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Patenting in the Age of Crowdsourcing: An
Expanded Opportunity for Third Party Participation
Law Review CLE April 2013
Sherry L. MurphyMyers Bigel Sibley & Sajovec
Raleigh, North Carolina
Patent ProsecutionO Ex Parte procedure
O Between Applicant and the Patent OfficeO Normally an exchange between
Applicant’s representative and an Examiner
O Few instances where a third party may intervene
Patent Prosecution – 3rd Party Options for Comment
O Old Rule 1.99: third party submission of artO Restricted ability to submit relevant
art within 2 month window from publication
O Limited to 10 pieces of artO No comments or notations allowedO $180 fee
Patent Prosecution – 3rd Party Options for Comment
O Very rarely used
O Can bypass rule compliance by sending references directly to attorney of record, relying on Rule 56 duty compliance for the attorney to submit them to the Patent OfficeO No guarantee the refs will actually be
submitted
Patent Prosecution – 3rd Party Options for Comment
37 CFR 1.291 – ProtestsO Filed before publication or notice of
allowanceO Can file protest after publication if
patent owner consentsO Patents, publications, or other
informationO No limits on number of documentsO Concise explanation of relevance
required
Citations in Patent Files
37 CFR 1.501O Submit patents or printed
publications in file of issued patentO Statement believe pertinent to
patentability of a claimO Serve on patent ownerO Can remain anonymous
America Invents ActO Signed into law September 16, 2011
O A multitude of changes to many statutes with various effective dates
O Update procedures and bring more consistency with patent systems in other countries in the world
America Invents ActO Section 8 third party art submission
provisions took effect September 16, 2012O Final rules published July 17, 2012
O Art submission provisions apply to: O Any application filed before, on, or after
this dateO i.e., Any application within the
publication/examination timing requirements, even if abandoned (pendency not required)
O Any non-provisional utility, design, and plant application, as well as any continuing application
Patent Reform Under the AIA – More Public ParticipationO “[M]ost patent applications will not only
be promptly published, but members of the public will have the opportunity to submit information relevant to patentability that the patent examiner must consider before making a decision to issue a patent.”O Robert A. Armitage, Understanding the
America Invents Act and Its Implications for Patenting, AIPLA Q.J. vol. 40:1, Winter 2012
Patent Reform Under the AIA – Improving Patent Quality
O “This provision provides a mechanism for third parties to contribute to the quality of issued patents by submitting to the Office, for consideration and inclusion in the record of patent applications, any patents, published patent applications, or other printed publications of potential relevance to the examination of the application.” O Changes To Implement the Preissuance
Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, Fed. Reg. Jan. 5, 2012
Crowdsourcing Patents
Crowdsourcing PatentsO Crowdsourcing: obtaining ideas,
content or services from a large and undefined group of people, such as an online community, rather than from more traditional employees or service providers
What is submittedO 35 U.S.C. 122(e)O Any patent, published patent
application, or other printed publication of potential relevance to the examination of the application (need not be prior art)
O Must include a concise description of the asserted relevance of each submitted document
O Statement confirming the submission made in compliance with the statute
What is Submitted
What is Submitted
What is Submitted
Examiner treatmentO Examiner must consider any proper
submissionO Treated like an IDS, and same format
requirements for listings of references
O References considered will be printed on the face of the patent along with other references considered during prosecution
Third Party Submissions: Old Versus New
Old Rule: CFR 1.99
New Rule: CFR 1.290
Can submit printed publications within 2 months of application publication
Can submit printed publications before the earlier of: A) a notice of allowance; or B) the later of 1. 6 months after publication, or 2. first rejection of any claim
No comments permitted on the references, or even notations
Required to submit concise description of the asserted relevance of each reference
Must serve on attorney of record before filing
Need not serve on attorney of record
Third Party Submissions: Old Versus New – Cont’d
Old Rule: CFR 1.99
New Rule: CFR 1.290
Fee $180 and limited to 10 total patents or publications
Fee $180 fee for every 10 documents or fraction thereof; fee waived for a third party’s first submission with 3 or fewer documents
Need not identify real party in interest
Need not identify real party in interest
Applicant has no duty to, and need not, reply, but should file IDS to ensure examiner considers submission
Applicant need not separately file IDS with documents, and no duty to, and need not, reply
But: Will We Use It?
