overview of the america invents act

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Artist Bjørn Bjørnholt Overview of the America Invents Act David Loretto Ph.D. Materials Science and Engineering U.S. Patent Attorney T +34 648 149 527 E [email protected] March 2012

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  • 1.Artist Bjrn BjrnholtOverview of the America Invents ActDavid LorettoPh.D. Materials Science and EngineeringU.S. Patent AttorneyT +34 648 149 527E [email protected] 2012

2. Outline- Structure - Effective dates Implementation - Judicial review- Survey of relevant (implemented and forthcoming) provisions: - Fees - Pre-issuance submissions - Post-grant review proceedings - Inventors oath or declaration - First inventor to file- Not so relevant (but interesting) implemented provision: - False marking- Conclusions 2 3. AIA Structure- Leahy-Smith America Invents Act (Pub. L. 112-29), signed byPresident Obama on Sept. 16, 2011- 37 sections- Many changes to law (35 USC)- Various instructions to USPTO Director- Range of effective dates - Sept. 16, 2011 (mainly litigation-related) - Sept 26, 2011 (interim fee increase final fees in Feb. 2013?) - Sept. 16, 2012 (default) - March 16, 2013 (first inventor to file)3 4. Already in effect- Sept. 16, 2011 (mainly litigation-related): - Sec. 5, Prior commercial use defense - Sec. 9, Venue - Sec. 15, Best mode defense - Sec. 16, Marking - Sec. 17 Advice of Counsel - Sec. 19, Jurisdiction, etc.- Sept. 26, 2011: - Sec. 11, Fees for patent services (immediate 15% surcharge) - Prioritized examination 4 5. Future effective dates- Sept. 16, 2012 (default): - Sec. 4, Inventors oath and declaration; - Sec. 6, Post-grant review proceedings; - Sec. 7, Patent Trial & Appeal Board (PTAB) - Sec. 8, Pre-issuance submissions by third parties; - Sec. 12, Supplemental examination, - Sec. 18, Covered Business Methods, etc.- March 16, 2013: - Sec. 3, First inventor to file, derivation proceedings5 6. Implementation- USPTO may make own regulations governing patents (37 CFR),but only so far as authorized under legislation.See Tafas v. Dudas, 541 F. Supp. 2d 805 (E.D. Va. 2008)(barring implementation of USPTO rules limiting applicants toonly two continuations)- USPTO is giving more notice and opportunities for publiccomment on AIA-related regulations than required underAdministrative Procedure Act (even for rules that supposedly donot affect substantive criteria of patentability)- USPTO will be afforded some deference interpreting anyambiguities in AIA6 7. Implementation (con.)- AIA-mandated changes to 37 CFR and examination guidelines(MPEP) in process of implementation by USPTO ahead of Sept.16, 2012 and Mar. 16, 2013 effective dates (new fee structure,separate from 15% increase already implemented, anticipatedfor February 2013)- AIA implementation status, timetables, notices of proposedrulemaking, public hearings, presentations, public comments,etc., updated regularly on USPTO site: http://www.uspto.gov/aia_implementation/index.jsp 7 8. Judicial review- Once implemented, AIA subject to application and interpretationin civil (generally infringement) actions: - 94 District Courts (AIA-based decisions already issued) - Federal Circuit decides all patent-related appeals from District Courts (usually has final say on patent law) - Supreme Court (hears few appeals from Federal Circuit)- Appeals from AIA-related USPTO decisions and adjudications(PTAB, former BPAI) and US International Trade Commission(ITC) final determinations - Mainly Federal Circuit (again usually has final say)- USPTO regulations (37 CFR) subject to private challenge inDistrict Court (Tafas v. Dudas)8 9. Fees transitional surcharge and prioritized examination- Sept. 26, 2011: AIA, Sec. 11- 15% surcharge (see amended 35 USC 41), and electronic filingincentive (i.e., extra 400 for paper filings)- Prioritized examination (program underway pre-AIA, see 76 FR59050, Sept. 23, 2011):- USPTO aims for final disposition within 12 months- Maximum 30 claims, including 4 independent- 4800 fee- Initial limit of 10000 per year; 855 requests in FY 2011 (toSept. 