What Businesses & Engineers Need to Know About Recent Changes in U.S. Patent Law

What Businesses & Engineers Need to
Know About Recent Changes in U.S. November 8, 2012

Patent Law ASME OC Section, SABPA

The recipient may only view this work. No other right or license is granted.

Overview
• Protecting Your Rights
– Agnes Juang, Partner in Irvine office
• Ph.D. Chemistry, Caltech
• J.D., UC Davis
• Prosecution Strategies
– Terry Tullis, Associate in Irvine office
• B.S., M.S. Mechanical Engineering, Stanford
• J.D., UCLA; M.B.A., UC Berkeley
• Defending Yourself Against Third Party Patents
– Sabing Lee, Partner in Irvine office
• B.S., M.S., Materials Engineering, UCLA
• J.D., UC Berkeley

© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2

America Invents Act (AIA)
• Signed into law September 16, 2011
• Changes previously in effect
– Prioritized examination
– Elimination of best mode defense
– Virtual marking
• Changes implemented September 16, 2012
– Third-party submissions
– Inter partes review
– Supplemental examination
• Changes coming March 16, 2013 and later
– First-inventor-to-file
– Post-grant review
– Derivation proceedings
– Micro-entity status


1. Protecting Your Rights


AIA Rewards Early Filing

A Invents A Files

B Invents B Files
Independently

• Pre-AIA: First to Invent – A can earn right to patent by
demonstrating prior invention date
• AIA: First Inventor to File – B has the right to patent
• Effective: March 16, 2013
KEY POINT
File early! Utilize provisional application(s).


AIA Expands the Field of Prior Art

Prior Art
• Patented, described in a printed publication, or in public
use, on sale, or otherwise available to the public
• Before the effective filing date

Effective: apply to patents with effective filing dates on or
after March 16, 2013


Prior Art (Example 1)

A Invents A Files
Less than 1 year

B Invents B presents at
Independently trade show in
the U.S.

• Pre-AIA: B’s U.S. trade show disclosure is not prior art.
• AIA: B’s trade show disclosure is prior art.
KEY POINT
Any public disclosure or publication by a 3 rd party inventor is prior art.


Prior Art (Example 2)

A Invents A Files
Less than 1 year

B Invents B presents at
Europe

• Pre-AIA: B’s foreign trade show disclosure is not prior art.
• AIA: B’s trade show disclosure is prior art.
KEY POINT
No distinction between U.S. and foreign disclosures under AIA.


AIA Allows Limited Pre-filing Disclosure

One-Year Grace Period
• For first disclosure by
– inventor
– joint inventor
– another who obtained the subject matter disclosed from
the inventor or joint inventor

• Effective: apply to patents with effective filing dates on or
after March 16, 2013


Pre-filing Disclosure (Example 1)

A Invents A Files
Less than 1 year

B Invents A presents at B presents at
Independently trade show in trade show in
Europe Europe

• Pre-AIA: A and B’s disclosures are not prior art.
• AIA: A and B’s disclosures are not prior art.
KEY POINT

First disclosure by inventor creates a 1-year grace period for U.S. Filing.
Disclosure by others (B) within the 1-year grace period is NOT prior art.


Pre-filing Disclosure (Example 2)

A Invents A Files

Less than 1
B Invents B presents at year
B Files
Europe

• Pre-AIA: B’s disclosure is not prior art to A.
• AIA: B’s disclosure is prior art to A but is not prior art to B, and
A’s patent application is not prior art to B.
KEY POINT
Early disclosure may be beneficial if filing in the U.S. only.


AIA Encourages Collaboration

AIA makes it easier to patent related inventions that are:
1. commonly owned
or
2. made under a joint research agreement


Common Ownership
A & B assigns
rights to all
patent A Invents A Files
applications to C

B Invents B Files B’s Application
Publishes

• Pre-AIA: B’s application is not prior art for an obviousness rejection.
• AIA: B’s application is not prior art for obviousness or anticipation
rejection.
KEY POINT
Have employees sign employment agreement with an obligation to assign all
patent rights to company.


Joint Research

A & B executes
joint research A Invents A Files
agreement

B Invents B Files B’s Application
Publishes

• Pre-AIA: B’s application is not prior art for an obviousness rejection.
• AIA: B’s application is not prior art for obviousness or anticipation
rejection.
KEY POINT
Execute joint research agreements and disclose the names of the parties to the
join research agreement in the application.


