leahy-smith america invents act j. gibson lanier, jd, phd ballard spahr llp

Leahy-Smith America

Invents Act

J. Gibson Lanier, JD, PhDBallard Spahr LLP

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Leahy-Smith America Invents Act

• Enacted September 16, 2011• Many changes in the Act that require rule-making activity by

the USPTO

• Immediate changes as of September 16, 2011

September 26, 2011

September 16, 2012

March 16, 2013

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First to Invent to First to File

• STARTS March 16, 2013 for SOME patents/applications

• The U.S. patent system is changed from a “first to invent” to a “first inventor to file” system.

• Will only apply to applications filed, and patents issuing from applications filed, after March 16, 2013 that do not claim priority to applications filed prior to that date.

• Earlier effective filing date- current law applies

• Mind the GAP- at 3/16/2013 Claims or applications that ever had a claim in either system

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Novelty – New Provisions

• March 16, 2013

102(a) knowledge, use, publication, or patenting before the invention;

102(b) knowledge, use, publication, or patenting more than one year prior to filing;

102(d) procurement of a foreign patent by patentee filed more than one year before earliest filing;

102(e) publication of a patent or application after filing date of claimed invention, but having a priority date prior to earliest filing date;

102(f) patentee didn’t invent subject matter to be patented

102(a)(1)

No territorial limit on public use, sale, “otherwise available”

102(a)(2)

291 Derivation

102(c) abandoned invention 102(g) prior invention by another who did not abandon, suppress, or conceal

Eliminated

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New §102 Grace Period and Exceptions

Before Effective Filing Date

“Disclosures” Patents/Applications

102(a)Prior artEntitled to a Patent UNLESS

102(a)(1)

Patented, Printed publication, public use, on sale, available to public

102(a)(2)

1st filed U.S. patent application by another

102(b) Exceptions

NOT Prior Art

102(b)(1) 1 year

(A) Any disclosure coming directly or indirectly from

the Inventor

(B) Disclosure by others after Inventor’s public disclosure

102(b)(2)(A) 1st pat/app derived invention from Inventor

(B) 1st pat/app filed after public disclosure by Inventor

(C) Common assignee for Inventor and 1st pat/app-joint research agreement

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Novelty

Current LawNew Law (effective 18 months after enactment)

102(a) 102(b) 102(d) 102(a)(1)

What? 1. Known 2. Used

1. Patented2. Described in a printed publication

1. Patented2. Described in a printed publication3. In use4. On sale

1. Patented2. Caused to be Patented3. Subject of an inventor’s certificate

1. Patented2. Described in a

printed publication

3. In public use4. On sale5. Otherwise available

to the public

By whom? Others Anyone Applicant Legal Assigns

Anyone

Where? In this country

Anywhere Anywhere Anywhere but US Anywhere

When? Before the invention More than 1 year prior to the earliest filing date

More than 1 year prior to the earliest filing date

Before the effective filing date

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Disclosure Scenarios

• A & B are inventors for patent application, more than a year before the filing, A & B publish a paper describing the invention

9/16/2013 9/16/2014

Application is filed by A & B

Disclosure by A & BConclusion:Disclosure is art under 102(a)(1)No patent for A&B

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• A & B are inventors for patent application, less than a year before the filing, A & B publish a paper describing the invention

9/16/2013 9/16/2014


Disclosure by A & B

Conclusion:Disclosure is not art under 102(b)(1)(A)

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• A & B are inventors for patent application, less than a year before the filing, A is an author on a paper describing the invention

9/16/2013 9/16/2014


Public disclosure by A &C or A alone Conclusion:

Disclosure is not art under 102(b)(1)(A) because A is a joint inventor.

