Download - U.S. Patent Reform 2011: America Invents Act

U.S. Patent Reform 2011:America Invents ActAmerica Invents Act

John A. Bauer

March 20, 2012

U.S. Patent Reform 2011: America Invents Act

Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

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Table of Contents

I. Prior Art/First to File (03/16/2013)A. Prior Art Categories §3 §102(a)B. Meaning of “Effectively Filed” §3 §102(d)C. Grace Periods §3 §102(b)D. Joint Research Exception §3 §102(c)E. Obviousness Standard §3 §103F. Effective Date of AIA Prior Art/FTF Provisions §3(n)(1) and §3(n)(2)G. Prior Art/First to File Changes (summary)


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II. Post-Issuance Examination Procedures (9/16/ 2012 (IPR & SE); 3/16/2013 (PGR))A. Patentee or Third Party

1. Ex Parte Reexamination §§301-307 (remains essentially unchanged under AIA)

B. Third Party1. Inter Partes Reexamination §6§312(new threshold standard effective 9/16/2011; phased out 9/16/2012)

2. Inter Partes Review §6 §§311-319 (effective 9/16/2012,any patent issued before, on, or after 9/16/2012)

3. Post Grant Review §6§§321-329 (effective 3/16/2013 for any §3(n)(1) patent);§18 (effective 9/16/2012 for any “Covered Business Method Patent”)

C. Patentee1. Supplemental Examination §12§257 (effective 9/16/2012 for any patent issued before, on, or after

9/16/2012)


Table of Contents

III. Patent Application and Examination Changes

A. Pre-Examination Changes

1. Prioritized Examination §11 (effective 9/26/2011)

2. $400 Electronic Filing Incentive §10 § 123(h) (effective 11/15/2011)


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3. Micro Entity §10 §123(d) (effective 9/16/2011, but fees delayed until after rule making)

4. Application Filed By Assignee § 4 §118 (effective 9/16/2012)

B. Third Party Pre-Issuance Submissions §8 §122(e) (effective 9/16/2012 for any application)

C. Third Party Post-Issuance Submissions §6 §301 (effective 9/16/2012 for any patent)

D. Application for Patent Term Extensions §37 §156(d) (effective 9/16/2011 for any patent)


Table of Contents

IV. Litigation Reforms (9/16/2011)

A. Best Mode §15§ 282 (proceedings commenced on or after 9/16/2011)

B. Prior Use §5 §273 (any patent issued on or after 9/16/2011)

C. Advice of Counsel §17 § 298 (codification of existing law)

D. Marking


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1. Virtual §16 §287(a) (all cases pending on or commenced after 9/16/2011)

2. False § 16 §292(a) (all cases pending on or commenced after 9/16/2011)

E. Venue §9 (E.D. Va.) (all appropriate cases commenced on or after 9/16/2011)

F. Joinder §19 §299 (all cases commenced on or after 9/16/2011)

V. Derivation (March 16, 2013)

A. Derived Patents §3 §291 (effective 3/16/2013 for any §3(n)(2) patent)

B. Derivation Proceedings §3 §135 (effective 3/16/2013 for any §3(n)(2) application)


PRIOR ART - FIRST TO FILE

• Prior Art - Categories

• Meaning of “Effectively Filed”

• Grace Periods


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• Joint Research Exception

• Obviousness Standard

• §3(n)(1) and §3(n)(2)

• First to File Changes


PRIOR ART - CATEGORIES

35 U.S.C. § 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, onsale, or otherwise available to the public before the effective filing date of the claimedinvention; or


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2. the claimed invention was described in a patent issued under section 151, or in anapplication for patent published or deemed published under section 122(b), in which the patentor application, as the case may be, names another inventor and was effectively filed before theeffective filing date of the claimed invention.

Effective Date: Applications and patents having a claim having an effective filing date on or after March16, 2013, or by specific reference under 35 U.S.C §§ 120, 121, or 365(c) to any patent or applicationthat contains or contained at any time such a claim.

Notable Difference: Broadens scope of prior art. Public accessibility (“available to the public”) is thetouchstone. Public use or sale is no longer geographically limited to the U.S.