Common Ownership Under AIA

A Invents A Files

B Files
B Invents B Assigns B’s Application
Application to A Publishes

• Pre-assignment: B’s application is prior art.
• Assignment prior to A files: B’s application is not prior art for
anticipation or obviousness rejection.

KEY POINT
Prior art effect of an earlier filed unpublished application (B) may be avoided by
creating common ownership prior to filing a later application (A).


Derivation Proceedings

A Invents A Files

B takes from A B Files

• AIA still protects true inventors
– the earlier application was derived from the actual inventor,
and
– was filed without inventor’s authorization
• Keep your lab notebooks!
• Keep records of any confidential disclosure.


Take Home Points – Protect Your Rights
• Consider filing applications prior to March 16, 2013
– File complete provisional applications
– Disclosures made on or after 3/16/2012 are relevant
• Consider risks associated with first-to-disclose strategy
– Disclosure prior to filing can destroy foreign patent rights
• Best option to preserve priority after March 16, 2013 may be to
file provisional(s)
– File frequently to cover improvements
• Don’t throw away lab notebooks
• Keep careful records of pre-filing public and
confidential disclosures
• Use employment agreements, assignments, and
joint research agreements


2. Prosecution Strategies


“Standard” Patent Prosecution

• Utility application
– PTO Filing Fees ~$1,500 plus fees for size, extra claims, etc.
– Timing: Examination starts after ~1 – 3 year wait
– Average 2-3 (or more) office actions over 1-3 more years

• Small Entity Status
– 50% discount if owner is (and has no obligation outside) a:
• Person/individual
• Small business (< 500 employees, affiliates)
• Non-profit organization
– Established at filing, update at issue fee, maintenance fees


75%
Micro-Entity Status off

• March 2013
• On-going Qualification:
1) Micro-entity status via:
• Qualifies as Small entity; and
• Not named on more than 4 previously filed US non-
provisional applications; and
• Gross income in previous calendar year < 3 times median
household income; and
• No obligation under contract or law to convey or license to
an entity that would not meet the gross income
requirement.
-OR-
2) Certify an employee of, or assigned/licensed to, an institution
of higher learning.


Prioritized Exam – Track I
• Prioritized Exam (since September 2011)
– 12 months to final action or allowance
– Petition + $4,800 fee + $430 fee
– All application formalities at time of filing
– No design, reissue or provisional applications
– Maximum 30 claims with 4 independent
– 3 month office action response period

• Maximum 10,000 Track I applications per fiscal year
• 855 filed 2011 after Sept. 26, 2011
• 5,036 filed in 2012
• Early stats show that over half of all patent applications
filed under Track I were allowed within ~ 1 year


Best Mode Requirement – Is it Dead?
• Courts: Elimination of best mode defense
– Failure to disclose best mode does not make a patent invalid
or unenforceable
• Patent Office
– However, disclosure of best mode is still required under 35
U.S.C. 112, 1st paragraph for patentability

Your Invention


Virtual Marking
• Example:
Patent
http://www.symantec.com/about/profile/policies/virtual_pat
ent_marking.jsp


Supplemental Examination

• Owner can request PTO reconsider/correct relevant information
– PTO only: No third party involvement
– PTO fees: $18,000 ($9,000 small, $4,500 micro entity)
– Ex parte reexamination if raises a substantial new question of
patentability
• Otherwise ~60% refund

• Result: Patent cannot be held unenforceable on information
considered, subject to certain exceptions


When to Consider Supplemental Exam
• Enforcement
– If planning to enforce the patent, consider filing
supplemental examination with sufficient time to complete
any ex parte reexamination before filing suit
• Declaratory Judgment (DJ) Actions
– If aware of possible DJ against patent, consider filing
supplemental examination before DJ is filed
• ANDA Litigation
– If patent will be listed in Orange Book, consider filing
supplemental examination as part of due diligence, or at a
minimum, prior to receiving notice


Take Home Points on Prosecution Strategies
• Confirm whether you qualify for reduced fees
• Speed and value through prioritized examination
• Talk to your patent attorney about Best Mode
• Consider Virtual Marking
• Consider Supplemental Examination on your issued patents to
address prior art


3. Defending Yourself Against Third
Party Patents


The Importance of Searching/Monitoring
• Patents only provide a right to exclude,
not a right to practice
• Searching is not required, but helps:
– Identify key competitors
– Assess patentability
– Identify patents you might infringe
– Identify publications that, if issued,
you might infringe
– Develop design arounds


Types of Searches
• Do-it-yourself (patft.uspto.gov, google.com/patents, Delphion,
trade journals, medical databases)
• Professional searching (former Examiners)
• Industry searching for marked products


What Do You Do If You Find A Problem Patent?

