Transcript FIVE THINGS YOU MAY NOT KNOW ABOUT THE PATENT REFORM …

KEY POINTS ABOUT THE NEW
PATENT REFORM LAW
PROF. PAUL JANICKE
UNIVERSITY OF HOUSTON LAW CENTER
OCTOBER 2011
1. WE ARE NOT GOING TO A
“FIRST TO FILE” SYSTEM
• THE SENATE FLOOR REMARKS AND
THE HOUSE REPORT MAKE CLEAR
THAT THE RULE WILL BE:
• IN A CONTEST BETWEEN
INDEPENDENT INVENTORS, THE
VALID CLAIM WILL GO TO THE FIRST
TO PUBLICLY DISCLOSE
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• FIRST-TO-FILE IS THE DEFAULT RULE
– TWO ENTITIES VYING FOR SAME PATENT
COVERAGE WILL LIKELY CONTINUE TO
BE A FAIRLY RARE HAPPENING
• CALLING THE STATUTE THIS WAY IS ODD
– RULE: WHERE NO ONE HAS PUBLICLY
DISCLOSED AND BOTH HAVE FILED
CLAIMING ≈ SAME SUBJECT MATTER,
THE FIRST TO FILE WINS
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EXAMPLE
•
•
•
•
•
JANUARY
FEBRUARY
MARCH
APRIL
MAY
A INVENTS
B INVENTS
B PUBLICLY USES
A FILES
B FILES
• B WINS, EVEN THOUGH A WAS FIRST TO
INVENT AND FIRST TO FILE
• A IS BARRED BY THE PUBLIC USE
• B IS SAVED BY HIS “GRACE PERIOD”
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2. MOST ONE-YEAR CLOCKS FOR
TIME BARS WILL BE ABOLISHED
• OFFERS FOR SALE AND PUBLIC USES
WILL NOW BE WORLD-WIDE
• AND THEY INSTANTLY BAR ANYONE
WHO IS NOT ALREADY ON FILE
SOMEWHERE (PRIORITY DATE) OR IN
A GRACE PERIOD
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SO-CALLED GRACE PERIOD ONLY
FOR FIRST-INVENTOR-TO-PUBLISH
• WHERE AN INVENTOR’S OWN WORK
TRIGGERED THE BAR, DIRECTLY OR
THROUGH AN INTERMEDIARY:
– HE GETS A ONE-YEAR PERIOD IN WHICH TO
FILE, IF NOTHING ELSE HAPPENS
– A PARIS CONVENTION FILING WILL BE OK TO
AVOID THE BAR
>
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BOTTOM LINE
• THE SYSTEM SHOULD BE NAMED
“INSTANT BAR SYSTEM, WITH
NARROW GRACE PERIOD” RATHER
THAN “FIRST TO . . . ”
• THE ONLY WAY TO PROTECT AGAINST
3RD PARTY PUBLIC DISCLOSURES IS
TO FILE OR PUBLICLY DISCLOSE
BEFORE THEY HAPPEN
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DANGER: TARDY APPLICATION
DRAFTING
• LAWYERS: MUST TAKE ACCOUNT OF
POTENTIAL INSTANT BAR BY 3RD
PARTY WHEN COMMISSIONED TO FILE
AN APPLICATION
• THE CLIENT CAN BE BARRED IF AN
INDEPENDENT PARTY PUBLISHES
TOMORROW!
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• CLIENTS SHOULD BE WARNED
• LAWYERS SHOULD BE AS PROMPT AS
FEASIBLE
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3. “INVENTION DATE” IS HERE TO
STAY FOR QUITE SOME TIME
• THE PHASE-IN OF “NEW” PRIOR ART
PROVISIONS IS PAINFULLY SLOW
• NEW APPLICATIONS FILED AFTER
3/16/13, WITH NO EARLIER PRIORITY
CLAIM, ARE UNDER “NEW” PRIOR
ART
• BUT
>
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• ALL NOW-EXISTING PATENTS
• ALL APPLICATIONS NOW PENDING
– AND PATENTS ISSUING THEREON
• ALL APPLICATIONS FILED UP TO 3/16/13
– AND PATENTS ISSUING THEREON
• ALL LATER APPLICATIONS, IF THEY CLAIM
EARLIER PRIORITY
– AND PATENTS ISSUING THEREON
• ARE UNDER THE OLD NOVELTY LAW!
