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American Intellectual Property Law Association
UPDATE ON THE AIAAnd Other Legislation
AIPLA IP Practice in Japan
April 8, 2014
Alan J. Kasper
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Key Changes Under the AIA and PLT• Key Filing Provisions
– Oath and Declaration– Recovery of Priority - PLT
• Key Prosecution Provisions– Grace Period and Prior Art– Transition Applications
• Third Party Submissions • PGR and Inter partes Review• Supplemental Examination• New Legislation
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OATH, DECLARATION AND PRIORITY
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Applicant/Oath & Declaration
• Who is Applicant - Need NOT be the Inventor• BUT – Application MUST Name All Inventors
• What is Required– Only Three Statements Required of each Inventor:
• Belief declarant is an original inventor• Application authorized by declarant• Acknowledgement of criminal penalty for false statements
– Statements concerning duty of disclosure and read/understand are optional – but recommended– Combined Oath/Dec and Assignment Permitted
• Who Signs– Each Inventor– Third Person Can Execute and File– Substitute Statement Permitted – important for continuations/divisionals
• Timing for Oath/Dec or Substitute Statement• Can be delayed until payment of issue fee• BEST PRACTICE – file as early as possible
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Application Data Sheet & Power of Attorney
• ADS– ALL Relevant Data NOW Provided by the Application
Data Sheet (ADS)– All Relevant data including inventorship now easily
corrected by use of the ADS– IN SUM - USPTO Procedures and Requirements are
Liberalized – challenges left to litigation
• POA– Best Practice - from real party in interest
• General Power from Assignee• Specific Power from Assignee or Inventor• Separate from Oath/Dec
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What Issues May Arise?
• Oath or Declaration – Validity of patent if incorrect O&D filed and accepted by the USPTO and the patent issues?– Validity of patent if text is defective – one or more of the 3 statutory requirements is missing?– Validity of patent if two USPTO acknowledgments (Duty of Disclosure and Read/Understood)
are not given by inventor?– Validity of patent if Substitute Statement signed without reasonable effort to locate inventor?
• Combined Declaration and Assignment Documents – Can original Company Invention Disclosure Form with (1) detailed disclosure, (2) statement
of 3 statutory requirements (3) assignment of all rights to the Company and (4) inventor signature satisfy the Oath and Dec requirements?
• Application Data Sheet– Effect on patent validity and enforcement of errors in ADS listing of priority, inventor data and
names of joint inventors?– Effect if ADS not signed by authorized individual or at all?
• POA– Attorney responsibility/liability where only Inventor gives POA but real party in interest alone
provides instructions for prosecution?
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Key PLT-Based Changes• Patent Law Treaties Implementation Act of 2012
– Effective December 18, 2013– Implementing legislation for the Geneva Act of the Hague Agreement Concerning the International Registration of
Industrial Designs (“the Hague Agreement”), allows applicants to file a single international design application to acquire global protection.
– Implementing Legislation for the Patent Law Treaty
• Restoration of Priority - Delayed filing of an Application– PLT and PLTIA provide for :
• Restoration of right of foreign priority in applications filed more than twelve months (six months in designs) after the filing date of the foreign application.
• Restoration of domestic benefit of a provisional application in applications filed more than twelve months after the filing date of the provisional application.
– Unintentional Standard– Two month grace period– Fee required– Similar standard for abandoned application or patent (unavoidable standard removed)– Applies to issued patents and pending applications
• Two Month Minimum for Reply– Restrictions, non-compliant notices, etc.
• No Claims Required for Filing Date– Filing date is date on which specification alone is filed
• Filing by Reference– Minimum requirement is reference to prior specification in any country
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Key PLT-Based Changes
• Procedure regarding Filing without Claims or by Reference– For an application filed either without at least one claim or by reference to a previously filed application
in lieu of the specification and drawings, the applicant will be given a period of time within which to supply a claim and/or claims or a copy of the specification and drawings of the previously filed application.
– Payment of a surcharge required within period prescribed by the Office.• Abandoned Applications/Delayed Maintenance Fee Payments
– $1,700 PTO fee for filing petition for the revival of an abandoned application for a patent, for the delayed payment of the issue fee, for the delayed payment of a maintenance fee, for the delayed submission of a priority or benefit claim, etc.
– The Director may refund any part of this fee in exceptional circumstances (the PTO has a practice of waiving surcharges not required by statute in situations in which the failure to take the required action or pay the required fee was due to a widespread disaster, such as a hurricane, earthquake, or flood).
