Transcript Slide 1

Practical Implications of the
Leahy-Smith America Invents Act
Prosecution Aspects
ALAN J. KASPER
AIPLA AIPPI/Italy
Milan, Italy
February 10, 2012
Patent Reform 2011
OVERVIEW
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© AIPLA 2012
Snapshot of Patent Reform History
• Activity In 2011 • Senate Passes Legislation (S 23)
• March 8, 2011
• House Passes Legislation (HR 1249)
• June 23, 2011
• Similar but NOT Identical Legislation
• Senate Accepts House Text
• September 8, 2011
• President Signs
• September 16, 2011
• Effective Dates
• Provisions become effective on various dates
• Immediate or delayed - according to specific provisions
• Generally 1 year from signing (September 16, 2012)
© AIPLA 2012
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• FITF – 18 months from signing (March 16, 2013)
WHAT IS THE IMPACT OF THE AIA?
SCOPE OF PATENT PROTECTION
 Balanced – no clear winners or losers
JOBS
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Politically - a Jobs Bill
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Practically – a Jobs Bill for
some
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New investment in R&D
New products to consumers
New high wage jobs
Economic recovery
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Patent Prosecutors
Patent Litigators
Patent Staff – inside and
outside
Patent Applicants
Patent support firms
Patent search firms
Monitoring firms
CLE Providers
Industry - it remains to be
seen!
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Applicants
Third Parties
Patentees
Public
INTERNATIONALLY
 Harmonization
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First Inventor to File
Unilateral movement by the US
removes decades-old barrier
BUDGETS
 Fees - Immediately increased
 Costs - Additional Staff and
Services
RISKS
 Uncertainty and Liability
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Operating under parallel and
dramatically different legal
standards for the next 20 years
© AIPLA 2012
Patent Reform 2011 -Key Issues Addressed
Filing Reforms
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First Inventor to File (§3)*
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Assignee Filing (§4)
Penalty for Paper filing (§10)
Best Mode Requirement diluted (§15)
Human Organism Patents Prohibited (§33)
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Additional Key Reforms
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Repeal Hilmer
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Definition of Prior Art (§3)
Inventor Grace Period – publication (§3)
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Third Party Reforms
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Expand Prior User Rights (§5)
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Expand Post Grant Review (§6)
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New Opposition System [56]**
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9 month window after grant
“more likely than not” std.
Any ground under §282(b) – §101, §102, §103,
§112, etc.
Estoppel “ raised or reasonably could have
raised””
Inter Partes Review
After 9 month window
“Reasonable likelihood petitioner would prevail” std.
Only patented or published art (§102 §103)
Estoppel if “raised or reasonably could have raised”
Third Party Submissions (§8)
Limit Use of Opinions (§17)
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Priority Examination Fee (§11)
Supplemental Examination – Correcting
Bases for
Inequitable Conduct
(§12)
15% Surcharge (§13)
PTO Revenue Diversion (§22)
Deceptive Intent is removed from the
statute (inventorship, reissue, disclaimer,
foreign filing license, etc.)