>
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• RESULT:
– WE SHOULD EXPECT TO SEE LITIGATION
DEFENSE OF EARLIER INVENTORSHIP
BEING ADJUDICATED UNTIL ABOUT 2025;
MAYBE LONGER
– WE SHOULD NOT SAY INTERFERENCES
HAVE BEEN ABOLISHED, OR ARE EVEN
OBSOLESCENT, UNTIL AT LEAST 2020
>
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• BEST MODE, HOWEVER, IS
RETROACTIVELY PURGED FOR
EXISTING PATENTS
• ALL “PROCEEDINGS” COMMENCED
AFTER 9/16/11 HAVE NO BEST MODE
DEFENSE
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4. BEST MODE CAN NOW BE
CONCEALED?
• EVEN DELIBERATELY
• § 15 OF THE BILL:
– “. . . EXCEPT THAT THE FAILURE TO
DISCLOSE THE BEST MODE SHALL NOT
BE A BASIS ON WHICH ANY CLAIM OF A
PATENT MAY BE . . . HELD INVALID OR
OTHERWISE UNENFORCEABLE”
>
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• NO LOSS OF PRIORITY EITHER
– AMENDED 119, 120 NOW HAVE
SPECIFIC EXCEPTION FOR BEST
MODE OMISSION
• SEEMS TO BE NO PENALTY FOR
HIDING IT
• A BOON TO FOREIGN ORIGINATORS
>
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• MYSTERY: WHY DID CONGRESS
KEEP BEST MODE IN
§ 112?
• DOES IT HAVE SOME LINGERING
EFFECT?
• PTO HAS INDICATED AN INTENTION
TO CONTINUE TO ENFORCE IT
(SOMEHOW)
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5. DERIVED INFORMATION IS
NOT PRIOR ART
• INVENTOR’S STATEMENT NEW 35 U.S.C. § 115(b)
MUST ASSERT BELIEF OF
ORIGINALITY
• BUT: A LITTLE CHANGE MAY GO A
LONG WAY
– SLIGHT VARIATION FROM THE DERIVED
INFO WOULD SEEM TO BE OK
– DERIVED INFO IS NOT PRIOR ART
>
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• “PRIOR ART” WAS NEVER DEFINED IN
THE 1952 ACT
• IT APPEARED ONLY IN § 103
• NOW, IT APPEARS IN THE HEADING
OF NEW § 102(a): “NOVELTY; PRIOR
ART”
• SO, PARTIAL DERIVATION SHOULD
HAVE NO EFFECT ON OBVIOUSNESS
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• CONGRESSIONAL APPROACH TO
DERIVED INFO:
– NEW 35 U.S.C. § 291: “DERIVED
PATENTS”
– APPLIES ONLY WHERE THE ORIGINATOR
SEEKS A PATENT AT SOME POINT
• IF ORIGINATOR DOESN’T CARE TO
FILE, THE MAINLY DERIVED CLAIMS
APPEAR TO BE VALID
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6. PENITENCE
“SUPPLEMENTAL EXAMINATION,” § 10 OF H.R. 1249,
NEW 35 U.S.C. § 257(c)
• INEQUITABLE CONDUCT CAN NOW BE
CURED BY A POST-GRANT CLEANSING
PROCEDURE
• ANY WITHHELD INFORMATION CAN BE
BROUGHT FORWARD TO PTO
• IF CLAIMS ARE RE-ALLOWED, THIS INFO IS
BLOCKED IN COURT
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CONDITIONS FOR CLEANSING
• CANNOT COMMENCE OR CONTINUE
SUPPLEMENTAL EXAM IF PATENTEE HAS
BROUGHT A PENDING INFRINGEMENT
ACTION
– FILING OF SUIT TERMINATES THE
SUPPLEMENTAL PROCEEDING
• CANNOT COMMENCE SUPPLEMENTAL
EXAM IF A D.J. SUIT IS PENDING AND THE
CHALLENGER HAS PLEADED INEQ.
