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American Intellectual Property Law Association

Updates on the USPTO

Chris Fildes

AIPLA-JPAA Joint Meeting

April 9, 2013

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SHIELD Act

• The SHIELD Act (H.R. 845) was introduced in the House of Representatives on February 27, 2013

• Provides a limited loser-pay system for any federal civil action involving validity or infringement of a patent

• Purpose is to deter patent trolls from filing weak or frivolous patent infringement lawsuits that force defendants to settle rather than incur large litigation costs to challenge the lawsuits

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SHIELD Act

• The court, upon motion by a party that asserts invalidity or noninfringement of a patent, may award full costs including reasonable attorney’s fees to that party unless the adverse party (i.e., the alleged patent troll) can prove that it meets at least one of the following conditions:– The adverse party is an “original inventor”– The adverse party exploits the patent– The adverse party is a “university” or “technology

transfer organization”

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SHIELD Act

• Original Inventor– The (sole) inventor, a joint inventor, or the original assignee of a patent that

was filed by and awarded to an assignee of the original inventor or joint inventor

• Exploiter of the Patent– A party that has made substantial investment in the exploitation of the

patent through production or sale of an item covered by the patent

• University– An institution of higher education as defined in section 101 of the Higher

Education Act of 1965

• Technology Transfer Organization– An organization whose primary purpose is to facilitate the

commercialization of technology developed by one or more institutions of higher education

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SHIELD Act

• A party found to not meet any of these conditions will be required to post bond in an amount to cover the recovery of full costs

• The award of full costs will not be made until the court enters a final judgment

• The court has discretion to not award full costs if it finds that exceptional circumstances make an award unjust

• The SHIELD Act has been referred to the House Committee on the Judiciary for consideration

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PTAB

• The Patent Trial and Appeal Board (PTAB) was created by the America Invents Act (AIA) and replaces the previous Board of Patent Appeals and Interferences (BPAI)

• The PTAB is essentially the same as the BPAI• Functions of the PTAB

– Hearing appeals from adverse decisions of examiners in applications for patents• Ex parte appeals• Appeals in Ex Parte Reexaminations• Appeals in the remaining Inter Partes Reexaminations

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PTAB

• Functions of the PTAB (continued)– Conduct interferences for remaining pre-first-inventor-to-

file applications (applications filed before March 16, 2013)

– Conduct trials in post-issuance matters• Inter Partes Review• Post-Grant Review• Derivation Proceeding• Transitional Program For Covered Business Method Patents

• See http://www.uspto.gov/ip/boards/bpai/index.jsp for PTAB resources

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Satellite Offices

• Elijah J. McCoy Satellite Office in Detroit, Michigan opened on July 13, 2012

• Satellite Offices in Dallas, Texas and Denver, Colorado are to be opened in the near future; specific sites for these offices have been chosen

• Satellite Office in Silicon Valley region of California is also planned but no specific location at this time

• The America Invents Act specifies that three satellite offices must be operational by September 16, 2014

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Satellite Offices

• Purpose– Foster innovation and economic growth– Regional expansion of the USPTO– Provide businesses and entrepreneurs a place to

navigate the patent process, meet with examiners, and utilize USPTO resources

– Reduce backlog of pending applications and PTAB proceedings

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Quality Control at the USPTO

• Definition of Patent Quality at the USPTO

Actions which increase the likelihood that claims granted by the USPTO are legally valid

Actions which reduce the likelihood that valid claims are not improperly rejected by the USPTO

Actions which increase process efficiency and reduce overall application pendency

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Quality Control at the USPTO

• Quality Measures and Initiatives– Align the examiner count system with performance and process efficiencies– Publish metrics that illustrate the ongoing state of quality and efficiency at

the USPTO– Implement pilot programs to test changes that may improve quality and

timeliness

• Office of Patent Quality Assurance– Reviews a random sample of examiners’ work product– Assists in training examiners– Assists in implementing quality initiatives

• Quality Review addresses:– incorrect understanding of the scope of the invention– incorrect understanding of the prior art– incorrect application of the law or procedure

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Thanks for your attention!

Chris Fildes+1-313-885-1500

fildespat@teleweb.net