1 The Patent Process and the America Invents Act Evan Boetticher, M.S. Judy Mohr, Ph.D. McDermott...

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The Patent Process and the America Invents ActThe Patent Process and the America Invents Act

Evan Boetticher, M.S.Judy Mohr, Ph.D.McDermott Will & Emery LLP

March 11, 2013

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3http://www.whitehouse.gov/photos-and-video/video/2011/09/16/president-obama-signs-america-invents-act

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Tonight’s Topics

How did Ms. Rebecca Hyndman obtain her patent?

– what is a patent?

– what is the process to obtain a patent?

– how does the America Invents Act change the patent system?

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what is a patent

patent process

impact of AIA – first to file

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+ 20 years

Expires: Jan. 4, 2028

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What is a Patent?

Granted U.S. Design Patent

on iPhone

Date of patent + 14 years

Expires: June 29, 2024

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Lesson #1

a patent gives the right to exclude others from making, using, selling the idea set forth in the claims of the patent for 20 years from the earliest non-provisional application filing date

patent application publications are not legally enforceable property rights

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what is a patent

patent process

impact of AIA – first to file

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How to Obtain a Patent

Basic requirements:

– novel

– not obvious

– patent eligible subject matter

– sufficient written description of the idea to teach how to make and use the full scope of the claims

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How to Obtain a Patent

Provisional Application

“6x/xxx,xxx”

Non-provisional (“utility”) Application

“1x/xxx,xxx”

1 year

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How to Obtain a Patent (cont’d)

Published iPodPatent Application

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Patent Application Lifecycle

Non-provisional (“utility”)

Application FiledOctober 2002

1 year

3rd Provisional Application Filed in June 2002

1st Provisional Application Filed in October 2001

2nd Provisional Application Filed in February 2002

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Patent Application Lifecycle (cont’d)

Pay Issue Fee;Patent Grants

Pay Issue Fee;Patent Grants

InternationalApplications

InternationalApplications

14 months(can be

2-3 years)

3-6 months

4 months

U.S. Provisional Application(s)

U.S. Non-Provisional

(“utility”) Application

1 year

1st Office Action1st Office Action

app. publishes18 months fromprovisional filing

Final Office Action or

Notice of Allowance

Final Office Action or

Notice of Allowance Written

Response to Office Action

Written Response

to Office Action

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Patent Application Lifecycle (cont’d)

Written Response to Office Action

Pay Issue Fee;Patent Grants

14 months

3-6 months

4 months

Provisional Application Filed

“60/xxx,xxx”

Regular (“utility”) Application Filed

1 year

1st Office Action

Final Office Action orNotice of Allowance

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Patent Application Lifecycle (cont’d)

14 months

3-6 months

4 months

1 year

3-6 months

4 months

Provisional Application Filed

“60/xxx,xxx”

Regular (“utility”) Application Filed

1st/3rd Office Action

Written Response to Office Action

Written Response to Office Action

if Examiner refuses to consider response, then file a “Request for Continued

Examination (RCE)”

Final Office Action

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Costs Associated withPatent Application Lifecycle

14 months

3-6 months

4 months

U.S. Provisional Application

$8,000 - $15,000 Atty Fees; $260 USPTO Fee

non-provisional application$1,000 - $8,000 Atty Fees;

$1,600 USPTO Fee

1 year

1st Office Action1st Office Action

Written Response to Office Action

$3,000 - $6,000 Atty Fees

Written Response to Office Action

$3,000 - $6,000 Atty Fees

Final Office Action orNotice of Allowance

Final Office Action orNotice of Allowance

Pay Issue Fee$1,780 USPTO

Fee

Pay Issue Fee$1,780 USPTO

Fee

File “Request for Continued

Examination (RCE)” $1,200 or $1,700

USPTO Fee

*USPTO Fees shown are “large entity” fees

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Patent Application Lifecycle (cont’d)

Pay Issue Fee;Patent Grants

Pay Issue Fee;Patent Grants

InternationalApplications

InternationalApplications

14 months(can be

2-3 years)

3-6 months

4 months

U.S. Provisional Application(s)

U.S. Non-Provisional

(“utility”) Application

1 year

1st Office Action1st Office Action

app. publishes18 months fromprovisional filing

Final Office Action or

Notice of Allowance

Final Office Action or

Notice of Allowance Written

Response to Office Action

Written Response

to Office Action

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International Patent Filings

PCT Application Publication

PCT Application Publication

2 months

Korea India

China

EuropeAustr.

