Recent Changes to Patent Law (“America Invents Act”)

Jared Pitts Griffiths & Seaton PLLC 2108 N. Lemon Street

Mesa, AZ 85215 Mobile: (480)406-1478

Email: jared.pitts@gs-iplaw.com

Brief Summary of Some Important Aspects of the America Invents Act of 2011 (AIA)

• Intended to Harmonize U.S. Patent Law with International Patent Systems (first-to-file, absolute novelty)

• Effective March 16, 2013, the law changed the U.S. Patent System from First-to-Invent to First-Inventor-to-File. New patent applications filed after March 16, 2013 will fall under the U.S. new First-Inventor-to-File regime created by the America Invents Act of 2011.

• Those new applications: – will have priority based on filing date not invention date; – will have much more limited pre-filing grace period; and – will be subject to prior user rights.

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Comparison of Pre-AIA U.S. Patent Laws with New AIA Provisions

PRE-AIA

• “First to Invent” system (the inventor who can prove first to invent wins)

• One-year grace period to file in the U.S. if there is a public disclosure, use, or sale

• “Secret” sales and “secret” offers for sale trigger a one-year grace period.

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AIA

• “First Inventor to File” system (the inventor who files an application first wins the “race to the patent office”)

• One-year grace period is limited to public disclosure by the inventor(s) or “another” who obtained the subject matter from the inventor(s).

• “Secret” sales and “secret” offers for sale do not trigger any grace period, and may not be considered as “prior art”.

FIRST-INVENTOR-TO-FILE: Priority Based on Filing Date, Not Invention Date

• The first inventor to file an application for a claimed invention with the USPTO will generally maintain the application against all subsequent filers.

• Exception: A subsequent filer may win if he/she can prove (in a “derivation proceeding”) that someone else derived their patent or product from an invention disclosed by the inventor to the first filer. This may be particularly important in the joint development context or in the context of customer or supplier disclosures.

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First-Inventor-to-File Timeline (independent inventors “A” and “B”)

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A invents

B files B invents

A files

B prevails *** Prior to the AIA, A would have prevailed

with sufficient proof ***

First-Inventor-to-File Timeline (“B” derives invention from “A”)

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A invents

B files

A files

A prevails

A discloses to B

ONLY IF A can prove that B derived

the invention from A’s disclosure

Grace Period under Pre-AIA Law

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• Old law provided a one-year grace period for U.S. patent application filings for public sales, “secret” sales, public offers for sale, “secret” offers for sale, publication, and use of the invention in the U.S. or in a foreign country within which a patent could still be filed.

Limited Pre-Filing Grace Periods under AIA

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• LIMITED Grace Period (One-Year) for inventor disclosure, or inventor derived disclosure.

• LIMITED Grace Period (One-Year) created by prior “first-to-disclose” disclosure by inventor (defensive publication).

Limited Pre-Filing Grace Period under AIA

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• LIMITED New Grace Period (One-Year) for Inventor Disclosure

− Grace period is limited to disclosures by the inventor(s) or by “another” who obtained the disclosed information from the inventor(s);

− For disclosures by “another,” the subject matter of the pre-application disclosure must be “the same” as the disclosure in the application

Even minor differences may remove a disclosure by “another” from grace period protection, thus allowing the disclosure to be used as prior art against the application.

Limited Pre-Filing Grace Period under AIA

(cont’d)

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To extend the grace period to cover disclosure by “another,” must be able to prove:

- the inventor(s) actually invented the disclosed subject matter; and

- the inventor(s) provided enabling communication (direct or indirect) to those who disclosed.

- Or show “first-to-disclose” defensive publication

Limited Pre-Filing Grace Period (cont’d)

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Authorship determines whether a disclosure is by “another”:

Just one different author on a prior disclosure from those who are named as inventors

can change the status from being disclosed by the “inventor” to being disclosed by “another” (thus potentially removing the disclosure from the grace period protection if there are minor differences)

This may open the prior disclosure to being available as prior art against the patent application.

