Transcript Slide 1

PATENT REFORM
University of Rochester
KATHRYN DOYLE, Ph.D., J.D.
RIVERSIDE LAW, LLP
COMPONENTS AND DATES FOR
IMPLEMENTATION
First Inventor to File
Novelty
Non-obviousness
Inventor Oath or Declaration
Fees – 15% Surcharge
Electronic Filing Incentive
Fee Setting Authority
Best Mode
Derivation Proceedings
Prior Use Defense
Inter partes transition
threshold
March 16, 2013
(filed on/after)
March 16, 2013
(filed on/after)
March 16, 2013
(filed on/after)
September 26, 2012 (filed before/on/after)
September 26, 2011 (fees on/after)
November 15, 2011 (filed on/after)
As rulemaking is completed
September 16, 2011 (proceedings on/after)
March 16, 2013
(filed on/after)
September 16, 2011 (issued on/after)
September 16, 2011 (filed on/after)
COMPONENTS AND DATES FOR
IMPLEMENTATION
Post-Grant Review
Inter partes Review
Prioritized Examination
Genetic Testing Report
Human Organism Prohibition
Third party art submission
Supplemental Examination
Virtual and False Marking
Advice of Counsel
Joinder of Parties
September 16, 2012
September 16, 2012
September 26, 2011
June 16, 2012
September 16, 2011
September 16, 2012
September 16, 2012
September 16, 2011
September 16, 2012
September 16, 2011
(priority on/after)
(issued before/on/after)
(filed on/after)
(filed before/on/after)
(filed before/on/after)
(issued before/on/after)
(proceedings on/after)
(proceedings on/after)
(proceedings on/after)
FIRST INVENTOR TO FILE
Filed on/after March 16, 2013
FIRST TO FILE WINS THE PRIZE
NOT AS SIMPLE AS IT LOOKS
FIRST INVENTOR TO FILE
Effective Filing Date is:
Actual Filing Date
Earliest Priority Date to which the
application is entitled for each claim
WHICH LAW APPLIES?
Depends on the Effective Filing Date (EFD) of
each individual pending CLAIM
If the Effective Filing Date is BEFORE March
16, 2013, the Pre-AIA law applies
If the Effective Filing Date is ON/AFTER
March 16, 2013, the new AIA-law applies
CONDITIONS FOR PATENTABILITY
NOVELTY
35 U.S.C. § 102(a)
Cannot get a patent if
the invention was patented, described in a
publication, in public use, on sale, or otherwise
available to the public before the effective filing date
-oranother inventor filed first
NOVELTY
35 U.S.C. § 102(a)
Prior art is anything, anywhere that can be found with
reasonable diligence that is available before the
Effective Filing Date
What does “otherwise available to the public” mean?
AVAILABLE TO THE PUBLIC
“Whether an invention has been made available to
the public is the same inquiry that is undertaken
under existing law to determine whether a document
has become publicly accessible… A document is
publicly accessible if it has been disseminated or
otherwise made available to the extent that persons
interested and ordinarily skilled in the subject matter
or art, exercising reasonable diligence, can locate it
and recognize and comprehend therefrom the
essentials of the claimed invention without need of
further research or experimentation.”
157 Cong. Rec. S1335, 1370 (daily ed. Mar. 8,
2011)(statement of Sen. Jon Kyl, quoting Cordis
Corp. v. Boston Scientific Corp., 561 F.3 1319, 1333
(Fed Cir 2009)
NOVELTY - EXCEPTIONS
A disclosure was made one year or less before the
effective filing date, and
-the disclosure was made by the inventor, joint
inventor, or by someone who obtained the invention
directly or indirectly from the inventor or joint inventor
-or-
-the subject matter was disclosed by the inventor or
joint inventor or by someone who obtained the
invention directly or indirectly from the inventor or joint
inventor prior to the disclosure.
NOVELTY - EXCEPTIONS
Patents and patent applications are not prior art if:
The subject matter disclosed in them was obtained
from the inventor,
The inventor had disclosed the invention prior to the
Effective Filing Date of the prior art patent or patent
application,
The two are commonly owned, or were under an
obligation to be assigned to a common owner, not
later than the effective filing date.