OPatent practitioners/competitor companies
OOther members of the public
Strategic Advantages to Submitting Art in Another’s Application?
O Help guard against patents related to your business that are overbroad
O More favorable standards of reviewO Broadest reasonable interpretation of
claimsO No presumption of validity
O No estoppel effect
HypotheticalO During a freedom to operate search
for her company’s new widget, Ann Attorney comes across a pending patent application with extremely broad claimsO Claims possibly read on the widgetO Ann does a prior art search to probe
validity should the broad claims ultimately issue
HypotheticalO Ann finds three references that she is excited
about because they seem to build a strong case of obviousness against the claims
O Ann decides to take advantage of the new opportunity under the AIA to submit the references in the application O She can submit anonymously through a firmO No fee required because it is her first
submission and there are only 3 referencesO Her concise statement of relevance makes it
easy for examiner to apply them to a rejection
What may happen? O The examiner picks up the
submissions and proceeds to reject the application over the three references
What may happen?
O The examiner considers the references and statement, but does not decide to use them, but rather applies the same art he is more familiar with and has been using in other, similar cases
Results
O Patent Applicant is provided opportunity to study the references and argue/amend, and include additional fall back positions in dependent claimsO May no longer read on widget; orO May still read on widget
Results
O Applicant may also think application is more valuable and be encouraged to put more effort into the patent family then they otherwise would have
Results
O References are formally considered by the examiner and printed on the face of the patent, and the claims enjoy a presumption of validity over the references
Presumption of ValidityO As a general matter, every patent is presumed
valid, and each claim of any patent is presumed valid irrespective of the validity of any other claim
O Given this statutory presumption, a patent challenger has the burden of proving invalidity by clear and convincing evidence
O "Clear and convincing” evidence is that which gives the finder of fact an abiding conviction that the truth of the proponent’s factual contentions are “highly probable”
O Astrazeneca AB v. Mylan Labs., Inc. (In re Omeprazole Patent Litig.), 490 F. Supp. 2d 381, 500 (S.D.N.Y. 2007)
Presumption of ValidityO When a party asserts invalidity of a patent
based on prior art references that were before the patent examiner when he allowed the patent claims, the difficulty of overcoming the presumption of validity is greater than it would be if the evidence relied on was not before the examiner
O The party attacking validity has the burden of overcoming the deference that is due to a governmental agency presumed to have done its job properly
Hypothetical – no submission
O Ann, instead, decides to hold the references in a file along with her opinion that any patent issuing on widget is invalid, and the company is advised to go forward with sales
O Patent application may be abandoned, or issue on more narrow claims no longer covering widget, with no continuation filed; or
O Patent issues covering widget
Hypothetical – no submission
O Patent issues covering widgetO Infringement may never be detectedO Company may decide to stop selling widget O Patent owner may not litigate; may seek to
license or assignO Litigation is expensive, and there are other
options that may be pursued short of litigationO Ann should not rely on the pursuit of another
strategy, however, and discount the costs and commitment of litigation
O Patent owner may also assign his patent to a more aggressive party (e.g., competitor or NPE)
Hypothetical – no submission
O Patent owner alleges infringementO References were not considered during
prosecution, so no deference based on examiner’s consideration
O But, claims still have presumption of validityO Many months and high cost before issue is
even reached in litigationO More limited ability for patent owner to
amend claims to get around references at this pointO Owner cannot file broadening amendments in
reissue if more than 2 years from issuance O Owner can request reexamination, but costly O May be intervening rights
Hypothetical – no submission
O Ann could challenge the issued patent with inter partes reviewO Replaces inter partes reexamination
under the AIAO Available for all patents, regardless of
priority dateO Prior art limited to patents and printed
publications O Can be brought by the Company within 1
year of a litigation being asserted against it; litigation may be stayed
O Limited discovery; final decision in about 18 months
But: Will We Use It?