PRIOR ART - MEANING OF “EFFECTIVELY FILED”


(d) Patents and Published Applications Effective as Prior Art-

For purposes of determining whether a patent or application for patent is prior art to a claimedinvention under subsection (a)(2), such patent or application shall be considered to have beeneffectively filed, with respect to any subject matter described in the patent or application:


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1. … as of the actual filing date of the patent or the application for patent; or

2. if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 ormore prior filed applications for patent, as of the filing date of the earliest such application that describes thesubject matter.


Notable Difference: Prior art now includes 119 foreign priority documents.


GRACE PERIODS


(b) Exceptions:

1.DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OFTHE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filingdate of a claimed invention shall not be prior art to the claimed invention under subsection(a)(1) if


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(a)(1) if

A. the disclosure was made by the inventor or joint inventor or by another who obtained thesubject 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 theinventor or a joint inventor or another who obtained the subject matter disclosed directly orindirectly from the inventor or a joint inventor.

Effective Date: Applications and patents having a claim having an effective filing date on or after March16, 2013, or by specific reference under 35 U.S.C §§ 120, 121, or 365(c) to any patent or application thatcontains or contained at any time such a claim.

Notable Difference: Grace period is limited to inventor based/derived disclosures. Issue as to meaningof “disclosures.”


GRACE PERIODS


(b) Exceptions-

2. DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not beprior art to a claimed invention under subsection (a)(2) if—

A. the subject matter disclosed was obtained directly or indirectly from the inventor or a joint


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A. the subject matter disclosed was obtained directly or indirectly from the inventor or a jointinventor;

B. the subject matter disclosed had, before such subject matter was effectively filed undersubsection (a)(2), been publicly disclosed by the inventor or a joint inventor or anotherwho obtained the subject matter disclosed directly or indirectly from the inventor or a jointinventor; or

C. the subject matter disclosed and the claimed invention, not later than the effective filingdate of the claimed invention, were owned by the same person or subject to an obligationof assignment to the same person.


Notable Difference: Grace period is limited to inventor based/derived disclosures.


JOINT RESEARCH EXCEPTION


(c) Common Ownership Under Joint Research Agreements-

Subject matter disclosed and a claimed invention shall be deemed to have been owned by the sameperson or subject to an obligation of assignment to the same person in applying the provisions ofsubsection (b)(2)(C) if—


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1. the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or moreparties to a joint research agreement that was in effect on or before the effective filing date of the claimedinvention;

2. the claimed invention was made as a result of activities undertaken within the scope of the joint researchagreement; and

3. the application for patent for the claimed invention discloses or is amended to disclose the names of the partiesto the joint research agreement.


Notable Difference: Not limited to §103, also applies to §102.


§ 3(n)(1) - APPLICATIONS/PATENTS SUBJECT TO FIRST TO FILEPROVISIONS – IN GENERAL

(n) EFFECTIVE DATE.—

1. IN GENERAL.—Except as otherwise provided in this section, the amendments made by thissection shall take effect upon [March 16, 2013], and shall apply to any application for patent, andto any patent issuing thereon, that contains or contained at any time—


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A. a claim to a claimed invention that has an effective filing date … that is on or after .. [March 16,2013]; or

B. a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent orapplication that contains or contained at any time such a claim.

Note: “at any time–a claim …” – a single claim can determine the fate of the entire patent or patentapplication, even if this single claim is later deleted or amended. If an application/patent has a singleclaim having effective filing date of March 16, 2013 or after, this application/patent is subject to first tofile prior art provisions.


§ 3(n)(2) - APPLICATIONS/PATENTS SUBJECT TO FIRST TO FILEPROVISIONS – INTERFERING PATENTS

(n) EFFECTIVE DATE.—

2. INTERFERING PATENTS.—The provisions of sections 102(g), 135, and 291 of title 35, UnitedStates Code, as in effect on the day before [March 16, 2013], shall apply to each claim of anapplication for patent, and any patent issued thereon, for which the amendments made by this


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application for patent, and any patent issued thereon, for which the amendments made by thissection also apply, if such application or patent contains or contained at any time—

A. a claim to an invention having an effective filing date …that occurs before … [March 16, 2013); or

B. a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent orapplication that contains or contained at any time such a claim.

Note: “at any time–a claim …” – a single claim can determine the fate of the entire patent or patentapplication, even if this single claim is later deleted or amended. If an application/patent has a singleclaim having effective filing date before March 16, 2013, this application/patent falls under existinginterference rules.


CHANGES CAUSED BY GOING TO FIRST TO FILE

• Expansion of prior art - change from “First to Invent” to “First to File” expands the scope ofprior art by removing the option to swear behind prior art.