NOVELTY - EXCEPTIONS
The public disclosure of an invention by the inventor
essentially saves that inventor’s place in line for the subject
matter disclosed, provided the inventor files his application
within one year of the disclosure and provided he files what
he disclosed. If he files more than what he disclosed, he
may lose the grace period
If another person files an application after the disclosure
above, and the inventor of the disclosure files his
application within one year, the inventor is given first to file
status, but within the above limits.
Put another way, prior publication by an inventor may, BUT
ONLY UNDER LIMITED CIRCUMSTANCES, preserve for
one year that inventor's priority for filing a patent
application.
NOVELTY - EXCEPTIONS
“(c) AGREEMENTS.—Subject matter disclosed and a claimed invention
shall be deemed to have been owned by the same person or subject to an
obligation of assignment to the same person in applying the provisions of
subsection (b)(2)(C) if—
“(1) the subject matter disclosed was developed and the claimed invention
was made by, or on behalf of, 1 or more parties to a joint research
agreement that was in effect on or before the effective filing date of the
claimed invention;
“(2) the claimed invention was made as a result of activities undertaken
within the scope of the joint research agreement; and
“(3) the application for patent for the claimed invention discloses or is
amended to disclose the names of the parties to the joint research
agreement.
JOINT RESEARCH AGREEMENT
35 U.S.C. §100(h)
The term ‘joint research agreement’ means a written contract, grant,
or cooperative agreement entered into by 2 or more persons or
entities for the performance of experimental, developmental, or
research work in the field of the claimed invention.
NOVELTY
Inventor
publicly
discloses
March 15
2012
X
Inventor files
application
March 15, 2013
claiming
X
Old Pre-AIA
Law Applies
NOVELTY
Inventor files
application April
2013
claiming
X, Y and XY
Inventor
publicly
discloses April
2012
X
Grace period only applies to X
New AIA law applies to X, Y, and
XY
NOVELTY
Inventor A
publicly
discloses
April 2013
X
Inventor B
publicly
discloses
October 2013
X’, Y
A will get X, and
XY, but only if
nonobvious over
X’ and Y
Inventor A
files
application
April 2014
claiming
X, Y and XY
Inventor B
files
application
October
2014
claiming
X’, Y
B will get Y, and will
only get X’ if
nonobvious over X
DIFFERENT EFFECTIVE FILING DATES
Non-provisional
filed April 2013
discloses
X, Y and XY
Provisional
application
filed April
2012
discloses
X
Old pre-AIA law applies to
X
New AIA law applies to Y
and XY
APPLICATION OF EFFECTIVE FILING DATE
Whether an application is treated under the new AIA law (FITF)
or the pre-AIA law (FTI) is based on the Effective Filing Date of
the application
But,
The New AIA laws apply to any application that contains, or
contained at any time, claims to an invention with an effective
filing date after March 16, 2013
And, once you cross over into new AIA law status, you can never
go back
CONDITIONS FOR PATENTABILITY
OBVIOUSNESS
The criteria for obviousness remain essentially
the same except that the holding in KSR has
been incorporated into the Statute.
NON-OBVIOUSNESS
§ 103. Conditions for patentability; non-obvious subject matter
‘‘A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not identically
disclosed as set forth in section 102, 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.
Patentability shall not be negated by the manner in which the
invention was made.’’
HARSH REALITY
If a prior publication only discloses some “portion” of the later filed
invention,
For example, mouse data are disclosed in a manuscript,
but the claims in the eventually filed application are to
human therapy,
The Effective Filing Date for claims to human therapy will likely be the
date of filing, the grace period will not apply as to the publication of the
mouse data, and the invention to the human therapy may be held
obvious over the mouse disclosure
All provisional applications should now include a broader disclosure
and claims so that the invention is more clearly defined
HARSH REALITY
Best to NOT rely on the grace period
After March 16, 2013, if you need to rely on the grace period,
you may be required to file a declaration to establish that you are
entitled to it.
“Specifically, the inventor or joint inventor must establish the date
and content of their earlier public disclosure. If the earlier disclosure
was a printed publication, the affidavit or declaration must be
accompanied by a copy of the printed publication.”
“ If the earlier disclosure was not a printed publication, the affidavit
or declaration must describe the earlier disclosure with sufficient
detail and particularity to determine that the earlier disclosure is a
public disclosure of the subject matter.”