OPatent practitioners/competitor companies
OOther members of the public
CriticismsO Who wants to spend their spare time
to do an art search and put together a formal IDS submission in a patent application?
O Will a non-attorney be able to submit a legally sound description of the relevance of the submitted references? O Ability to read and properly construe
the pending claims? O Understanding of patentability
requirements?
O A joint project between the New York Law School and the USPTO
O Funded by GE, HP, IBM, Article One Partners, Microsoft, Open Innovation Network, Red Hat, Intellectual Ventures
O Original pilot ran June 2007 to June 2009O Limited to 400 applicationsO Limited to software and business methodsO 2,700 registered reviewers from more than 140
countries (most from U.S.) O Examiners used art in about 20% of applications
O Second pilot ran Oct. 2010 to Sept. 2011O Expanded to biotech,
telecommunications, others
O USPTO sent notices encouraging applicants to elect to participate
O Declared itself a success in third-party participation to improve patent quality
O The project was “so successful that the America Invents Act (AIA) makes provision for the USPTO to implement a Peer-to-Patent type system. And that is just what is happening.”
O “Best of all, you will no longer be limited in the areas of technology for which prior art my be submitted. Everything is fair game!”
Article One PartnersO Organization offering cash rewards
to public patent searchers who uncover the best evidence
O A client pays to set up a research project, or “study,” for registered searchers to conduct
O Normally used for patents involved in litigation or pre-litigation research
Applications are now open to third-party submissionsO After September 16, 2012O Must comply with IDS-like formatting
requirementsO Pay fee for submitting more than
three references
Applications are now open to third-party submissions
O Examiner-initialed reference listing may be the only formal indication to ApplicantO Participants of e-Office Action
program may be notified of third-party submissions
O Check initialed listings against prosecution records
Third Party Submissions – Initial Statistics
O As of December 2012, 270 third party submissions had been received, in 111 applications, in the three months since the new program started in September
O The art unit receiving the most was Technology Center 3700, which includes many software-related inventions such as those in electronic gaming devices and medical equipment
Third Party Submissions – Initial Statistics
O PTO Director, David Kappos, noted, “when looking at the spread of submissions as a whole, it’s important to note that there are not a lot of classifications untouched.”
O Director Kappos concludes that this demonstrates (along with the use of the new post-grant review procedure) that the public finds valuable the new ways to interact with the PTO and they will contribute quickly to improved patent quality
What Has Happened thus Far?
O Almost all of the submissions are filed by a registered practitioner (patent attorney or patent agent)
O Many are filed after a first Office Action has been received
O Most cite only 1-5 referencesO Most are not used by the Examiner
O One examiner commented that the reference submitted was no more relevant than the art already applied in the Office Action
General Impressions Thus Far
O Most have no impact on examination
O There were, however, a couple that did make a difference in the examiner’s rejections and/or the applicant’s amendments
Europe – a comparisonO Article 115 EPC and Rule 114 EPCO Third party submissions can be made
during prosecution any time after publication O Can remain anonymous, and no
estoppelO Observations can be as short or as long
as desired, though the EPO favors “well-structured and concise third-party observations”
*With comments from Dr. Richard Gibbs, Marks & Clerk LLP, Glasgow
Europe – a comparisonO Third party observations are filed in
writing in an official language of the European Patent Office (English, French or German) and state the grounds on which they are based
O Observations will be communicated to the applicant, who may comment on them
O Often application that issues will also have an opposition filed
Europe – a comparisonO Opposition – inter partes proceeding that
can be filed within 9 months after grantO Real Party in Interest can remain
anonymous O Longer wait, more expensive it can
becomeO Oppositions only after patent is granted,
much more expensive, and the process of getting a hearing can take several more years
O After validation, have to address patent on a country-by-country basis
Europe – a comparison
O Validation – when the EPO patent becomes a patent in individual European countries
O Some national courts give deference to the EPO, others will assess the facts independently
Europe – a comparisonO More flexibility in the issues raised in