• One year grace period is limited - grace period is limited to inventor based/deriveddisclosures.

• Inventor disclosures can also be used offensively in the United States to “stake out” a


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• Inventor disclosures can also be used offensively in the United States to “stake out” aposition. But such a strategy compromises foreign patent rights.

• Geographical universe of prior art expanded – is now of worldwide scope, i.e., “otherwiseavailable to the public…” Public accessibility is the touchstone. Public use or sale is nolonger limited to the U.S.

• Prior art now can include §119 foreign priority documents.

• Forces proactive management of continuation-in-part applications filed after March 16,2013.


POST ISSUANCE PROCEDURES

• Patentee or Third Party

Ex Parte Reexamination (not changed by the AIA)

• Third Party


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• Third Party

Inter Partes Reexamination (not changed by AIA except for threshold to trigger; no longer SNQ)

Inter Partes Review (IPR)

Post Grant Review (PGR)

• Patentee

Supplemental Examination (SE)


EX PARTE REEXAMINATION

• Not Changed by AIA

• Substantial New Question of Patentability

• Patents or Printed Publications


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INTER PARTES REEXAMINATION

35 U.S.C. § 312. Determination of issue by Director

(a) Reexamination. Not later than 3 months after the filing of a request … the Directorshall determine whether the information presented … shows that there is a reasonablelikelihood that the requester would prevail with respect to at least 1 of the claims… with or without consideration of other patents or printed publications….


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Effective Date: Effective 9/16/2011. Will be eliminated 9/16/2012.

Notable Difference: Stricter threshold standard for triggering an inter partes reexamination. Standardis no longer a “substantial new question of patentability.”


INTER PARTES REVIEW (IPR)

35 U.S.C § 311. Inter partes review

(b) SCOPE.—A [third party] … may request to cancel as unpatentable 1 or more claims …only on a ground that could be raised under section 102 or 103 and only on the basis ofprior art consisting of patents or printed publications.

(c) FILING DEADLINE.—A petition …shall be filed after the later of either


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(c) FILING DEADLINE.—A petition …shall be filed after the later of either

(1) the date that is 9 months after the [patent’s issue date] or issuance of a reissue of a patent; or

(2) if a post-grant review is instituted…, the date of the termination of such post grant review.

35 U.S.C. § 314. Institution of inter partes review

(a)THRESHOLD.— …a reasonable likelihood that the petitioner would prevail withrespect to at least 1 of the claims challenged

Effective Date: Effective 9/16/2012. Any patent issued before, on, or after 9/16/2012.


INTER PARTES REVIEWCONDUCT

35 U.S.C § 316. Conduct of inter partes review

(a) Regulations.- Director shall prescribe regulations—

(1) Providing that the file … shall be made available to the public, except that any petition ordocument [may be] seal[ed] on …motion;


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document [may be] seal[ed] on …motion;

(5) standards and procedures for discovery … shall be limited to —

(A) the deposition of witnesses submitting affidavits or declarations; and

(B) what is otherwise necessary in the interest of justice;

(6) prescribing sanctions for abuse of discovery;

(7) providing for protective orders;

(9) setting forth standards and procedures for allowing the patent owner to move to amend thepatent,… to cancel a challenged claim or propose a reasonable number of substitute claims…


INTER PARTES REVIEWPROPOSED SCHEDULING ORDER /TIMELINE*


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* USPTO, Practice Guide for Proposed Trial Rules



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PROPOSED FEES

Inter Partes Review Post Grant Review

1 to 20 claims . . . . . . . . . . . . . . . . $27,200.00

21 to 30 claims . . . . . . . . . . . . . . . $34,000.00

1 to 20 claims . . . . . . . . . . . . . . . . $35,800.00

21 to 30 claims . . . . . . . . . . . . . . . $44,750.00


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31 to 40 claims . . . . . . . . . . . . . . . $40,800.00

41 to 50 claims . . . . . . . . . . . . . . . $54,400.00

51 to 60 claims . . . . . . . . . . . . . . . $68,000.00

Additional fee for each additional 10 claims orportion thereof . . . . . . . . . . . . . . . $27,200.00

