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TRANSCRIPT
The America Invents Act-
What You Need To Know
Reprinted for ChIPs Summit
October 10, 2012
The Leahy-Smith America Invents Act
2
o Most significant change to the Patent Act since 1952
• Changes to patent prosecution procedures and standards
• Litigation reforms
• New procedures for challenging patents at the Patent & Trademark
Office (PTO)
The Key Provisions
3
o “First to File” will harmonize U.S. with the rest of the world
• Significant differences will continue to exist
o Important changes to what constitutes “prior art”
o Option for prioritized patent prosecution
The Key Provisions (cont’d)
4
o Notable litigation changes
• Unlikely to significantly impact litigation outcome
o New procedures at the patent office to challenge your
competitors’ bad patents
• Unclear whether they are better than current procedures
AIA Implementation
5
o Unless otherwise specified, the AIA’s provisions go into effect on September 16, 2012
o First-to-file rules go into effect on March 16, 2013
o Few changes to patent prosecution have gone into effect • Increased fees to file patent applications
• Prioritized examination
o Most changes affecting litigation are now in effect
6
AIA’s Impact on Patent Prosecution
I. Change to First-Inventor-to-File System
7
March 16, 2013 – First-to-Invent System Changes to
First-Inventor-to-File System
Today: Who Gets a Patent?
8
Wilbur invents
airplane on January 1,
2012
Orville invents
airplane on February 1,
2012
Orville files patent
application on March 1,
2012
Wilbur files patent
application on April 1,
2012
Wilbur gets the airplane
patent because
Wilbur was the first to
invent
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After March 15, 2013: Who Gets a Patent?
Wilbur invents
airplane on January 1,
2014
Orville invents
airplane on February 1,
2014
Orville files patent
application on March 1,
2014
Wilbur files patent
application on April 1,
2014
Orville gets the airplane
patent, because
Orville was the first to
file
Practice Tip # 1 – File First!
10
o Need to review invention disclosure and patent filing processes
o Identify and remove bottlenecks in invention disclosure process
• Build IP brainstorming sessions into product development schedules
• Increase frequency of IP Review Board meetings
• Improve quality and completeness of disclosures
o Reassess patent filing process and strategies
• Use law firms that can complete high quality applications reasonably
quickly
• Consider filing serial provisional applications if design changes are made
throughout the development process
Is It Really That Simple? . . . No
11
o Pre-filing events that will prevent you from getting a
patent:
• Someone else files a patent application describing the invention
• An article, patent application, or patent describing the invention
publishes
• The invention is publicly used
• The invention (e.g., a product embodying the invention) is on sale
. . . anywhere in the world
Defined Scope of Prior Art
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o First to invent (Existing Statute – 35 U.S.C. §§ 102(a), (b), and (e)):
• No patent if
- “the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent”
- “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States”
- the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language
Defined Scope of Prior Art (cont’d)
13
o First inventor to file (New Statute – 35 U.S.C. §§ 102(a)(1) and
(2)):
• No patent if
- “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”
- “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 ”
Main Differences in Scope of Prior Art
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o Timing of prior art publications, public uses, and patent filings • Before invention (existing rule) v. before effective filing date (new rule)
- No more swearing behind this prior art
o Timing of prior art sales • More than one year before effective filing date (existing rule) v. before
effective filing date (new rule)
o Location of sales and public uses • In the U.S. (existing rule) v. anywhere in the world (new rule)
o Prior art date for U.S. patents and published applications that claim foreign priority • U.S. filing date (existing rule) v. foreign priority date (new rule)
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Prior Use, Sale, and Disclosure Example
Wilbur invents airplane
on January 1, 2014
Wilbur files
patent
application
on March 1,
2014
Under existing rules,
Wilbur may be entitled to
the airplane patent
(demonstration not in the
U.S., sale not more than
one year prior to filing
date, and may be able to
swear behind publication)
On February 1, 2014, Orville does
one of the following:
1. Demonstrates a prototype airplane
to Lindbergh in France
2. Sells an airplane to Earhart in the
United States
3. Describes how to make an airplane
in Aviation Week
Under new rules,
Wilbur is not able to
get the patent, because
Orville made a prior
use, sale, or disclosure
before Wilbur filed his
patent application
What If Your Inventor Tells the World Before Telling
Your Patent Lawyer?
