1 1 1 AIPLA Firm Logo American Intellectual Property Law Association Experience and Issues After the AIA Two Years Later AIPLA IP Practice in Europe Committee

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American Intellectual Property Law Association

Experience and Issues After the AIATwo Years Later

AIPLA IP Practice in Europe Committee

March 10-14, 2014

Alan J. Kasper

[email protected]

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Key Changes Under the AIA and PLT• Key Filing Provisions

– Oath and Declaration– Recovery of Priority - PLT

• Key Prosecution Provisions– Grace Period and Prior Art

• Derivation Proceedings• Third Party Submissions • PGR and Inter partes Review• Supplemental Examination

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OATH, DECLARATION AND PRIORITY

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Applicant/Oath & Declaration

• Who is Applicant - Need NOT be the Inventor• BUT – Application MUST Name All Inventors

• What is Required– Only Three Statements Required of each Inventor:

• Belief declarant is an original inventor• Application authorized by declarant• Acknowledgement of criminal penalty for false statements

– Statements concerning duty of disclosure and read/understand are optional – but recommended– Combined Oath/Dec and Assignment Permitted

• Who Signs– Each Inventor– Third Person Can Execute and File– Substitute Statement Permitted – important for continuations/divisionals

• Timing for Oath/Dec or Substitute Statement• Can be delayed until payment of issue fee• BEST PRACTICE – file as early as possible

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Application Data Sheet & Power of Attorney

• ADS– ALL Relevant Data NOW Provided by the Application

Data Sheet (ADS)– All Relevant data including inventorship now easily

corrected by use of the ADS– IN SUM - USPTO Procedures and Requirements are

Liberalized – challenges left to litigation

• POA– Best Practice - from real party in interest

• General Power from Assignee• Specific Power from Assignee or Inventor• Separate from Oath/Dec

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What Issues May Arise?

• Oath or Declaration – Validity of patent if incorrect O&D filed and accepted by the USPTO and the patent issues?– Validity of patent if text is defective – one or more of the 3 statutory requirements is missing?– Validity of patent if two USPTO acknowledgments (Duty of Disclosure and Read/Understood)

are not given by inventor?– Validity of patent if Substitute Statement signed without reasonable effort to locate inventor?

• Combined Declaration and Assignment Documents – Can original Company Invention Disclosure Form with (1) detailed disclosure, (2) statement

of 3 statutory requirements (3) assignment of all rights to the Company and (4) inventor signature satisfy the Oath and Dec requirements?

• Application Data Sheet– Effect on patent validity and enforcement of errors in ADS listing of priority, inventor data and

names of joint inventors?– Effect if ADS not signed by authorized individual or at all?

• POA– Attorney responsibility/liability where only Inventor gives POA but real party in interest alone

provides instructions for prosecution?

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Key PLT-Based Changes• Patent Law Treaties Implementation Act of 2012

– Effective December 18, 2013– Implementing legislation for the Geneva Act of the Hague Agreement Concerning the International Registration of

Industrial Designs (“the Hague Agreement”), allows applicants to file a single international design application to acquire global protection.

– Implementing Legislation for the Patent Law Treaty

• Restoration of Priority - Delayed filing of an Application– PLT and PLTIA provide for :

• Restoration of right of foreign priority in applications filed more than twelve months (six months in designs) after the filing date of the foreign application.

• Restoration of domestic benefit of a provisional application in applications filed more than twelve months after the filing date of the provisional application.

– Unintentional Standard– Two month grace period– Fee required– Similar standard for abandoned application or patent (unavoidable standard removed)– Applies to issued patents and pending applications

• Two Month Minimum for Reply– Restrictions, non-compliant notices, etc.

• No Claims Required for Filing Date– Filing date is date on which specification alone is filed

• Filing by Reference– Minimum requirement is reference to prior specification in any country

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KEY PROSECUTION PROVISIONS

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First-to-Invent vs. First-Inventor-to-File

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X CONCEIVED X FILED

Y CONCEIVED

X RTP

Y RTP Y FILED

First-to-Invent: X Can Win

First-Inventor-to-File: Y Wins (If Independent Inventor)

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New Standards for Novelty

• Revised Definition of Prior Art – Eliminates Content of Original Sections 102(a) and

102(c) – 102(g) – Uses New Section 102(a)(1) and Old Section 102(b)

standards:• Keeps "On Sale" & "Public Use"

– ISSUE: can a confidential offer for sale be prior art under the AIA? PTO Guidelines say: NO!! What about the Courts ???