Other Provisions
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*reference in parens is to sections of HR 1249 as
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published
** reference in brackets is to page of HR 1249 as
published
Restrict Patents on Tax Strategies (§14)
Virtual Marking and False Marking Limits
(§16)
Business Method Patent Opposition
(§18)
Establishment of Satellite Offices (§23
and §24)
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Discounts for Micro Entities [89]
University exceptions
Reform Inter Partes Reexam [40]
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PTO Fee Setting (§10)
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Examination Reforms
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Detroit specified
Prioritize Examination of Important
Inventions (§25)
Creation of Ombudsman (§28)
Others –Studies, etc .(§25-34)
© AIPLA 2012
Key Issues Omitted From Bill
 Filing Reforms Omitted:
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 None
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 Examination Reforms
Omitted:
 Stricter Obviousness
Standard
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Third Party Protection Reforms
Omitted
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Supreme Court KSR Decision
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current system maintained
Additional Key Issues Omitted
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18 Month Publication of all
applications
Experimental Use Exceptions
Limits on Injunctive Relief
Restriction on Damages
Restriction on Venue
Ex parte Reexam
Applicant Quality Submission
PTO General Regulatory Authority
Interlocutory Appeals to CAFC
“Trigger based” on JPO/EPO
adopting a similar grace period
© AIPLA 2012
Effective Dates
for Various
Sections
•§5 – Prior User Rights (35 USC 273)
•Patent issued on or after 9/16/11
•§6 – Post Grant Review
•New Interpartes reexam standard
becomes effective 9/16/11 (35 USC §312)
•Ex Parte appeals under 35 USC§145
eliminated (35 USC §306)
•§11 – Fees
•15% Surcharge (9/26/11)
•Accelerated Exam fee (9/26/11)
•Paper Filing Fee (11/15/11)
•§14 – Tax Strategies Provisions
•§15 – Best Mode Changes
•Suit started on or after 9/16/11
•§16 – Marking
§4 – Oath or Declaration (35 USC §118)
§6 – Post Grant Review Procedures
•New Opposition – limited number first 4 years
•New Inter partes Review – limited number - 4 years
§8 – 3rd Party Submissions (35 USC §122(c))
§12 – Supplemental Exam
§18 – Business Methods Patent Review
§35 – General Effective Date
•False Marking – cases pending on or
started after 9/16/11
•Virtual Marking (35 USC 273)
§3 – First Inventor to File
•§19 – Jurisdiction and Procedural
•Joinder of defendants restricted
•New §102 and 103
applies
(35 USC §306)
•§22 – PTO Funding
Act
Signed
(9/16/11)
Sughrue Mion PLLC
One Year
18 Months
9/16/12)
3/16/13)
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Patent Reform 2011
USPTO Rulemaking
Schedule
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Group 2 Rulemakings Schedule
Subject of Rule Making (Section of AIA)
1Inventor’s oath / declaration (4)
2Third party submission of prior art for a patent application (8)
3Supplemental examination (12)
4Citation of prior art in a patent file (6)
5Umbrella set of rules for contested case procedure
6Inter partes review (6)
7Post grant review (6)
8Transitional program for covered business methods (18)
9Definition of technological invention (18)
10Derivation proceeding (3)
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Issue Date
1/6/12
1/5/12
1/25/12
1/5/12
N/A
2/7/12 ?
2/7/12?
2/7/12?
2/7/12?
2/7/12?
Patent Reform 2011
KEY PROSECUTION PROVISIONS
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Track 1 Prioritized Examination
Requirements (Section 11(h))
Application
original utility or plant non-provisional (Con/Div)
no international design, reissue or reexam
can file with an RCE
Fee - $4800
Claim Limitation – 4 or fewer independent and 30 total
Prior Art
no search or comment required
Good knowledge of prior art relevant to claims
Form – PTO/SB/424 recommended
Prosecution
Time to respond to OA – see MPEP 710.02(b)
Final Rejection, NoAll. or RCE terminates special status
Final Regulations – 12/19/11 – (over 1400 as of 11/17/11)
USPTO Goal – final disposition in 12 months
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© AIPLA 2012
Prioritized Examination : What You Should be
Doing Now!
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Evaluate invention disclosures and
pending Applications for qualification
for Prioritized Examination
Become familiar with published rules
Tailor new and newly filed applications
for program requirements
Consider use with RCE's
Develop and execute your strategy
© AIPLA 2012
New Standards For Filing
Right of First Inventor to File (Section 3)
Inventor must be an individual who invents or discovers (§3(a)) and
must be named (§4(a))
Effective Filing Date includes domestic and foreign priority dates –
where Section 112 disclosure is satisfied (§3(a))
Interferences are eliminated except for applications filed before the
effective date (§3(j) and §3(n))
Derivation Investigation Proceeding is created (§3(i))
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May be instituted only within 1 year after first publication
Modified Interference-type proceeding
Corroborated proof of (1) prior conception, and (2) communication to the
deriver sufficient to enable actual reduction to practice of claimed
invention
© AIPLA 2012
First-to-Invent vs.
First-Inventor-to-File
First-to-Invent: X Can Win
X CONCEIVEDX RTP
X FILED
Y CONCEIVED Y RTP Y FILED
First-Inventor-to-File: Y Wins (If Independent Inventor)
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Patent Reform 2011
First Inventor to File :
What You Should be doing Now!
