America Invents Act - Intellectual Ventures · America Invents Act September 19, 2011 ... Study on AIA implementation (due 9/16/2015) S. EC. 6(h)(2 ... [Let’s call this the “inventor

America Invents ActSeptember 19, 2011

Matt RaineyVice President/Chief IP Policy Counsel

Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved.

Leahy-Smith America Invents Act (AIA)

2

Text is available at: http://www.gpo.gov/fdsys/pkg/BILLS-112hr1249enr/pdf/BILLS-112hr1249enr.pdf

http://www.gpo.gov/fdsys/pkg/BILLS-112hr1249enr/pdf/BILLS-112hr1249enr.pdf�





Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved.Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved.

History of AIA

Latest in a series of patent bills dating back to 2005

Jan Feb Mar Apr May Jun Jul Aug Sep Oct Nov Dec

March 30, 2011

H.R.1249 introduced in House

June 23, 2011

Amended version of H.R.1249 passed by House

September 16, 2011 - Enacted

H.R.1249 signed into law by President Obama as “Leahy-Smith America Invents Act”

September 8, 2011

H.R.1249 passed (without further amendment) by Senate

March 8, 2011

Amended version of S.23 passed by Senate

Ultimately supplanted by H.R.1249

January 25, 2011

S.23 Introduced into Senate

2011

3


AIA Enacted September 16, 2011

4

Photo used by permission of the USPTO


AIA – What’s Not in the ActThings that were fought about (or thought about)

• Damages• Court as “gatekeeper” for evidence going to jury• Injunctions• Interlocutory appeals from Markman rulings• Estoppels for ex parte or inter partes reexaminations• Willfulness: limited changes• Venue: limited changes

5


AIA Topics

• Timeline of Effective Dates• Prosecution• Post-Grant Proceedings• Litigation• USPTO Structures and Processes• Studies

6

Timeline Prosecution PG Proceedings Litigation PTO Structures & Processes Studies

Timeline of Effective Dates



9/16/119/26 10/1

9/16/1211/15/11

3/16/13 9/16/2020

Immediately

SEC. 3(l): Small Business Study (due 9/16/12)

SEC. 5: Prior User Rights

SEC. 6(c): Inter Partes Reexam Threshold Modified

SEC. 6(h)(2): Elimination of §145 (district court) avenue for ex parte reexams.

SEC. 7(e): Appeals to CAFC

SEC. 9: Venue

SEC. 10: USPTO Fee-Setting Authority

SEC. 11 (a)-(g): Specific USPTO Fees

SEC. 13: Funding agreements for small businesses

SEC. 14: Tax strategies: “deemed” in prior art

SEC. 15: Best mode

SEC. 16: Marking (Virtual & False)

SEC. 19: Jurisdiction, including joinder

SEC. 26: Study on AIA implementation (due 9/16/2015)

SEC. 27: Study on genetic testing (due 6/16/2012)

SEC. 29: Study on diversity of applicants (due 3/16/2012)

SEC. 31: Study on international patent protection for small businesses (due 1/14/2012)

SEC. 32: Pro bono program for small inventors

SEC. 33: No patents on human organism

SEC. 34: Study on patent litigation (due 9/16/2012)

SEC. 37: Patent term extension (MedCo)End of SEC. 18 Transitional Program

12 Months

SEC. 4: Inventor’s oath

SEC. 6(a) and (d): Inter Partes and Post-grant review

SEC. 7: Patent Trial and Appeal Board

SEC. 8: 3rd Party Submissions

SEC. 12: Supplemental examination

SEC. 17: Advice of counsel

SEC. 18: Transitional Program for business method patents

SEC. 20: Technical amendments

SEC. 21: Travel expenses

SEC. 25: Priority examination for important technologies

SEC. 28: Patent Ombudsman

18 Months

SEC. 3: First to File and Related Provisions

•35 USC §102: First to file

•35 USC §103: Amended

•35 USC §135: Derivation proceedings

•35 USC §157: SIR repealed

10 Days – 9/26/11

SEC. 11(h): Fees for “prioritized examination” (see AIA SEC. 25)

SEC. 11(i): 15% Surcharge

15 Days – 10/1/11

SEC. 22: Reserve Fund Established

60 Days – 11/15/11

SEC. 10(h): Electronic filing incentive

AIA Timeline of Effective Dates

3 Years – 9/16/14

SEC. 23 & 24: Satellite offices

9/16/14

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Effective upon date of enactment (DOE): examples


September 16, 2011SEC. 3(l): Small Business Study (due 9/16/12) SEC. 16: Marking (Virtual & False)

SEC. 5: Prior User Rights SEC. 19: Jurisdiction, including joinder

SEC. 6(c): Inter Partes Reexam Threshold Modified SEC. 26: Study on AIA implementation (due 9/16/2015)

SEC. 6(h)(2): Elimination of §145 (district court) avenue for ex parte reexams.