CONDUCT “WITH PARTICULARITY”
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7. DECEPTIVE INTENT
DISAPPEARS
• “WITHOUT DECEPTIVE INTENTION”
HAS BEEN DELETED FROM THE
STATUTE (ALL 7 OCCURRENCES)
– CHANGE OF INVENTORSHIP (§§ 116, 256)
– ERROR IN REISSUE (§ 251)
– FILING A DISCLAIMER (§ 253)
– SUING ON A PATENT CONTAINING AN
INVALID CLAIM (§ 288)
– FOREIGN FILING WITHOUT A LICENSE (§§
184, 185)
>
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WHY?
• PROBABLY:
– TOO MANY MENTAL STATES FOR A
MODERN COMMERCIAL STATUTE
– NEED TO STREAMLINE PATENT
LITIGATION
• COULD ALSO BE: HARMONIZATION
ATTEMPT
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8. PUBLIC SUBMISSION OF
PRIOR ART AND OTHER INFO
• WE HAVE LONG HAD 35 USC § 301:
– ANY PERSON, AT ANY TIME, CAN SEND IN
PRIOR PATENTS OR PUBLICATIONS FOR
CONSIDERATION RE. SOMEONE ELSE’S
ISSUED PATENT
– IF EXPLANATION IS GIVEN, WILL BE
PLACED IN THE FILE
• AMENDED § 301 ADDS A WRINKLE
THAT COULD BE IMPORTANT
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• A PERSON CAN NOW SUBMIT CLAIMSCOPE POSITION STATEMENTS
PREVIOUSLY MADE BY PATENTEE
– THESE CAN BE USED FOR PURPOSES OF
CONSTRUING A CLAIM IN
• AN INTER PARTES REVIEW [LATE TYPE]
• A POST-GRANT REVIEW [EARLY TYPE]
• A REEXAM
• CAVEAT PATENTEE: BROAD CLAIMSCOPE ASSERTIONS CAN BITE!
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AND WILL NOW BE ALLOWED
TO ATTACK PENDING
APPLICATIONS AS WELL
H.R. 1249 §8, ADDING 35 U.S.C. §122(e)
•
SUBMISSIONS OF PRIOR PATENTS AND
PUBLICATIONS
•
SOME TIME CONSTRAINTS:
1. BEFORE NOTICE OF ALLOWANCE
2. OTHER LIMITS BASED ON APPL. PUBLICATION
DATE OR CLAIM REJECTION
>
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• THE STATUTE SAYS THESE
SUBMISSIONS ARE “FOR
CONSIDERATION AND INCLUSION IN
THE OFFICIAL RECORD”
• EXPLANATIONS ARE REQUIRED
• THEORETICALLY, THESE ARE NOT
OPPOSITION PROCEEDINGS
– PRE-GRANT OPPOSITIONS ARE STILL
PROHIBITED BY 35 U.S.C. §122(c)
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9. NEW DANGER:
UNSUPPORTED CLAIMS
• NEW § 102 (STRICT) vs. OLD § 102
(EASIER)
• IN A CHAIN OF APPLICATIONS THAT
STRADDLES 3/16/13, INSERTION OF
ANY CLAIM THAT IS NOT ENTITLED TO
PRIORITY:
– MAY BE UNPATENTABLE UNDER § 112, OF
COURSE
– ALSO PUTS ALL CLAIMS UNDER THE
NEW, MORE STRINGENT LAW
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10. SUBMARINE PRIOR ART
• WE WORRIED ABOUT SUBMARINE
PATENTS
– STILL A PROBLEM, ALTHOUGH LESS
WITH 20-YEAR EXPIRATION
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• NOW WE HAVE SECRET
RETROACTIVE PRIOR ART,
EXTENDED:
– PUBLISHED APPLICATION OR PATENT OF
ANOTHER IS RETROACTIVE PRIOR ART
– AND IT IS EFFECTIVE NOW GOING TO BE
AS OF ITS FOREIGN PRIORITY DATE (MORE
ON THIS LATER)
– YOU CAN’T FIND IT IN A SEARCH, UNTIL
RELATIVELY LATE
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THINGS IN THE REFORM
