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American Intellectual Property Law Association

Changes to the US Patent Law Under the AIA

Alan J. Kasper

EPO/US Bar Partnership for Quality Meeting

March 5, 2013

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Key Changes Under the AIA

• Oath and Declaration • Key Prosecution Provisions

– Grace Period and Prior Art • Derivation Proceedings • Third Party Submissions • Fees • PGR and Interpartes Review • Supplemental Examination

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OATH AND DECLARATION

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Applicant/Oath & Declaration

• Applicants and Inventors – Applicant Can, but Need NOT be the Inventor – BUT – Application MUST Name All Inventors – APPLIES TO ALL APPLICATIONS INCLUDING

CONTINUATIONS - EXCEPT • National Stage of an International Filing pre 9/16/2012

• Statement of Inventorship Required – Substitute Statement Permitted – Combined Oath/Dec and Assignment Permitted

• Third Person Can Execute and File • Timing for Oath/Dec or Substitute Statement Delayed

• BEST PRACTICE – file as early as possible

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Application Data Sheet and Power of Attorney

• THE ADS - ALL Relevant Data NOW Provided by the Application Data Sheet (ADS)

• THE POA – Use of General and Specific Powers from Applicant

• General Power from Assignee • Specific Power from Assignee • Separate from Oath/Dec • Power from Inventor only as needed

– Confusion among Applicants

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KEY Prosecution Provisions

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New Standards For Filing

• Right of First Inventor to File – Inventor must be an individual who invents or discovers

and must be named – Effective Filing Date includes domestic and foreign

priority dates – where Section 112 disclosure is satisfied – Interferences - are eliminated except for applications

filed before the effective date – Derivation Investigation Proceeding - is created

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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) – 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”

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New Standards for Novelty

• Revised Definition of Prior Art – New Section 102(a)(2) includes earlier filed application

naming another inventor ( substitute for old 102(e) – But Section 102(b) and (c)

• Excludes earlier inventor-derived information or inventor derived public disclosure

• Excludes commonly owned patents and applications • Excludes joint research agreements (CRADA)

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Elimination of Hilmer Doctrine - §102(d)

• Eliminates the need for Current foreign applicant practice for prior art date: – file U.S. provisional application at the same time as

foreign priority application to get earliest § 102(e) date. • Following US application publication, the disclosure

has retroactive availability as prior art as of the effective filing date

• Available as prior art for both novelty and obviousness purposes

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New Grace Period • More Limited Grace Period Under New Section 102(b)

– Absolute Bar if More than One Year before Effective Filing Date for All Persons

– Bar if Less than One Year - with Exception for Inventor and another who obtained from inventor – e.g., Assignee

• Disclosure (including in applications) by or derived from the Inventor

• IF Previously Publicly Disclosed by the Inventor • If Commonly Owned before filing

– Owned or subject to duty to assign – ISSUE: can publically disclosed subject matter have more

than an insignificant difference from application content??

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Narrow §102(b)(1)(B) and §102(b)(2)(B) Grace Period Under New Examination Guidelines

• For Exception to Apply, subject matter previously publicly disclosed by inventor: – Need NOT be made using the same "mode" as an

intervening disclosure – Need NOT be a verbatim disclosure of the intervening

disclosure – Need NOT be of same scope as intervening

disclosure – the subject matter of the intervening disclosure may be broader

– BUT – subject matter in intervening disclosure that was not previously publicly disclosed by inventor is available

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Narrow §102(b)(1)(B) and §102(b)(2)(B) Grace Period Under New Examination Guidelines

• Exception Applicable to Subject matter disclosed- USPTO interpretation is that: – The "subject matter disclosed" previously by inventor (or

joint inventor or another who obtained subject matter disclosed by the inventor or joint inventor) must be the "same subject matter" as the prior art disclosure, and

– Exception does not apply if there are more than "mere insubstantial changes, or only trivial variations" between the "subject matter" disclosed by the inventor and the "subject matter" in the intervening disclosure prior art

– IN SUM - NO Grace Period for Obvious Variants!!