30, 2011); 1516 in FY 2012 (through Feb. 24, 2012) 9 10. Fees USPTO fee setting authority- AIA Sec. 10, USPTO given fee setting for cost recovery- Jan. 30, 2012 (77 FR 4509), Public Hearings for Feb. 2012- USPTO, Feb. 2012, initial proposals (current large entity fee): - Filing, search, examn: 1840 (1250) - More than 20 claims 100 (60), 3 independent 460 (250) - Prioritized examination: 4000 (4800) - RCE: 1700 (930) - Appeal, with oral argument): 5300 (2480) - Publication and issue: 960 (2040) effective Jan. 1, 2014 - Maintenance 1st, 1600 (1130); 2nd, 3600 (2850); 3rd, 7600 (4730)10 11. Fees USPTO fee setting authority- USPTO Feb. 2012 initial proposals (current large entity fee): - Ex parte re-examination: 17760 (2520) - Inter partes review: 27200 (8800); 21-30 claims, 34000; 31- 40 claims, 40800; 41-50, 54400, etc. - New post-grant review and CBM: 35800; 21-30 claims, 44750; 31-40 claims, 53700; 41-50, 71600, etc. - New supplemental re-exam: 21300 (excess page charges)- Public hearings held in Feb. 2012, many written comments(individuals, AIPLA, JIPO, Assoc. American Universities, etc.)received by Feb. 29 deadline.- Proposal new rules due June 2012, final rules due Dec. 2012,implementation, Feb. 2013 11 12. Fees micro-entity 75% discount- AIA Sec. 11(g), Micro-entity defined (new 35 USC 123): - Inventor named on no more than 4 prior US applications; - Gross income in prior calendar year no more than 3 x median US household (i.e, 150k in 2010); and - Application not assigned, obliged to be assigned, to entity exceeding micro-entity income limit- Micro-entity extends to institutions of higher learning, but aredefined as US state-accredited public or non-profit highereducation institution (meets national treatment under TRIPS?)- Proposed rules, due June 2012, final rules, Dec. 2012,implementation, Feb. 2013 12 13. Preissuance submissions by third parties pre-AIA- 35 U.S.C. 122(e) and 37 CFR 1.99 (July 2010), see MPEP 1134(Rev. 8, July 2010), provide extremely restricted scope for pre-issuance third party submission: - Before earlier of allowance or two months after publication, no more than 10 patents/printed publications, and no explanation of relevance, even markings - Must serve patents/publications on applicant - Examiner need not consider submission, may ask applicant to comment, may use to reject claims - Low fee (180) 13 14. Under AIA, preissuance submissions (slightly) more like Art.115 EPC- AIA sec. 8, new 35 USC 122(e), effective Sept. 16, 2012, forapplications filed before, on or after Sept. 16, 2012- Notice of proposed rulemaking, Jan. 5, 2012 (77 Fed. Reg. 448): - Submissions by earlier of (A) allowance or (B) later of six months after publication or first rejection of any claim - Must include concise description of the asserted relevance of each listed document (new 35 USC 122(e)(1)(A)) - Examiner will consider documents, treat like IDS - No numerical limit; no need to serve; straw man ok - Small fee (180 for 10 patents/printed publications)- No comments by Mar. 5, 2012, final rules due July 201214 15. Post-grant proceedings: Ex parte reexamination, 35 USC301-07, not changed in AIA- Anyone can request EPR during period of enforceability (patentterm + 6 years); need not disclose real party in interest- USPTO must identify substantial new question of patentability(SNQ) in order to grant petition- SNQ must be based solely on patents or printed publications- Handled by central examining unit- Current fee 2520 (USPTO Feb. 2012 proposal, 17750)- May lead to stay in litigation; loser cannot reargue in USPTO,district court, USITC- Almost 1000 EPR requests in 2011 (one third relate to litigation)- Average 2 to 3 years (terminated cases); can appeal to PTAB15 16. Post-grant: Four new AIA proceedings, Sept. 16, 2012effective dates- Inter partes review (IPR) - Replaces inter partes re-exam, conducted by PTAB (former BPAI, three-member panel)- Post-grant review (PGR) - New opposition proceeding, PTAB- Covered business methods (CBM) - Alleged infringer, invalidation of a business method patent, like PGR, PTAB- Supplemental examination (SE) - Patent owner, (re)examination of unconsidered prior art to preempt inequitable conduct allegation16 17. Post-grant review, AIA, Sec. 6 (35 USC 321-9), USPTOOpposition- Feb. 10, 2012, Notice of proposed rulemaking (77 FR 7060)- Anyone, other than patent owner, can request PGR within 9months of issue- Must disclose real party in interest- Cannot institute PGR if already before district court- USPTO will institute PGR when more likely than not willinvalidate at least 1 claim or address new question of law- Patentee may argue against institution of PGR- Challenge need not be based on patents and publications, mayinclude 35 USC 101, 102, 103, 112 (except best mode)- Patentee may respond and amend claims at least once 17 18. Post-grant review, AIA, Sec. 6, USPTO Opposition (con.)- Evidence in form of patents, printed publications and affidavitsand declarations (including expert), as necessary- Optional oral proceedings and possibility of live witnesses- PTAB aims to terminate a PGR within one-year of institution- Losing party cannot reargue in USPTO proceeding, district court,USITC- Can appeal PTAB final written decision in PGR to Fed. Cir.