usa patent reform

THE AMERICA INVENTS ACT The Most Significant Patent Law Reform

Since 1952 and How It Affects Your Clients17 November 2011

Clark A. D. Wilson

Patent & Trademark Attorney

email: [email protected]

phone: (770) 984-2300

www.gardnergroff.com

© 2011 Gardner Groff Greenwald & Villanueva, PC – All Rights Reserved

USA Patent Law History


The Congress shall have power...To

promote the progress of science and

useful arts, by securing for limited

times to authors and inventors the

exclusive right to their respective

writings and discoveries;

-US Constitution, Art. 1, Sec. 8(8)

(1789)



1790- First US Patent Act drafted in the US Constitution

•First patent granted by Thomas Jefferson for the ―making of pot

ash and pearl ash by a new apparatus and process‖



1836- Patent number 1 issues

•Traction Wheels



1946- In order to receive a patent, one had to be the ―first to invent‖

in the world; later amended to ―first to invent‖ in the USA.

(Storage Battery v. Shimadzu)

1952- The basic structure of the modern Patent Law laid out:

• An inventor had to describe not only his invention, but also the

basis for its infringement

• An invention needed to be new and useful, as well as non-

obvious

1968- Patent Cooperation Treaty is signed

1995- Uruguay Round Agreements Act adopted to align international

patent regimes

YET: USA remained ―First to Invent‖ and the rest of the world was

―First to File‖



August 16, 2011- Patent number 8,000,000 issues

•Visual Prosthesis



September 16, 2011-President Obama Signs Patent Reform Law•Signed at Thomas Jefferson High School for Science and Technology in

Alexandria, Virginia

Key Changes

• FIRST TO INVENT FIRST INVENTOR TO FILE

• INCREASE IN FEES + MICROENTITY DISCOUNT

• ADDITIONAL PROSECUTION CHANGES

• POST-GRANT PROCEDURES


First Inventor to File


• 35 USC 102 establishes a First Inventor To File system.

• On or after March 16, 2013, a claimed invention is not novel if:

―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.‖

―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.‖


Exceptions under 35 USC 102


102(b)(1) A disclosure made 1 year or less before the effective filing date of a claimed

invention shall not be prior art to the claimed invention under subsection (a)(1) if--

(A) the disclosure was made by the inventor or joint inventor or by another who

obtained the subject matter disclosed directly or indirectly from the inventor or a joint

inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed

by the inventor or a joint inventor or another who obtained the subject matter

disclosed directly or indirectly from the inventor or a joint inventor.

102(b)(2) A disclosure shall not be prior art to a claimed invention under subsection

(a)(2) if-

(A) the subject matter disclosed was obtained directly or indirectly from the

inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed

under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or

another who obtained the subject matter disclosed directly or indirectly from the

inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective

filing date of the claimed invention, were owned by the same person or subject to an

obligation of assignment to the same person



• Once the first-inventor-to-file provisions take effect on March

16, 2013, would someone who copies my idea and files a patent

application on the subject matter before I do be entitled to a patent?• No. Only inventors are entitled to a patent. Someone who copies

another’s idea cannot be the inventor.

• My co-inventor disclosed our invention at a trade show one month

before the filing date of our application. Will that disclosure prevent us

from obtaining a patent?• No. Regardless of whether the application was filed before or after the

first-inventor-to-file provisions take effect on March 16, 2013, disclosure

one month prior to a filing date is not prior art to the claimed invention by

virtue of a one year grace period.

www.uspto.gov


Going Forward


• It is more important than ever for inventors to carefully determine

whether or not they are going to seek patent protection or not.

• If yes, then file ASAP

• Provisional Patent Applications are a cheaper and quicker

• If not, publish early and often to prevent 3rd party patents

• If invention has already been published, 12 months to file

Fees


• Nearly all PTO fees will be increased by 15%.

• Are there any patent fees that will not be increasing by 15%?

• Fees such as international stage PCT fees, certain petition

fees, enrollment fees, and service fees will not be increasing by 15%.

• On what date will I have to begin paying the 15% increase?

• September 26, 2011.

www.uspto.gov

Prioritized Examination


• What is prioritized examination?

• Expedited review of a patent application for an additional fee. The

Office’s goal is to provide a final disposition within 12 months of

prioritized status being granted.

• What types of applications are eligible for Prioritized Examination?

• Nonprovisional utility and plant patent applications with no more than 4

independent claims, 30 total claims, and no multiple dependent claims

filed on or after September 26, 2011. Requests for Prioritized

Examination of utility patent applications must be filed using EFS-

Web. The request for prioritized examination must be present on filing

of the utility or plant application.