– Regarding delayed maintenance fee payments in particular, the PLTIA amends 35 U.S.C. 41(c)(1) to delete the twenty-four month time limit for unintentionally delayed maintenance fee payments in addition to deleting the reference to an unavoidable standard.
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Key PLT-Based Changes• Revision of Patent Term Adjustment
– The patent term adjustment provisions are revised to provide for a reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date or date of commencement of national stage in an international application.
• Rationale for PTA Revision– The PLT and PLTIA provide applicants with additional opportunities to delay the examination process (e.g.,
the ability to file an application without any claims and to file an application merely by reference to a previously filed application), so the change to the patent term adjustment rules is to avoid the situation in which an applicant obtains patent term adjustment because the applicant takes advantage of the additional opportunities to delay the examination process provided by the PLT and PLTIA.
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KEY PROSECUTION PROVISIONS
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First-to-Invent vs. First-Inventor-to-File
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X CONCEIVED X FILED
Y CONCEIVED
X RTP
Y RTP Y FILED
First-to-Invent: X Can Win
First-Inventor-to-File: Y Wins (If Independent Inventor)
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New Standards for Novelty
• Revised Definition of Prior Art – Eliminates Content of Original Sections 102(a) and
102(c) – 102(g) – Uses New Section 102(a)(1) and Old Section 102(b)
standards:• Keeps "On Sale" & "Public Use"
– ISSUE: can a confidential offer for sale be prior art under the AIA? PTO Guidelines say: NO!! What about the Courts ???
• Keeps "Published and Patented"• Broadens by Adding “otherwise available to public”• Broadens by eliminating Hilmer doctrine
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Transition Period for New Applications
New Filing of regular, provisional, PCT or foreign application to get old law grace period
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Act Signed
Section 3(n)(1)(A) provides an 18 month window before new §102 applies to new applications
Applications claiming priority from applications filed in the Window may have old law grace period
18 -month Window Now Closed
Paris Convention, National Stage, Continuation, Divisional and CIP Filing to get old law grace period – no claim with post Window effective filing date
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USPTO Rules for Transition Period
• Statement Required - For applications, filed on or after March 16, 2013 under new 37 CFR 1.55 (foreign priority) and 37 CFR 1.78 (domestic benefit):
• No Requirement - if a reasonable belief that there is no such claim.
• Caution - for Paris Convention applications that are modified prior to US filing – – Avoid adding new matter (even minor editing)– Avoid failing §112 written description
• Caution – for Continuation applications– File with original claims of parent and add new claim set the next day
• Caution - pre-AIA Section 102(g) also will apply if there is any claim having an effective filing date before March 16, 2013
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What Issues May Arise?
• Novelty and Grace Period– Is a confidential offer of sale a prior art event?– What are the boundaries of "other wise available to the public"?– What is the effect of adding new subject matter to inventor derived information that is
published by a third party?– What is the definition of "commonly owned," does it include companies that are part of a
family?– What are the requirements for a CRADA to qualify for the exception?– What is "subject matter" and how close does the inventor's published work have to be to the
intervening prior art?– What is the scope of the exceptions under Section 102(b)?– What is the content of a proper Declaration under Rule 130, and what is the effect on validity
if the required scope is not met?• Transition Period Applications
– When does a claim of a priority or domestic benefit application have a post-window effective filing date?– What is the effect on validity and enforceability if the required Statement is not made but should have
been?– What is the effect on validity and enforceability if the Statement is erroneously made?
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PRE-ISSUANCE SUBMISSIONS BY THIRD PARTIES
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THIRD PARTY SUBMISSIONS
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What Issues May Arise?
• THIRD PARTY SUBMISSIONS– What is the scope of material that can be submitted?– What is the duty of the Examiner to consider the
submission and what if such duty is not fulfilled?– What estoppels arise from such submission?– Can better art be held back for later litigation?
