paper293375.pdf

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An Introduction to theAmerica Invents Act

babc.com ALABAMA I DISTRICT OF COLUMBIA I MISSISSIPPI I NORTH CAROLINA I TENNESSEE

David W. Holt256‐517‐5191 [email protected]

Agenda• Basics of Patent Law

• The America Invents Act

– First Inventor to File

– Other Changes

© 2011 Bradley Arant Boult Cummings LLP

– Other Changes

– Prior Use Defense

– Best Mode

– Post‐Grant Proceeding

– False Marking

– JoinderPat. 174,465 (1876)Alexander Graham Bell

What is a Patent?

• A patent grants the owner the right to exclude others from making, using, selling, offering for sale, and importing the subject matter bounded by the claims of the patent.


• Period of exclusivity is 20 years from the filing date.*

Pat. No. 6,469 (1849): Manner of Buoying Vessels Abraham Lincoln

Requirements for Obtaining a Patent

• “Process, machine, manufacture, or composition of matter” (Sec. 101)

• Novel (Sec 102)


Novel (Sec. 102)

• Not obvious (Sec. 103)

• Useful (Sec. 101)

Pat. No. 4,656,917 (1987) for “Musical Instrument Support” Edward L. Van Halen

© 2011 Bradley Arant Boult Cummings LLP5

Parts of Patent Application

• Abstract (brief explanation)

• Specification– Field of invention

– Background (problems solved)

© 2011 Bradley Arant Boult Cummings LLP6

– Summary

– Detailed description

– Drawings

– Claims (defines scope of monopoly)

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The America Invents Act


First Inventor to File• “First to Invent”

– US system from 1789 to Mar. 15, 2013

– Patent issued to party who could prove prior invention

• “First to File”– Most of the rest of the world


– Patent issued to first party to file, if not anticipated by published prior art (i.e., absolute novelty).

• “First Inventor to File” – New under the AIA– US system beginning Mar. 16, 2013

– Patent issued to first party to file, with exceptions

– No more swearing behind prior art to show earlier “invention”

– But 1 year grace period after inventor public disclosure

Public Disclosure Grace Period• The AIA retains an inventor’s one year personal grace period for filing an application after disclosure, if the public disclosure :


– Was made by the inventor;

– Was made by a third party that obtained the information from the inventor

• BUT, no grace period for a third party disclosure of an independently‐created invention

Derivation Proceeding

• The AIA replaces the interference system with a derivation proceeding.

– Derivation proceedings will determine whether an inventor named in an earlier‐filed


an inventor named in an earlier filed application derived the claimed subject matter from the inventor of a later‐filed application.

– Derivation proceedings will apply to applications having priority claims after March 15, 2013.

Scenario A


First to Invent: A obtains patent (so long as he wasn’t dilatory in filing)

First to File: B obtains patent.

First Inventor to File: B obtains patent.

Scenario B


First to Invent: A obtains patent if filed within year of publication.

First to File: A does NOT obtain patent, invention in the public domain.

First Inventor to File: A obtains patent if filed within year of publication.

WHY? USA has a 1‐year grace period for inventors.

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Scenario C


First to Invent: A obtains patent if filed within year of publication.

First to File: No one obtains patent, given to public domain.

First Inventor to File: A obtains patent if filed within year of publication.

Scenario D


First to Invent: A obtains patent if filed within year of C’s publication.


First Inventor to File: No one obtains patent, given to public domain.

WHY? In new USA system, 1 year grace period limited only to publications by or derived from inventor.

Scenario E


First to Invent: A obtains patent if filed within year of B’s publication.


First Inventor to File: B obtains the patent.

NOTE – In this scenario, because B publishes first, he receives a 1‐year grace period to file, which knocks out A’s filing as prior art. Thus, B is both second to invent and second to file but gets the patent anyway.

Who Benefits from the AIA?• Companies with efficient

“bench‐to‐office” procedures

• Companies willing to use Provisional Patent Applications or Preemptive Publication

• Universities/ research


Pat. 3,138,747 (1959)Integrated Semiconductor Chip

Owned by Texas Instruments, Inc.

• Universities/ research institutions and micro entities get lower fees

• Entities that may publish before filing (consider foreign effects)

• Entities willing to pay $4800 for accelerated prosecution for 6 month examination and 1 year decision

Who Loses in the AIA?• Garage Inventors

• Entities that delay filings

• Patent Applicant Pocketbooks (fees ↑)


Pat. 6,161,223 (2000)

“Pants Separable at Crotch for Style Mixing”

Prior Use Defense

• Common in first‐to‐file countries

• Historically not available at all; added in 1999 as defense for


parties making secret commercial use of certain business methods prior to patent being applied for

Pat. 223,898 (1880) for Electric LampThomas Edison

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Prior User Rights

• The AIA has expanded the prior use defense to apply to any patent issued after Sept. 16, 2011, “consisting of a process, or consisting of a machine manufacture or composition


of a machine, manufacture, or composition of matter used in manufacturing or other commercial processes.”

• Cannot be asserted against university‐owned patents

• Lots of limitations

Best Mode Defense

• The AIA eliminates the best mode defense, i.e., accused infringers can no longer claim that an asserted patent is invalid due to the patent holder’s failure to include the best


patent holder s failure to include the best mode.

• However, the AIA does not eliminate the best mode requirement under 35 U.S.C. §112 for patent applicants when submitting an application.

New Post‐Grant Proceedings –Effective 9/16/12

• Post‐Grant Review– Challenge patent on any

grounds within 12 months of issue

• Inter Partes Review– Challenge patent on novelty

or obviousness grounds


or obviousness grounds– Replaces Inter Partes

Reexamination

• Supplemental Reexamination– Ex parte proceeding to

“scrub” new prior art or inequitable conduct

– Patent Owner initiated

Pat. No. 1,475,024, “Traffic Signal” (1924)G.A. Morgan

False Patent Marking Provisions• The AIA eliminated qui tam false marking suits, but the U.S. may still sue for civil penalties.

• The provision applies to all cases filed on or


after Sept. 16, 2011 and all pending cases.

• The AIA created a new cause of action for false marking for private parties that have suffered a competitive injury due to the false marking.

• Virtual Marking

Joinder of Multiple Defendants

• For multiple accused infringers to be joined in the same action:

– The right to relief must be asserted against the infringers jointly and severally or arise out of


infringers jointly and severally, or arise out of the same transaction(s) or occurrence(s) relating to the making, using, importing, offer to sell, or selling of the same accused product or process, and

– Questions of fact common to all defendants will arise in the action.

Any questions?

David W. Holt


[email protected]‐517‐5191

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