Right of First Inventor to File (Section 3)
Inventor Identification – maintain current practices and records of invention to
comply with old and new law
Effective Filing Date – establish guidelines to ensure that all application filings
in all countries comply with 35 USC 112
Interferences – should still be considered part of a competitive strategy for
several years
Derivation Investigation Proceeding – establish systems for (1) keeping
records of disclosures (private and public) by inventors and (2)
independent development of inventions
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© AIPLA 2012
New Standards for Novelty
Revised Definition of Prior Art (Section 3(b))
Eliminates Content of Original Sections 102(a) and (c) – (g)
• New Section 102(a)(1) keeps Section 102(b) standards
• On Sale & Public Use
• Published and patented
• Adds “otherwise available to public”
• New Section 102(b) excludes from "prior art" public disclosures
by inventor less than 1 year
• New Section 102(a)(2) includes earlier filed application naming
another inventor ( substitute for old 102(e))
Excludes inventor-derived information or public disclosure
Excludes commonly owned patents and applications
Excludes joint research agreements (CRADA)
•
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© AIPLA 2012
New 35 U.S.C. § 102(a):
Defines Prior Art Under the AIA
§102 Conditions for patentability (a) NOVELTY; PRIOR ART.
A person shall be entitled to a patent unless—
(1) the claimed invention was patented [anywhere in the
world], described in a printed publication [anywhere in the
world], or in public use [anywhere in the world], on sale
[anywhere in the world], or otherwise available to the public
[anywhere in the world] before the effective filing date of the
claimed invention;
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~ OR … ~
© AIPLA 2012
35 U.S.C. § 102(a) – Cont’d
§102 Conditions for patentability (a) NOVELTY; PRIOR ART.
A person shall be entitled to a patent unless— …
(2) the claimed invention was described in a [US] patent issued under
section 151, or in an application for [US or PCT application designating
the US (§374)] patent published or deemed published under section 122(b)
[US or PCT designating the US], in which the [US] patent or [US or PCT
designating the US] application, as the case may be, names another
inventor and was effectively filed before the effective filing date of the claimed
invention.
[see §102(d)(next slide): effective filing date can be earliest foreign priority document]
[§102(a)(2)somewhat like old §102(e); filed before effective filing date but not disclosed
before effective filing date, otherwise would be under §102(a)(1)]
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© AIPLA 2012
§102(a)(2)/§102(d)
§102(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For
purposes of determining whether a patent or application for patent is prior art to a
claimed invention under subsection (a)(2), such patent or application shall be
considered to have been effectively filed, with respect to any subject matter described
in the [US] patent or [US or PCT designating the US] application“(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b),
or [entitled] to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more
prior filed applications for patent, as of the filing date of the earliest such application that describes the subject
matter.” [“entitlement” trumps “describes”- therefore enablement is required?]
‘‘(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent”
Earlier-Filed but Later-Published [US] Patent Documents
Somewhat like old §102(e) - but cannot be antedated by earlier invention.
Following publication, the disclosure has retroactive availability as prior art as of effective filing date
Available as prior art for novelty and obviousness purposes
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© AIPLA 2012
Hilmer Doctrine Abolished by §102(d)
§102(d) eliminates need for foreign applicants to file provisional applications
by establishing that an application is “effectively filed” on the date an
application was filed under §119 or § 365.
Hilmer Doctrine evidenced bias of U.S. law against inventions originating
outside the U.S.
Based on two U.S. litigations (Hilmer I and II) that held that the foreign
right of priority of a U.S. patent does not provide a prior art effect
under § 102(e) as of that foreign priority date, nor does inventive work
outside the U.S. have a prior art effect under § 102(g). Rather, one
needed a U.S. filing date to have a prior art effect.
Created “shield vs. sword” distinction
Foreign applicant needed to file in the U.S. to get a § 102(e) or § 102(g) prior
art effect date – e.g., provisional.
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© AIPLA 2012
Impact of § 102(d)(2) –
Prior Art Date
Prior art date
U.S. Prov.
Appl.
Pub.
Appl.
U.S. Appl.
Non-Prov.
Prior art date
UK
Prior
art
date
FR
English
USPAT
Pub.
Appl.
PCT
(U.S.)
English
USPAT
Pub.
Appl.
USPAT
PCT
(U.S.)
French
• NO geographical or language distinction
•Assuming entitlement to date benefit of US Prov App., UK app., and FR app.
Definition of Prior
Art: Scenario 1
X FILED
X PUBLISHED IN US
Y FILED
 Old: Y Could Antedate X with evidence of earlier invention.