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New Procedure to Disqualify Prior Art Under New Rule 130

• Affidavit or Declaration to demonstrate attribution or prior public disclosure of inventor's own work before filing - facts not conclusions! – Unequivocal statement he/she invented the subject

matter – Detailed explanation of what was disclosed if not a

publication – Reasonable explanation of additional authors

• Similar to disqualification procedure in MPEP 2132.01

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Public use

(12 mos.)

U.S. Patent

Effective Filing Date

Public use

NEW Grace Period: §102(b)(1)(A) and (B) Apply

Disclosure “by or obtained from” an INVENTOR

Later Disclosure by ANYONE

§102(b)(1)(A) §102(b)(1)(B)

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A Pat. App. Filed

12 mos.

B’s U.S. Patent

B's Public Use

NEW Prior Art Provisions: Sword/Shield

Disclosure “by or obtained from” Inventor B

Filing by independent Inventor A §102(b)(1)(A)

§102(b)(2)(B) §102(a)(1)

Effective Filing Date of B’s Patent App.

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Strategy for Filing New Applications:

New Filing of regular, provisional, PCT or foreign application to get old law grace period

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 Closes

Continuation, Divisional and CIP Filing to get old law grace period – no claim with effective filing date (Section 101(i)) after the window closes

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New USPTO Rules for Transition Period

• For applications, filed on or after March 16, 2013, new 37 CFR 1.55 (foreign priority) and 37 CFR 1.78 (domestic benefit) would require a statement that the application includes: – At least one claim with an effective filing date on or

after March 16, 2013; or – No claims with an effective filing date on or after March

16, 2013, but discloses subject matter not in the previous application.

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New USPTO Rules

• The statement would be required: – within 4 months of US filing date, or – within 16 months of earliest effective filing date

(whichever is later) • Example statements:

– “upon reasonable belief, this application contains at least one claim with an effective filing date on or after March 16, 2013”

– “upon reasonable belief, this application contains subject matter not also disclosed in application no. XXX”

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Application of Old Law to New Filings

• For filings on or after March 16, 2013 – New applications and CIPs

• Pre-AIA Section 102(g) also will apply if

there is any claim having an effective filing date before March 16, 2013 or is a Con/Div/CIP of an application having a claimed invention with such effective filing date

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DERIVATION PROCEEDINGS

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Derivation Proceedings 35 USC §135(a) - (HR 6621)

• What Patents or Applications – any earlier filed

pending application or issued patent • What Submission – Petition to Initiate Derivation

Proceeding • Who Can Submit

– Applicant of a pending application • Application may be filed after publication of earlier one

• When – Within one (1) year of the deriving application’s first publication of claimed invention : – (1) U.S. Application – (2) PCT Application naming the US (may not be in English) – (3) US Patent

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Derivation Proceedings

• What Content – Support by Substantial Evidence

• Date of Invention • Sufficient Access by Deriver • Earlier filing was Unauthorized

– Claim-by-claim showing • Petitioner’s pending claim is substantially same as Respondents claim • Respondent’s claimed invention was actually disclosed to

Respondent – Concise description of asserted relevance of each document – Fee ($400) – Corroborated Affidavit Demonstrating Communication of the

claimed invention to the Earlier Applicant

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PREISSUANCE SUBMISSIONS BY THIRD PARTIES

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Third Party Submissions - 35 USC §122(e) 37 CFR 1.290

• What Applications – any pending or abandoned application – No issued patents, reissue applications or reexamination

proceedings • What Material - Any printed publication of

relevance – Patent, published application or publication – Need not be prior art – i.e., office action or reply in

another country • Who Can Submit

– Any third party – no duty of disclosure – ID of real party not required – ID of submitter is required

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Third Party Submissions

• When – Before earlier of: – (1) Allowance and – (2) Later of: (A) 6 months after publication or (B) first rejection

• What Content – Copies (non-USPTO documents) and translations – Concise description of asserted relevance of each document – Fee (first 3 or fewer free; every 10 documents $180) – Statement of Compliance – Listing (PTO/SB/429)

