SEVEN THINGS YOU MAY NOT KNOW ABOUT THE NEW PATENT

REFORM LAW(SOON TO BE UPON US)

PROF. PAUL JANICKEUNIVERSITY OF HOUSTON LAW CENTER

SEPTEMBER 2011

2011 2

1. WE ARE NOT GOING TO A “FIRST TO FILE” SYSTEM

• THE SENATE FLOOR REMARKS AND THE HOUSE REPORT MAKE CLEAR THAT THE RULE WILL BE:

• IN A CONTEST BETWEEN INDEPENDENT INVENTORS, THE VALID CLAIM WILL GO TO THE FIRST TO PUBLICLY DISCLOSE

2011 3

• FIRST-TO-FILE IS THE DEFAULT RULE–WHERE NO ONE HAS PUBLICLY

DISCLOSED, THE FIRST TO FILE WINS

• MEANING OF “DISCLOSE” IS NOT 100% CLEAR– PROBABLY INTENDED TO COVER ALL

THREE TYPES OF PRIOR ART:• PATENTS AND PRINTED PUBLICATIONS• PUBLIC USES• PUBLICLY ACCESSIBLE OFFERS FOR SALE

2011 4

EXAMPLE

• JANUARY A INVENTS• FEBRUARY B INVENTS• MARCH B PUBLICLY USES• APRIL A FILES• MAY B FILES

• B WINS, EVEN THOUGH A WAS FIRST TO INVENT AND FIRST TO FILE

• A IS BARRED BY THE PUBLIC USE• B IS SAVED BY HIS “GRACE PERIOD”

2011 5

SOME PROCEDURAL STICKINESS

• PTO KNOWS NOTHING ABOUT THE PUBLIC USE

• PTO WILL ISSUE A’S PATENT (INVALIDLY)

• WHEN B’S APPLICATION IS EXAMINED, B WILL NEED TO ESTABLISH THAT HE WAS FIRST TO PUBLICLY DISCLOSE [NEW TYPE OF “RULE 131” AFFID.]

• B’S APPL. SHOULD THEN BE ALLOWED

2011 6

2. MOST ONE-YEAR CLOCKS FOR TIME BARS WILL BE ABOLISHED

• OFFERS FOR SALE AND PUBLIC USES WILL NOW BE WORLD-WIDE

• THEY INSTANTLY BAR ANYONE WHO IS NOT ALREADY ON FILE SOMEWHERE (PRIORITY DATE), EXCEPT WHERE AN INVENTOR TRIGGERED THE BAR

2011 7

THE GRACE PERIOD ONLY FOR FIRST-INVENTOR-TO-PUBLISH

• WHERE AN INVENTOR’S WORK TRIGGERED THE BAR, DIRECTLY OR THROUGH AN INTERMEDIARY:

– HE GETS A ONE-YEAR GRACE PERIOD IN WHICH TO FILE

– ANY PARIS CONVENTION FILING WILL DO

2011 8

3. INVENTION DATE IS HERE TO STAY FOR QUITE SOME TIME

• THE PHASE-IN OF “NEW” PRIOR ART PROVISIONS IS PAINFULLY SLOW

• NEW APPLICATIONS FILED AFTER MAR. 16, 2013, WITH NO EARLIER PRIORITY CLAIM, ARE UNDER “NEW” PRIOR ART

• BUT >>>

2011 9

• ALL NOW-EXISTING PATENTS• ALL APPLICATIONS NOW PENDING– AND PATENTS ISSUING THEREON

• ALL APPLICATIONS FILED UP TO MAR. 16, 2013– AND PATENTS ISSUING THEREON

• ALL LATER APPLICATIONS, IF THERE IS ANY CLAIM TO EARLIER PRIORITY– AND PATENTS ISSUING THEREON

• ARE UNDER THE OLD LAW!

2011 10

• RESULT:

–WE SHOULD EXPECT TO SEE LITIGATION DEFENSE OF EARLIER INVENTORSHIP BEING ADJUDICATED UNTIL ABOUT 2025; MAYBE LONGER

–WE SHOULD NOT SAY INTERFERENCES HAVE BEEN ABOLISHED, OR ARE EVEN OBSOLESCENT, UNTIL AT LEAST 2020

2011 11

4. BEST MODE CAN NOW BE CONCEALED

• EVEN DELIBERATELY

• § 15 OF THE BILL:

– “. . . EXCEPT THAT THE FAILURE TO DISCLOSE THE BEST MODE SHALL NOT BE A BASIS ON WHICH ANY CLAIM OF A PATENT MAY BE . . . HELD INVALID OR OTHERWISE UNENFORCEABLE”

>>>

2011 12

• WHY DID THEY KEEP BEST MODE IN

§ 112?

• DOES IT HAVE SOME LINGERING EFFECT?

