Thursday, may 7 keynote david kappos

The Patent System & Innovation—18 Months After the

America Invents Act

InsideCounsel Super Conference Chicago, IL

David J. Kappos May 7, 2013

© 2013. Cravath, Swaine & Moore LLP. All rights reserved.

Key Provisions of the AIA

• First-to-File • Satellite Office Program • 3rd Party Submissions of Prior Art • Priority Examination — Track One • Supplemental Examination • Post-Grant and Inter Partes Review Procedures • Covered Business Method Patent Challenges • USPTO Fee-Setting Authority

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Global Impacts of AIA

• AIA adopts international norms related to: • First-to-file • Prior user rights • Broadening the definition of prior art • Eliminating the Hilmer doctrine • Virtually eliminating the best mode requirement

• US Patent Reform: • Facilitates worksharing with international patent offices • Provides renewed opportunities to harmonize the

international patent system

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AIA Implementation Timeline

Reexamination transition for threshold

Tax strategies are deemed within prior art

Best mode

Human organism prohibition

OED statute of limitations

Day of Enactment Sept 16, 2011

Prioritized Examination

15% transition Surcharge

10 Days Sept 26, 2011

Reserve Fund

Electronic filing incentive

Inventor’s oath/declaration Preissuance submission Supplemental examination Citation of prior art in a patent file Inter partes review Post-grant review Transitional post-grant review program for covered business method patents

First inventor to file Derivation proceedings Repeal of statutory invention registration New patent fees Micro entity discount

Oct 1, 2011 60 Days Nov 15, 2011

12 Months Sept 16, 2012

18 Months Mar 16, 2013

Provisions previously implemented

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Satellite Office Program

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historic expansion regional job growth innovation ecosystem concepts of operation

Rush to File Before First-to-File Change

• Patent applications received by USPTO over last 12 months leading up to first-to-file change

• First-to-file went into effect on March 16, 2013 • Spike in September 2012 corresponds to other AIA

rules taking effect

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Improving Patent Quality and Timeliness (Historical)

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Patent Average First Action Pendency

Patent Average Total Pendency

Improving Patent Quality and Timeliness (Prospective Post-AIA)

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Growth of Preissuance Submissions By 3rd Parties

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Ask Patents — Powered by StackExchange

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Prioritized Examination — Track One Requests and Processing

Total Request data current through December 20, 2012

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Current pendency time (in months)

through March 2013

Growth of Supplemental Examinations

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New Procedures to Challenge Patents

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• Inter Partes Review (IPR) • Post Grant Review (PGR) • Covered Business Method Challenge (CBM)

Growth of Inter Partes Review Filings

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Covered Business Method Challenges

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Covered Business Method Challenges

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Resolving First Inventor Disputes Under First-to-File System

• Derivation Proceeding • Became effective on March 16, 2013 • Aimed at resolving disputes between two applicants

with respect to who the real inventor is • Must be filed within one year of the first publication

of the invention by the earlier applicant • Proceeding conducted before the PTAB

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Helping Small Innovators

• “Micro entity” discount • 75% discount on fees for “filing, searching, examining,

issuing, appealing, and maintaining” patent applications/patents

• Patents Ombudsman and Program for Small

Business Concerns

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Impact of Revised Fee Settings — Comparing Historical Cost to New Costs

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From Filing through Issue

Pre-AIA Fees (Large Entity)

New Fees (Large Entity)

New Fees (Small Entity)

New Fees (Micro Entity)

Average Historical Cost

USPTO Committed to Social Enterprises and Outreach

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http:// patentsforhumanity. challenge.gov/

IP Pro Bono Program IP Awareness Assessment Tool

Questions?

Contact information: David J. Kappos dkappos@cravath.com (212) 474-1168

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