- Very high proposed fee: 35800 (more for over 20 claims)- Comments on NPR due by April 10, 2012, final rules, July 2012- PGR effective Sept. 16, 2012, but, in general, will only beavailable for patents filed on or after March 16, 2013 18 19. Covered Business Methods, AIA Sec. 18 (in effect throughSept. 16, 2020)- Feb. 10, 2012, Notice of proposed rulemaking (77 FR 7080)- Party sued or charged with infringement of a covered businessmethod patent may ask PTAB to invalidate one or more claims- Similar procedure to PGR and same proposed fee structure:35800, and up- Like PGR, Sept. 16, 2012 effective date, with final regulationsdue July 2012- CBM applies to patents issued before, on or after Sept. 16, 2012 19 20. Covered Business Methods, AIA, Sec. 18 (in effect throughSept. 16, 2020) (con.)- A covered business method patent is a patent that claims amethod or corresponding apparatus for performing dataprocessing or other operations used in the practice,administration, or management of a financial product or service,except that the term does not include patents for technologicalinventions. AIA sec. 18(d)(1)- PTAB will consider, solely for purposes of CBM proceedings,whether patent is for a technological invention andwhether the claimed subject matter as a whole:(1) recites a technological feature that is novel and unobviousover the prior art; and(2) solves a technical problem using a technical solution.37 CFR 42.301(b) (proposed) 20 21. New Inter Partes Review, AIA Sec. 6- Feb. 10, 2012, notice of proposed rulemaking (77 FR 7041)- Replaces inter partes reexamination- Anyone, who is not patent owner and has not filed a civil actionchallenging validity of the patent, may file petition for IPR tocancel 1 or more claims- Must identify real parties in interest- Petitioner must show reasonable likelihood will prevail (higherstandard than SNQ and lower than PGR more likely than not)- Grounds for invalidity must be based on patents and printedpublications and 35 USC 102 or 103 only 21 22. New Inter Partes Review, AIA Sec. 6 (con.)- Similar procedure to PGR, petition to which patent owner mayrespond and, if instituted, patent owner may amend at leastonce- Available later of 9 months from issue or conclusion of PGR- Automatic stay on litigation instigated within past year- PTAB aims to conclude IPR within 1 year of institution,extendable by another 6 months- Losing party cannot institute later proceedings in USPTO, districtcourt or ITC on any ground raised, or which could havereasonably been raised, in IPR- Very high proposed fee: 27200 (more for over 20 claims)- Effective Sept. 16, 2012, for patent filed before, on or after 22 23. New Supplemental Examination, AIA, Sec. 12- Noticed of proposed rulemaking, Jan. 25, 2012 (77 FR 3666),comments due by Mar. 26, 2012, final rules in July 2012 - Patent owner may ask USPTO to consider, reconsider or correct information relevant to patentability based on a patent or printed publication or statement to USPTO - Within 3 months of request, if no SNQ found, patent reissues with SE certificate - If SNQ found, ex parte reexamination instituted - Absent actual fraud, SE certificate or completed reexam, preempts inequitable conduct allegation - USPTO proposed fee: 21300; If no EPR, 16120 refund- Effective Sept. 16, 2012, for any patent, filed before, on or after23 24. Post-AIA, five possible post-grant proceedings- Ex Parte reexamination - Anyone, during enforceable patent term, no need to identify real party, SNQ, patents or publications, narrow estoppel- Inter partes review (IPR), PTAB - Anyone except owner or litigant, later of 9 months from issue or end PGR, must identify real parties, reasonable likelihood, patents and publications, 102 and 103 only, broad estoppel- Post-grant review (PGR), opposition before PTAB - Anyone other than patent owner, within 9 months of issue, must identify real party, more likely than not, patents, publications and other evidence, narrow estoppel 24 25. Post-AIA, five possible post-grant proceedings- Covered business methods (CBM), PTAB- Anyone sued on CBM, until Sept. 16, 2020, technologicalinvention inquiry- Supplemental examination (SE)- Patent owner, during enforceable patent term, SNQ (if found,becomes EPR) may preempt IC allegation 25 26. Inventors oath or declaration, AIA sec. 4- Jan. 6, 2012, notice of proposed rulemaking (77 FR 982)- Simplified procedure, declaration in assignment- When inventor is deceased, legally incapacitated, unreachable orrefuses to sign, a substitute statement may be submitted by: - Legal representative - Assignee - Party to whom inventor