• What fees are required?

• $4,800 fee ($2,400 small entity)

• What is the effective date of prioritized examination?


www.uspto.gov

Micro Entity – 75% discount


• ‗The term ‗micro entity‘ means an applicant who makes a certification that it—

• ‗‗(1) qualifies as a small entity (includes universities).

• ‗‗(2) has not been named as an inventor on more than 4 previously filed

patent applications, other than applications filed in another

country, provisional applications under section 111(b), or international

applications filed under the treaty defined in section 351(a) for which the

basic national fee under section 41(a) was not paid;

• ‗‗(3) did not, in the calendar year preceding the calendar year in which the

applicable fee is being paid, have a gross income, as defined in section 61(a)

of the Internal Revenue Code of 1986, exceeding 3 times the median

household income for that preceding calendar year, as most recently reported

by the Bureau of the Census; and

• ‗‗(4) has not assigned, granted, or conveyed, and is not under an obligation

by in the application concerned to an entity that, in the calendar year

preceding the calendar year in which the applicable fee is being paid, had a

gross income, as defined in section 61(a) of the Internal Revenue Code of

1986, exceeding 3 times the median household income for that preceding

calendar year, as most recently reported by the Bureau of the Census

• Effective September 16, 2011.

False Marking


292(b) FALSE MARKING.—

(1) CIVIL PENALTY.—Section 292(a) of title 35, United

States, Code, is amended by adding at the end the following:

‗‗Only the United States may sue for the penalty authorized

by this subsection.‘‘.

(2) CIVIL ACTION FOR DAMAGES.—Subsection (b) of section

292 of title 35, United States Code, is amended to read as

follows:

‗‗(b) A person who has suffered a competitive injury as a result

of a violation of this section may file a civil action in a district

court of the United States for recovery of damages adequate to

compensate for the injury.‘‘.

(3) EXPIRED PATENTS.—Section 292 of title 35, United

States Code, is amended by adding at the end the following:

‗‗(c) The marking of a product, in a manner described in subsection

(a), with matter relating to a patent that covered that

product but has expired is not a violation of this section.‘‘.

Advice of Counsel


‗‗The failure of an infringer to obtain the advice of counsel

with respect to any allegedly infringed patent, or the failure of

the infringer to present such advice to the court or jury, may

not be used to prove that the accused infringer willfully infringed

the patent or that the infringer intended to induce infringement

of the patent.‘‘.

Derivation Proceedings


• What is a Derivation proceeding?

• A proceeding to prove that a third-party applicant derived the subject

matter for its application from the Petitioner. A petitioner must claim the

same or substantially the same invention as the earlier application’s

claimed invention. The petition must be supported by substantial

evidence that the earlier claimed invention was derived from petitioner,

and filed without authorization.

• Who may file a petition for a Derivation proceeding and when should

the petitioner file?

• An applicant for patent may file a petition for a derivation

proceeding. The petition must be filed within one year of first publication

of a claim to an invention that is the same or substantially the same as

the earlier application’s claim to the invention.

• What is the effective date of the Derivation provision?


www.uspto.gov

Pre-issuance Submissions by Third Parties


• Any third party may submit for consideration and inclusion in the

record of a patent application, any patent, published patent

application, or other printed publication of potential relevance to the

examination of the application, if such submission is made in writing

before the earlier of— ‗‗(A) the date a notice of allowance is given or

mailed; or

• ‗(B) the later of— (i) 6 months after the date on which the application

for patent is first published by the Office, or (ii) the date of the first

rejection of any claim by the examiner during the examination.

• ‗‗(2) OTHER REQUIREMENTS.—Any submission under paragraph

(1) shall— (A) set forth a concise description of the asserted

relevance of each submitted document; ‗(B) be accompanied by

such fee as the Director may prescribe; and ‗(C) include a statement

by the person making such submission that the submission was

made in compliance with this section.

• Effective Date: September 16, 2012

Inter Partes Reexamination


• The AIA change the standard for inter partes reexamination.

• Section 6 of the AIA elevates the standard for granting a request

for inter partes reexamination. Under the new standard, the information

presented in an inter partes reexamination request must provide a

showing that there is a reasonable likelihood that the requester will

prevail with respect to at least one of the patent claims challenged in the

request.

• What is inter partes review and when is it available?

• Inter partes review replaces inter partes reexamination as an avenue for

a third party’s patentability challenge and the provision in the AIA

for inter partes review is effective on September 16, 2012.

www.uspto.gov

Inter Partes Review


• What is an inter partes Review proceeding?