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POST PATENT GRANT PROVISIONS
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Summary of 3rd Party Submissions, PGR and IPR
3rd Party Submissions
Post-Grant Review Inter Partes Review
Submission Patents & Printed Publications
Patents, Printed Publications, Public Use, On Sale, & Other Public Disclosures
Patents & Printed Publications
Threshold Showing N/A (Relevance) More likely than not (more than 50%)
Reasonably likelihood of success (50% or more)
Anonymity Yes No No
Participation 3rd party participation is not permitted
Both parties participate
Both parties participate
Fees Low PTO Fee High PTO Fee + Discovery
High PTO Fee + Discovery
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• Director Initiates Proceeding• Discovery and Prosecution• At least 1 chance for Petitioner
to reply and amend
One Year
First to invent – upon grant
First to file -9 months minimum after grant
6 Months
Maximum Extension for Good Cause
• Decision by Director
• 3 months after Owner Reply
• No appeal
• Preliminary Reply by Patent Owner
• Period to be set by Director
• Petition to cancel claim(s)• More than 9 months after grant• Copies of patents and pubs• Declarations and Expert Opinions• Fee Maximum
Time to Decision
Example - Time for Inter Partes Review
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AIA MONTHLY FILINGS –as at March 27, 2014
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AIA PETITION TECHNOLOGY BREAKDOWN
• Total 1,128 • IPR 983 • CBM 140 • DER 5
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PGR, IPR, CBM, DER
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Initial Results in Post Grant Proceedings
• First final decisions by PTAB resulted in cancellation of all claims at issue – complete victories for petitioners in regard to claims at issue
• Patentees finally succeeded in two decisions on February 19, 2014– A single claim of a Proxyconn patent survived an IPR challenge by
Microsoft (11 claims were declared invalid)– 9 claims of a Mentor Graphics patent were upheld in an IPR proceeding (3
claims were found invalid)• Settlement is a possibility – but settle early
– 35 USC 317 allows parties to terminate an instituted IPR "unless the Office has decided the merits of the proceeding before the request for termination is filed."
– However, recent orders by the PTAB show that the PTO may refuse to terminate an IPR if the proceeding has advanced into the late stages (but not yet to a final decision), even though the parties have negotiated a settlement
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Comparison of IPR vs. Litigation
• No presumption of patent validity in IPR vs. presumption of patent validity in litigation
• Lower burden of proof of invalidity in IPR (preponderance of the evidence) vs. higher burden of proof of invalidity in litigation (clear and convincing evidence)
• Broader claim construction in IPR (broadest reasonable interpretation) vs. narrower claim construction in litigation (Markman hearing)
• Administrative patent judges (with relevant technical expertise) in IPR vs. judge or jury (with little or no relevant technical expertise) in litigation
• Limited discovery in IPR vs. significant discovery in litigation• Shorter timeline in IPR vs. longer timeline in litigation• Lower cost in IPR vs. higher cost in litigation
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Additional IPR Considerations
• Possibility for favorable estoppel and/or intervening rights defenses– Amendment and argument-based estoppels– Impact of amendments on damages
• Stay of Civil Action– Example: In February, 2014, Toyota obtained a stay with respect to 11
patents in a suit filed by American Vehicular Sciences because the PTO granted review of those patents
• Most IPR petitions have been granted at least in part• Possibility of filing multiple IPRs with respect to a single patent
– If first IPR does not succeed in obtaining review of all desired claims, petitioner can file a second IPR based on a different argument (e.g., relying on different or additional references)
– Example: Apple filed 4 IPRs regarding U.S. Patent 7,010,536
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What Issues May Arise?
• POST GRANT PROCEDURES– What is the scope of the standards for implementing
PGR and IPR, and how do they differ??– What is the scope of permitted amendments to claims?– What is the proper limit on discovery under the Umbrella
Rules?– What is the scope of the estoppel under PGR and IPR ,
especially grounds that "could have been raised"?– What is the definition of a "real party in interest,"
especially as to affiliated entities and the impact of estoppels?
– What happens if the proceeding does not reach decision within the statutory period of 18 months?
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SUPPLEMENTAL EXAMINATION
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What Issues May Arise?
• SUPPLEMENTAL EXAMINATION– What is the scope and effect on a defendant's
inequitable conduct defense activity during litigation?– What is the effect of a withholding of relevant material
during the Supplemental Examination process?– Can the SNQ involve all statutory and non-statutory
bases for attack, including erroneous small entity claims, etc.?
– What is the scope of the USPTO reexamination once a SNQ has been identified in response to a Supp Exam petition? Can it be broadened? Can the patentee object?
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Thanks for your attention! Questions?
Alan J. KasperPartner
Sughrue Mion PLLC2100 Pennsylvania Ave.Washington DC 20037
+1-202-293-7060+1-202-368-5259 (mobile)