is obliged to assign - Party who otherwise shows sufficient proprietary interest- Foreign priority claim no longer acceptable in declaration- Effective Sept. 16, 2012, for applications filed before, on or after 26 27. First inventor to file; prior art under old 35 USC 102- (a) known or used in US, or patented or published anywhere, byothers, before invention by applicant- (b) patented or described anywhere, or in public use or on salein US, by anyone, including applicant, more than one yearbefore US filing date- (c) abandoned by applicant- (d) non-US patent or similar right obtained to invention byapplicant more than one year before US filing date27 28. First inventor to file; old 35 USC 102 (con.)- (e) described in an application published in the US based on anapplication filed in the US by others before invention byapplicant- (f) not invented by applicant- (g)(1) earlier invention date by another in WTO country, asestablished in USPTO interference; (2) earlier invention date inUS 28 29. First inventor to file; AIA sec. 3, new 35 USC 102- Applies to applications and patents with effective filing date onor after March 16, 2013- Notice of proposed rulemaking due June 2012, final rules, Feb.2013- (a) NOVELTY; PRIOR ART.A person shall be entitled to apatent unless(1) the claimed invention was patented, described in a printedpublication, or in public use, on sale, or otherwise available tothe public before the effective filing date of the claimedinvention; or- Absolute novelty!29 30. First inventor to file; AIA sec. 3, new 35 USC 102- (a) NOVELTY; PRIOR ART.A person shall be entitled to apatent unless(1).or(2) the claimed invention was described in a patent issuedor inan application for patent published or deemed published [PCT] ,in which the patent or applicationnames another inventor andwas effectively filed before the effective filing of the claimedinvention.- Prior art includes previously filed applications issued or publishedafter effective filing date, unlike Art. 54(3) EPC, may still beapplied for purposes of novelty and non-obviousness 30 31. First inventor to file; AIA sec. 3, new 35 USC 102 (con.)- Effective filing date (EFD)?- The term effective filing date for a claimed invention in apatent or application for a patent means(A)the actually filing date of the earliest application for thepatent containing a claim to the invention; or(B) the filing date of the earliest application for which the patentor application is entitled, as to such invention to a right ofpriority under section 119 [foreign priority].AIA sec. 3(i)(1)- Old section 102(e), with its reliance on US filing date, no longerapplies to earlier filed applications that publish or issue later- No need to file US provisional to get 102(e) date 31 32. First inventor to file; AIA sec. 3, new 35 USC 102 (con.)- (b)(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THEEFFECTIVE FILING DATE OF THE CLAIMED INVENTION Adisclosure made 1 year or less before the effective filing date ofa claimed invention shall not be prior artunder subsection(a)(1) if(A) the disclosure was made by the inventor or jointinventor or by another who obtained the subject matterdisclosed directly or indirectly from the inventor a joint inventor;or (B) the subject matter disclosed had, before such disclosure,been publicly disclosed by the inventor a joint inventor oranother who obtained the subject matter disclosed directly orindirectly from the inventor or joint inventor.- Inventor (or someone who obtained subject matter from) candisclose up to 1 year before EFD without creating US prior art 32 33. First inventor to file; AIA sec. 3, new 35 USC 102 (con.)- (b)(2) DISCLOSURES APPEARING IN APPLICATIONS ANDPATENTS.A disclosure shall not be prior artunder(a)(2) if(A) the subject matter disclosed was obtained directly orindirectly from the inventor or a joint inventor; (B) the subjectmatter disclosed had, before such subject matter was effectivelyfiled under(a)(2), been publicly disclosed by the inventor or ajoint inventor or another who obtained the subject matterdisclosed directly or indirectly from the inventor or a jointinventor; or- Subject matter disclosed in patent or application of another isnot US prior art if: - Was obtained directly or indirectly from an inventor or - Publicly disclosed by inventor (or someone who obtained subject matter from) before EFD of patent or application33 34. First inventor to file; AIA sec. 3, new 35 USC 102 (con.)- (b)(2) DISCLOSURES APPEARING IN APPLICATIONS ANDPATENTS.A disclosure shall not be prior artunder subsection(a)(2) if.