SEC. 27: Study on genetic testing (due 6/16/2012)

SEC. 7(e): Appeals to CAFC SEC. 29: Study on diversity of applicants (due 3/16/2012)

SEC. 9: Venue SEC. 31: Study on international patent protection for small businesses (due 1/14/2012)

SEC. 10: USPTO Fee-Setting Authority SEC. 32: Pro bono program for small inventors

SEC. 11 (a)-(g): Specific USPTO Fees SEC. 33: No patents on human organism

SEC. 13: Funding agreements for small businesses SEC. 34: Study on patent litigation (due 9/16/2012)

SEC. 14: Tax strategies: “deemed” in prior art SEC. 37: Patent term extension (MedCo)

SEC. 15: Best mode SEC. 16: Marking (Virtual & False)

9


Effective 10, 15, 60 days after DOE

September 26, 2011SEC. 11(h): Fees for “prioritized examination” (see AIA SEC. 25)

SEC. 11(i): 15% Surcharge

October 1, 2011

SEC. 22: Reserve Fund Established

November 15, 2011

SEC. 10(h): Electronic filing incentive

10 days after

15 days after

60 days after


10


Effective 12, 18, 36 months after DOE

September 16, 2012

SEC. 4: Inventor’s oath

SEC. 6(a) & (d): Inter Partes and Post-grant reviews

SEC. 7: Patent Trial and Appeal Board

SEC. 8: 3rd Party Submissions

SEC. 12: Supplemental examination

SEC. 17: Advice of counsel

SEC. 18: Transitional Program for business method patents

SEC. 20: Technical amendments

SEC. 21: Travel expenses

SEC. 25: Priority examination for important technologies

SEC. 28: Patent Ombudsman

March 16, 2013

SEC. 3: First to File and Related Provisions

•35 USC §102: First to file

•35 USC §103: Amended

•35 USC §135: Derivation proceedings

•35 USC §157: SIR repealed

12 months after 18 months after


September 16, 2014

SEC. 23 & 24: Satellite offices

36 months after

11

Prosecution Issues in AIA



First to File

• AIA SEC. 3 rewrites 35 USC § 102• Effective 18 months after DOE (March 16, 2013)• Will apply to

• Applications with effective filing dates on or after that date• Applications that (ever) include any claims with effective dates after that date

• Invention date no longer available to establish inventive priority

• Eliminates interferences in favor of “derivation” proceedings

• Eliminates current grace periods• Creates “first to publish” grace period


13


§102 Prior Art

• 35 USC §102(a)• Following events before effective filing date destroy

patentability• §102(a)(1): Before effective filing date, the claimed invention was:

• Patented• Described in a printed publication• In public use• On sale• Otherwise available to the public

• §102(a)(2): The claimed invention was described in an issued patent or published application, which:• Names another inventor; and• Was filed before applicant’s effective filing date

• No geographical limitation


14


§102 Prior Art – Exceptions

• 35 USC §102(b)(1)• A disclosure <1 year before effective filing date does

not count as prior art under §102(a)(1) if:• The disclosure was made by inventor (or joint inventor) or another who obtained subject matter from

inventor (or joint inventor) [Let’s call this the “inventor or obtainer” or “IOO”]; or• The disclosure in question was made by another (not the IOO), but it was itself preceded by a disclosure by

the IOO

• This creates a “first to publish” priority for the inventor• Publishing destroys most international patent rights (“absolute novelty”)• Japan is expanding its grace period basis – will other countries follow?

• Must file within 1 year after publication• Open question whether a sale or public use creates the

grace period


15


§102 Prior Art – Exceptions

• 35 USC §102(b)(2)• A disclosure appearing in a patent or application does

not count as prior art under §102(a)(2) if:• Subject matter was obtained from inventor (or joint inventor);• Before the effective filing date of the disclosure, the subject matter had been publicly

disclosed by IOO; or• The disclosed subject matter and the claimed invention were owned by (or subject to

obligation of assignment to) same person, no later than effective filing date of the claimed invention

• Disclosure by IOO must still be <1 year before effective filing date, per §102(a)(1) interacting with 102(b)(1)

• Again creates a “first to publish” priority


16


§102 Prior Art – Abolishment of Hilmer Doctrine

• 35 USC §102(d)• Patents and applications are available as prior art under

35 USC §102(a)(2) as of filing date or priority date

• This abolishes the doctrine under In re Hilmer, 359 F.2d 859 (CCPA 1966), under which a foreign-priority patent or application has a §102(e) prior art effect only as of its U.S. filing date


17


Derivation: Civil Actions and USPTO Proceedings

• Apply where another “derived” the invention from an inventor

• AIA SEC. 3(h): amends 35 USC §291• Allows civil action against patent owner of “derived patent”• Must be filed <1 year after issue date of allegedly derived patent

