big changes in patent law: the america invents act (“aia”)

Paradise Point Resort & SpaSan Diego, CA

October 19-21, 2011

Patenting Protein Therapeutics: In the Shadow of Uncertainty

4th Protein Discovery and TherapeuticsGlobal Technology Community

Baltimore, MDOctober 25, 2013

Big Changes in Patent Law:The America Invents Act (“AIA”)

Society of Women EngineersAnnual Conference 2013

Speaker:Carla Todenhagen

Klarquist Sparkman, LLP

America Invents Act: Purpose

• Harmonize US law with other jurisdictions– Everywhere else: first to file– Other jurisdictions have a post-grant opposition system

• Addresses concerns of many different groups– Provisions discussed over the course of five Congresses– Discussion in the courts and in industry on what needs

to be addressed– Address significant backlog at the USPTO


America Invents Act: Goals

• Encourage innovation and job creation• Support USPTO's efforts to improve patent

quality and reduce backlog• Establish secure funding mechanism• Provide greater certainty for patent rights• Provide less costly, time-limited

administrative alternatives to litigation


List of (Some) of the Effects

• “First to File” replaces “First to Invent”• Derivation proceedings replace interference proceedings• Inventor’s oath or declaration – easier for assignee to file• Supplemental Examination can be requested by patent owner• Post-grant review within 9 months of issuance• “Inter partes review” replaces “inter partes reexamination”• 3rd party submission of prior art (pre-issuance)• Citation of prior art in a patent file (post-issuance)


List of (Some) of the Effects

• Patents with claims “directed to or encompassing a human organism” prohibited (methods of treatment OK)

• New routes of expedited examination• Best mode no longer a defense to patent infringement• Establishment of micro-entities 75% reduction in fees• Heightened bar for granting inter partes reexamination

(New “reasonable likelihood of success” standard)• Virtual marking changes• False marking changes• Prioritized examination established


First to File – New 102 Summary

• First inventor to file is entitled to patent

• Prior art is established as of effective filing date

• Date of invention is no longer relevant to prior art – E.g., can’t swear behind a reference published within a year before

filing

• Public use or sale of the invention in a foreign country is now prior art– Prior statute limited prior art to public use or sale in the U.S.

• One-year grace now limited only to inventors that disclose “subject matter” before date of prior art.


Pre-AIA: First to Invent


Post AIA: First to Invent File


Prior ArtWhat is Prior Art? (New types of PA shown in red)

• Patent or printed publication anywhere• In public use in US • In public use in foreign countries• On sale in US • On sale in foreign countries• Available to public in US (“known or used by others”)• Available to public in foreign countries• US patents and published applications as of EFD, including foreign priority

dates


“First to File” - Prior Art, Examples


First to File – Tips

• File early and often.• Consider quickly filing provisional application, especially in

fast-moving technologies, before preparing more detailed application.

• Risk: Non-enabled disclosures not entitled to priority date. Balance filing with less enablement and risk that someone else beats you to USPTO.

• Consider filing multiple applications directed to improvements or variations to protect against filing or disclosure by others.


First To File: Removing Prior Art by Disclosure

• If inventor is 1st to disclose invention:• One year grace period to file application. • This starts the clock. You have one year to file a

patent application once you disclose. • More generous than Europe.

• A third-party disclosure within one year of applicant’s filing date is NOT prior art if the inventor disclosed first.


First to File-Disclosure Example

A publishesSUBJECT MATTER A

Jan. 2014

A files app for SUBJECT MATTER A

Dec. 2014(<1 year from A’s

publication)

B publishes SUBJECT MATTER A

Mar. 2014

B’s publication is NOT prior art to A(But would be prior art to anyone else)


First to File-Disclosure Example 2

• B’s publication is NOT prior art to A as to SUBJECT MATTER X.• But SUBJECT MATTER Y is prior art. Claims to Y cannot be obtained.

A publishesSUBJECT MATTER X

Jan. 2014

A files app for SUBJECT MATTER X + Y

Dec. 2014(<1 year from A’s

publication)

B publishes SUBJECT MATTER X + Y

Mar. 2014


First To File: Tips to Remove Prior Art

• Must “disclose” to get one-year grace period. –But what is a “disclosure” under new law?

• No guidance in the AIA• Does a disclosure have to be enabling? Likely.• Does an offer for sale or public use without details of

invention count?

• If you want to rely on “disclosure” grace period– consider providing details of “subject matter”

of invention


• CONS!– Foreign rights will be lost in some countries by disclosing before filing.– Loss of trade secret rights.– Unclear how “disclosures” will be treated by courts.– Gives competitors the chance to begin “improving” upon your ideas.