(C) the subject matter disclosed and the claimed invention, notlater than the effective filing date of the claimed invention, wereowned by the same person or subject to an obligation ofassignment to the same person.- If commonly owned, previously filed applications naming anotherinventor that issued or published after EFD do not create USprior art34 35. First inventor to file; AIA sec. 3; Derivation proceedings- Feb. 10, 2012, notice of proposed rulemaking (77 FR 7028)- Mechanism for applicant to challenge a pending application orpatent containing derived material- Must challenge within a year of publication of derived matter(also available, civil court action, within 10 years)- Will be conducted by PTAB similar to new IPR or PGR- Applications with EFD after March 16, 201335 36. First inventor to file; AIA sec. 3- Good news- New 102 looks a lot like absolute novelty (though allowabledisclosure by/from inventor within a year, possibility ofderivation proceedings), which EP clients already take intoaccount- For a non-US application filed on or after March 16, 2013, itwill no longer be necessary to file a US provisional forpurposes of creating US prior art under section 102(e)- Bad news- Old complicated 102 will continue to apply to applicationswith an EFD before March 16, 201336 37. False Marking AIA closes the lid- Marking articles with patent numbers can increase damagerecovery by giving notice to infringers:- Patenteesmay give notice to the public that [an article] ispatented, either by fixing thereon the word "patent" or theabbreviation "pat.", together with the number of the patent, .In the event of failure so to mark, no damages shall berecovered by the patentee in any action for infringement, excepton proof that the infringer was notified of the infringement andcontinued to infringe thereafter.35 U.S.C. 287(a) (pre-AIA, pre-Sept. 16, 2011) 37 38. False Marking AIA closes the lid- On the other hand, falsely marking unpatented articles withpatent numbers may expose the patent owner to liability- (a).Whoever marks upon, or affixes to, or uses in advertisingin connection with any unpatented article the word "patent" orany word or number importing the same is patented, for thepurpose of deceiving the public.Shall be fined not more than$500 for every such offense.(b) Any person may sue for the penalty, in which event one-halfshall go to the person suing and the other to the use of theUnited States.35 U.S.C. 292 (pre-AIA, pre-Sept. 16, 2011)38 39. False Marking AIA closes the lid- We hold that the plainlanguage of 35 U.S.C. 292requires courts to imposepenalties for false marking ona per article basis.Forest Group, Inc. v. Bon ToolCo. 590 F.3d 1295 Fed. Cir.(2009) (dispute betweencompetitors regarding stiltsused in building work) 39 40. False Marking AIA closes the lid- Pequignot (a patent attorney)accuses Solo of falselymarking at least21,757,893,672 lids, inregard to expired patents, amere $10.8 trillion indamages. Pequignot v. SoloCup Co., 608 F. 3d 1356,1359 (Fed. Cir. 2010)- Fed. Cir. affirmed dismissalfor failure to show deceptiveintent by manufacturer. Id. at1362-65. 40 41. False Marking AIA closes the lid- Stauffer (another patentattorney) sues mens clothingstore Brooks Brothers forselling falsely marked bowties,some marked 2,083,106 and2,123,620, patents thatexpired in 1954 and 1955,respectively. Stauffer v.Brooks Brothers, Inc., 619F.3d 1321, 1322 (Fed. Cir.2010)- Fed. Cir. reverses dismissalfor lack of standing, remandson issue of deceptive intent.Id. at 1328 41 42. False Marking AIA closes the lid- Marking statute ( 287) amended to allow virtual marking byreferring to a website with a list of patent numbers; falsemarking statute ( 292) amended to eliminate violations forexpired patent numbers- With respect to private litigants (like attorneys Pequignot andStauffer), AIA further amended 292 to require proof ofcompetitive injury and limit recovery to damages adequate tocompensate for injury- AIA marking provisions effective as of date of enactment,September 16, 2011, so have already allowed dismissal of anumber of civil actions42 43. Summary- Already enacted: Litigation reforms; 15% fee surcharge;Prioritized examination- Sept. 16, 2012: pre-issuance third party submissions; new post-grant review options; inventors oath and declaration- Feb 2013: New fee structure (replacing 15% surcharge)- March 16, 2013: First inventor to file; almost absolute novelty;no need to file US provisional for 102(e) date- Many effects of different AIA sections will not be felt untilapplications filed on or after March 16, 2013 have beenprosecuted and litigated- Will take a long time to get definitive interpretation of AIA- Pre-AIA law will remain relevant for decades to come 43