 New: Since X filed first, X is Prior Art to Y (for § § 102 and 103
purposes)
 Assuming §102(b)(2) exceptions do not apply.
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Patent Reform 2011
Definition of
Prior Art:
Scenario 2
X SOLD IN EUROPE
(Confidential???)
Y FILED
 Old: Sale of X Not Prior Art to Y because not in US.
 New: Sale of X Is Prior Art to Y. [§102(a)(1) only]
 Consider if 102(b)(1) exception applies.
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Patent Reform 2011
Definition of
Prior Art:
Scenario 3
X PUBLICLY USED: ex US
> 1 Year
Y INVENTED
Y FILED
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Old: Public use outside US was not prior art.
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New: X’s use outside the 1-year period is prior art to Y wherever it occurred; exception
under §102(b)(2) cannot apply because no patent or patent application.
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Patent Reform 2011
Definition of
Prior Art:
Scenario 4
X PUBLICLY USED
< 1 Year
Y INVENTED
Y FILED
Old: Y could antedate X’s use.
 New: X’s use inside the 1-year period may be prior art to Y wherever it occurred:
grace period exception under 102(b)(1) may apply.

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Patent Reform 2011
New Definition of the Grace Period
More Limited Grace Period (Section 3(b))
Absolute Bar if More than One Year before Effective
Filing Date for All Persons
Bar if Less than One Year with Exception for Inventor
and Assignee
Only for Public Disclosure by or derived from the
Inventor
Only for Commonly Owned Inventions
Owned or subject to duty to assign
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© AIPLA 2012
New 35 U.S.C. § 102(b) – Exceptions to Prior Art
§102 (b) EXCEPTIONS.
(1) Disclosures [anywhere in the world] made 1 year or less
before the effective filing date [anywhere in the world; see
§100(i)(1)] of the claimed invention shall not be prior art under
(a)(1) if:
(A) made by an inventor or by another who obtained the
subject matter directly or indirectly from an inventor, or
(B) if the subject matter had been previously publicly
disclosed by an inventor or one who obtained it from an
inventor
These exceptions define what is not prior art under §§ 102(a)(1) and
(a)(2), respectively, and are generally personal to the inventor
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Provision twins with § 102 (a)(1)
© AIPLA 2012
New 35 U.S.C. § 102(b) – Cont’d
§102 (b) EXCEPTIONS – …
(2) Disclosures appearing in [US or PCT designating the US]
applications and [US] patents are not prior art under (a)(2)
if:
(A) obtained directly/indirectly from an inventor;
(B) the subject matter was publicly disclosed before filing by an inventor or
one obtained it directly or indirectly from an inventor; or
(C) the subject matter disclosed and the claimed invention, not later than
the effective filing date of the claimed invention, were owned by the same
person or subject to an obligation of assignment to the same person.
Provision twins with § 102 (a)(2)
NOTE: NO RECITATION OF “ONE YEAR OR LESS”
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© AIPLA 2012
How the NEW U.S.
Grace Period Will Work:
§102(b)(1)(A) and (B)
Respectively Apply
Grace
Land
Disclosure “by or obtained from”
an INVENTOR
Disclosure by ANYONE
§102(b)(1)(A)
§102(b)(1)(B)
Public use
Public use
U.S. Patent
12 mos.
Effective Filing Date
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Patent Reform 2011
How the NEW U.S. Prior Art
Provisions Will Work:
A Sword and A Shield
Disclosure “by or obtained from”
Inventor B
Filing by independent inventor A
§102(b)(1)(A)
§102(b)(2)(B)
§102(a)(1)
Public use
A Pat. App.
Filed
A’s US
application
published
B’s
U.S. Patent
Effective Filing Date of
B’s Patent App.
12 mos.
B avoids public use through §102(b)(1)(A); B’s public use avoids A’s publication through §102(b)(2)(B) and defeats
A through § 102(a)(1);
First inventor to file loses because other inventor disclosed first.
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Patent Reform 2011
US Patent Reform: Effect on §103
New law modifies §103 to read:
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…
Present §103 reads:
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains
Hence, the new US law switches from “at the time the invention was made” (earlier or
equal to filing date) to the time “before the effective filing date of the claimed
invention”
Generally broadens the scope and content of the prior art in the U.S. – primarily
based on elimination of the Hilmer Rule
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Effective date March 16, 2013 (same as for § 102).
