The America Invents ActPatent Reform in 2011

Presented by Justin Leonard

Status of the Act

Senate's version passed 95-5 on March 8 House's version passed 304-117 on June 23 President pledged support for either version Senate voted 93-5 to end debate on patent

reform and bring the House’s version to a vote in the Senate

Stance on the Act

Support Microsoft Phrma IBM Medtronic Motorola GE Exxon Mobile

Oppose Verizon Adobe Apple Dell Generic Pharm.

Assoc. Cisco

Key Changes

First-to-file system Derivation proceeding, instead of interference

Expansion of prior art available Additional “Post-Grant Review” proceeding Different “Inter Partes Review” proceeding Expanded 3rd Party Pre-issuance submissions New Supplemental Examination proceeding New Virtual Marking & Revised False Marking

Other Changes

New Micro Entity Status Elimination of Best Mode Defense Allow assignee filing

First-to-File SystemSec. 102.

(a) A person shall be entitled to a patent unless

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

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

First-to-File System

Defines prior art relative to the invention's effective filing date, rather than the date of the invention (conception + reduction to practice)

Priority thus goes to the first inventor to file, even if that inventor was not the first to invent

First-to-File vs. First-to-Invent

First-to-File World Harmonization ↓ Prosecution Costs ↓ Litigation Costs ↑ Risk of Idea Theft

First-to-Invent Honors small inventor Richer Disclosures ↑ Commercial Testing

First-to-File System

Eliminates costly interference process No more questions re: conception date, diligence until

reduction to practice, or abandonment Decreases costs of prosecution as well as litigation

Introduces derivation proceedings Proceeding determines whether one applicant derived

the claimed invention from another applicant Petition to institute proceeding at the PTO must:

be filed within 1 year of publication of disputed claim be stated with particularity be supported by substantial evidence

Expansion of Prior Art Available

Reduces the scope of the 1 year grace period so that it only applies to: public “disclosures”

made by the inventor made by someone who obtained the disclosed matter

from the inventor Patents or published applications

filed after such a public disclosure NOT third-party disclosures made before the

inventor’s own disclosure

Grace Period Example

Expansion of Prior Art Available

Removes geographic limitations for public sale and public use bars

Public sale or use anywhere in the world serves as a bar, not just sale or use in the U.S.

Permits secret prior art to be used as basis for obviousness, while removing applicant's ability to swear behind

Most other countries only permit secret prior art to be used as basis for anticipation, not obviousness

Post-Grant Review Proceedings

New Proceedings Post-grant Derivation (same as pre-grant) Post Grant Review Inter Partes Review

Preserved Proceedings Ex Parte Reexamination Reissue

Post-Grant Review

Instituted by anyone to cancel issued claims Based on most any invalidity grounds, including

101, 102, 103, 112, etc. Must petition to institute w/i 9 months of issue,

BUT can't do so if have already filed civil action Must choose b/w Post-Grant Review & civil action

Petition granted if either: Reasonable likelihood of success w/ respect to 1+ claims Raises novel or unsettled legal question

Post-Grant Review

Proceeding permits litigation-like discovery Patentee allowed 1 chance to amend, by

canceling challenged claim or proposing substitute claim in place of challenged claim

Estops petitioner from maintaining other PTO proceedings, or from asserting civil litigation, based on grounds that could have raised

A civil action filed after Post-Grant review is automatically stayed

Inter Partes Review

Replaces and differs in important ways from the current Inter Partes Reexamination

Instituted by anyone to cancel issued claims Based on limited invalidity grounds (102 & 103) Can't file petition until after time window for

post-grant review has closed Can't file if have already filed civil action, or if 6

months have passed since served w/ complaint

Inter Partes Review

Petition granted if reasonable likelihood of success w/ respect to 1+ claims

Higher than current standard that there be a substantial new question of patentability

Regardless if raises novel or unsettled legal question

Otherwise similar to post-grant review Litigation-like discovery 1 chance to amend Estops other PTO proceedings & civil actions House's version automatically stays civil actions

Pre-Issuance Submission by Third Party

Revises procedures by which 3rd party can submit publications for consideration

Extends time period during which can submit to be either within 6 months of publication or before the 1st office action, whichever is later

Now requires, rather than prohibits, the 3rd party to provide concise statement of publication's relevance

Supplemental Examination Allows patentee to propose supplemental

examination of an issued patent in view of newly submitted information (e.g., publications)

Unlike ex parte re-exam, exposes claims to a full re-examination (including 101, 112)

But directly cures any non-fraudulent inequitable conduct that may have occurred with respect to the submitted information

Usefulness may be limited after Therasense, since ex parte re-exam could also cure

Marking

Public notice provided by “virtual” markings that direct the public to a freely-accessible website for patent info

Exempts virtually marked products that have expired as basis for false marking

Eliminate private suits for false marking, except if competitive injury

Micro Entity Status

An applicant qualifies for 75% reduced fees if: Otherwise qualifies as small entity Is named in only a small # of U.S. Non-provisional

apps (House = 4; Senate = 5) Not including apps assigned due to employment

Meets max gross income requirements Has not and is not obligated to assign to an entity

not meeting the max gross income requirements OR employed by & obligated to assign to institute of

higher education (Senate requires public institute)

Key Effective Dates

First-to-File & prior art expansion → 18 months after passage of the Act

Post-grant proceedings → 1 year after passage

Other Changes

Expands prior user rights beyond just business methods

Would strengthen trade secret practice

Gives the PTO the ability to set its own fees, but burdens the PTO with Congressional oversight of excess funds

Prohibits “human organism” claims

Controversial Questions

Does the grace period’s “disclosure” include public use or sale?

The Act eliminates the 102(c) abandonment provision. What, if any, effect does that have?

For example, on commercial exploitation of an invention as a trade secret prior to patent filing?

What do you think?Will the Act… provide harmonization benefits? disadvantage small inventors? disadvantage U.S. inventors? decrease patent quality? increase application backlog? decrease scientific progress by effectively allowing

best mode secrets? decrease patent value?

Implications for You? Encourage clients to file before effective dates? When do you advise clients of which option(s)?

File quick application → preserve all rights at potentially ↑ cost and/or ↓ quality

Publicly disclose → forfeit foreign rights, but preserve U.S. Rights for 1 year, ↓ cost

Keep secret until file detailed application → risk loss of all rights to intervening filer, ↑ quality

Implications for You?

Advise clients to focus more on publication strategy than internal documentation?

Recommend public disclosure or provisional? Warn clients of increased risk caused by secret

prior art? More likely to recommend trade secret over

patent if House's version passes?

Implications for You?

Recommend re-exam or post-grant review as better alternative than civil action?

Recommend re-issue or re-exam for curing inequitable conduct, despite supplemental exam option?

Thank you !

Presented by Justin Leonard