Download - Dealing Strategically with the America Invents Act

Panel: Ray Chen, Gerard von Hoffmann,

Brent Babcock

Moderator: Scott Smith

Dealing Strategically with the

America Invents Act

The recipient may only view this work. No other right or license is granted.

2 © 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved.

Topics

• Brief Overview

• First Inventor to File

• Third-Party Submissions

• Post-Grant Proceedings

– Post-Grant and Inter Partes Review

– Derivation Proceedings

• Supplemental Examination


America Invents Act


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


September 2011 Prosecution-Focused Provisions

• Prioritized examination

– $4800 fee for request

– Any new, non-national phase application

– Must be complete at filing

– < 10,000 apps/year

• Micro-entity status

– 75% fee reduction

– Small entity; less than 4 unassigned previously filed US nonprovisional applications; revenue in previous year < 3 times median household income

– Employee of or assigned to

institution of higher learning

• Inter partes reexam threshold

– Reasonable likelihood that requester would prevail with respect to 1 claim

• Patentable subject matter

– No tax strategies

– No human organisms

• Virtual marking

– Mark using website


Accelerated Exam v. Prioritized Exam

• Accelerated Exam (old)

– Petition + $130 fee + search and support documentation

– Maximum 20 claims with 3 independent

– 1 month OA response period and abandonment if not met

– Average pendency: 186 days

– No plant applications

– No limit to number

• Prioritized Exam (new)

– Petition + $4,800 fee + $130 fee + all application formalities at time of filling

– Maximum 30 claims with 4 independent

– 3 month OA response period; kicked back to regular docket if not met

– Expected pendency: 12 months

– No design, reissue or provisional applications

– 10,000 applications per fiscal year (852 filed 2011)


September 2011 Litigation-Focused Provisions

• No invalidation based upon failure to disclose best mode

• False marking lawsuits

– Plaintiff must suffer competitive injury

– Marking with expired patent no longer basis

– Applies to all lawsuits pending or filed on or after September 16, 2011

• Prior user rights

– Personal to accused infringer

– Not just business methods

– Defense to infringement based on earlier commercial use

– Must be >1 year from effective filing date or patentee’s disclosure date

– Any patent issuing after September 16, 2011

• Joinder/Consolidation

– Fed. Cir. has exclusive jurisdiction over compulsory counterclaims

– Need more than common infringed patent for joinder


Recent and Upcoming Changes

September 16, 2012

• Third-Party Submissions

– Prior art and statement in pending applications

• Post-Grant Proceedings

– Post-Grant Review

– Inter Partes Review

• Supplemental Examination

• Changed rules re declarations, assignments and filing formalities

March 16, 2013

• First-Inventor-to-File

– Change from first to invent

• Derivation Proceedings

– Change from interferences


First Inventor To File


First Inventor to File

• “A 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 invention”

• Limited 1 year grace period for “disclosure” by inventor and disclosure or application filed by others after a “public disclosure” by the inventor

• Earlier 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 filing

• Applies to any claim with an “effective date” after March 16, 2013


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-part applications be treated?


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

• Don’t throw away lab notebooks


Third Party Submissions


Third Party Submissions in Pending Applications

• Old Rule

– Limited ability to submit prior art

– Prior art must be submitted within 2 months following publication of the application

– Can only submit up to 10 pieces of prior art

– Cannot submit explanation of the relevance of the prior art

• New Rule

– Can submit patents, published patent applications or other printed publications

– Can submit anonymously

– Must be accompanied by concise description of asserted relevance of each submitted document

– 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


Third Party Submissions, Questions

• Should I use this process to challenge competitor patent applications?

– Should I use the third-party submission process or wait until my competitor’s patent issues and challenge it via post-grant review or in litigation?

• What is the downside risk?

• How should I decide which of my competitors’ applications to challenge?