LEGISLATION THAT HAVE BEEN
TALKED ABOUT IN THE PRESS
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ASSIGNEE FILING (FINALLY)
• BUT INVENTOR’S “STATEMENT” STILL
NEEDED
– RISKY TO ASSUME THERE IS AN
OBLIGATION TO ASSIGN
– HARDLY WORTH IT
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PRIOR USER RIGHTS
• ARE NOW EXPANDED, FROM
BUSINESS METHODS TO ALL KINDS
OF PATENTS
• MIGHT BE NEEDED FOR SECRET
METHODS IN FACTORIES
– CURRENTLY THESE COULD BE
ENJOINED BY A LATER PATENTEE
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POST-GRANT REVIEW
• MUST FILE WITHIN 9 MONTHS OF
ISSUE
• ANY GROUND OF INVALIDITY, E.G.:
– INDEFINITENESS
– INELIGIBLE SUBJECT MATTER
– ENABLEMENT
– WRITTEN DESCRIPTION
>
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• 3-JUDGE DECISION
– DISCOVERY MIGHT BE ALLOWED
– PROTECTIVE ORDERS MIGHT BE
FOUGHT OVER
– PRIVILEGE ISSUES WILL ARISE
– 18-MONTH TIME FUSE
• BROAD PRECLUSIVE EFFECT – ANY
GROUND THAT WAS “RAISED OR
REASONABLY COULD HAVE BEEN
RAISED”
>
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• COULD BE VERY EXPENSIVE
• SMALL AND MIDSIZE PATENTEES
WILL BE HARD-PRESSED
• MAY HAVE TO ISSUE CHEAP LICENSE
TO SETTLE
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INTER PARTES REVIEW
– CAN BE FILED ONLY AFTER 9 MONTHS
FROM GRANT
– GROUNDS: PATENTS AND PRINTED
PUBLICATIONS ONLY
– AGAIN, A 3-JUDGE DECISION
– BROAD PRECLUSIVE EFFECT RE. ITEMS
THAT WERE OR COULD HAVE BEEN
RAISED (PATENTS AND PRINTED
PUBLICATIONS)
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COSTS FOR EITHER FORM OF POSTGRANT PROCEEDING
– WILL DEPEND HEAVILY ON DIRECTOR
KAPPOS’S REGULATIONS
– THESE ARE DUE BY SEPTEMBER 2012
– THE PROCEEDINGS BEGIN THEN
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A FEW ADMINISTRATIVE
PROBLEMS
• CURRENTLY PTO HAS 102
ADMINISTRATIVE PATENT JUDGES
• BACKLOG: 24,000 APPEALS [ABOUT 240 PER
JUDGE]
• ADDING POST-GRANT REVIEWS WILL
BE A BURDEN
• LOOKING FOR 100 MORE JUDGES
PROBABLE BUDGET: MINUS 10%
>
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• DON’T BE FOOLED BY THE “FUNDS
CAN BE USED ONLY FOR” LANGUAGE
• PRESENT STATUTE HAS THIS AS
WELL [35 U.S.C. § 42]
• THE WAY IT WORKS:
– FREEZE PTO APPROPRIATIONS
– SPEND $$ ELSEWHERE
– TREASURY’S DEFICIT IS UNCHANGED
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QUI TAM ACTIONS FOR
MISMARKING ABOLISHED
“QUI TAM PRO DOMINO REGE . . .”
• NEW LAW: ONLY U.S. CAN SUE IN GENERAL
• A DAMAGED PRIVATE ENTITY CAN SUE FOR
THE AMOUNT OF HARM CAUSED
– HIGHLY UNLIKELY
• AND NO ONE CAN SUE FOR MISMARKING
WITH AN EXPIRED PATENT NUMBER
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TAX STRATEGY PATENTS
ABOLISHED
• “DEEMED TO BE WITHIN THE PRIOR
ART” [BILL § 14]
• MYSTERY: WHY NOT AMEND § 101?
• REJECTIONS WILL NOW BE UNDER
§102??