RECOMMENDATIONS
To maximize protection now
Any provisionals filed ON/AFTER March 16, 2012,
should try to convert BEFORE March 16, 2013
If any Inventor has published patentable subject matter
between March 16, 2012 and now, should try to file a
provisional covering the subject matter of the publication
BEFORE March 16, 2013
If have invention disclosure now, file before March 16,
2013
RECOMENDATIONS
Do not rely on grace period
For transitional applications, keep a claim chart that
tracks claims falling under old and new law
File complete provisionals going forward to establish a
solid Effective Filing Date for all of the claims
All provisional applications should now include a
broader disclosure and claims so that an Effective Filing
Date for the claims is established as early as possible
INVENTOR OATH OR DECLARATION
Filed before/on/after September 26, 2012
The normal oath or declaration is largely
unchanged
But, it is now easier to step into the shoes of the
inventor, should the inventor be unable or unwilling
to execute the oath
Assignee can be a non-inventor applicant, provided
the inventor was or is under an obligation to assign
the invention
INVENTOR OATH OR DECLARATION
Only one inventor needs to be named at the time of
filing
Need to name all in the oath or declaration that
must be filed by the time the issue fee is paid
But, if you do not name all inventors by the time the
examiner is examining – run the risk of having art
cited that may not apply, i.e., if the art is the
inventor’s own work
BEST MODE
Proceedings on/after September 16, 2012
The inventor must disclose the best mode at the time of
filing the application.
But, failure to disclose the best mode will no longer be
grounds to invalidate the issued patent.
So, it is a patentability issue, and not clear if any Examiner
will ever be able to tell if the best mode was not satisfied.
Can be challenged during post-grant review?
PRIORITIZED EXAMINATION
Filed on/after September 16, 2011
Set up for technologies that are important to the national economy
and national competitiveness.
Applications filed with a Request for Prioritized Examination are
targeted to reach final disposition within twelve months of filing.
A Request for Prioritized Examination may be submitted with any
original utility or plant application filed on or after September 26,
2011.
The Request must be filed with the new application along with a
Request fee of $4800 ($2400 for small entities, $1200 for micro
entities).
PRIORITIZED EXAMINATION
New applications and continuations and divisionals, continuations
of PCT, and RCE’s qualify.
Reissue and reexam and design applications are excluded.
If regular application pending and no office action has issued, can
convert to “prioritized examination status”
Prioritized Examination no longer requires a pre-examination
search and does not require an accelerated examination support
document.
The law limits the number of applications filed with a Request for
Prioritized Examination to 10,000 applications during any fiscal
year.
PRIORITIZED EXAMINATION
Application must be filed with
Executed Oath or Declaration
Specification and formal drawings
Electronic submission of sequence listing, large tables or
computer listings
Completed Application Data Sheet
No more than 30 total claims and 4 independent claims
No multiple dependent claims
all applicable fees
In your best interest to include the Information Disclosure
Statement at the time of filing
PRIORITIZED EXAMINATION
USPTO to reach final disposition within twelve months
Notice of Allowance
Final Office Action
If Applicant requests an extension of time, or if files a noncompliant amendment, application will revert to regular status
PRIORITIZED EXAMINATION
Why do this?
Commercially viable compound – issued patent in US, use
Prosecution Highway to get granted claims in foreign countries
Allow you to establish patentability of subject matter for investment,
partnering purposes
Allow you to more quickly enforce claims against an infringer
Get quick read on patentability – if not patentable, file petition for
non-publication and maintain technology and trade secret
THIRD PARTY ART SUBMISSION
Filed before/on/after September 16, 2012
Any third party may submit for consideration and inclusion in the
record of a patent application, any patent, published patent
application, or other printed publication of potential relevance to the
examination of the application, if such submission is made in writing
before the earlier of—
(A) the date a notice of allowance; or
(B) the later of—
(i) 6 months after the date on which the application for
patent is first published, or
(ii) the date of the first rejection of any claim by the
examiner.
Effective Date: Any app filed before, on, or after 16 September 2012
THIRD PARTY ART SUBMISSION
The submission must include:
A statement that sets forth a concise description of the
asserted relevance of each submitted document
- can be a narrative description, or a claim chart
a fee,
a statement by the person making such submission affirming
that the submission was made in compliance with this section.
THIRD PARTY ART SUBMISSION
Concise Statement must include:
A separate page for each document submitted
Lay out the facts that explain how the document is potentially
relevant to the examination
A narrative or a claim chart format is acceptable – claim chart
likely preferable
Must be more than a simple statement that it is relevant
Be specific as to page numbers, paragraphs, etc.
