Prosecution Group Luncheon

September, 2011

America Invents Act

Passed House and Senate (HR 1249)

Presidential Signature expected Friday

Most provisions take effect either 12 or 18 months from enactment

America Invents Act—Effective Dates

Generally: effective 1 year after enactment (~9/16/2012)

Immediate effectPrior user defense Best mode changesTax strategy provision Marking provision

Effective 18 mos. after enactment (~3/16/2013)First to file (applies to apps. with claims with EFD after that effective date)

America Invents Act

• First to File

• Post-grant Review/Citation of Art (3d party/supp. exam)– Transitional Procedure for certain Bus. Method Patents

• Prior use defense

• Tax strategies deemed within prior art

• Elimination of Best Mode as Invalidity Basis

• Marking issues

America Invents Act—First to File

Section 102 rewritten—prior art is• (a)(1) Publicly available before effective filing date

Exceptions [(b)(1)]: disclosures less than 1 year before EFD are not prior art under (a)(1) if

– By inventor or one who obtained it from inventor– Disclosure was previously disclosed by inventor

• (a)(2) Patents/published applications of other inventor, having prior EFD Exceptions [(b)(2)]: disclosures not prior art under (a)(2) if– Obtained from inventor– Publicly disclosed by inventor before reference’s EFD– Disclosure and claimed invention subject to common

ownership

America Invents Act—First to File

Section 103:

A patent may not be obtained

if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

America Invents Act—First to File

Derivation proceedings

Patents: new sec. 291, civil action (1 year deadline)

Applications: new section 135, petition akin topost-grant petitions

Note: current secs. 102(g), 135, 291 remain in effect for applications and patents with claim(s) having EFD before the effective date (March 2013)

America Invents Act—Post-Grant Review

Inter Partes Review (Ch. 31; replaces inter partes reexam)

• Basis: 102/103, over patents or printed publications• Petition to cancel claim(s) (with references, expert

declarations, argument), decision whether to grant is not appealable

• Timing: after 9 months from issue, or after Ch. 32 post-grant review

Post-Grant Review (Ch. 32)• Basis: any invalidity ground in sec. 282• Similar petition process• Timing: within 9 months after issue

America Invents Act—Post-Grant Review

• Transitional program for “covered business method patents” (Ch. 32 procedure, where patent is in suit)

• Regulations from PTO within one year from enactment

• Estoppel (akin to interference), stay, joinder provisions

• Settlement provision precludes estoppel

• Claims can be amended during proceeding; intervening rights arise

America Invents Act—Citation of Art

Third-party submissions• Sec. 301: patents/publications or owner’s

court/PTO statements can be filed at any time

• Amended sec. 122: patents/publications can be filed pre-issuance (w/relevance statement)

Patent Owner’s Supplemental Examination• Step prior to requesting reexamination• PTO can institute reexamination • Chance to cure possible inequitable conduct

America Invents Act—Prior Use DefenseFor good-faith commercial user of process or machine,

manufacture, composition used in process

• For uses 1 year before infringed patent’s effective filing date; abandonment re-starts the clock

• Clear and convincing standard of proof

• Premarket regulatory, nonprofit lab use is “commercial”

• Personal defense; transfer only with sale of business

• Exception for university plaintiffs

• No defense for derivers

America Invents Act

Other provisions of note

14: Strategies for reducing/deferring tax liability are insufficient to distinguish from prior art (with exceptions)

15: Best mode• Absence no longer an invalidity ground• No longer required for 119(e)/120 priority

America Invents Act—Other

16: Marking• Qui tam suits eliminated• Competitive injury by false marking actionable• Virtual marking (“Patented; see www. . . .”)

17: Codification/extension of Knorr-Bremse: failure to obtain or disclose advice of counsel cannot be used to prove willfulness/intent to induce infringement

America Invents Act—Effective Dates

Generally: effective 1 year after enactment (~9/16/2012)

Immediate effectPrior user defense Best mode changesTax strategy provision Marking provision

Effective 18 mos. after enactment (~3/16/2013)First to file (applies to apps. with claims with EFD after that effective date)