similar to “known or used by others”

19-04-23 Side 8

Andrew Chin

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“Public Use”/“On Sale” Caselaw

• Are Metallizing, etc. still good law? Probably:• Statutory reenactment• No clear legislative history to the

contrary

19-04-23 Side 9

Andrew Chin

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102(b) Grace Period

102(b) May file within one year after:(1)(A) Any disclosure “directly or

indirectly” from the applicant(1)(B) Disclosures by others that occurred

after “public” disclosure by the applicant(2)(A) First filer derived invention from

second filer(2)(B) First filer filed after “public”

disclosure by applicant/second filer

19-04-23 Side 10

Andrew Chin

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(A) Grace Period Events Hypos

• Jacob files on 10/1/2013. What if:• Jacob publishes article disclosing

invention on 5/1/2013?• Marc steals Jacob’s notes and places an

embodiment of the invention on sale on 2/1/2013?

• Marc steals Jacob’s notes and uses them to file a U.S. patent application on 4/1/2013?

19-04-23 Side 11

Andrew Chin

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(B) Grace Period Events Hypos

• Elliott publishes an article disclosing invention on 1/1/2014 and files application claiming invention on 12/1/2014. What if:• Aaron independently publishes an

article disclosing the same invention on 2/1/2014?

• Aaron files a patent application claiming the same invention based on his own independent research on 4/1/2014?

19-04-23 Side 12

Andrew Chin

[email protected]

For discussion

Is the new grace period more or less favorable to inventors?

In other words:

Does “disclosure” in new 102(b)(1)(A) and (2)(A) include every activity by the applicant that would generate prior art under 102(a)(1)?

Does “disclosure” in new 102(b)(1)(B) and (2)(B) include every activity by a third party that would generate prior art under 102(a)(1)?

19-04-23 Side 13

Andrew Chin

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More 102 Hypos

• Thomas conceives and reduces to practice on 8/1/2012

• Thomas files 6/1/2013

• On 5/1/2013, Andrew had published a journal article disclosing the material later claimed by Thomas.

• Can Thomas get the patent?

19-04-23 Side 14

Andrew Chin

[email protected]

More 102 Hypos

• Aaron enters into a confidential agreement with Matt’s company to sell units of Aaron’s invention on 6/1/2013

• How long does Aaron have to file?

19-04-23 Side 15

Andrew Chin

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More 102 Hypos

• Aaron enters into a confidential agreement with Matt’s company to sell products produced using Aaron’s secret process invention on 6/1/2013

• Alex independently discovers the same process and publishes an article disclosing it on 8/1/2013

• Aaron files a patent application on 9/1/2013

• Can Aaron get the patent?

19-04-23 Side 16

Andrew Chin

[email protected]

More 102 Hypos

• Aaron enters into a confidential agreement with Matt’s company to sell products produced using Aaron’s secret process invention on 6/1/2013

• Alex independently discovers the same process and publishes an article disclosing it on 8/1/2013

• Aaron files a patent application on 9/1/2013

• Alex files a patent application on 7/1/2014

• Who gets the patent?

19-04-23 Side 17

Andrew Chin

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More 102 Hypos

• Aaron enters into a confidential agreement with Matt’s company to sell products produced using Aaron’s secret process invention on 6/1/2013

• Alex independently discovers the same process and publishes an article disclosing it on 8/1/2013

• Aaron files a patent application on 9/1/2013• Alex files a patent application on 7/1/2014• Aaron can prove a public disclosure on

7/15/2013• Who gets the patent?

19-04-23 Side 18

Andrew Chin

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Prior User Rights

• Effective date: Applies to all litigation filed on or after September 16, 2011

• Prior user right is a personal defense to infringement liability; it does not invalidate a patent

• Cannot be asserted against universities or their ancillary technology transfer organizations

19-04-23 Side 19

Andrew Chin

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Prior User Rights

• Elements• Prior commercial use

• More than one year before filing• Clear and convincing evidence• No subject matter limitation

19-04-23 Side 20

Andrew Chin

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Best Mode

• Failure to state best mode:• Can be basis for PTO rejection

• PTO can enforce through litigation• Cannot be pleaded as invalidity or

unenforceability defense


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