31 to 40 claims . . . . . . . . . . . . . . . $53,700.00

41 to 50 claims . . . . . . . . . . . . . . . $71,600.00

51 to 60 claims . . . . . . . . . . . . . . . $89,500.00

Additional fee for each additional 10 claims orportion thereof . . . . . . . . . . . . . . . . $35,800.00


INTER PARTES REVIEWRELATIONSHIP TO CIVIL ACTIONS

35 U.S.C § 315. Relation to other proceedings or actions

(a)INFRINGER’S CIVIL ACTION.—

1) INTER PARTES REVIEW BARRED BY CIVIL ACTION.—An inter partes review may not beinstituted if … [before filing the petition] the petitioner or real party in interest filed a civil action


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instituted if … [before filing the petition] the petitioner or real party in interest filed a civil actionchallenging the validity … of the patent.

2) STAY OF CIVIL ACTION.—If the petitioner or real party in interest files a civil actionchallenging the validity of a claim of the patent on or after the [petition date], that civil actionshall be automatically stayed until either—

A. … patent owner moves … to lift the stay;

B. …patent owner files a civil action or counterclaim alleging that the petitioner or real party ininterest has infringed the patent; or

C. the petitioner or real party in interest moves the court to dismiss the civil action.


INTER PARTES REVIEWRELATIONSHIP TO CIVIL ACTIONS cont.

3) TREATMENT OF COUNTERCLAIM.—A counterclaim challenging the validity of a claim of apatent does not constitute a civil action challenging the validity of a claim of a patent forpurposes of this subsection.

(b)PATENT OWNER’S ACTION.—[IPR] may not be instituted if the petition ….is filed


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(b)PATENT OWNER’S ACTION.—[IPR] may not be instituted if the petition ….is filedmore than 1 year after the date on which the petitioner, [RPI], or privy…is served witha complaint alleging infringement…

(e) ESTOPPEL.—

(1) PROCEEDINGS BEFORE THE OFFICE.—where a final written decision under 318(a) results,the petitioner, RPI, or privy is estopped from challenging that claim in the patent office on anyground that was raised or could have been raised. (paraphrased)

(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—where a final written decision under 318(a)results, the petitioner, RPI, or privy is estopped from challenging that claim in a civil action or ITCproceeding on any ground that was raised or could have been raised. (paraphrased)


POST GRANT REVIEW

35 U.S.C. § 321. Post-grant review

(b)SCOPE.—A [third party] petitioner … may request to cancel as unpatentable 1 ormore claims of a patent on any ground that could be raised under paragraph (2)or (3) of section 282(b) (relating to invalidity of the patent or any claim).

(c)FILING DEADLINE.—…not later than … 9 months after the [patent’s issue date] orof the issuance of a reissue patent ..


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of the issuance of a reissue patent ..

35 U.S.C. § 324. Institution of post-grant review

(a)THRESHOLD.—… it is more likely than not that at least 1 of the claimschallenged in the petition is unpatentable, [or]

(b)…the petition raises a novel or unsettled legal question that is important to otherpatents or patent applications.

Effective Date: Effective 3/16/2013 for any §3(n)(1) patent. Effective 9/16/2012 for any “CoveredBusiness Method Patent.”


POST GRANT REVIEWRELATIONSHIP TO CIVIL ACTIONS

• The Post Grant Review and Inter Partes Review relationships to civil actions areessentially the same, except for provision (b) of Post Grant Review which addressesPreliminary Injunctions:

– (b) PRELIMINARY INJUNCTIONS.—If a civil action alleging infringement of a patent is filed within


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– (b) PRELIMINARY INJUNCTIONS.—If a civil action alleging infringement of a patent is filed within3 months after the [patent’s issue date] … the court may not stay its consideration of the patentowner’s motion for a preliminary injunction against infringement of the patent on the basis that apetition … for post-grant review has been filed …


PATENT OWNER – SUPPLEMENTAL EXAMINATION

35 U.S.C § 257. Supplemental examinations to consider, re-consider, or correctinformation

(a)REQUEST FOR SUPPLEMENTAL EXAMINATION—. A patent owner may requestsupplemental examination of a patent in the Office to consider, reconsider, or correctinformation believed to be relevant to the patent… Within 3 months … the Directorshall … indicat[e] whether the information presented in the request raises a substantial


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shall … indicat[e] whether the information presented in the request raises a substantialnew question of patentability.

(b) REEXAMINATION ORDERED— [If a SNQ] is raised…Director shall orderreexamination of the patent. The reexamination shall be conducted according to [exparte reexamination] procedures.