• AIA SEC. 3(i): amends 35 USC §135• §135 currently defines interference proceedings• Amendment provides derivation proceedings for inventions derived from the inventor• Must be filed <1 year after publication date of allegedly derived application

• Effective 18 months after DOE (March 16, 2013)• AIA SEC. 3(n)(2): Interferences will still apply to applications with

claims having effective filing dates <18 months after DOE


18


§103 Prior Art

• Determines obviousness of prior art as of the effective filing date of the claimed invention

• This will broaden available prior art• Current §103 determines obviousness of prior art as of “the time the invention

was made”


19


Prior Art Submissions by Third Parties• AIA SEC. 8• Any third party may submit:

• Patents• Published applications• Other printed publications

• Must be submitted before:• An allowance has issued• If no allowance has issued, then the later of:

• 6 months after publication• The date of the first rejection

• Must be accompanied by “concise description of the asserted relevance of each submitted document”

• No requirement to associate specific prior art text or figures with identified claim elements

• Cf. current 37 CFR §1.99 (Submission “shall not include any explanation”)


20


Tax Strategies

• AIA SEC. 14: Any “strategy for reducing, avoiding or deferring tax liability” shall be “deemed insufficient to differentiate a claimed invention from the prior art”

• Effective upon DOE• Applies to any patent application pending or filed on or

after that date, and to any patent issued after DOE• Excludes:

• Computer program products and systems used solely for preparing tax returns, including data recording, transmitting, etc.

• Financial management methods, systems, etc. to the extent severable from use of any tax strategy


21


USPTO Fees and Fee-Setting

• Effective on DOE (September 16, 2011)• AIA SEC. 11

• Numerous fees specified• AIA SEC. 10(a)

• At the same time, the Director may set or adjust any fees• Director’s fee-setting authority terminates in 7 years

(September 16, 2018)


22


USPTO Fee Surcharges

• AIA SEC. 11(i)• 15% surcharge on fees• Effective 10 days after DOE• Applies to:

• Filing fees• Search fees• Examination fees• Maintenance fees

• New fees are listed at http://www.uspto.gov/aia_implementation/15_Percent_Surcharge_Fee_Changes.pdf


23

http://www.uspto.gov/aia_implementation/15_Percent_Surcharge_Fee_Changes.pdf�


No Patents on Human Organisms

• AIA SEC. 33• “No patent may issue on a claim directed to or

encompassing a human organism”• Effective immediately

• Applies to any application pending or filed on or after DOE• Does not apply retroactively to issued patents

• Definitions needed:• “human organism”• “directed to”• How about (e.g.) a method for generating stem cells?


24

Post-Grant Proceedings Under AIA



Various Post-Grant Proceedings Under AIA• Ex parte reexamination

• Modified by AIA SEC. 6(h)(2)• Continue to be available under AIA

• Inter partes reexamination• Modified by AIA SEC. 6(c)• Phasing out

• Inter partes review• New under AIA SEC. 6(a)• Will replace inter partes reexams, but there will be overlap for years

• Post-grant review (PGR)• New under AIA SEC. 6(d)

• Transitional program for business method patents• New under AIA SEC. 18

• Supplemental examination• New under AIA SEC. 12


26


Ex Parte Reexamination

• AIA SEC. 6(h)(2) eliminates district court remedy currently provided by 35 USC §145 for ex partereexams

• Effective on DOE• Applies to any BPAI or PTAB appeal pending on, or

brought on or after, DOE


27


Inter Partes Reexamination (Transition)• SEC. 6(c) of AIA• Effective on DOE• AIA SEC. 6(c)(3)(B)(ii): Apply only to reexams filed on or

after DOE• New threshold for requests filed on or after DOE

• “Reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request”

• Old threshold (“substantial new question of patentability”) will continue to apply to inter partes reexam requests filed before DOE

• Estoppel unchanged• Current 35 USC §315(c)• “Raised or could have raised” estoppel applies to civil actions

• Does not apply to ITC proceedings


28


Inter Partes ReviewCreated by AIA

• SEC. 6(a) of AIA• Effective 1 year after DOE (September 16, 2012)• New threshold

• 35 USC §314(a)• “Reasonable likelihood that the petitioner would prevail with respect to at least 1

of the claims challenged in the request”• New estoppel

• 35 USC §315(e)• “Raised or reasonably could have raised” (RORCHR) estoppel applies to:

• Other USPTO proceedings• May not “request or maintain” the proceeding on that basis

• Civil action and ITC proceedings• May not “assert” that the claim is invalid on that basis

• Estoppel attaches only upon final written decision


29


Inter partes Review – Interaction with DJs

• 35 USC §315(a): An inter partes review will not be instituted if petitioner has already filed a civil action (e.g. a DJ) challenging the patent

• Counterclaim does not count

• If petitioner files action after petitioning for inter partesreview, the action will be stayed until one of the following events:

• Patent owner moves to lift the stay• Patentee files infringement action or counterclaim• Petitioner moves to dismiss the action


30


Inter partes Review – Timing and Process• 35 USC §315(b): An inter partes review must be filed less

than 1 year after petitioner is sued for infringement• 35 USC §316: Mandates regulations for detailed processes

• Including discovery, oral hearing, etc.