• A petitioner may request to cancel as unpatentable 1 or more claims of

a patent based on 102, 103 using patents or printed publications.

• Who may file a petition for an inter partes Review and when should

the petitioner file?

• A person who (a) is not the owner of the patent and (b) has not

previously filed a civil action challenging the validity of a claim of the

patent may file, accompanied by payment of the required fee, a petition

to institute an inter partes The petition must demonstrate a reasonable

likelihood that the petitioner will prevail on at least one claim

challenged. The petition cannot be filed until after the later of: 1) 9

months after the grant of a patent or issuance of a reissue of a patent,

or 2) the date of termination of any post grant review of the patent.

www.uspto.gov

Post Grant Review


• What is a Post Grant Review proceeding?

• A petitioner may request to cancel as unpatentable 1 or more claims of

a patent on any ground that could be raised under paragraph (2) or (3)

of section 282(b). A Post Grant Review is generally limited to patents

issuing from an application filed under the first-inventor-to file system.

• Who may file a petition for a Post Grant Review and when should the

petitioner file?

• Within 9 months from grant or issue of reissue,a person who (a) is not

the owner of the patent and (b) has not previously filed a civil action

challenging the validity of a claim of the patent may file, accompanied by

payment of the required fee. The petition must demonstrate that it is

more likely than not that the petitioner will prevail on at least one claim

challenged or raises a novel question that is important to other patents

or publications.

• What is the effective date of the provisions for Post Grant Review?


www.uspto.gov

Supplemental Examination to

Consider, Reconsider, or Correct Information


• A patent owner may request supplemental examination of a patent

in the Office to consider, reconsider, or correct information believed

to be relevant to the patent.

• Within 3 months after the request is received, the Director shall

conduct the supplemental examination and shall issue a

certificate indicating whether the information presented in the

request raises a substantial new question of patentability.

• If the certificate indicates that a substantial new question of

patentability is raised by 1 or more items of information in the

request the Director shall order reexamination of the patent.

• A patent shall not be held unenforceable based on information

considered in supplemental examination

• Eliminates defense of inequitable conduct

• Effective September 16, 2012

Filing by Other than Inventor


• ‗‗A person to whom the inventor has assigned or is under an

obligation to assign the invention may make an application for

patent. A person who otherwise shows sufficient proprietary interest

in the matter may make an application for patent on behalf of and as

agent for the inventor on proof of the pertinent facts and a showing

that such action is appropriate to preserve the rights of the parties. If

the Director grants a patent on an application filed under this section

by a person other than the inventor, the patent shall be granted to

the real party in interest and upon such notice to the inventor as the

Director considers to be sufficient.‘‘.

Defense to Infringement Based on Prior

Commercial Use


• ‗‗(a) IN GENERAL.—A person shall be entitled to a defense under section

282(b) with respect to subject matter consisting of a process, or consisting of

a machine, manufacture, or composition of matter used in a manufacturing

or other commercial process, that would otherwise infringe a claimed

invention being asserted against the person if—

• ‗‗(1) such person, acting in good faith, commercially used the subject matter

in the United States, either in connection with an internal commercial use or

an actual arm‘s length sale or other arm‘s length commercial transfer of a

useful end result of such commercial use; and

• ‗‗(2) such commercial use occurred at least 1 year before the earlier of

either—

• ‗‗(A) the effective filing date of the claimed invention;

• or

• ‗‗(B) the date on which the claimed invention was disclosed to the public in a

manner that qualified for the exception from prior art under section 102(b).

Best Mode


• What is the impact of AIA‘s amendment concerning Best Mode?

• The failure to disclose the best mode shall no longer be a basis, in

patent validity or infringement proceedings, on which any claim of a

patent may be canceled or held invalid or otherwise unenforceable.

• Does AIA‘s amendment to 35 U.S.C. 282(a)(3) impact current patent

examination practice regarding evaluation of an application for

compliance with the best mode requirement of 35 U.S.C. 112?

• No. As this change is applicable only in patent validity or infringement

proceedings, it does not change current patent examination practices

set forth in MPEP 2165.

• What is the effective date for the Best Mode provision in the AIA?


www.uspto.gov

Big Corporation or Little Guy?


• Who does it benefit?

• First inventor to file makes it cleaner.

• But Best Mode might benefit those with deep pockets.

• Post Grant Review might benefit deep pockets.

• What do you think?


Thank You!

Clark A. D. Wilson

Patent & Trademark Attorney

email: [email protected]

phone: (770) 984-2300

www.GardnerGroff.com

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