(c) EFFECT.—

1. IN GENERAL.—A patent shall not be held unenforceable on the basis of conduct relating toinformation that had not been considered, was inadequately considered, or was incorrect in a priorexamination of the patent if the information was considered, reconsidered, or corrected during asupplemental examination of the patent …

Effective Date: Effective 9/16/2012, any patent issued before, on, or after 9/16/2012.


PATENT OWNER – SUPPLEMENTAL EXAMINATION cont.

2. EXCEPTIONS.—

(A) PRIOR ALLEGATIONS.—Paragraph (1) shall not apply to an allegation pled withparticularity in a civil action, or set forth with particularity in a notice received bythe patent owner [under paragraph IV]… before the date of a supplementalexamination request under subsection (a) to consider, reconsider, or correctinformation forming the basis for the allegation ..


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information forming the basis for the allegation ..

(B) PATENT ENFORCEMENT ACTIONS.—In an action brought under section 337(a)… or section 281 of this title, paragraph (1) shall not apply … (a), unless thesupplemental examination, and any reexamination ordered pursuant to therequest, are concluded before the date on which the action is brought

(e) FRAUD - If the director becomes aware …that a material fraud on the Office may have beencommitted, …the Director is authorized to …[cancel any claims] …and refer the matter to AttorneyGeneral…. [Sanctions based upon criminal or antitrust laws are not precluded.]


PATENT APPLICATION AND EXAMINATION CHANGES

• Pre-Examination Changes

Prioritized Examination

$400 Electronic Filing Incentive

Micro Entity


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Application Filed By Assignee

• Third Party Pre-Issuance Submissions

• Third Party Post-Issuance Submissions

• Application for Patent Term Extension


PRIORITIZED EXAMINATION

• USPTO’s Goal is final disposition (e.g., Notice of Allowance or Final Office Action) within12 months from filing.

• USPTO may not accept more than 10,000 requests for prioritized exam per fiscal year.

• Prioritized Examination available with simple fee payment, rather than formal accelerated


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exam request.

Prioritized Examination status is lost (won’t be abandoned, but will be put on the standarddocket) without a refund of prioritized exam fee if patent applicant:

petitions for an extension of time to file a reply or to suspend action; or

amends the application to exceed the claim restrictions

Effective Date: September 26, 2011.


PRIORITIZED EXAMINATION

• Required at time of filing:

Prioritized exam fee ($4,800); reduced 50% for small entity

Original utility or plant patent application; does not apply to international, design, reissue, orprovisional applications or in reexamination proceedings

Complete declaration

Must file electronically for utility patents; must file in paper for plant patents.


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4 or fewer independent claims; 30 or fewer total claims; no multiple dependent claims.

Standard filing, search, examination, and excess claims fees

Track 1 processing fee ($130)

Publication fee ($300) – even if nonpublication is requested

• Terminated if:

Petition for time extension

Claim amendments exceed claim restrictions

Effective Date: September 26, 2011


$400 ELECTRONIC FILING INCENTIVE

35 U.S.C § 123(h) Electronic Filing Incentive

(1)IN GENERAL.—…an additional fee of $400 shall be established for each application foran original patent, except for a design, plant, or provisional application, that is not filed byelectronic means as prescribed by the Director. The fee …. shall be reduced by 50percent for small entities.


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percent for small entities.

Effective Date: November 15, 2011


§ 123. MICRO ENTITY

“(d) INSTITUTIONS OF HIGHER EDUCATION.—For purposes of this section, a micro entity shall include anapplicant who certifies that—

“(1) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is aninstitution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C.1001(a)); or


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1001(a)); or

“2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, orconvey, a license or other ownership interest in the particular applications to such an institution of higher education.

Effective Date: Effective 9/16/2011, but fees delayed until after rule making.


APPLICATION FILED BY ASSIGNEE

35 U.S.C § 118

A person to whom the inventor has assigned or is under an obligation to assign theinvention may make an application for patent. A person who otherwise shows sufficientproprietary interest in the matter may make an application for patent on behalf of and asagent for the inventor on proof of the pertinent facts and a showing that such action is


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appropriate to preserve the rights of the parties. If the Director grants a patent on anapplication filed under this section by a person other than the inventor, the patent shall begranted to the real party in interest and upon such notice to the inventor as the Directorconsiders to be sufficient.