16
o An inventor’s public disclosures will not preclude a patent,
if they are made within one year of the filing of the patent
application • AKA the “grace period”
• An inventor’s public articles and speeches are not prior art if made within one year of patent application
• Unclear whether the grace period applies to public uses or sales
o In fact, the inventor’s public disclosures can give the inventor priority over later filed patent applications
• But rights will be lost abroad
Wilbur invents airplane
on February 1, 2014
Wilbur publishes an article in
Aviation Week fully describing how to build his
airplane on March 1, 2014
Orville
invents
airplane on
January 1,
2014
Orville files
patent
application
on April 1,
2014
Wilbur files
patent
application
on May 1,
2014
Under new rules,
Wilbur gets the
airplane patent -- he
was first to publish
and filed his patent
application within
one year of first
publication
Under existing
rules, Orville
gets the airplane
patent – he was
first to invent
Practice Tip # 2 – The Grace Period is a
Backup Plan – Not A Strategy
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o Teach your inventors to file patent applications BEFORE
making the invention public
o But even if they publicly disclose their invention, you may
still be able to invoke the grace period to obtain U.S.
patent
• Note - public disclosure must fully support claimed invention to be
entitled to priority; foreign patent rights will be lost in most countries
The Virtues of Common Ownership
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o Commonly owned U.S. patents and applications will
not be prior art in many cases
o This applies when • Application 1 was effectively filed prior to Application 2 but did not
publish/issue prior to the effective filing date of Application 2
• Applications 1 and 2 are owned by the same person or subject to
an obligation of assignment to the same person or subject to a
joint research agreement, and
• The common ownership existed “no later than the effective filing
date of the claimed invention”
Common Ownership Comparison
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o Existing Rule - Commonly owned patents and
applications cannot be used to render claims obvious
but can be used to anticipate claims; common
ownership must exist as of invention date
o New Rule - Commonly owned patents and applications
cannot be used to render claims obvious or to
anticipate claims; common ownership must only exist
as of effective filing date of claimed invention
Can I Get a Patent Based on Another
Person’s Invention? … No
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o Derivation (i.e., stealing an invention) = No Patent
• Inventor is defined as “the individual or, if a joint invention, the
individuals collectively who invented or discovered the subject
matter of the invention.”
• First-inventor-to-file system, not a first-to-file system
Derivation Example 1
Wilbur invents airplane on
January 1, 2014
Orville “borrows” Wilbur’s lab
notebook and files a patent application on February 1,
2014
Wilbur files patent
application on March 1, 2014
Wilbur gets the airplane patent,
because Orville’s work was derived
from Wilbur’s
Derivation Example 2
Wilbur invents airplane
on January 1, 2014
Wilbur files patent application on March 1, 2016 (more than one
year after publication in
Aviation Week)
Orville “borrows” Wilbur’s
lab notebook and publishes a
description of the airplane in
Aviation Week and files a
patent application on
February 1, 2014
Neither Orville nor
Wilbur gets the
airplane patent: 1. Orville’s work was
derived from Wilbur’s
2. Wilbur waited more
than a year to file an
application after his own
work was published
Practice Tip # 3 – Maintain Notebooks
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o Continue to maintain laboratory notebooks so you can
prove inventorship in derivation proceedings • These lab notebooks may also prove useful in litigation
II. Prioritized Patent Examination
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o Pay additional fee for faster examination
o USPTO goal: final disposition on average 12 months from date of
prioritized status
o Patent applications filed after Sept. 25, 2011
