America Invents Act Overview

Presented to Stanford Biosciences by Scott Smith and Robb Roby November 15, 2011

America Invents Act

Signed into law on September 16, 2011 Three main implementation dates:

Major revisions that impact all areas of patent practice

Over 50 pages of text Much uncertainty results Regulations will be forthcoming Not covering every aspect

September 16, 2011

September 16, 2012 March 16, 2013

Prepare methodically for change

Some changes in effect already Recommendations will be developing

2011 Knobbe Martens Olson & Bear LLP

9/2011 Prosecution-Focused Provisions

Patentable subject matter No tax strategies Inter partes reexam threshold Reasonable likelihood that requester would prevail with respect to 1 claim Prioritized examination $4800 fee for request Any new, non-national phase application Must be complete at filing Must be less than 10,000 per year until regulations

No human organisms
Virtual marking Mark using website Micro-entity status 75% fee reduction Small entity with less than 4 unassigned previously filed US nonprovisional patent applications with a revenue in previous calendar year less than 3 times median household income

Employee of or assigned to institution of higher learning

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Accelerated Exam v. Prioritize Exam

Accelerated Examination Petition + $130 fee + search and support documentation Maximum 20 claims with 3 independent 1 month OA response period and abandonment if not met Average pendency: 186 days No plant applications No limit to number Prioritized Examination Petition + $4,800 fee + $130 fee + all application formalities at time of filling Maximum 30 claims with 4 independent claims 3 month OA response period and kicked back to regular docket if not met Expected pendency: 12 months Plant applications eligible No designs, reissue or provisional applications 10,000 applications per fiscal year (852 filed last fiscal year, 403 so far this fiscal year)

2011 Knobbe Martens Olson & Bear LLP

9/2011 Litigation-Focused Provisions

False marking lawsuits Plaintiff must suffer competitive injury Marking with expired patent no longer basis Applies to all lawsuits pending or filed on or after September 16, 2011 Joinder/Consolidation Fed. Cir. has exclusive jurisdiction over compulsory counterclaims No invalidation based upon failure to disclose best mode

Prior user rights

Personal to accused infringer Not just business methods Defense to infringement based on earlier commercial use Must be >1 year from effective filing date or patentees disclosure date Any patent issuing after September 16, 2011

Need more than common infringed patent for joinder

2011 Knobbe Martens Olson & Bear LLP

11/2011 Prosecution-Focused Provisions

Electronic Filing Incentive

$400 for each utility application not filed electronically

Very limited implications

Most already file electronically

Does not apply to designs, plants, or provisionals

2011 Knobbe Martens Olson & Bear LLP

9/16/2012 Prosecution-Focused Provisions

Third Party Interaction Preissuance submissions Citation of prior art in a patent Inter partes review Post-grant review

Transitional business method specialized post-grant review

Supplemental examination Substitute for inventors declaration Priority examination for important technologies Small business patent ombudsman program
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Preissuance Submissions
What can be submitted? Submission re: relevance of patent application, patent, published application, or printed publication When? Before notice of allowance or later of: (1) six months after application publishes or (2) date of first rejection mailed Retroactive Applies to any application filed before, on or after the effective date
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Implications? Decide whether to file preissuance submission or request post grant review

Citation of Prior Art in a Patent

Any prior art patents or printed publications bearing on patentability of a claim Written statements of the PO filed in a proceeding before a Federal court or the PTO in which PO took a position on claim scope Include any other documents, pleadings or evidence from the proceeding that addresses the written statement Becomes a part of the official file

Only used to determine scope of claim in IPX, IPR, or PGR

Can be submitted confidentially Applies to all patents

2011 Knobbe Martens Olson & Bear LLP

Inter Partes Review

Overview Applies to all patents Number may be limited in first 4 years Conducted before APJ One year pendency Discovery - depositions Based upon patents or printed publications Threshold: reasonable likelihood of petitioner prevailing on 1 claim Can be settled by parties Any party can appeal/oral hearing
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Timing for filing Later of 9 months from grant or termination of PGR Estoppel provisions Against petitioner - any ground raised or reasonably could have been raised Against patentee as soon as written decision Bar provisions Per lawsuit first = barred Per lawsuit second = stay Stay lifted by infringement suit or motion by PO PO lawsuit > 1 yr = barred
2011 Knobbe Martens Olson & Bear LLP

Post Grant Review

Overview Applies to all patents with effective date after March 16, 2013 and business methods on Sept. 16, 2012 Number may be limited in first 4 years Conducted before APJ One year pendency Timing for filing Within 9 months of patent grant