Effective Date: Effective 9/16/2012 for any application filed on or after 9/16/2012.


THIRD PARTY PRE-ISSUANCE SUBMISSIONS

35 U.S.C. §122(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—

(1) IN GENERAL.—Any third party may submit for consideration and inclusion in therecord of a patent application, any patent, published patent application, or other printedpublication of potential relevance to the examination of the application, if such submissionis made in writing before the earlier of—


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(A)the date a notice of allowance under section 151…; or

(B) the later of—

(i) 6 months after the date on which the application for patent is first

published under section 122 by the Office, or

(ii) the date of the first rejection under section 132 of any claim by the examiner during theexamination of the application for patent.

(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall … set forth aconcise description of the asserted relevance of each submitted document

Effective Date: Effective 9/16/2012 for any application filed before, on, or after 9/16/2012.


THIRD PARTY POST-ISSUANCE SUBMISSIONS

§ 301. Citation of prior art and written statements

(a)IN GENERAL.—Any person at any time may cite to the Office in writing—

1.prior art consisting of patents or printed publications which that person believes tohave a bearing on the patentability of any claim of a particular patent; or


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2.statements of the patent owner filed in a proceeding before a Federal court or theOffice in which the patent owner took a position on the scope of any claim of aparticular patent.

(c) ADDITIONAL INFORMATION.—A party that submits a written statement pursuant tosubsection (a)(2) shall include any other documents, pleadings, or evidence from theproceeding in which the statement was filed that addresses the written statement.

Effective Date: Effective 9/16/2012 for any patent issued before, on, or after 9/16/2012.


THIRD PARTY POST ISSUANCE SUBMISSIONS

(d) LIMITATIONS.—A written statement submitted pursuant to subsection (a)(2), andadditional information submitted pursuant to subsection (c), shall not be considered bythe Office for any purpose other than to determine the proper meaning of a patent claimin a proceeding that is ordered or instituted pursuant to section 304, 314, or 324.


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Effective Date: Effective 9/16/2012 for any patent issued before, on, or after 9/16/2012.


APPLICATION FOR PATENT TERM EXTENSION

(a) IN GENERAL.—§ 156(d)(1):

For purposes of determining the date on which a product receives [regulatoryapproval] if such permission is transmitted after 4:30 P.M., Eastern Time, on abusiness day, or is transmitted on a day that is not a business day, the product shallbe deemed to receive such permission on the next business day. For purposes of the


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be deemed to receive such permission on the next business day. For purposes of thepreceding sentence, the term ‘business day’ means any Monday, Tuesday,Wednesday, Thursday, or Friday, excluding any legal holiday under section 6103 oftitle 5.’’.

Effective Date: Shall apply to any application for extension of a patent term under § 156 that is pendingon, that is filed after, or as to which a decision regarding the application is subject to judicial reviewon September 16, 2011.


LITIGATION

• Elimination of Best Mode

• Prior Use Defense

• Advice of Counsel

• Marking


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• Marking

Virtual

False

• Venue

• Joinder


ELIMINATION OF BEST MODE

35 U.S.C § 282. Presumption of validity; defenses.

The following shall be defenses in any action involving the validity or infringement of apatent and shall be pleaded:

(a)any requirement of section 112, except that the failure to disclose the best mode shall not be abasis on which any claim of a patent may be canceled or held invalid or otherwise


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basis on which any claim of a patent may be canceled or held invalid or otherwiseunenforceable; or

(b) CONFORMING AMENDMENT.—Sections 119(e)(1) and 120 of title 35, United States Code, areeach amended by striking ‘‘the first paragraph of section 112 of this title’’ and inserting ‘‘section112(a) (other than the requirement to disclose the best mode)’’.

Effective Date: Applies to proceedings commenced on or after September 16, 2011.

Note: 35 U.S.C §112 has not been amended to delete the best mode requirement. Thus, best mode stillremains a requirement for patentability before the USPTO.


PRIOR USE DEFENSE - § 273

35 U.S.C § 273. Defense to infringement based on prior Commercial use

(a) IN GENERAL - A person shall be entitled to a defense under section 282(b) withrespect to subject matter consisting of a process, or consisting of a machine,manufacture, or composition of matter used in a manufacturing or othercommercial process, that would otherwise infringe a claimed invention being assertedagainst the person if


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against the person if

1. such person, acting in good faith, commercially used the subject matter in the United States,either in connection with an internal commercial use or an actual arm’s length sale or otherarm’s length commercial transfer of a useful end result of such commercial use; and

2. such commercial use occurred at least 1 year before the earlier of either—

A. the effective filing date of the claimed invention; or

B. the date on which the claimed invention was disclosed to the public in a manner that qualified for theexception from prior art under section 102(b).