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Disclosure Scenarios 1st to file/ 1st to disclose

• A & B are inventors for patent application, less than a year before the filing, X publishes a paper describing the invention, but before X’s disclosure, A&B publicly disclose their invention

9/16/2013 9/16/2014


Public disclosure by A & BConclusion:Intervening disclosure by X is not art under 102(b)(1)(B)

Disclosure by X

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Disclosure Scenarios Derived from Inventors

• A & B are inventors for patent application, less than a year before the filing, Y publishes a paper describing the invention

9/16/2013 9/16/2014


Public disclosure by Y Conclusion:

Y Disclosure is prior art to Application by A&B UNLESS Y obtained information directly or indirectly from A or B (102(b)(1)(A))

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Disclosure Scenarios Derived from Inventors

• A & B are inventors for patent application, less than a year before the filing, X publishes a paper describing the invention, but prior to X’s disclosure, Y publicly discloses the invention

9/16/2013 9/16/2014


Disclosure by Y Conclusion:X is not prior art (under 102(b)(1)(B)) provided Y obtained information directly or indirectly from A and/or B

Disclosure by X

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First-to-File for Applications/Patents

The first-to-file gets the patent, except where

1) The first filer obtained the invention, directly or indirectly, from the second filer (derivation proceedings will resolve this)

2) The second filer was the first to “publicly disclose” the invention

3) Common assignee for the second filer and first filer-jt research agreement

4) The first filer abandons the application prior to publication or issuance

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1st to File Scenarios 1st to File

X files an application, A & B file a patent application

9/16/2013 9/16/2014

A & B file a patent application

Conclusion:X gets a patent, A&B get bupkis102(a)(2)

X files a patent application

3/16/2013

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1st to File Scenarios Reality

A&B file a patent application, later- X’s patent issues or application publishes

X independently arrived at same subject matter.

Conclusion:X gets a patent, A&B get whatever is not taught by X’s patent/application

X’s patent issues/application publishes- will the USPTO find this?

9/16/2013 9/16/2014


[X files a patent application]

3/16/2013

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1st to File Scenarios 1st to File

X files a patent application, A & B file a patent application,

but X derived the invention from A&B

9/16/2013 9/16/2014


Conclusion:A&B get a patent if X loses the derivation proceeding 102(b)(2)(A)


3/16/2013

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1st to File Scenarios 1st to Disclose

• A & B file a patent application, less than a year before the filing, A publishes, and X files an application after the publication

9/16/2013 9/16/2014


Disclosure by A Conclusion:A&B get a patent, X gets nada102(b)(2)(B)


3/16/2013

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1st to File Scenarios 1st to Disclose/Derived

• A & B file a patent application, less than a year before the filing, Y publishes, and X files an application after the publication

9/16/2013 9/16/2014


Disclosure by Y Conclusion:A&B get a patent, X gets nadaIf Y derived information from A&B102(b)(2)(B)


3/16/2013

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1st to File Scenarios 1st Disclosure

• A & B file a patent application, more than a year before the filing, A publishes, and X files an application after the publication

9/16/2013 9/16/2014


Conclusion:No one gets a patent if A’s disclosure anticipates the inventions102(a)(1)

X files a patent application (4/16/2014)

3/16/2013

Disclosure by A (6/16/2013)

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1st to File Scenarios 1st Disclosure

• A & B file a patent application, more than a year before the filing, A publishes, and X files an application after the publication

9/16/2013 9/16/2014


Conclusion:X is not prior art to A’s application 102(b)(2)(B)but A’s disclosure is art to A&B 102(a)(1)

X files a patent application (4/16/2014)

3/16/2013

Disclosure by A (6/16/2013)

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1st to File Scenarios Common Assignee


X and A&B are all employed by University, and are in a joint research agreement

9/16/2013 9/16/2014


Conclusion:A&B get a patent, X gets patent102(b)(2)(C)


3/16/2013

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1st to File Scenarios Abandonment


X’s application is abandoned without publishing

9/16/2013 9/16/2014


Conclusion:A&B get a patent- no prior art


3/16/2013

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First to File Suggestions

• File before any public disclosure to prevent loss of rights outside U.S.

• Continue this practice after March 16, 2013

• Pay attention to any public disclosures and document them

• Track disclosures, access by others (derivation) and others’ activities

• Monitor competitors closely

• File early and often- multiple provisionals

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1st to File Scenarios Multiple disclosures

9/16/20139/16/2014

A & B file on ZM

Conclusion:A&B get Z and ZMX gets ZY

X files on ZY

3/16/2013

A files on Z

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Obviousness – 103(a)

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102,

if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

Patentability shall not be negated by the manner in which the invention was made.