• Keeps "Published and Patented"• Broadens by Adding “otherwise available to public”• Broadens by eliminating Hilmer doctrine

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New Limited Grace Period

• More Limited Grace Period Under New Section 102(b):– Absolute Bar for All Persons, if §102(a)(1) activity More than One Year

before Effective Filing Date– Bar if §102(a)(1) activity is Less than One Year before Effective Filing Date

- BUT Exception• For Disclosures by Inventor or another who obtained from inventor – §102(b)(1)(A)

activity • IF Previously Publicly Disclosed by the Inventor or another who obtained from the

Inventor - §102(b)(1)(B) activity, or

– Bar if §102(a)(2) filing is earlier (no 1 year period) and describes the claimed invention - BUT Exception

• For subject matter Obtained From the Inventor or joint inventor – §102(b)(2)(A) activity • IF subject matter was Previously Publicly Disclosed by the Inventor or another who

obtained from the Inventor - §102(b)(2)(B) activity, or• IF subject matter and claimed invention were Commonly Owned before filing -§102(b)

(2)(C) activity– Owned or subject to duty to assign – e.g., agreement or statutory requirement

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A Pat. App. Filed

12 mos.

B winsU.S. Patent

B's Public Disclosure

NEW Prior Art Provisions: Sword/Shield

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Disclosure “by or obtained from” Inventor B

Filing by independent Inventor A§102(b)(1)(A)

§102(b)(2)(B)§102(a)(1)

Effective Filing Date of B’s Patent App.

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Transition Period for New Applications

New Filing of regular, provisional, PCT or foreign application to get old law grace period

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Act Signed

Section 3(n)(1)(A) provides an 18 month window before new §102 applies to new applications

Applications claiming priority from applications filed in the Window may have old law grace period

18 -month Window Now Closed

Paris Convention, National Stage, Continuation, Divisional and CIP Filing to get old law grace period – no claim with post Window effective filing date

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USPTO Rules for Transition Period

• Statement Required - For applications, filed on or after March 16, 2013 under new 37 CFR 1.55 (foreign priority) and 37 CFR 1.78 (domestic benefit):

• No Requirement - if a reasonable belief that there is no such claim.

• Caution - for Paris Convention applications that are modified prior to US filing – – Avoid adding new matter (even minor editing)– Avoid failing §112 written description

• Caution – for Continuation applications– File with original claims of parent and add new claim set the next day

• Caution - pre-AIA Section 102(g) also will apply if there is any claim having an effective filing date before March 16, 2013

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• Novelty and Grace Period– Is a confidential offer of sale a prior art event?– What are the boundaries of "other wise available to the public"?– What is the effect of adding new subject matter to inventor derived information that is

published by a third party?– What is the definition of "commonly owned," does it include companies that are part of a

family?– What are the requirements for a CRADA to qualify for the exception?– What is "subject matter" and how close does the inventor's published work have to be to the

intervening prior art?– What is the scope of the exceptions under Section 102(b)?– What is the content of a proper Declaration under Rule 130, and what is the effect on validity

if the required scope is not met?• Transition Period Applications

– When does a claim of a priority or domestic benefit application have a post-window effective filing date?– What is the effect on validity and enforceability if the required Statement is not made but should have

been?– What is the effect on validity and enforceability if the Statement is erroneously made?

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DERIVATION PROCEEDING

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Derivation Proceedings35 USC §135(a) - (HR 6621)

• What Patents or Applications – any earlier filed pending application or issued patent

• What Submission – Petition to Initiate Derivation Proceeding

• Who Can Submit– Applicant of a pending application

• Application may be filed after publication of earlier one

• When – Within one (1) year of the deriving application’s first publication of claimed invention :– (1) U.S. Application – (2) PCT Application naming the US (may not be in English)– (3) US Patent

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Derivation Proceedings• What Content

– Support by Substantial Evidence• Date of Invention• Sufficient Access by Deriver• Earlier filing was Unauthorized

– Claim-by-claim showing• Petitioner’s pending claim is same or substantially same as

Respondents claim (including how construed – reference to spec as appropriate)

• Respondent’s claimed invention was actually disclosed to Respondent

– Concise description of asserted relevance of each document– Fee ($400)– Corroborated Affidavit Demonstrating Communication of the

claimed invention to the Earlier Applicant

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• Derivation Proceedings– Can an original inventor who has not filed an application when

seeing a published US or PCT publication or issued patent simply copy the entire document and file as his own application to qualify for initiating the derivation procedures

– How strict will the requirements for initiating the procedure be enforced?