Effective Date: Applies to any patent issued on or after September 16, 2011.



(b) BURDEN OF PROOF.—A person asserting a defense under this section shall have theburden of establishing the defense by clear and convincing evidence.

(c) ADDITIONAL COMMERCIAL USES—


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(c) ADDITIONAL COMMERCIAL USES—

(1) PREMARKETING REGULATORY REVIEW.—Subject matter for which commercial marketing oruse is subject to a premarketing regulatory review period during which the safety or efficacy of thesubject matter is established, including any period specified in section 156(g), shall be deemed to becommercially used for purposes of subsection (a)(1) during such regulatory review period

(2) NONPROFIT LABORATORY USE.—A use of subject matter by a nonprofit research laboratory orother nonprofit entity, such as a university or hospital, for which the public is the intended beneficiary,shall be deemed to be a commercial use for purposes of subsection (a)(1), except that a defenseunder this section may be asserted pursuant to this paragraph only for continued and noncommercialuse by and in the laboratory or other nonprofit entity.



(e) LIMITATIONS AND EXCEPTIONS.—

1) PERSONAL DEFENSE.—

A. IN GENERAL.—…may be asserted only by the person who performed or directed the performance ofthe commercial use … or by an entity that controls, is controlled by, or is under common control withsuch person.


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5) UNIVERSITY EXCEPTION.—

A. IN GENERAL.—…may not assert a [commercial use] defense …[if] invention was made, owned orsubject to an obligation of assignment to either an institution of higher education … or a technologytransfer organization of higher education.

B. EXCEPTION.—Subparagraph (A) shall not apply if any of the activities required to reduce to practicethe subject matter of the claimed invention could not have been undertaken using funds provided bythe Federal Government..


ADVICE OF COUNSEL-CODIFICATION OF SEAGATE

35 U.S.C § 298. Advice of counsel

The failure of an infringer to obtain the advice of counsel with respect to any allegedlyinfringed 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


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may not be used to prove that the accused infringer willfully infringed the patent or that theinfringer intended to induce infringement of the patent

Effective Date: Applies to any case that is pending on, or commenced on or after September 16, 2011.


VIRTUAL MARKING

35 U.S.C § 287

(a) Patentees … may give notice to the public that the same is patented, either by fixingthereon the word “patent” or the abbreviation “pat.”, together with the number of the


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thereon the word “patent” or the abbreviation “pat.”, together with the number of thepatent, or by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with anaddress of a posting on the Internet, accessible to the public without charge foraccessing the address, that associates the patented article with the number of thepatent, or when, from the character of the article, this can not be done, by fixing to it, orto the package wherein one or more of them is contained, a label containing a like notice…



FALSE MARKING

35 U.S.C § 292

(a) Whoever [commits false marking] … Shall be fined not more than $500 for every suchoffense. Only the United States may sue for the penalty authorized by this subsection.


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offense. Only the United States may sue for the penalty authorized by this subsection.

(b) A person who has suffered a competitive injury as a result of a violation of thissection may file a civil action in a district court of the United States for recovery ofdamages adequate to compensate for the injury.

(c) The marking of a product, in a manner described in subsection (a), with matter relatingto a patent that covered that product but has expired is not a violation of this section.



NOTES ON MARKING

• Only the United States may sue for statutory penalty ($500 per offense).

• A private plaintiff is required to show “competitive injury.” The damage is limited to theamount “adequate to compensate for the injury.”


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• Marking of an expired patent is no longer a violation.

• Wipes out almost all pending false marking claims immediately.


VENUE CHANGES

35 U.S.C § 145. Civil action to obtain patent

… remedy by civil action against the Director in the United States District Court for theEastern District of Virginia …

35 U.S.C § 146. Civil action in case of interference


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35 U.S.C § 146. Civil action in case of interference

… Eastern District of Virginia shall have jurisdiction …

35 U.S.C § 154 (b)(4) Appeal of patent term adjustment determination

(a) …remedy … in the United States District Court for the Eastern District of Virginia …

Effective Date: Applies to any case that is commenced on or after September 16, 2011.