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“HUMAN ORGANISMS” ARE
NONSTATUTORY
• BUT WHAT IS EMBRACED IN THAT TERM?
– CELL LINES?
– STEM CELLS?
– TISSUE SAMPLES?
• LEGISLATIVE HISTORY REFERS TO REP.
WELDON’S AMENDMENT
• AIMED AT EMBRYOS
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TWO MINDS NEEDED!
• FOR THE NEXT 15 YEARS OR SO, WE
WILL BE LITIGATING PATENTS UNDER
THE OLD NOVELTY RULES
– ALL FILINGS UP TO MARCH 2013, AND
THE PATENTS ISSUING ON THEM
• AND PROSECUTING UNDER THE NEW
ONES
>
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• FILING ANY CLAIM AFTER 3/16/13
THAT LACKS AN EARLIER PRIORITY
DATE
– PUTS ALL THE CLAIMS UNDER AT LEAST
THE NEW LAW
– IF SOME CLAIMS ARE ENTITLED TO PRE3/16/13 DATE, A HYBRID TYPE OF PRIOR
ART APPLIES TO ALL THE CLAIMS: NEW
LAW + OLD 102(g)
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SPECIAL TREATMENT FOR
SOME BUSINESS METHODS
• SPECIAL PROCEDURE FOR
CHALLENGING ALREADY-ISSUED
PATENTS AND FUTURE PATENTS
• APPLICABLE ONLY TO FINANCIALSERVICE METHODS
>
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• SPECIAL KINDS OF PRIOR ART ARE
RETAINED
• RETROACTIVITY IS PROBLEMATIC
• HOW TO EXAMINE APPLICATIONS?
– THE STATUTE REFERS ONLY TO POSTGRANT REVIEWS OF THESE PATENTS!
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AU REVOIR TO HILMER
• PATENTS AND PUBLISHED
APPLICATIONS NOW EFFECTIVE AS
PRIOR ART AS OF THEIR FOREIGN
FILING DATES
• ON THE PLUS SIDE: FOR THAT
APPLICANT, FOREIGN FILING
PREVENTS ALL BARS [CF. OLD § 119]
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ADVISING CLIENTS
• FILE EARLY, AS NOW
• INCLUDE THE BEST MODE, UNTIL THE
SITUATION CLARIFIES
• CONSIDER INVITING PREISSUANCE
PRIOR ART SUBMISSIONS BY YOUR
COMPETITORS
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• BEFORE SUING FOR INFRINGEMENT:
– SCOUR THE FILES, U.S. AND FOREIGN, AND
CORPORATE RECORDS FOR OMITTED PRIOR
ART
– INTERVIEW INVENTORS RE. POSSIBLE
UNDISCLOSED PRIOR ART
– SCOUR THE FILE HISTORY FOR POSSIBLE
MISSTATEMENTS
– USE SUPPLEMENTAL EXAMINATION IF NEEDED
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IF YOU ARE A POTENTIAL
INFRINGEMENT TARGET
• MONITOR PUBLISHED APPLICATIONS
FOR POTENTIAL TROUBLE
– CONSIDER PREISSUANCE ART
SUBMISSIONS
• CONSIDER PROS AND CONS OF POSTGRANT PROCEEDINGS
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OVERALL ASSESSMENT OF THE
NEW LAW
• PATENT PROSECUTION AND KEEPING
A PATENT
– MORE EXPENSIVE
– MORE DANGEROUS
– NOT STREAMLINED
• HELPFUL TO FOREIGN ORIGINATORS
– NO BEST MODE NEEDED (MAYBE)
– FOREIGN PRIORITY IS NOW COMPLETE
– ALL BARS ARE NOW WORLDWIDE
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• ON THE LITIGATION FRONT: SOME
STREAMLINING
– ABOLITION OF PRIOR INVENTOR
DEFENSE
– ABOLITION OF BEST MODE
– ABOLITION OF QUI TAM
– TIGHTENING OF WILLFULNESS
ARGUMENTS
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• MORE JOBS CREATED?
– CERTAINLY FOR LAWYERS
– UNLIKELY FOR ANYONE ELSE
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