• 35 USC §316(a)(11): Review must be completed within 1 year

• Can be extended 6 months for “good cause shown”

• 35 USC §316(d): No claim amendments as of right• At least 1 motion to amend allowed• Additional motions

• Upon joint request• To materially advance settlement


31


Three simultaneous regimes for Inter Partes Reexams and Reviews


Sept. 16, 2011

Filed before 9/16/2011

Old inter partesreexam

Filed on or after 9/16/11and

Before 9/16/12

New inter partes reexam

Filed on or After 9/16/2012

New inter partes review

Sept. 16, 2012

32


Post-Grant Review (PGR)Created by AIA

• SEC. 6(d) of AIA: New proceeding under new 35 USC §§321-329

• Regulations due from USPTO September 16, 2012• Provides challenge to issuance of patent at PTAB

• Petition must be filed within 9 months after patent issue date• Basis

• Any ground for invalidity under 35 USC 282(b)(2) or (3)• Any “novel or unsettled legal question that is important to other

patents or patent applications”• Needs defining

• Petition requirements: 35 USC §322• Evidence must be submitted supporting the challenge to each claim


33


Post-Grant Review – Threshold & Estoppel

• Threshold• 35 USC §324• “More likely than not that at least 1 of the claims challenged in the petition is

unpatentable”

• Estoppel• 35 USC §325(e)• “Raised or reasonably could have raised” (RORCHR) estoppel applies to:

• Other USPTO proceedings• May not “request or maintain” the proceeding on that basis

• Civil action and ITC proceedings• May not “assert” that the claim is invalid on that basis

• Estoppel attaches only upon final written decision


34


Post-Grant Review (PGR) – Interaction with DJs

• 35 USC §325(a): A PGR will not be instituted if petitioner has already filed a civil action (e.g. a DJ) challenging the patent

• Counterclaim does not count

• If PGR petitioner files action after petitioning for PGR, the action will be stayed until one of the following events:

• Patent owner moves to lift the stay• Patentee files infringement action or counterclaim• Petitioner moves to dismiss the action


35


Post-Grant Review (PGR) – cont’d• 35 USC §325(b): Preliminary Injunctions

• If civil action is filed within 3 months after patent issue date:• Court may not stay consideration of patentee’s motion for preliminary

injunction on basis that PGR petition has been filed at USPTO

• 35 USC §326(d): No claim amendments as of right• Amendments to claims may be made pursuant to motion• Additional motions may be made:

• Upon joint request by patentee and petitioner; or• Upon the request of the patentee “for good cause shown”

• 35 USC §328(a): Intervening Rights• Adopts intervening rights effects of §252 (for reissue)


36


Post-Grant Review – Timing

• 35 USC §324(c): Time to institute PGR• The Director shall determine whether to institute a PGR within 3

months after later of:• Patentee files written response• Time for filing response has passed

• 35 USC §326(a)(11): Time to decide PGR• A final determination of a PGR shall be issued within 1 year• The Director may extend the time up to 6 months “for good cause

shown”


37


Post-Grant Review – AppealsCreated by AIA

• 35 USC §329: Appeal to CAFC• District court remedy under §145 is not available

• Any party to PGR may appeal


38


SEC. 18 Proceeding: Transitional Program for Covered Business Method Patents (BMPs)

Created by AIA• AIA SEC. 18: Provides challenges to “covered business

method patents” (BMPs)

• Effective 1 year from DOE (September 16, 2012)• Applies to any patent issued “on, before or after” that date

• AIA SEC. 18(a)(1)(b) – Petition may be filed if the petitioner (or real party in interest, or privy) has been:

• Sued for infringement• Charged with infringement

• “Charged with infringement” needs definingTimeline Prosecution PG Proceedings Litigation PTO Structures & Processes Studies

39


SEC. 18 Proceeding: BMP Definition

• AIA SEC. 18(d) – BMP is defined as:• “Method or corresponding apparatus”• For performing data processing or other operations• Used in the practice, administration or management of a financial

product or service

• Excludes “technological inventions”• Director to issue regulations to determine whether patent is for a

“technological invention”


40


SEC. 18 Proceeding: Stay of Litigation

• AIA SEC. 18(b): Court must consider, upon motion to stay where there is a related BMP challenge, whether:

• Stay will simplify issues and streamline trial• Discovery is complete and trial date has been set• Issuance (or denial) of stay would:

• Unduly prejudice nonmoving party• Present clear tactical advantage for moving party• Reduce the burden of litigation on the parties and the court

• Immediate interlocutory appeal is allowed from court’s decision on stay

• De novo review by CAFC


41


SEC. 18 Proceeding – Basis, Threshold and Estoppel

• Basis – same as PGR (but with BMP “filter” as to patented subject matter)

• Any ground for invalidity under 35 USC 282(b)(2) or (3)• Any “novel or unsettled legal question that is important to other patents or patent applications”

• Petition requirements: 35 USC §322• Evidence must be submitted supporting the challenge to each claim

• Threshold – same as PGR• 35 USC §324• “More likely than not that at least 1 of the claims challenged in the petition is unpatentable”

• AIA SEC. 18(a)(1)(D) – Estoppels for BMP challenges• “Raised” estoppel applies to civil action and ITC proceedings

• Cf. RORCHR estoppels for PGR under 35 USC §325(e)(2)• May not “assert” the basis• Eliminates estoppel as to petitioner’s privy

• RORCHR applies to other USPTO proceedings• Same as PGR, under 35 USC §325(e)(1) • May not “request or maintain” the basis


42


SEC. 18 Proceeding – Threshold and Estoppel

• Threshold – same as PGR• 35 USC §324• “More likely than not that at least 1 of the claims challenged in the petition is

unpatentable”

• AIA SEC. 18(a)(1)(D) – Estoppels for BMP challenges• “Raised” estoppel applies to civil action and ITC proceedings

• Needs defining: presumably means the ground was actually raised• “Raised” needs clarification (does similar ground count?)

• Cf. RORCHR estoppels for PGR under 35 USC §325(e)(2)• May not “assert” the basis for invalidity

• “Assert” needs clarification• Eliminates estoppel as to petitioner’s privy

• RORCHR applies to other USPTO proceedings• Same as PGR, under 35 USC §325(e)(1) • May not “request or maintain” a later proceeding upon the same basis


43


Differences between SEC. 18 Challenge and PGR Proceeding

PGR (SEC. 6) SEC. 18

§321(c): 9-month deadline to petition for PGR after issuance of patent

Eliminated for SEC. 18 proceedings(See SEC. 18(a)(1)(A))

§325(b): Prohibits stay of injunction based on PGR if suit is filed within 3 months after patent grant date


§325(e)(2) – Estoppels for civil actions and ITC proceedings

Estoppel as to issues that petitioner “raised or reasonably could have raised” (RORCHR)

Estoppel applies to petitioner; any real party in interest; or privy

Substitutes SEC. 18(a)(1)(D) in place of PGR’s §325(e)(2) for civil actions and ITC proceedings

Estoppel only as to issues “raised”

Eliminates “privy” estoppel for SEC. 18 proceedings

§325(f): Bars PGR proceedings for nonbroadened reissue claims



44


Threshold and Estoppel in AIA Post-Grant ProcessesEx ParteReexam(current statute)

Inter Partes Reexam (rev.)

Inter Partes Review(new)

Post-Grant Review (PGR) (new)

SEC. 18 Proceeding (new)

Threshold& Pleading

• 35 USC §303(a) (current law): Substantial new question of patentability (SNQ)

•Reasonable likelihood of prevailing (RLP)•SNQ continues to apply to pre-9/16/11 requests

• 35 USC §314(a): RLP• 35 USC §315(a): Has not “filed” a civil action challenging validity

• 35 USC §324(a):“More likely than not” (MLTN) that at least 1 claim is unpatentable• §325(a): Must not have filed a civil action challenging validity

• SEC. 18(a)(1)(B) : must be sued or charged with infringement• Otherwise same as PGR

Estoppel:•Civil actions•ITC proceedings

• None 35 USC §315(c) (current law): “Raised or could have raised”Applies to civil actions, not ITC

• 35 USC §315(e)(2)• “Raised or reasonably could have raised” (RORCHR)• May not “assert” issue• Final written decision• Civil actions & ITC

• 35 USC §325(e)(2)• RORCHR• May not “assert” issue• Final written decision• Civil actions & ITC

• SEC. 18(a)(1)(D) • Any ground “raised” (notRORCHR)• Otherwise same as PGR

Estoppel: •Later USPTO proceedings

• None •None • 35 USC §315(e)(1)• RORCHR• May not “request or maintain” proceeding based on issue

• 35 USC §325(e)(1)• RORCHR• May not “request or maintain” proceeding based on issue

• SEC. 18(a)(1)(A) excludes §325(f), i.e. reissue claims may be challenged at any time• Otherwise same as PGR

Scope, Grounds, Bases

• 35 USC §§302 and301 (current law): Patents and printed publications

• 35 USC §§311(a) and 301 (current law): Patents and printed publications

• 35 USC §311(b): Patentsor printed publications• 35 USC §312(a)(3)(B): Can be supported by expert opinions, affidavits, etc.