© AIPLA 2012
Effect on §103 and §104
Additional Changes to Section 103 and
Deletion of Section 104 (Section 3(c) and
(d))
Section 103 also revised to eliminate
exceptions
• Common assignment provisions are now
in Section 102
• Section 103(b) on non-obviousness of
biotech processes is deleted
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Section 104 is deleted
© AIPLA 2012
Strategy for Filing
New Applications:
Act
Signed
Section 3(n)(1)(A)
provides an 18 month
window before new
§102 applies to new
applications
18 -month
Window
Closes
New Filing of regular, provisional, PCT or foreign
application to get old law grace period
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Applications claiming
priority from applications
filed in the Window may
have old law grace period
Continuation, Divisional and
CIP Filing to get old law grace
period – no claim with effective
filing date (Section 101(i)) after
the window closes
Patent Reform 2011
Straddling the
Effective Date
First to Invent System Applies
PCT
Filing
Enactment:
Sept. 16, 2011
“First To Invent” System or “First Inventor to
File” System? (see SEC. 3(n)(1)(A))
PCT
Filing
Priority
Date
Scenario 1: no claims entitled to priority date: first-to-file
Scenario 2: all claims entitled to priority date: first-to-invent
Scenario:3: at least 1 claim not entitled to priority date: first-to-file
Enactment:
Sept. 16, 2011
Priority PCT
Date Filing
Enactment:
Sept. 16, 2011
Effective Date:
March 16,
2013
“First Inventor to File”
System Applies
Assumes “priority date” is ex-US
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What You Should be doing Now
File before 18 months after enactment (on
or before March 15, 2013)
New applications; CIPs; New claims
(disclosed but not previously claimed)?
Develop a strategy for using pre-deadline
filed applications as a basis for
interferences (§2(n)(2))
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© AIPLA 2012
Key Actions to be Taken-Prosecution
•
•
FEES
•
Adjust budgets for 15% surcharge
•
Instruct Filing Electronically (save $400 fee)
ASSIGNEE FILING
•
Redraft Employee Agreements and Disclosure Forms to:
• Provide clear obligation to assign all rights
• Authorize preparation of Application
• Include required statements (belief to be original inventor)
•
DERIVATION, GRACE PERIOD AND PRIOR RIGHTS
•
•
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Maintain records of invention activity and public disclosure
NEW PRIOR ART DEFINITIONS – 18 months after enactment
•
Develop a Filing Schedule and Strategy for Using Old Law
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Evaluate Possibility of Interferences Under Old Law
© AIPLA 2012
Key Actions to be Taken-Prosecution
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•
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PRIORITIZED EXAMINATION
•
Discuss and Develop a Strategy for use of Enhanced Examination
•
Develop a System to Review filed and unfiled applications and
invention disclosures for qualification for Enhanced Examination
•
Budget for New Expenses
THIRD PARTY SUBMISSIONS
•
Develop a Policy and Strategy for identifying competitor published
applications and possibly relevant prior art and submitting art to the
USPTO
•
Budget for New Expenses
© AIPLA 2012
Thank you!
[email protected].
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© AIPLA 2012
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
Alan J. Kasper is a senior partner in the International IP law firm Sughrue
Mion, PLLC, where he has been practicing law since 1985. Alan’s practice
focuses on patent matters and consists primarily of prosecution, litigation,
licensing, opinions and counseling on patent strategies for a wide variety of
clients in the advanced electrical, optical, semiconductor, computer-based
and mechanical technologies, and he presently manages the firm’s
International Department. He graduated from the State University of New
York with a B.S. in Electrical Engineering and obtained a JD at the
Georgetown University Law Center. He initially worked as an Examiner in
the U.S. Patent and Trademark Office and later served as Assistant General
Counsel and head of the corporation's Patent Department for the
internationally known telecommunications satellite company, COMSAT.
Alan is active in several professional associations, including A.I.P.P.I.,
F.I.C.P.I., ABA, IPO and A.I.P.L.A, where he served last year as President and
now is a member of the Board of Directors. He also is a Vice President of
AIPPI-US. Alan has lectured internationally on U.S. patent and commercial
matters, and has authored numerous articles published in the U.S. and
elsewhere in the world.

He can be reached by email at [email protected].
© AIPLA 2012