Cannot propose rejections, leave out language like anticipation,
obviousness, references to 35 U.S.C. sections
THIRD PARTY ART SUBMISSION
If filed anonymously, must be filed by a registered attorney or
agent
Otherwise, must name the party making the filing
No need to serve the Patent Owner
DERIVATION PROCEEDINGS
Filed on/after March 16, 2013
An applicant for patent may petition to institute a derivation
proceeding to determine whether an inventor named in an earlier
filed application derived the claimed invention from an inventor
of petitioner’s application, and, without authorization, the earlier
application claiming the invention was filed.
A petition to institute Derivation Proceedings may be filed within
one year of the publication of a claim to an invention that is the
same or substantially the same as the earlier applicant’s claim.
The Director decides if the standard for instituting Derivation
Proceedings has been met.
The decision is not appealable.
SUPPLEMENTAL EXAMINATION
Issued before/on/after September 16, 2012
A patent owner may request supplemental examination of a patent to consider,
reconsider, or correct information believed to be relevant to the patent.
If a substantial new question of patentability is found, the Director shall order
reexamination of the patent.
A patent shall not be held unenforceable on the basis of conduct relating to
information that had not been considered, was inadequately considered, or was
incorrect in a prior examination of the patent, if the information was considered,
reconsidered, or corrected during a supplemental examination of the patent.
If the Director becomes aware, during the course of a supplemental examination
proceeding, that a material fraud on the Office may have been committed in
connection with the patent that is the subject of the supplemental examination, then in
addition to any other actions the Director is authorized to take, including the
cancellation of any claims found to be invalid, the Director shall also refer the matter
to the Attorney General for such further action as the Attorney General may deem
appropriate.
SUPPLEMENTAL EXAMINATION
Only available to the Patent Owner and all co-owners must participate
Does not apply to exclusive licensee
No limit to the number of requests that can be filed
Patent Office to render decision within three months of filing if an ex parte
reexamination will commence
If Patent Office determines the submission raises a “substantial new
question of patentability” an ex parte reexamination of the patent will
commence
Different from traditional ex parte reexamination
Patent Owner cannot file a statement
No amendments to claims until first office action
Documents other than publications can be submitted, e.g., public
use, sale
SUPPLEMENTAL EXAMINATION
The Request Must:
Establish ownership and therefore the right to file the Supplemental
Examination
Identify the patent and each claim for that is to be reviewed
Provide a list of the information items (written Items but not limited to patents
and publications);
Provide a separate, detailed explanation of relevance and how to apply each
item to each identified claim
– a separate explanation of each item as applied to each claim limitation of
each claim at issue
– cite the relevant sections of the Item with reference to the relevant claim
limitation
Identify any other post-issuance proceedings
POST-GRANT REVIEW
Priority on or after September 16, 2012
A third party to challenge the validity of a patent.
Must be filed within nine months from the date the patent is granted.
Third party must be named, cannot be anonymous.
A petition is filed by the third party.
The patent owner has an opportunity to respond.
The petition is decided by the Director.
The Director’s decision is not appealable.
The threshold is that it is “more likely than not” that at least one of the
challenged claims of the patent is unpatentable.
Or, the petition may be granted if it raises a “novel or unsettled legal
question that is important to other patents or patent applications.”
POST-GRANT REVIEW
The final decision is appealable to the Federal Circuit.
The proceedings will bar the petitioner from raising the same
invalidity arguments in a subsequent civil action.
Third parties are forced to choose between challenging validity
in post-grant review proceedings or in court.
INTER PARTES REVIEW
Issued before/on/after September 16, 2012
Third party challenge to the validity of a patent.
Patent can only be challenged on prior art grounds using patents or
printed publications.
Cannot be filed until after nine months from the issuance of a patent
-or- after a post-grant review is terminated, if one was instituted.
Patent owner can file a preliminary response.
“Reasonable likelihood that petitioner would prevail with respect to
at least one claim.”
Director decides.
The decision is not appealable.
KATHRYN DOYLE, Ph.D., J.D.
RIVERSIDE LAW
300 Four Falls Corporate Center, Suite 710
300 Conshohocken State Road
West Conshohocken, PA 19428
215-268-3888
www.riversidelaw.com