Your Invention

• Typical options
– Design-around
– Opinion of counsel
(noninfringement, invalidity)
– License
– Drop the project
– Challenge the patent (litigation or PTO)

• AIA provides new opportunities to challenge patents you might
infringe

How Do You Challenge A Publication?

• Review the current claims and
status of examination
(portal.uspto.gov)
• If current claims are of concern,
determine if there is any prior
art that you believe the
Examiner would consider
relevant
• For a $180 fee, you can submit
up to 10 prior art references
(patents, patent publications or
other printed publications)
• Must be accompanied by
concise description of asserted
relevance of each submitted
document


Use Caution When Challenging A Publication
• Can’t challenge if application has been allowed
• Can’t challenge if it’s more than 6 months after publication and any
claim has already been rejected

• Risk = patent examiner considers submitted prior art and allows
broad claims anyway
• Discuss with your patent attorney the pros and cons of holding back
“best” prior art for potential post-grant challenges

How Do You Challenge An Issued Patent?

Before AIA
• Ex Parte Reexam
• Inter Partes Reexam
• Interferences
After AIA
• Ex Parte Reexam
• Post-Grant Review (PGR)
• Inter Partes Review (IPR)
• Derivation Proceedings
• Interferences (Legacy)
• Transitional Program for
Covered Business Method
(CBM) Patents

Summary of Potential Third-Party Involvement

Filing Issue 9 mo.

Post-grant review (PGR)
($$$)
Inter partes review (IPR)
($$$)

Derivation action/proceeding
($$$)

Pre-issuance
Ex parte reexamination
Submission
($$)
($)


Post-Grant Review or Inter Partes Review
Post-Grant Review Inter Partes Review
Effective 3/16/2013 9/16/2012
Targets Priority on/after 3/16/2013 Any
Fees $35,800 + $800 for each $27,200 + $600 for each claim
claim > 20 > 20
Basis Any basis used in litigation Only patents and printed
(prior art, 101, 112) publications
Threshold “More likely than not at “Reasonable likelihood”
least one claim is petitioner will prevail on at least
unpatentable” one claim
When Within 9 months of grant + After 9 months from grant or end
before civil action filed of post-grant review or within 12
months of civil action
Discovery Yes Yes
Estoppel Yes Yes

Trial Proceedings Timeline
PO Petitioner PO
discovery discovery discovery
period period period

Petitioner
PO
reply
response
PO to PO’s
to decision PO Oral Written
Petition prelim. Decision response
reply hearing decision
response
motion
opp’n to
to amend
motion

3 mo. ≤ 3 mo. 3 mo. 3 mo. 1 mo.

Trial begins ≤ 1 year

Take Home Points On Third Party Patents
• Consider Post-Grant Review and Inter Partes Review as less
expensive alternatives to litigation
• Monitor competitors’ pending applications and consider
submission of prior art or post-grant procedures
• Assess risk of potential post-grant procedures against your own
patents by third parties
– Set aside budget
– Keep continuation pending
– File many/quality dependent claims


Action Item List
 Consider filing applications  Keep post-grant challenges in
(especially non-provisional mind when preparing patent
applications) before March 16, applications.
2013  Keep continuations pending and
 Consider prioritized examination consider setting aside funds for
 Consider whether micro-entity defending.
status applies  Consider supplemental exam for
 Evaluate current invention strengthening patents
harvesting procedures for speed  Obtain assignments of
and efficiency provisional applications before
 Consider filing more/faster filing
provisional applications  Continue documenting
 Implement patent/publication inventions and developments
monitors for possible prior art  Consider implementing virtual
submissions and post-grant marking program
action
 Consider using new procedures
to challenge pending
applications and issued patents

Overall Take Home Points
• Maintain accurate and dated records of invention

• Use agreements with consultants, contractors, and employees

• File applications before public disclosure

• Understand patent landscape and analyze risk early

• Monitor IP and product development trajectories

• Consider all forms of IP protection

• Your IP attorney can help!


What Businesses & Engineers Need to Know About Recent Changes in U.S. Patent Law

Recommandé

Recommandé

Contenu connexe

Tendances

Tendances (20)

Plus de Knobbe Martens - Intellectual Property Law

Plus de Knobbe Martens - Intellectual Property Law (20)

Dernier

Dernier (20)

What Businesses & Engineers Need to Know About Recent Changes in U.S. Patent Law