Original claim confirmed by reissue cannot be cancelled through PGR

Estoppel provisions Against petitioner - any ground raised or reasonably could have been raised Against patentee as soon as written decision Bar provisions Per lawsuit first = barred Per lawsuit second = stay

Discovery
Based upon any ground Threshold: more likely than not that 1 of the claims is unpatentable OR novel or unsettled legal question Can be settled by parties Any party can appeal/oral hearing Infringement suit filed within 3 months of grant bars stay of decision on PI based on PGR
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Stay lifted by infringement suit or motion by PO

PO lawsuit > 1 yr = barred

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Supplemental Examination
PO can file to consider, reconsider or correct information relevant to the patent PTO will decide if information raises a substantial new question of patentability Result can be reexamination Patent cannot be held unenforceable on information that has been considered Does not apply to prior allegations SE and reexam must be concluded before ITC action for effect in ITC action Request for SE cannot be used against enforceability of patent

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Last Changes to Come Into Effect

Effective 3/16/2013 First-Inventor-to-File Derivation proceedings Repeal of Statutory Invention Registration

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First Inventor to File

Compromise between true first to file and true first to invent Personal grace period Still 12 months Disclosures of inventors and those who have obtained disclosed subject matter from inventors. Independently developed disclosures not covered Change to 103 analysis: before the effective filing date File sooner rather than later Not a true race to PTO

Will apply to any patent/application that contains a claim with an effective filing date on or after March 16, 2013
Keep strings apart Changes to 102 prior art All public uses or sales (not US specific anymore) Cannot swear behind prior art of a 3rd party

Foreign priority in US patent or publication is effective date for prior art (In re Hilmer is gone)
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No change if filing in EPO

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Simple First Inventor to File Example

A Invents X A Files on X

B Invents X

B Files on X

Despite A inventing X before B, Bs earlier filed application is prior art to A. A no longer can antedate the prior art application to B.

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Grace Period Explained

Not prior art to patent application if: Information was obtained from inventor Publicly disclosed by inventor before prior art date; or Commonly assigned/obligation of assignment/joint development agreement

Grace period:
Inventor first to publicly disclose Within one year of filing date May need to identify disclosure prior to examination

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Simple Grace Period Example

A Publicly Discloses X

Less than 1 year

A Files on X

B Publicly Discloses X

B Files on X

Neither As disclosure nor Bs disclosure is prior art to As application. As disclosure is prior art to Bs application. A is entitled to the patent.

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Derivation Proceedings
Eventually will replace interference proceedings Time limit for DP Civil action before the end of 1 year after the issuance of the derived patent

Interference practice remains for first-to-invent patents and applications and continuations, divisions, national phase applications with priority claims thereto
Required to show earlier-filed application was derived from actual inventor and was filed without inventors authorization

Need to monitor

PTO before 1 year after the first publication of the claim

Need to monitor

Documenting inventing and disclosures to others remains important

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Summary of Changes
Immediate/Imminent/Short 9/16/2011-11/15/2011 Mid 9/16/2012 Long 3/16/2013

-No tax strategies -No human organisms -Virtual marking -Prioritized examination -Micro-Entity -Inter partes reexam threshold -False marking* -Joinder/consolidation -No Best Mode defense -Prior user rights expansion -15% surcharge -Electronic filing incentive
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-3rd party submissions* -Citation of written statements* -Inter partes review* -Post-grant review* -Transitional business method postgrant review* -Supplemental examinations* -Substitute for declarations -Priority exam for important technologies -Small business patent ombudsman

-First to file/publish -Derivation proceedings -No Statutory Invention Registrations

*applies retroactively
2011 Knobbe Martens Olson & Bear LLP

To-Do List
Consider impact of best mode change on application drafting Consider prioritized examination 9/26/2011 Consider implementation of virtual marking program 9/26/2011 Consider whether micro-entity status applies 9/26/2011 Use electronic filing whenever practical 11/15/2011 Evaluate current invention harvesting procedures for speed and efficiency 3/16/2013

Evaluate current employment agreements and consulting agreements for obligations to assign 3/16/2013
Continue obtaining assignments of provisional applications before filing 3/16/2013 Continue documenting inventions and developments Implementation of other strategies to be determined

Implement patent/publication monitors for possible prior art submissions and post-grant action 9/16/2012

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Thank you
This presentation is based on an initial reading of H.R. 1249 as enacted on September 16, 2011. There are many ambiguities in the literal language of the provisions. In addition, future case law may affect interpretations of the new patent law. This presentation is provided for general information only, and should not be considered to guarantee any particular result or outcome. www.kmob.com