Publication: Authors

A, B

Patent Application:

Inventors A, B or

A, B, C

OK (disclosed by inventor)

Publication: Authors

A, B

Patent Application:

Inventors A or

A,D

PROBLEMATIC (disclosed by another)

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A files

within 1 year

A publicly

discloses

B publicly discloses an

“obvious variant” of that

which is in A’s

publication

B’s disclosure may

be used as prior art

against A’s

application

B publicly discloses the

same subject matter as in

A’s publication

B’s disclosure is not

prior art against A’s

application

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A invents A files

within 1 year

B publicly discloses

B’s disclosure is not prior art IF A can prove prior invention

and communication to B

identical

B’s disclosure may be used as prior art against

A’s application

“minor differences”

Risks of Relying on “First-to-Disclose” Defensive Publication as a Protection Strategy

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The ability to obtain a U.S. patent may be compromised when:

• after the inventor or “another” makes a disclosure, a U.S. application is not

filed within one year;

• “another” who obtained the subject matter from the inventor makes a

disclosure that is not identical to the subsequently filed application;

• the authorship of a publication and the inventorship on a subsequently-filed

application are different;

• the inventor is unable to prove inventorship and communication of the

innovation to “another”; or

• someone else discloses an “obvious variant” of the inventor’s publication.

In most foreign countries, the ability to obtain a patent may be

immediately lost for any pre-U.S. filing disclosure.

Other Changes to 35 U.S.C. § 102 and 103

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•New category of prior art includes “otherwise available to the public”

•No geographic restrictions on public disclosures

• Earlier-filed but later published foreign patent applications

have effect as prior art as of the effective filing date

• The determination of novelty and obviousness is at the time of the effective filing date not at the time of invention

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• Good-faith, prior “commercial use” is a defense to alleged infringement of a patent. Inventors may have the right to ongoing use of undisclosed inventions, even if another entity is granted a patent for the invention.

* Only applies to asserted patents issued after Sept. 16, 2011.

* "Commercial use“ includes an actual use, such as an internal use, or an arm's-length sale or transfer of an end result of the use.

• To prevail with a prior use defense, must show:

− Clear and convincing evidence of good-faith "commercial use“ more than one year before the patent's effective filing date (or new § 102(b)'s public-disclosure date);

− Independent creation of the invention without derivation from the patentee;

− Use was in the U.S.;

− Good faith actions in the use of the invention; and

− The invention was not abandoned.

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A commercially uses

B files patent application

A may successfully assert prior user rights defense, IF A can meet burdens of

proof

greater than 1 year B’s patent issues and B sues A for infringement

Some Additional AIA Changes

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• Preissuance Sumbissions by Third Parties: Third parties may anonymously submit and comment on documents prior to allowance of a patent application. Allows a challenge to another’s patent application without fear of retaliation.

• Enhanced post-grant challenges (Post-Grant Review and Inter partes review): Third parties may request a post-grant review to challenge any claim as unpatentable on the grounds of statutory subject matter, novelty, obviousness, or insufficient/incorrect specification.

• Supplemental Examination now available to consider, reconsider, or correct information: Any information not considered, inadequately considered, or incorrectly considered during the examination of a patent which is believed by the patent owner to be relevant may be presented to the Office in a supplemental examination.

REMEMBER

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• Under the AIA, the first inventor to file an application will typically receive the patent, not the first to invent.

• Disclosures of inventions before filing a patent application can lead to loss of rights, even if no one else files for a patent first. Thus, if at all possible, an application should be filed with USPTO prior to any disclosure (including public sales and public offers for sale).

• Consider Defensive publication

• Documenting development of an innovation and communications to other parties is important to be able to meet the burdens of proof for derivation proceedings, establishing disclosure by the inventor or “another”, and prior use as a defense to alleged infringement.

• Documenting internal use of processes (commercialization) is important to establish prior use as a defense to alleged infringement.

• Update employment agreements

AIA Advice

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– File Early

– File Early

– File Early

– File Early