• How – Dedicated web interface or paper – no fax – NO service on applicant required

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Submission Considered by

Examiner

USPTO Reviews Submission for

Compliance with 35 U.S.C. § 122(e) and

37 C.F.R. § 1.290

Submission Made of Record and

Applicant Notified if E-Office Action

Participant

Submission Discarded

Non-compliant

Compliant

Processing Third Party Submissions

Third Party Notified if Email Address Provided with Request for Notification

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FEES

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NEW USPTO FEES - Effective March 19, 2013

• New Fees Generally Set at Cost Recovery – Exceptions to incent Applicant Behavior – Some fees not required to consider cost (Extensions

of Time) – New Fees Retain Small Entity Discount (50%) – New Fees Include Micro Entity Discount (75%)

• Examples of Above Cost Fees: – Issue Fee ($960) – Maintenance fees ($1600 – 1st stage)

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NEW USPTO FEES - Effective March 19, 2013

• Examples of Below Cost Fees: – Filing, Search & Examination ($1,600) – RCE ($1,200 – first; $$1,700 – second) – Appeal ($800) after Examiner Answer ($2,800) – Ex parte Reexamination ($12,000) – Inter Partes Review ($23,000 - $9K/$14K – no discount) – Post Grant Review ($30,000 – $12K/$18K - no discount) – Supplemental Examination ($$16,500)

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POST PATENT GRANT PROVISIONS

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TPS, PGR, IPR

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Post Grant Review • Post Grant Review - Initiation of Proceedings

• Petition to cancel any claim – stated standard is “more likely than not unpatentable.” – better than 50-50

• Grounds - any related to invalidity (§ §102 101, 102, 103, 112, DP)

• Real Parties in interest identified.

• Forum - Patent Trial and Appeal Board to Conduct

• Timing

• ONLY ONE Window - at 9 months from issuance

• Fee – established at $12,000 petition and $18,000 institution

• Civil Action - None pending involving the patent

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Post Grant Review (cont.) • Post Grant Review - Conduct of Proceedings

• Amendments - permitted – no enlargement • Intervening Rights if Amended

• Discovery – limited discovery, sanctions and protective orders (§326)

• Burden of Proof – preponderance – no presumption of validity (§326)

• Stay - Automatic Stay of Civil Actions • Deadline - One year to decision (extendable by 6 months) (§326) • Appeal - only to CAFC – no Section 145 action • Estoppel – for litigation and other proceedings (ITC)

• same grounds actually raised or could have been raised) • Effective Date – applies to all patents issued 1 year after enactment

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•Director Initiates Proceeding •Discovery and Prosecution •At least 1 chance for Petitioner to reply

One Year

Patent Issues

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) •In 9 months after grant •Copies of patents and pubs •Declarations and Expert Opinions •Fee

Maximum Time to Decision

Petition Filed

9 Months Max

Preliminary Activity

Time Line for PGR

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Inter partes Review

• Inter partes Review - Initiation of Proceedings

• Petition - to cancel any claim – stated standard is “reasonable likelihood that petitioner would prevail” as to one challenged claim 50:50 or less

• Grounds - Limited to those related to invalidity (§§102 and 103 only)

• Parties - Real Parties in interest identified

• Preclusion - if more than 1 year after patentee sues

• Forum - Patent Trial and Appeal Board to Conduct

• Timing – Any time more than 9 months from grant – And after Completion of any Opposition

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Inter Partes Review • Inter partes Review - Conduct of Proceedings

• Amendments - permitted – no enlargement • Intervening Rights if Amended

• Discovery – limited discovery, Sanctions and Protective Orders Provided (§316)

• Burden of Proof – preponderance – no presumption of validity (§316)

• Stay - Automatic Stay of Civil Actions • Deadline - One year to decision (extendable by 6 months) (§316) • Appeal - only to CAFC – no Section 145 action • Estoppel – for litigation and other proceedings (ITC)