o Limit of 10,000 requests for prioritized exam each year
Prioritized Examination Requirements
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o Application must be complete
o Fees of about $6,500: • $1,250 in filing fees
• $4,800 prioritized examination fee;
• $130 processing fee; and
• $300 publication fee
o Claims: • Limited to 4 independent claims, 50 total claims
• No multiple dependent claims
o Request for Prioritized Examination
o File application electronically
Practice Tip # 4 – Use Prioritized
Examination to Obtain Strategic Patents
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o Quickly obtain strategically important patents
• Licensing
• Litigation
o Prioritized examination makes the most sense when you have a good handle on the prior art and can draft highly focused claims
o File continuations and quickly obtain follow on patents
• The continuations will likely also be examined quickly, and for no extra fee
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AIA’s Impact on Patent Litigation
AIA’s Litigation Provisions
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o Virtual patent number marking allowed
o No more joinder of unrelated defendants
o Failure to obtain advice of counsel not admissible to prove willfulness & inducement
o False marking suits vaporized
o Best mode defense eliminated
o Prior user defense created
Litigation changes are important but unlikely to have significant impact
overall on the number of cases, who wins, or the amount of damages
CAFC Beats Congress to the Punch on
Reform
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Many of the early litigation reform proposals in Congress became
moot or less important because of changes in the Courts
o Venue
• In re TS Tech USA Corp. (2008) (Texas)
• In re Link_A_Media Devices (2011) (Delaware)
o Damages
• Lucent v. Gateway (Fed. Cir. 2009)
• Uniloc USA, Inc. v. Microsoft Corp. (2011)
CAFC Beats Congress to the Punch on
Reform (cont’d)
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o Patent Marking
• Pequignot v. Solo Cup Co. (2010)
o Willfulness
• In re Seagate Technology, LLC (2007)
o Inequitable conduct & unenforceability
• Leviton Mfg. Co., Inc. v. Universal Sec. Instruments, Inc. (2010)
• Therasense, Inc. v. Becton Dickinson and Co. (2011)
Forecast: Increased Use of Virtual Patent
Marking
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Virtual marking makes it easier for patent owners to provide notice of
their patents and get pre-suit damages
o Patent holder may provide web address on product
• List all patents that cover the product
o The web page should be publicly available
o Update the web page regularly
o Keep a log of web page modifications
o Keep the URL alive
o Mark the URL on the product itself not just on packaging or user
manuals
Forecast: Multi-Defendant NPE Cases Will
Continue Unabated
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o AIA’s anti-joinder rules make it difficult to file one suit
naming multiple defendants
o Nothing prevents a plaintiff from filing 30 separate
lawsuits on the same day
• The cases will likely be joined for pre-trial activities (status
conferences, discovery, claim construction)
• But defendants should get separate trials unless liability arises out of
the same transaction
Forecast: More ITC Investigations
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o AIA’s joinder provisions do not apply to ITC investigations
o Advantages of ITC investigations:
o Injunctive relief
o Trial in 8-10 months
o Difficult for respondent to assert counterclaims
Forecast: More Cases Will Be Litigated
Outside of Texas and Delaware
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o AIA’s requirement that each defendant be named in a
separate suit makes it easier to transfer a case to the
defendant’s home court
o Mandamus decisions are making parties think hard about
filing suit in jurisdictions with no relation to the case
Forecast: More Patents Will Be Found
Invalid
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o Priority dates will be later in time (filing vs. invention)
o More prior art under the AIA:
• Foreign patents get foreign priority date
• Foreign uses
• Foreign sales
o Will new PTO procedures lead to more invalidity
challenges?