Take Home Points

• Inexpensive way to potentially narrow a competitor’s claims ($180 fee for up to 10 prior art references)

• No estoppel (but presumption of validity)

• Risk = patent examiner considers submitted prior art and allows broad claims anyway

• Discuss with your patent attorney the pros and cons of holding back “best” prior art for potential post-grant challenges


Post-Grant and Inter Partes Review


Changes to Post-Issuance Disputes

Before AIA

• Inter Partes Reexam

• Ex Parte Reexam

• Interferences

After AIA

• Post-Grant Review

• Inter Partes Review

• Derivation Proceedings

• Ex Parte Reexam

• Interferences (Legacy)

• Transitional Program for Covered Business Method Patents


Summary of Post Issuance Review

Post-Grant Review Inter Partes Review

Basis Any basis used in litigation Only patents and printed publications

When Within 9 months of grant

+ before civil action filed

After 9 months from grant or end of Post Grant review or within 12 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

Estoppel Yes Yes


Trial Proceedings Timeline

Petition PO

prelim. response

Decision

PO response

to decision

motion to amend

Petitioner reply

to PO’s response

opp’n to motion

Oral hearing

Written decision

3 mo. ≤ 3 mo. 3 mo. 3 mo.

PO reply

1 mo.

Trial begins ≤ 1 year

PO discovery

period

Petitioner discovery

period

PO discovery

period


Post-Issuance Review, Questions

• When 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 company’s 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?


Advantages of Inter Partes Review vs. Litigation

• Lower 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)


Advantages of Litigation vs. Inter Partes Review

• Infringement can be adjudicated

• Full scope of claims and defenses

• Full discovery opportunities

• Estoppel effect of USPTO Inter Partes proceedings

• More expensive to opponent

• Jury presents potentially more risk to opponent


Take Home Points

• Consider Post-Grant Review and Inter Partes Review as less expensive alternatives to litigation

• Monitor competitors’ pending applications if Post-Grant Procedures are a possibility

• Assess risk of potential Post-Grant Procedures against your patents 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, consider strengthening patent via supplemental examination


Derivation Proceedings


Derivation Proceedings

• Address “stolen” inventions

– Eventually will replace interferences

• Requires petition to explain facts surrounding “theft”

• Two 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 application

• Remedy

– Cancelation of claims

– Inventor name corrections


Take Home Points

• Invention documentation is still important – lab notebooks, etc.

• Important to monitor IP of competitors and potential competitors

• Keep good records of what you disclose to

collaborators


Supplemental Exam


Supplemental Examination

• Patent owner may request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent

• PTO decides if information raises a substantial new question of patentability

– May result in ex parte reexamination

• Request may address any condition for patentability (patentable subject matter, anticipation, obviousness, double patenting, definiteness, etc.)

– Information is not limited to patents and printed publications

• No third party involvement


Benefit and Exceptions

• Patent cannot be held unenforceable on information considered

• 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


Costs – Proposed Sept. 10, 2012

• PTO Filing Fees

• Refund if ex parte reexamination not ordered

Large Small Micro

$18,000 $9,000 $4,500

Large Small Micro

$13,600 $6,800 $3,400


Supplemental Examination Questions

• When should I consider using supplemental examination?

• What are the risks?

• Are there specific circumstances when I definitely should NOT use supplemental examination?


Take Home Points

• Therasense decision likely decreased the importance of supplemental examination

• Declaratory Judgment (DJ) Actions

– If aware of possible DJ against patent, consider filing supplemental examination before DJ is filed

• ANDA Litigation

– If patent will be listed in Orange Book, consider filing supplemental examination as part of due diligence, or at a minimum, prior to receiving notice

• Enforcement

– If planning to enforce the patent, consider filing supplemental examination with sufficient time to complete any ex parte reexamination before filing suit


Action Item List


Action Item List

Consider prioritized examination

Consider whether micro-entity status applies

Evaluate current invention harvesting procedures for speed and efficiency

Consider filing more/faster provisional applications

Implement patent/publication monitors for possible prior art submissions and post-grant action

Consider using new procedures to challenge pending applications and issued patents

Keep post-grant challenges in mind when preparing patent applications. Keep continuations pending and consider setting aside funds for defending.

Consider supplemental exam for strengthening patents

Obtain assignments of provisional applications before filing

Continue documenting inventions and developments

Consider implementing virtual marking program

Thank you!

Download - Dealing Strategically with the America Invents Act

Top Related