• PTO HAS INDICATED AN INTENTION TO CONTINUE TO ENFORCE IT (SOMEHOW)

2011 13

5. PENITENCE“SUPPLEMENTAL EXAMINATION” § 10 OF H.R. 1249,

NEW 35 U.S.C. § 257(c)

• INEQUITABLE CONDUCT CAN NOW BE CURED BY A POST-GRANT CLEANSING PROCEDURE

• ANY WITHHELD INFORMATION CAN BE BROUGHT FORWARD TO PTO

• IF CLAIMS ARE RE-ALLOWED, THIS INFO IS BLOCKED IN COURT

2011 14

CONDITIONS FOR CLEANSING

• CANNOT COMMENCE OR CONTINUE SUPPLEMENTAL EXAM IF PATENTEE HAS BROUGHT A PENDING INFRINGEMENT ACTION– FILING OF SUIT TERMINATES THE

SUPPLEMENTAL PROCEEDING

• CANNOT COMMENCE SUPPLEMENTAL EXAM IF A D.J. SUIT IS PENDING AND THE CHALLENGER HAS PLEADED INEQ. CONDUCT “WITH PARTICULARITY”

2011 15

6. DECEPTIVE INTENT

• “WITHOUT DECEPTIVE INTENTION” HAS BEEN REMOVED FROM THE STATUTE– CHANGE OF INVENTORSHIP (§§ 116, 256)– ERROR IN REISSUE (§ 251)– FILING A DISCLAIMER (§ 253)– SUING ON A PATENT CONTAINING AN

INVALID CLAIM (§ 288)– FOREIGN FILING WITHOUT A LICENSE (§§

184, 185)

2011 16

WHY?

• MAYBE: TOO MANY MENTAL STATES FOR A MODERN COMMERCIAL STATUTE

• MAYBE: HARMONIZATION ATTEMPT

2011 17

7. PUBLIC SUBMISSION OF PRIOR ART AND OTHER INFO

• WE HAVE LONG HAD 35 USC § 301: – ANY PERSON, AT ANY TIME, CAN SEND

IN PRIOR PATENTS OR PUBLICATIONS FOR CONSIDERATION RE. SOMEONE ELSE’S APPLICATION

– IF EXPLANATION IS GIVEN, WILL BE PLACED IN THE FILE

• AMENDED § 301 ADDS A WRINKLE THAT COULD BE IMPORTANT >>>

2011 18

• A PERSON CAN NOW SUBMIT CLAIM-SCOPE POSITION STATEMENTS PREVIOUSLY MADE BY PATENTEE– THESE CAN BE USED FOR PURPOSES OF

CONSTRUING A CLAIM IN• AN INTER PARTES REVIEW [LATE TYPE]• A POST-GRANT REVIEW [EARLY TYPE]• A REEXAM

• CAVEAT PATENTEE: BROAD CLAIM- SCOPE ASSERTIONS CAN BITE!

2011 19

AND WILL NOW BE ALLOWED TO ATTACK PENDING

APPLICATIONSH.R. 1249 §8, ADDING 35 U.S.C. §122(e)

• SUBMISSIONS OF PRIOR PATENTS AND PUBLICATIONS

• SOME TIME CONSTRAINTS:1. BEFORE NOTICE OF ALLOWANCE

2. OTHER LIMITS BASED ON APPL. PUBLICATION DATE OR CLAIM REJECTION

2011 20

• THE STATUTE SAYS THESE SUBMISSIONS ARE “FOR CONSIDERATION AND INCLUSION IN THE OFFICIAL RECORD”

• EXPLANATIONS ARE REQUIRED

• THEORETICALLY, THESE ARE NOT OPPOSITION PROCEEDINGS– PRE-GRANT OPPOSITIONS ARE STILL

PROHIBITED BY 35 U.S.C. §122(c)

2011 21

THINGS IN THE REFORM LEGISLATION THAT YOU

PROBABLY DO KNOW ABOUT

• ASSIGNEE FILING (FINALLY)

• POST-GRANT REVIEW:– MUST FILE WITHIN 9 MONTHS OF ISSUE– ANY GROUND OF INVALIDITY– 3-JUDGE DECISION– BROAD PRECLUSIVE EFFECT – ANY GROUND

THAT WAS “RAISED OR REASONABLY COULD HAVE BEEN RAISED”

2011 22

• INTER PARTES REVIEW:– CAN BE FILED ONLY AFTER 9 MONTHS

FROM GRANT– GROUNDS: PATENTS AND PRINTED

PUBLICATIONS ONLY– 3-JUDGE DECISION– BROAD PRECLUSIVE EFFECT RE. ITEMS

THAT WERE OR COULD HAVE BEEN RAISED (PATENTS AND PRINTED PUBLICATIONS)

2011 23

QUI TAM ACTIONS FOR MISMARKING ABOLISHED

• ONLY U.S. CAN SUE IN GENERAL

• A DAMAGED PRIVATE ENTITY CAN SUE FOR THE AMOUNT OF HARM CAUSED

• BUT NO ONE CAN SUE FOR MISMARKING WITH AN EXPIRED PATENT NUMBER

2011 24

TAX STRATEGY PATENTS ABOLISHED

• “DEEMED TO BE WITHIN THE PRIOR ART” [BILL § 14]

• WHY NOT AMEND § 101?

• REJECTIONS WILL NOW BE UNDER §102?

2011 25

TWO MINDS NEEDED!

• FOR THE NEXT 15 YEARS OR SO, WE WILL BE LITIGATING OLD PATENTS UNDER THE OLD STATUTE– FOR THOSE CASES, PRIOR ART IS

UNDER THE OLD RULES, WITH ONE-YEAR CLOCKS, ON-SALE AND PUBLIC-USE BARS THAT WORK ONLY IN THE U.S.

– FOR THOSE CASES, INVENTION DATE COULD BE IMPORTANT