• 35 USC §321(b): Issues relating to invalidity under §282(b)(2) or (3)• 35 USC §324(b): Novel or unsettled question important to other patents or patent applications (does not require MLTN)

• SEC. 18(a)(1)(A) & (d)• “Covered business method patents”• Not “technological inventions”• Otherwise same as PGR

When • Any time • Any time • 35 USC §311(c)• After later of:

• 9 months after issuance (reissuance); or

• PGR is terminated

• 35 USC §321(c): ≤9 months after issuance (or reissuance)• 35 USC §325(f): No challenge to non-broadened reissue claims after original 9-month PGR period

• SEC. 18(a)(1)(B)• Any time after suit or charge of infringement

Statutory references are to sections of 35 USC as modified by AIA, unless otherwise specified

45



Supplemental ExaminationCreated by AIA

• AIA SEC. 12(b): New 35 USC §257• Allows patentee to request supplemental examination

• To consider or correct relevant information• Director will conduct supplemental examination within 3 months• If there is a substantial new question of patentability, reexam is

ordered• Same process as ex parte reexam, except no patent owner statement


46


Supplemental Examination – Effects on Enforcement

• AIA SEC. 12(c)(1): Patent cannot be held unenforceable based on conduct relating to information considered, reconsidered or corrected during supplemental examination

• AIA SEC. 12(c)(2): Exceptions – bar against unenforceability does not apply if:

• Allegation has been pled with particularity under Food, Drug & Cosmetic Act before supplemental examination request was filed

• Supplemental examination and resultant reexam were not complete before civil action or ITC proceeding was brought

• AIA SEC. 12(e): Fraud is not curable by this process• Director is required to refer fraud to Attorney General


47


Patent Life Cycle with Post-Grant Challenges under AIANot all available post-grant proceedings may occur for a given patent

Patent Application Filed

Patent SuitRestartsPossible

Post-Grant ReviewProcess & Appeal

PotentialInter Partes

Reviewor Ex Parte

Reexam

PatentIssues

SEC. 18Petition

Filed

Motion to Stay

(Note 1)

Petition Process Ends;

Appeal begins

Potential Section 18 Proceeding for BMPs

AppealEnds

Patentee FilesSuit

PatentExpiresPossible additional

Ex Parte Reexams, Inter Partes Reviews and SEC. 18 Processes

PotentialInter Partes

Reviewor Ex Parte

Reexam

Note 1: There is an immediate right to interlocutory appeal to CAFC from district court decision on Motion to Stay for a Section 18 proceeding.

Note 2: There is a range of possible pendencies for a Section 18 proceeding: shorter if the USPTO can meet the statutory deadlines, and longer if not. This may depend on the USPTO receiving sufficient funding to properly carry out Section 18 proceedings.

(See Note 2)

Note 3: Completion date depends upon pendencies in the Section 18 proceeding.

(See Note 3)

0 1 2 43 5 6 7 8 9 10 11 1312 14 15 16 17 18 19 20

48


No USPTO proceeding pending

USPTO proceeding pending

Enforcement stayed

Litigation-Specific Issues Under AIA



Joinder

• AIA SEC. 19(d) adds new 35 USC §299• Allows joinder of defendants in patent cases only in

cases:• Arising out of the same transaction, occurrence or series of transactions or occurrences;

• Tracks Rule 20(a) of Federal Rules of Civil Procedure

• Relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and

• Supersedes MyMail, Ltd. v. America Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004)

• Where questions of fact will arise that are common to all defendants or counterclaim defendants

• Tracks Rule 20(b) of Federal Rules of Civil Procedure

• Effective upon DOE• Applies to any civil action commenced on or after DOE


50


Prior User Rights• AIA SEC. 5 amends 35 USC §273• Effective upon DOE

• Applies to any patent issued on or after DOE

• Defense to infringement based upon prior commercial use• Internal commercial use• Arm’s-length sale or commercial transfer of “useful end result of such commercial use”• Commercial use occurred at least 1 year before earlier of:

• Effective filing date of patent application• Public disclosure that qualified as prior art exception under (new) 35 USC §102(b)

• Prior user rights defense now applies to all subject matter• Previously was confined under 35 USC §273(a)(3) to methods of doing or conducting

business


51


Prior User Rights –Uses deemed “commercial” to qualify for PUR

• §273(c)(1): Regulatory review period under 35 USC §156(g)• Defines patent term extension for drugs and biological products

• §273(c)(2): Nonprofit laboratory use, provided that:• Use is by nonprofit entity (e.g. research laboratory, university or hospital);• Public is intended beneficiary; and• Defense applies only to continued noncommercial use