35 U.S.C. § 103(a)

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Non-obvious subject matter 103103(a) largely unchanged from current law, but amended to

account for first to file.

DELETED- 103(b) (biotechnology-the non-obviousness of methods for making or using novel and

non-obvious composition)

DELETED- 103(c) (exclusion as prior art subject matter which is subject to assignment or

commonly owned at the time the invention was made)

103 is changed with respect to availability of prior art as it relates to new standards and exceptions under 102.

103(c) is provided for in the prior art exception in 102(b)(2)(C)

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Leahy-Smith America Invents Act

September 16, 2011

Immediate changes as of September 16, 2011

• September 26, 201115% surcharge on particular fees

Prioritized examination program effective

*IF USPTO doesn’t get extra funding, because the statutory changes are a priority, other programs may cease, no new examiners, slow down at USPTO

September 16, 2012

March 16, 2013

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9/16/2011 Effective Date

Proceedings commenced on/after 9/16/11

1) Best mode defense - Civil/USPTO

2) Marking - Pending cases

Virtual marking – pat + website

No Qui Tam actions- except commercial damage

3) Joinder- All defendants must have common facts, not just infringing patent

4) USPTO sued in E.D. of Va- not D Ct of DC

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Best Mode - § 282(b)3(A)

• Effective September 16, 2011, best mode no longer raised as an invalidity or unenforceability defense in any subsequently-filed litigation.

• But, § 112 still requires disclosure of best mode known to inventor at time of filing.

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Virtual Marking - § 287(a)

• Current: marking patented article with “patent” or “pat.” along with patent number.

• New: affix “patent” or “pat.” together with an address of a posting on the Internet, accessible to the public without charge, that associates the patented article with the number of the patent.

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False Marking - § 292(a)

• Only the United States may now sue for false marking.

• The marking with a patent that covered product but now is expired is not a violation.

• Allows only a person who suffered competitive injury to file civil action for compensatory damages instead of $500/offense.

• Effective September 16, 2011 for any then pending or later filed case.

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Dis-Joinder of Parties - § 299

• On Thursday, September 15, 2011, at least 54 new patent cases were filed against a total of 804 named defendants with the average complaint accusing 16 entities of patent infringement.

• No more.

• Can’t join multiple defendants in a single lawsuit simply based upon the fact that the defendants are all alleged to infringe the same patent.

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Dis-Joinder of Parties - § 299

Accused infringers may be joined (by you-know-who) as defendants or have their actions joined for trial only if the right to relief is against all the parties:

(1) arises out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process and

(2) is based on common questions of fact.

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Patents pending/filed on/after 9/16/11

Prior commercial use defense for patents issued on or after 9/16/11

Before- Prior commercial use defense applied to Business Method patents

Now, applies to all technologies

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

• So if A sues B for infringement, and B successfully defends by showing prior use, A’s patent is still valid against others.

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X is sued by University. X used tech > 1 yr b/f filing. UNVERSITY EXCEPTION- X can’t use defense

X is sued by CORP, X used tech > 1yr b/f filing date, UNIVERSITY EXCEPTION- owned by U at time of filing, X can’t use the defense

X is sued by U, X used tech > 1yr. Tech is not funded by FedGov, NO UNIVERSITY EXCEP-X uses the defense

Prior User Rights – University Exception

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9/16/2011 Effective Date

Patents pending/filed on/after 9/16/11

Strategy for reducing, avoiding, or deferring tax liability is in the prior art - pending applications

No claims to human organisms- pending applications

Patent Term Extension- date of notification is extended

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Actions/Challenges to Patents and Applications

9/16/2012

1. Supplemental Examination- any patent - before/on/after 9/16/2012

2. Pre-Issuance Submissions- any application - before/on/after 9/16/2012

3. Inter-Partes Review- any patent - before/on/after 9/16/2012

Transition period- higher standard- reasonable likelihood to prevail

4. Transitional Post Grant Review for validity of Business Method Patents

3/16/2013

1. Derivation Proceedings (Interference Proceedings)

2. Post-Grant Review

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A Goal of AIA

“One major aim of the reform legislation is to

establish the USPTO as an alternative forum to

U.S. district courts for vetting the validity of

issued U.S. patents.”