Forecast: More Companies Will Seek
Freedom to Operate Opinions
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o The accused infringer may rely on a legal opinion to tell a jury
that it did not think it was infringing, which is useful to show:
• No willful infringement
• No inducing infringement
o The patentee cannot tell the jury that the accused infringer did
not get (or present at trial) a legal opinion
o Legal opinions can only help the accused infringer:
• If the opinion is negative, don’t disclose it
• If it is positive, use it at trial to show no willfulness and no inducement
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AIA’s Procedures for Challenging the Validity of a Patent
PTO Proceedings Under AIA
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Supplemental examination Post grant review initiated by patent
owner
Third party pre-issuance
submissions
Pre-grant submission by third parties
Post-grant review
Inter partes review
Post-grant reviews initiated by third
parties
Ex parte reexamination Post-grant review (patent owner or
third-party)
Citation of prior art and written
statements
Post-grant submission by third parties
Derivation proceedings Post-grant challenge to inventorship by
applicant
Post Reform – USPTO Proceedings
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Proceeding When Does It Apply? Grounds (Prior Art) Estoppel? Expected
Cost
Supplemental
Examination
-Available starting on Sept. 16, 2012
-Applies to all patents
Any information N/A $30-50K
Third party
pre-issuance
submissions
-Available starting on Sept. 16, 2012
-Applies to all patent applications
-Time limits on filing request
Patents/published patent
apps/printed publications
N/A Less than
$5K
Post-grant
review
(9 month
window)
-Available starting on Sept. 16, 2012
-Applies only to patents having a
claim with a priority date on or after
March 16, 2013
Any invalidity ground Raised or
reasonably
could have
raised
Very
expensive
Inter partes
review
(after P.G.R.)
-Available starting on Sept. 16, 2012
-Applies to all patents
Patents/published patent
apps/printed publications
Raised or
reasonably
could have
raised
$125-300K
Ex parte
reexam
(unchanged)
Available now Patents/published patent
apps/printed publications
None $30-50K
How Do You Choose?
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o Which procedures are applicable?
o Will the patentee be allowed to amend claims?
o Estoppel
o Cost
o Speed
o Anonymity vs. participation
o Complexity of technology
o Legal Standards • Claim construction
• Proof of invalidity
Scenario: The Vulnerable Startup
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o You are a small startup with one software product
o You learn of a patent that has just been issued to a large company that arguably covers
your product
o The large company does not have a licensing program and does not get involved in much patent litigation
o You are aware of a Japanese language article that appears to be anticipatory prior art; there may be other art, but you haven’t wanted to spend the money to search for it
o Do you file a post-grant review, file an ex parte reexamination, wait to file inter partes review, file declaratory judgment action, get an opinion of counsel, or just do nothing?
Scenario: The Humbled Licensor
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o Your company is looking to license a patent that has little value to your company, but has substantial value to other companies
o A potential licensee discloses a very good piece of prior art and says they won’t take a license because the patent is invalid
o Your GC wants to file suit to show that you are serious about your licensing
campaign
o You speak to your inventors and learn that they knew of the art but thought it was not relevant
o Do you file for supplemental examination, file an ex parte reexamination, or proceed with the litigation?
Scenario: The Bellicose Competitor
44
o Competitor sues your company for infringement of multiple patents
o Competitor’s goal is to prevent you from selling competing product with $50M in annual sales
o You have conducted a search of the PTO database and located some good prior art (U.S. patents)
o You think the company may have been selling its product more than one year before it sought a patent
o Do you file a post grant review, wait for inter partes review, file an ex parte reexamination, or fight invalidity in district court?
Scenario: The Talkative Inventor
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o Your inventor gives a speech at a conference on November 15, 2012, describing her new invention
o A competitor files a patent application on March 30, 2013, claiming her invention
o You file a patent application on April 30, 2013
o In 2014 you learn of the competitor’s application and suspect that they learned of the invention at the conference
o What are your options?
For more information, please contact:
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Christopher Dillon
Fish & Richardson P.C. [email protected]
Mike Hamlin
Fish & Richardson P.C.