• same grounds actually raised or could have been raised) • Effective Date – applies to all patents issued 1 year after

enactment

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•Director Initiates Proceeding •Discovery and Prosecution •At least 1 chance for Petitioner to reply and amend

One Year

9 Months Minimum after Patent Issues

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

Time for Inter Partes Review

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Trial Rules

Inter Partes Review §§ 42.100 – 42.123

Post-Grant Review §§ 42.200 – 42.224

Covered Business Method Patent Review

§§ 42.300 – 42.304 Derivation Proceeding

§§ 42.400 – 42.412

Umbrella Trial Rules §§ 42.1 – 42.80

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Trial – Motions Practice

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Discovery

• Mandatory notices – Due, from challenger, with petition – Due, from patentee, in 21 days

• Routine discovery – No authorization required to obtain:

• Exhibits • Cross-examination of declarants • Inconsistent information (non-privileged) • Discovery related to mandatory initial disclosure

– Presenter pays witness expenses • Additional discovery per FRCP

– By agreement or motion – Granted if in “interest of justice” (IPR) or for “good cause”

(PGR) • E-Discovery Included

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Depositions

• Limited Duration • Testimony under oath • Transcript / video • Objections:

– Limited to a single word or term

• “Objection, form.” “Objection, foundation.”

– No consultation about testimony begun.

• Sanctions available

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SUPPLEMENTAL EXAMINATION

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Supplemental Examination

Supp Exam – Initiation of Proceedings • Patentee intending to enforce in litigation can correct errors and

omissions that may be: • (1) a basis for an inequitable conduct defense

• Missing Prior Art • Erroneous Declarations • Erroneous Argument

• (2) a basis for substantive defense • Sections 101, 102, 103, 112, etc.

• ONLY Patentee Can File for Supplemental Exam • Test - Substantial New Question of Patentablilty (SNQ) • Fee has 2 parts – petition and reexamination • Fraud, if discovered, is referred to Attorney General

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Supplemental Examination Supp Exam – Conduct of Proceedings • USPTO Conducts Supplemental Examination

– USPTO has 3 months to decide whether or not submitted information raises a SNQ of patentability

– USPTO Issues a Certificate of SNQ • If SNQ, Director Orders Ex-parte reexamination

– Patentee cannot file a statement under 304 (art or claims) before first Office Action

– All SNQ addressed – including 101, 102, 103, 112, etc. – No time limit specified

• Inequitable conduct defense in litigation precluded for submitted information – If no SNQ on the information or – If reexam successfully concluded

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•Director concludes supplemental examination to determine SNQ •Certificate issued re SNQ •If SNQ, Director Orders Ex-parte Reexamination Proceeding •Address each SNQ •If No SNQ – no unenforceability for reviewed conduct

Petition Filed

Ex-parte Reexamination Conducted

3 months to decide if SNQ

•Patentee files request to consider, reconsider or correct information believed relevant to patent •Supplemental Examination conducted – does information raise a substantial new question (SNQ) of patentability?

•Issued Patent is being considered for enforcement •Review of file history or negotiations raise concern about omissions or errors in submitted art, declarations or argument •Suit has not yet been filed

•Patent not Unenforceable for reviewed conduct

Supp Exam Finished

Re exam Finished

Litigation

Time Line for Supplemental Examination

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Key Take-Aways • DO - File applications before March 16, 2013, if possible • Don’t, Don’t, Don’t - rely on the Grace Period • Don’t, Don’t, Don’t – rely on Confidentiality to preclude Prior Art

effect of Disclosures and Offers for Sale • Do - Keep Clear and Comprehensive Records of Inventive

Activity, Joint Development, Public Disclosures and Disclosures to Others

• Do - Monitor Activity of Competitors • Do – Use Supplemental Examination if you plan to sue • Do – Expect to spend money on Post Grant procedures

• FINALLY - Don’t Forget to Increase your

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Thanks for your attention! Questions?

Alan J. Kasper

Partner Sughrue Mion PLLC

2100 Pennsylvania Ave. Washington DC 20037

+1-202-293-7060

+1-202-368-5259 (mobile)

akasper@sughrue.com