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Supplemental Examination USPTO

• Patent owners request supplemental examination of their own issued patents

• The procedure allows a patent owner to make submissions to the USPTO to correct mistakes in disclosures during prosecution

• Evidence disclosed by a patent owner to the USPTO during the supplemental examination cannot later be asserted by a defendant as evidence of inequitable conduct, provided the supplemental examination proceeding has concluded

9/16/2012

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• Within 3 months of receiving a request only from patent owner.

• If substantial new question of patentability is raised by at least one of the items cited in the request, PTO will order a reexamination of the patent.

• Can be used to “cure” not only simple oversights by patent owner but actual intentional failures to disclose prior art.

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• A purpose: limit inequitable conduct claims in litigation.

• Cannot be used to cure: (1) prior allegations of inequitable conduct in lawsuit before request is filed; and (2) defenses to a patent enforcement action raised before the supplemental examination is concluded.

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3RD Party Pre-Issuance Submission USPTO

During prosecution, a third party may submit

1) Any patent, patent application

2) Other printed publication

along with

3) Statement of relevance

4) Fee

Consider the effects of this filing should later litigation occur

9/16/2012

43

Inter Partes Review (IPR)PTAB

• Who files

Anyone other than patent owner

• When filed

Nine months after patent issues or end of PGR

• Grounds for challenge

Patents and printed publications

• Threshold

Reasonable likelihood that petitioner would prevail on at least one of the claims challenged in the petition

• Duration of Review

Within one year after initiation

Patent Trial and Appeal Board

9/16/2012

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Post Grant Rev of Biz M Patents PTAB

• What is it

Request to cancel as unpatentable 1 or more claims of a patent

• Who files

Person sued for infringement

• Applies to

Patents with any effective date


Prior art under old rules or new rules

Creates ESTOPPEL in civil action- cannot use again

• When To File

From 9/16/12 to 9/16/20

9/16/2012

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Interference/Derivation Proceeding USPTO

Interference applies to claims before 3/16/2013 effective filing date

• Declared by the patent office/requested by Applicant

• Instituted between an existing application and a patent/application claiming the same invention

• Can be declared anytime during the pendency of the patent application

Current

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Interference/Derivation Proceeding USPTO

Derivation only for claims with 3/16/2013 effective filing date

• Started by a petition by patent owner against another patent owner with an earlier filing date

• Patent owner with earlier filing date must have derived invention from patent owner instituting the derivation proceeding

• Must be filed within 1 year of the issue date of the first patent alleged to have derived the invention or the publication of substantially same claims

3/16/2013

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Post Grant Review (PGR)PTAB

• Only applies to patents with effective filing date of 3/16/2013

• Who files

Anyone other than Patent owner

• When filed

Within 9 months of issue or broadening reissue


Any ground of invalidity as well as prior art

• Threshold

More likely than not that at least one challenged claim is unpatentable or there is a novel question of law

• Duration of Review

One year with possible 6 month extension

3/16/2013

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Reduced Fees for Micro entity

• Micro entities receive 75% fee reduction• Who Qualifies?

Applicant is paid/employed by institution of higher education

or conveys some rights to institution

Particular small entities• Where the inventor not named as inventor on > 4 applications filed

in US

Excludes prior employment• Gross income in prior year < 3x median household income• No obligation to assign or convey to non-micro entity

• Effective on 9/16/2011, but fees must be set by USPTO

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Advice of Counsel

The Act codifies the doctrine created by federal case law, which provides that

neither the failure of an accused infringer to obtain the advice of counsel

nor the failure to present such advice to a court or jury

may be used to prove that the accused infringer willfully infringed a patent

Questions?

Thank you!

Ballard Spahr

leahy-smith america invents act j. gibson lanier, jd, phd ballard spahr llp

Documents

patent application

patent system

earliest filing datebefore

earliest filing datemore

102a1no patent

disclosure scenariosa

inventorb disclosure

patent unless102a1