Post on 23-Dec-2015
The U.S. Patent System is Changing –The U.S. Patent System is Changing –A Summary of theA Summary of the
New Patent Reform LawNew Patent Reform Law
The U.S. Patent System is Changing –The U.S. Patent System is Changing –A Summary of theA Summary of the
New Patent Reform LawNew Patent Reform Law
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The ACC, Wine, and U.S. Patent Law Reform
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The ACC, Wine, and U.S. Patent Law Reform
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U.S. Patent Des. 127,007"Design for a Wine Bottle"
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U.S. Patent No. 8,061,538"Wine Rack"
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“Patent Reform” is Here
The America Invents Act was passed by Congress late summer. It was signed by the President (and therefore enacted) on September 16, 2011.
So, the biggest change in our patent system since 1952 is now going to happen. (In fact, some parts of the law are already in effect.)
When signing the law, the President said:
“I am pleased to sign the America Invents Act. This much-needed reform will speed up the patent process so that innovators and entrepreneurs can turn a new invention into a business as quickly as possible.”
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Key Provisions Changes U.S. to a First-to-File System
Effective March 16, 2013
Changes what is Prior Art
Effective March 16, 2013
Now for Prior User Defense
More Review Procedures in the Patent Office to Challenge Validity
Effective Sep. 16, 2012
Other Provisions of Interest
Effective now (Marking and Prioritized Examination)
Effective Sep. 16, 2012 (Assignee filing)
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FIRST-TO-FILE SYSTEM
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First-to-File The First-to-File System comes into effect 18 months after
enactment (March 16, 2013). Until then, the current system remains in effect.
“Race to the Patent Office”
Eliminates interference proceedings (no longer litigate "first to invent" issues)
Changes definition of “prior art” to eliminate the ability to "swear behind" prior art cited against patent application
First-to-File system will not apply to any applications with a proper claim of priority earlier than March 16, 2013.
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PRIOR ART
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Prior Art
Changes go into effect with First-to-File
The “prior art” against which patentability is judged has been expanded.
Anywhere (scope expansion) in the world before the filing date (time expansion):
Patented
Described in a printed publication
In public use
On sale
Otherwise available to the public (new-scope expansion- expect litigation on this point)
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Prior Art
“Prior art” also includes U.S. patent applications (or PCT applications designating the U.S.) that are later patented or published
These are prior art as of their earliest effective filing date, which can be a foreign application
Prior law limited this to the earliest actual U.S. filing date
Cannot “swear behind” as allowed under prior law
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Prior Art
Obviousness
Judged as of effective filing date (rather than “at the time the invention was made”)
Patent applications, even if "secret," considered as of filing and before published (most other countries base on publication except for novelty)
Reform: Obviousness includes secret prior art.
Effective Filing Date
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Prior User Defense
The Prior User Defense has been expanded.
Previously limited to methods of doing or conducting business
Now covers any “invention”
Effective now (i.e., applies to all patents issued after September
16, 2011)
Provides a defense to infringement if --
Accused infringer made commercial use of the invention in the
U.S, and
The commercial use occurred more than 1 year before effective
filing date
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Prior User Defense
This is a “personal” defense
Cannot be licensed or assigned by itself (or expanded by acquisition)
Must show continuous use
Not a general license for the entire patent (only extends to the thing that was used)
Interplay with Trade Secrets
May increase the value and desirability of maintaining trade secrets
If successful, allows continued commercial use of anything later patented by a third party
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VALIDITY CHALLENGES
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Validity Challenges and Reexamination
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Challenges
Pre-Issuance Submissions
(before earlier NOA or later of first rejection/publication + 6 mths ) Ex Parte Reexam
(continues as normal)
Post-Grant Review(only by a third party
and up 9 months after patent issues)
Inter Partes Review(after the later of 9 months
after issuance orafter post-grant review)
Patent Grant
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Pre-Issuance Submissions
Any third party can file (can be a “straw man”)
Patent applications, patents, or other printed publication of potential relevance
Time limit -- earlier of (i) allowance or (ii) later of 6 months after publication or first rejection
Must include description of each document's relevance
Filer cannot otherwise communicate with the patent examiner
Applies to all applications pending on or after September 16, 2012
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Post-Grant Review
Post-Grant Review Inter Parties Review Standard
"more likely than not" that at least 1 of the challenged claims is unpatentable
Grounds
Any section 102/103 prior art
Section 112 (enablement and definiteness)
Some discovery available
Standard Substantial new question of
patentability Grounds
Prior art patents and printed publications
Anticipation or obviousness Some discovery available
Any third party can file -- do not need to be threatened. But, there is a preclusion against using the same defenses later in litigation.The fee to file one of these may be very steep, such as $40,000 or more. But, cheaper (and faster) than litigation.
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Supplemental Examination
By Patent Owner
Consider, reconsider, or correct information believed to be
relevant to patent
Patent Office has 3 months to determine if substantial new
question of patentability
If initiated, addresses all identified substantial new questions
(without limitation to patents and printed publications). So
broader than current ex parte reexamination.
Would typically be used to “fix” a patent about to be enforced
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PATENT OFFICE PROCEDURES
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Patent Office Procedures
Prioritized Examination
Patent Office Funding
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Prioritized Examination
Can request “prioritized examination” of an application for a fee of $4800
Request must be filed at the time the application is filed
No need to give a reason
Moves to the top of the Examiner’s queue
In effect now, but currently limited to 10,000 per year
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Patent Office Funding
PTO has authority to set its own fees
The fees to approx. actual PTO costs
Immediate 15% surcharge
Proposed Fee Increases
Suppl. Exam- $5,180 + $16,120= $21,300
Reexams – Ex parte Reexam increased from $2,520 to $17,750
Inter Partes Review - $48,000?
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PATENT MARKING
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Patent Marking
False Marking and Virtual Marking.
False marking penalties reformed.
Can “mark” products via reference to a website.
Effective now.
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CONCLUSIONS
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Observations
First to File makes the U.S. patent system more similar to other countries
March 16, 2013 (critical date)
Expect companies may file more provisional applications
Even with First to File, detailed inventor records remain important.
Because of the Post-Grant Review time limit, early notice of competitor patents is even more critical— consider Monthly patent watch and assessment.
Virtual Marking – consider for patent marking
Supplemental Examination – consider before litigating
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Discussion