52


Prior User Rights

• §273(b): Burden of Proof• Person asserting the defense has burden of proof• Clear and convincing evidence standard

• §273(d): Exhaustion • Sale of “useful end result” to which PUR defense applies exhausts patent rights as

if patentee had sold product

• §273(f): Unreasonable assertion of defense• If defendant fails to demonstrate reasonable basis for assertion, the court shall

find the case exceptional under 35 USC §285 (for award of attorney fees)


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Prior User Rights - Limitations

• §273(e): Limitations on PUR• Defense is personal to:

• Person who performed or directed the commercial use; or• Entity controlled by (or controlling/under common control with) such person

• No transfer of PUR, except:• To patent owner; or• Ancillary to good-faith transfer of entire enterprise or line of business

• Upon transfer, PUR restricted to site of activity before later of:• Effective filing date of claimed invention; or• Date of transfer

• Abandonment of use eliminates defense• Assertion of defense does not invalidate patent


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Appeals Under AIA

• Ex Parte Reexams• AIA Sec. 6(h)(2): Eliminates U.S. district court remedy under 35 USC §145 as

option for patentee in ex parte reexam

• PGRs• 35 USC §329: Blocks PGRs from §145 remedy

• BMP Challenges• AIA Sec. 18(b): provides as-of-right interlocutory appeals from denial or grant of

stay of infringement action


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Best Mode

• AIA SEC. 15

• Best mode eliminated as basis for invalidity or unenforceability

• Applies to all proceedings commenced on or after DOE


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Virtual Marking

• AIA SEC. 16(a)

• 35 USC §287(a) is amended• Internet web addresses associating patented article with patent number• Report due 9/16/2014 on effectiveness of virtual marking

• Applies to all cases pending or commenced on or after DOE


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False Marking

• AIA SEC. 16(b)• Only United States may sue for penalty under 35 USC

§292(a)• 35 USC §292(b) is amended

• A person “who has suffered a competitive injury” may sue• Damages are “adequate to compensate for the injury”

• Applies to all proceedings pending or commenced on or after DOE

• “Without exception”


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Jurisdiction

• AIA SEC. 19(a)-(c)• Clarifies exclusive federal court jurisdiction

• Patents• Plant variety protection• Copyright


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Advice of Counsel

• AIA SEC. 17 adds new 35 USC §298• Applies to patents issued on or after one year after

DOE (September 16, 2012)• But not to parent cases: possibly two standards in one case

• Failure of an infringer to obtain advice of counsel, or present such advice to the court or jury, may not be used to prove:• Willful infringement

• Codifies In re Seagate Technology, L.L.C., 497 F.3d 1360 (Fed. Cir. 2007) (en banc)

• Intent to induce infringement• Overrules Broadcom v. Qualcomm, 543 F.3d 683 (Fed. Cir. 2008)


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USPTO Structures and Processes



USPTO Structures and Processes

• AIA SEC. 7: New Patent Trial and Appeal Board (PTAB)• AIA SEC. 22: Patent and Trademark Office Reserve Fund• AIA SEC. 23 & 24: USPTO Satellite Offices

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PTAB• AIA SEC. 7 modifies 35 USC §6• Duties

• Patent application appeals• Reexam appeals• Conduct derivation proceedings• Conduct inter partes reviews• Conduct PGRs

• Appeals are to CAFC

• District court actions are available for:• Patent applications – 35 USC §145• Derivation proceedings – 35 USC §§141(d), 145, 146

• Appeal to CAFC waives right to district court action• 35 USC §§141(a) & (d)(2)(A)

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Patent Office Funding

• AIA SEC. 22: Establishes “Patent and Trademark Office Reserve Fund”

• Effective October 1, 2011• Does not end USPTO fee withholding (“fee diversion”) by

Congress• Senate bill (S.23) would have ended fee diversion

• Fees collected beyond “appropriated amount” are placed in Fund• Amounts in Fund will be made available to USPTO

• “To the extent and in the amounts provided in appropriations Acts”

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USPTO Satellite Offices

• AIA SEC. 23 & 24• 3 satellite offices within 3 years after DOE• Report to Congress after 3rd year• First satellite office in Detroit

• “Elijah J. McCoy United States Patent and Trademark Office”

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Elijah McCoy was a prolific African-Canadian-American inventor (1844-1929), the son of slaves who escaped to Canada. He studied mechanical engineering in Edinburgh, then settled in Detroit and specialized in designs relating to locomotive engines.He received 57 patents, and was inducted into the National Inventors Hall of Fame in 2001.