• Can a competitor file on SUBJECT MATTER A+B if you disclose SUBJECT MATTER A?

– Extra cost associated with proving first disclosure.

• PROS? – Cheaper than filing a provisional or other patent application? – Ensures prior art effect as of publication.

• Abandoned provisional applications don’t publish.– Prevents others from filing on the same invention while providing the potential to file on the subject matter in the future.

First To File: Balancing Disclosure


First To File: Removing Prior Art

• A third party disclosure within one-year of applicant's filing date is NOT prior art if:• the inventor already disclosed the

invention prior to the third party disclosure.• derivation occurred.


First To File: Removing Prior Art by Derivation

• Disclosures by “another who obtained the subject matter disclosed directly or indirectly from the inventor” have a limited prior art effect.– A disclosure derived from the inventor is not available

prior art for one year. – Patent applications or patents derived from the

inventor are not available as prior art as of their “effective filing date” (only prior art as of their publication date).

• How do you prove derivation?


First To File: Removing Prior Art by Common Ownership

• Patent application disclosures exempt as prior art if common ownership or under joint research agreement– Old: only applies to obviousness rejections.– New: Expanded to cover novelty and obviousness

rejections

• New: Common ownership no longer required at time of invention, but must be in effect on or before the effective filing date.


Inventor’s Oath or Declaration

• Citizenship no longer required.• Corrected oaths can be filed at any time– Patent not invalid or unenforceable if a failure is

remedied in this manner.• Oath needed before providing Notice of Allowance – No more Missing Parts for unexecuted declarations?

• Separate oath or declaration no longer required.– declaration statement can be made in assignment

documents.– declaration statements can be made before preparation

of the application.


Micro entity status

• Micro entity receive a 75% reduction of fees. As of today, the standard minimum fee, paid by large entities, when a new utility patent application is filed, is US$1,600.00. For the same application, a small entity pays only US$800.00. A qualifying micro-entity will pay, according to today's fee schedule, only US$400.00.

• A micro entity is any applicant that:– Qualifies as a small entity

– Has not been named as an inventor on more than 4 previously-filed applications. • Does not include foreign applications, provisionals, or international applications where basic national fee

was not paid.

• Applications from prior employment (which were assigned/under an obligation to assign) don’t count.

– Did not, in calendar year before paying fee, have a gross income exceeding 3 times median household income for that preceding calendar year, as most recently reported by the Bureau of the Census. (Currently about $150k)

– Not be under an obligation to assign, grant, or convey a license or other ownership to another entity that does not meet the same income requirements as the inventor.

• U.S. Institutions of Higher Education also qualify as micro entities.


Prioritized Examination

• Cost: $4,800 ($2,400 for small entities) • Final disposition (i.e., final rejection or allowance) within a year• Utilities or plant applications only – not available for national

stage application.• Request must be present at time of filing • 4 independent claims and 30 total claims (subject to excess claims

fees)• USPTO limit of 10,000 granted requests/year• Warning – application converted to regular application if:

– Extension of time is filed– Amendment results in more than 4 independent or 30 total claims– RCE filed


Third Party Pre-Issuance Submissions

• During prosecution, any third party may submit:– Any patent application, patent, or printed

publication– Concise statement of relevance and fee required– Timing restrictions


Supplemental Examination

• Patent owner can request to consider, reconsider or correct “information believed to be relevant to the patent.”

• Inoculates patent against potential inequitable conduct.• Within 3 months of request, Director decides if a

Substantial New Question of Patentability is raised.• A patent shall not be held unenforceable based on

information considered in supplemental examination. But– Inapplicable to cure existing allegations

– "If fraud on the Office is determined, disciplinary or criminal actions can be instituted.


Post Issuance Challenges

• New Post-Grant Review

– Available within 9 months of grant

– “more likely than not” that at least one of the claims challenged is unpatentable

– Challenge can be based on any ground for invalidity

– Opportunity for petitioner to file written comments after petition

• Inter Partes Reexamination becomes Inter Partes Review

– Available after 9 months of grant

– “reasonable likelihood that the requester would prevail”

• Note: change in threshold is effective now for Inter Partes Reexamination

– Challenge can be based only on patents and printed publications.


Marking

• False marking claims restricted– Only U.S. government can sue for civil penalty of

$500/offense– For private suits

• Must now show "competitive injury“• Damages limited to amount "adequate to compensate for the injury“

– No violations for marking with an expired patent.

• Virtual marking allowed– Provide Internet address where full listing provided


Thank You!

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