Embed Size (px)
Citation preview
The Patent System & Innovation—18 Months After the
America Invents Act
InsideCounsel Super Conference Chicago, IL
David J. Kappos May 7, 2013
© 2013. Cravath, Swaine & Moore LLP. All rights reserved.
Key Provisions of the AIA
• First-to-File • Satellite Office Program • 3rd Party Submissions of Prior Art • Priority Examination — Track One • Supplemental Examination • Post-Grant and Inter Partes Review Procedures • Covered Business Method Patent Challenges • USPTO Fee-Setting Authority
2
Global Impacts of AIA
• AIA adopts international norms related to: • First-to-file • Prior user rights • Broadening the definition of prior art • Eliminating the Hilmer doctrine • Virtually eliminating the best mode requirement
• US Patent Reform: • Facilitates worksharing with international patent offices • Provides renewed opportunities to harmonize the
international patent system
3
AIA Implementation Timeline
Reexamination transition for threshold
Tax strategies are deemed within prior art
Best mode
Human organism prohibition
OED statute of limitations
Day of Enactment Sept 16, 2011
Prioritized Examination
15% transition Surcharge
10 Days Sept 26, 2011
Reserve Fund
Electronic filing incentive
Inventor’s oath/declaration Preissuance submission Supplemental examination Citation of prior art in a patent file Inter partes review Post-grant review Transitional post-grant review program for covered business method patents
First inventor to file Derivation proceedings Repeal of statutory invention registration New patent fees Micro entity discount
Oct 1, 2011 60 Days Nov 15, 2011
12 Months Sept 16, 2012
18 Months Mar 16, 2013
Provisions previously implemented
4
Satellite Office Program
5
5
historic expansion regional job growth innovation ecosystem concepts of operation
Rush to File Before First-to-File Change
• Patent applications received by USPTO over last 12 months leading up to first-to-file change
• First-to-file went into effect on March 16, 2013 • Spike in September 2012 corresponds to other AIA
rules taking effect
6
Improving Patent Quality and Timeliness (Historical)
7
Patent Average First Action Pendency
Patent Average Total Pendency
Improving Patent Quality and Timeliness (Prospective Post-AIA)
8
Growth of Preissuance Submissions By 3rd Parties
9
Ask Patents — Powered by StackExchange
10
Prioritized Examination — Track One Requests and Processing
Total Request data current through December 20, 2012
11
Current pendency time (in months)
through March 2013
Growth of Supplemental Examinations
12
New Procedures to Challenge Patents
13
• Inter Partes Review (IPR) • Post Grant Review (PGR) • Covered Business Method Challenge (CBM)
Growth of Inter Partes Review Filings
14
Covered Business Method Challenges
15
Covered Business Method Challenges
16
Resolving First Inventor Disputes Under First-to-File System
• Derivation Proceeding • Became effective on March 16, 2013 • Aimed at resolving disputes between two applicants
with respect to who the real inventor is • Must be filed within one year of the first publication
of the invention by the earlier applicant • Proceeding conducted before the PTAB
17
Helping Small Innovators
• “Micro entity” discount • 75% discount on fees for “filing, searching, examining,
issuing, appealing, and maintaining” patent applications/patents
• Patents Ombudsman and Program for Small
Business Concerns
18
Impact of Revised Fee Settings — Comparing Historical Cost to New Costs
19
From Filing through Issue
Pre-AIA Fees (Large Entity)
New Fees (Large Entity)
New Fees (Small Entity)
New Fees (Micro Entity)
Average Historical Cost
USPTO Committed to Social Enterprises and Outreach
20 20
http:// patentsforhumanity. challenge.gov/
IP Pro Bono Program IP Awareness Assessment Tool