Studies



Studies

• AIA SEC. 3(l): Small Business Concerns• AIA SEC. 3(m): Prior User Rights• AIA SEC. 26: Implementation of AIA• AIA SEC. 27: Genetic Testing• AIA SEC. 29: Diversity of Applicants• AIA SEC. 31: International Patent Protections for Small

Businesses• AIA SEC. 34: Patent Litigation Involving NPEs

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Study on Small Business Concerns (SBCs)

• AIA SEC. 3(l)• USPTO Chief Counsel will study

• Effect of eliminating invention priority, including• How this change would affect ability of SBCs to obtain patents• How this change would affect costs to SBCs• Whether this change creates, mitigates or exacerbates disadvantages of SBC

applicants relative to non-SBC applicants• Cost savings and other potential benefits to SBCs• Feasibility, cost & benefits to SBCs of “alternative means” of determining whether

an applicant is entitled to a patent

• Report due to relevant Congressional committees 1 year after DOE (September 16, 2012)

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Report on Prior User Rights (PUR)

• AIA SEC. 3(m)• USPTO will report on

• Comparison of laws of U.S. with other industrialized countries (including EU, Japan, Canada, Australia)

• Analysis of:• Effect of PUR on innovation rates• Correlation, if any, between PUR and:

• Start-up enterprises• Ability to attract venture capital to start new companies

• Effect of PUR on small businesses, universities, individual inventors• Legal and constitutional issues arising from placing trade secret law in patent law• Whether change to first-to-file system creates particular need for PUR

• Report due to Congressional Judiciary Committees 4 months after DOE (January 16, 2012)

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Study on Implementation of AIA

• AIA SEC. 26• USPTO will study

• Manner of implementation of AIA by USPTO, relating to:• Patent rights• U.S. innovation• U.S. competitiveness• Access by small businesses to investment capital• Other appropriate issues

• Report and recommendations due to Congress 4 years after DOE (September 16, 2015)

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Study on Genetic Testing


• Effective ways to provide genetic diagnostic tests, where there exist:• Gene patents; and• Exclusive licensing for primary genetic diagnostics tests

• Report and recommendations due to Congressional Judiciary Committees 9 months after DOE (June 16, 2012)

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Study on Diversity of Applicants

• AIA SEC. 29• USPTO will establish methods for studying applicant

diversity• Including minorities, women and veterans

• Director may not use results to provide preferential treatment

• Must be complete 6 months after DOE (March 16, 2012)

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Study on International Patent Protections for Small Businesses


• How USPTO can help small business with international patent protection

• Whether loan or grant programs should be established

• Director may not use results to provide preferential treatment

• Report and recommendations due to Congress 120 days after DOE (January 14, 2012)

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Study on Patent Litigation Involving NPEs• AIA SEC. 34• GAO will study

• Consequences of patent litigation by• Non-practicing entities (NPEs)• Patent assertion entities

• To address• Annual volume of litigation over 20-year period preceding DOE• Volume of meritless litigation• Impact of such litigation on time required to resolve patent claims• Estimated costs (including defense costs) for patent holders, licensors, licensees, inventors &

users of alternate or competing innovations• Economic impact of such litigation on U.S. economy, including on inventors, job creation,

employers, employees and consumers• Benefit to commerce, if any, supplied by NPEs or patent assertion entities that engage in such

litigation• Report and recommendations due by Comptroller General to

Congress 1 year after DOE (September 16, 2012)

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What next?• USPTO implementation – already in the works for many

months• Public input is solicited: http://www.uspto.gov/aia_implementation/index.jsp

• USPTO's Timeline:

• Technical corrections bill75

http://www.uspto.gov/aia_implementation/index.jsp�


Thank you

The beat goes on….


About Matt RaineyMatt Rainey is Vice President/Chief IP Policy Counsel at Intellectual Ventures, and handles licensing and public policy matters for Intellectual Ventures. He has 28 years of experience in various aspects of intellectual property protection, licensing, litigation and policy matters, working both in-house and in law firms and including work on European patent matters in Munich. He has studied in detail and worked on language for each of the series of patent bills introduced in Congress since 2005, and additionally works on USPTO regulation proposals, amicus briefs and other policy matters.

Mr. Rainey has a B.S. in Physics from the University of Maryland and a J.D. from University of Southern California.

Email: [email protected]

About Intellectual VenturesFounded in 2000, Intellectual Ventures (IV) is the global leader in the business of invention. IV collaborates with leading inventors, partners with pioneering companies, and invests both expertise and capital in the process of invention. IV’s mission is to energize and streamline an invention economy that will drive innovation around the world.

http://www.intellectualventures.com

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mailto:[email protected]�

http://www.intellectualventures.com/�

http://www.intellectualventures.com/�

Documents

America Invents Act - Intellectual Ventures · America Invents Act September 19, 2011 ... Study on AIA implementation (due 9/16/2015) S. EC. 6(h)(2 ... [Let’s call this the “inventor