third party observations as compared to opposition O Observations may be directed to
anything concerning the patentability of the invention, e.g., novelty, inventive step (nonobviousness), sufficiency, unallowable amendments (added matter), and clarity
O In Opposition clarity cannot be raised as an initial ground to challenge the patent
A Word About Post-grant Review
O There is a new “post-grant review” in the US under the AIA that may be initiated within 9 months of grant of a US patent
O Rather than a next step in challenging a patent after third party observations, however, as perhaps an opposition in Europe may be considered, it is more like a mini-trialO Real party in interest must be identifiedO Limited Discovery O Estoppel applies
Europe - Is it used?O In practice, third party observations are rarely
filedO About 0.75% of examined applications, though
rate has been increasingO More common in biotech/chem cases than other
technologies
O Parties submitting observations do not become party to the proceedings, and thus in practice can have little or no influence on the way the Examiner considers or decides the issues raised
O However, third party can monitor the proceedings and submit further observations
Europe - Is it used?O Though no estoppel, there is concern
that something raised in observations during prosecution and ignored and easily rebutted may make the same argument more difficult laterO The same or similar arguments may
not be given much weight later in an opposition
O Therefore, some prefer to wait for opposition, where third party is able to participate and argue the case
Europe - Is it used?O More than 80% of cases in which
observations are filed receive only one observation, and most are not accompanied by reasoned argument
O More than half of the time examiners have made use of the observations
O About a third of applications in which observations have been filed are opposed after grant
Europe - Is it used?O EPO promoting third party
observations by included new tab when looking at the status of an application to an online fillable form for ease of submission
O Personal details of the submitter are not required to be provided, but the third party could choose to do so to be given opportunity to correct any formal deficiencies in the submission
PCT ApplicationsO WIPO introduced July 2, 2012
O Can submit 3rd party observations in PCT applications in the PatentScope search system
O Searchers will notice a button marked for such submissions
PCT ApplicationsO Timing:
O From time of publication until 28 months from priority date
O Content: O Submit relevant art for novelty and inventive stepO Submit statement of relevanceO Must have WIPO account and indicate real party in
interest, though may elect to keep confidential with respect to applicant and public records
O Each party may only submit observations once in an application
O Can submit comments in any of the 10 PCT languages and references in any language
PCT ApplicationsO What happens:
O Applicant may, but is not required to, respond
O Art will be forwarded to ISA if search report is not yet released, which may or may not use it
O Designated states are notified
O Eliminates need to separately file third party observations in multiple jurisdictionsO But how many PCT applications actually
enter the national stage?
WIPO Comments on PCT system
O “This additional feature is an example of using the power of the Internet to assist in quality outcomes in the patent process.”
O “As of mid-September, 18 third-party observations had been submitted via the system. While relatively small, the seriousness of the submissions thus far vindicates the usefulness of the new facility.”
Third Party Submissions – Will We Use It in the U.S.?
O Perhaps under the right circumstancesO Clearly unpatentable claims, need
FTO clearance or want to aid in limiting portfolio of competitor
Third Party Submissions – Will We Use It in the U.S.?
O May become more common than current practice, but will likely still be relatively rare
O Though more time is provided, still restricted to provide references and comments before examination has begun or less than 6 months after publication
O Examiners not accustomed to using such submissions
Third Party Submissions – Will We Use It in the U.S.?
O Active competitors monitoring for similar patent applications
O Maybe by volunteers/searchers funded by a nonprofit organization who are actively seeking applications that fit into the time periods
Third Party Submissions – Will We Use It in the U.S.?
O May be better, strategically, to wait and let examination run its natural course instead of providing opportunity and impetus for Applicant to craft claims around references
O Time and expense inherent in the patent prosecution process in many cases is its own limiting factor on the issuance of patents
Time Will Tell
OQuestions? OComments?
smurphy@myersbigel.com
http://www.myersbigel.com
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