Note: Venues for suits against USPTO (e.g., patent agent license suspension or exclusion, appeals ofBoard decision, etc.) change from D.C. to E.D. Va


35 U.S.C § 299 JOINDER OF PARTIES

(a)JOINDER OF ACCUSED INFRINGERS.—…other than an action or trial in which an actof infringement under section 271(e)(2) has been pled…, parties that are accused infringersmay be joined in one action as defendants or counterclaim defendants, or have theiractions consolidated for trial, or counterclaim defendants only if—

1. any right to relief is asserted against the parties jointly, severally, or in the alternative withrespect to or arising out of the same transaction, occurrence, or series of transactions


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respect to or arising out of the same transaction, occurrence, or series of transactionsor occurrences relating to the making, using, importing into the United States, offering forsale, or selling of the same accused product or process; and

2. questions of fact common to all defendants or counterclaim defendants will arise in the action.

(b) ALLEGATIONS INSUFFICIENT FOR JOINDER.—

For purposes of this subsection, accused infringers may not be joined in one action as defendants orcounterclaim defendants, or have their actions consolidated for trial, based solely on allegations thatthey each have infringed the patent or patents in suit.



35 U.S.C § 299 JOINDER OF PARTIES

c) WAIVER.—A party that is an accused infringer may waive the limitations set forth in thissection with respect to that party.


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DERIVATION

• Derived Patents

• Derivation Proceedings


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DERIVED PATENTS

§ 291. Derived Patents

a) IN GENERAL.—The [patent owner] may have relief by civil action against the ownerof another patent that claims the same invention and has an earlier effective filingdate, if the invention claimed in such other patent was derived from the inventor of theinvention claimed in the patent owned by the person seeking relief under this section.


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invention claimed in the patent owned by the person seeking relief under this section.

(b) FILING LIMITATION.—An action under this section may be filed only before the endof the 1-year period beginning on the date of the issuance of the first patent containinga claim to the allegedly derived invention and naming an individual alleged to havederived such invention as the inventor or joint inventor.

Effective Date: Effective March 16, 2013 to patents not having a claim having an effective filing datebefore March 16, 2013 (i.e., §3(n)(2) patent)


§ 135 DERIVATION PROCEEDINGS

(a) INSTITUTION OF PROCEEDING.—

A [patent] applicant … may file a [derivation] petition … [alleging] an inventor named in an earlierapplication derived the claimed invention from an inventor named in the petitioner’s application …Any such petition may be filed only within the 1-year period beginning on the date of the firstpublication of a claim to an invention that is the same or substantially the same as the earlierapplication’s claim to the invention…. The determination by the Director whether to institute aderivation proceeding shall be final and nonappealable.


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derivation proceeding shall be final and nonappealable.

(b) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD.—

[The PTAB] shall determine whether the … the claimed invention [was derived] without authorization.In appropriate circumstances, the PTAB may correct the naming of the inventor in any application orpatent at issue. …the Director shall prescribe regulations setting forth standards for the conduct ofderivation proceedings….

(e) SETTLEMENT.—Parties… may terminate the proceeding.

Effective Date: Effective March 16, 2013 to applications not having a claim having an effective filingdate before March 16, 2013 (i.e., §3(n)(2) application)


John is a Member in Mintz Levin's New York office, practicing in the firm'sIntellectual Property Practice. He is an experienced litigator with first chairtrial and appellate experience. John also has experience in reexaminationsand interferences. His practice also includes client counseling and duediligence.

As a patent litigator, he has represented international pharmaceutical,medical device, financial institution, and computer telephony companies as

John A. Bauer

The Team


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medical device, financial institution, and computer telephony companies aswell as universities in patent infringement actions — all resulting infavorable outcomes.

Prior to joining Mintz Levin, John was a partner in an international law firm,where he focused on patent litigation, due diligence, and client counseling.

He received a BS in Genetics from Ohio State University and his JD fromthe Catholic University of America. John is admitted to practice in New Yorkas well as before the Court of Appeals for the Federal Circuit, the SouthernDistrict of New York, other district courts, and the US Patent andTrademark Office.

New York

212 692 6975

[email protected]

JD, The Catholic University ofAmerica's School of Law

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Download - U.S. Patent Reform 2011: America Invents Act

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