Canada

Japan

Brazil

Mexico

national phase filings (30 or 31 months from provisional appln. filing date)

U.S. Provisional ApplicationInternational (PCT)

Application(s)

1 year

4 months

International Search Report

and Written Opinion

International Search Report

and Written Opinion

12 months

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Section 1: Patent Process

what is a patent

patent process

impact of AIA – first to file

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First to Invent: Current US Patent System

patent application filed on floor storage tiles

Rebecca (Blue)

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First to Invent: Current US Patent System

Rebecca (Blue) can provide evidence of having the idea first, and Rebecca is entitled to the patent even though Rebecca filed after Grey

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date of publication date of patent application filing

1 year

First to Invent: Current US Patent SystemOne Year Grace Period

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First to Invent: Current US Patent System

FIRST TO FILE: Effective March 16, 2013

Blue can provide evidence of having the idea first, and Blue is entitled to the patent even though Blue filed after Grey

Blue can no longer “swear behind” Grey’s earlier patent application filing date by proving Blue invented first

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FIRST TO FILE: Effective March 16, 2013

A person shall be entitled to a patent, unless:

• before the filing date, the invention was:• patented• described in printed publication• in public use• on sale• otherwise available to the public (35 USC 102(a)(1))

or

• the claimed invention was described in an issued patent or published application, which

• names another inventor; and• was filed before applicant’s filing date (35 USC 102(a)(2))

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FIRST TO FILE: Effective March 16, 2013

the following events destroy patentability if they occur before the application filing date:

• patented• described in printed publication• in public use• on sale• otherwise available to the public• described in a patent publication filed

by another (35 USC 102(a)(1) and 102(a)(2))

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FIRST TO FILE: Effective March 16, 2013

EXCEPT:

• A “disclosure” (printed publication, public use, sale, etc.) <1 year before the application filing date is not prior art if

• (i) it was made by the inventor or another who obtained it from the inventor; or

• (ii) it was made by another but preceded by a disclosure by the inventor or another who obtained it from the inventor

• Effect of the Exception “first to publish” regime

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FIRST TO FILE: Inspect the Exception:1 Year Grace Period Retained

date of publication date of patent application filing

1 year

Example 1/6

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FIRST TO FILE: Effect of Publishing?

Example 2/6

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FIRST TO FILE: First to Publish

1 year

Although Blue is the First to File, Gray is entitled to the patent because Gray is first to publish

Example 2/6

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FIRST TO FILE: First to Publish

Although Gray is the First to File, Gray is NOT entitled to the patent because Blue is first to publish

Example 3/6

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FIRST TO FILE: Does First to Publish Always Win?

1 year

Example 4/6

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FIRST TO FILE: Does First to Publish Always Win?

Example 5/6

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FIRST TO FILE: Is the strategy to first publish and then file a patent application a viable

strategy?

Yes, but only if • the patent application is filed within 1 year of the date of disclosure

• the disclosure/publication and patent application have a substantially identical disclosure

• patent protection outside the U.S. is not desired

1 year

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FIRST TO FILE: Complications and Unknowns

1 year

AND/OR

AB

prov. app

A BAA BA

B BAA BA

Example 6/6

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THANK YOU

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Patent Searching and Patent Copies

• USPTO database• http://uspto.gov

• Google patent database• http://www.google.com/advanced_patent_search

• Espace database• http://worldwide.espacenet.com/?locale=en_EP

• WIPO (World Intellectual Property Organization)• http://www.wipo.int/pctdb/en/

• PatentFetcher• http://www.patentfetcher.com/