– How much corroboration is need to demonstrate the communication of the claimed invention to the earlier applicant?

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PRE-ISSUANCE SUBMISSIONS BY THIRD PARTIES

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Third Party Submissions35 USC §122(e)

37 CFR 1.290

• What Applications – any pending or abandoned application – No issued patents, reissue apps or reexams

• What Material - Any printed publication of relevance– Patent, published application or publication– Need not be prior art – i.e., office action or reply in

another country

• Who Can Submit– Any third party – no duty of disclosure – ID of real party not required – ID of submitter is required

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Submission Considered by

Examiner

USPTO Reviews Submission for

Compliance with 35 U.S.C. § 122(e) and

37 C.F.R. § 1.290

Submission Made of Record and

Applicant Notified if E-Office Action

Participant

Submission Discarded

Non-compliant

Compliant

Processing Third Party Submissions

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Third Party Notified if Email Address Provided with Request for Notification

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THIRD PARTY SUBMISSIONS

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• THIRD PARTY SUBMISSIONS– What is the scope of material that can be submitted?– What is the duty of the Examiner to consider the

submission and what if such duty is not fulfilled?– What estoppels arise from such submission?– Can better art be held back for later litigation?

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POST PATENT GRANT PROVISIONS

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PGR, IPR, CBM, DER

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Post Grant Review• Post Grant Review - Initiation of Proceedings

• Petition to cancel any claim – stated standard is “more likely than not unpatentable.” – better than 50-50

• Grounds - any related to invalidity (§101,§102, §103, §112, DP)

• Real Parties in interest identified

• Forum - Patent Trial and Appeal Board to Conduct

• Timing • ONLY ONE Window - at 9 months from issuance

• Fee - $12,000 petition and $18,000 institution – no discount

• Civil Action - None pending involving the patent

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Post Grant Review (cont.)• Post Grant Review - Conduct of Proceedings

• Amendments - permitted – no enlargement• Intervening Rights if Amended

• Discovery – limited discovery, sanctions and protective orders (§326)

• Burden of Proof – preponderance – no presumption of validity (§326)• Stay - Possible Stay of Civil Actions• Deadline - One year to decision (extendable by 6 months) (§326)• Appeal - only to CAFC – no Section 145 action• Estoppel – for litigation and other proceedings (ITC)

• same grounds actually raised or could have been raised

• Effective Date – applies to all patents issued 1 year after enactment

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•Director Initiates Proceeding•Discovery and Prosecution•At least 1 chance for Petitioner to reply

One Year

Patent Issues

6 Months

Maximum Extension for Good Cause

•Decision by Director•3 months after Owner Reply•No appeal

•Preliminary Reply by Patent Owner•Period to be set by Director

•Petition to cancel claim(s)•In 9 months after grant•Copies of patents and pubs•Declarations and Expert Opinions•Fee

Maximum Time to Decision

Petition Filed

9 MonthsMax

Preliminary Activity

Time Line for PGR

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Inter partes Review • Inter partes Review - Initiation of Proceedings

• Petition - to cancel any claim – stated standard is “reasonable likelihood that petitioner would prevail” as to one challenged claim 50:50 or less

• Grounds - Limited to those related to invalidity (§§102 and 103 only)

• Parties - Real Parties in interest identified

• Preclusion - if more than 1 year after patentee sues

• Forum - Patent Trial and Appeal Board to Conduct

• Fee - $9,000 petition and $14,000 institution – no discount

• Timing – Any time from grant for first to invent patents

» Over 900 already filed – Nine months after grant for first to file patents

» And after Completion of any Opposition

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Inter Partes Review• Inter partes Review - Conduct of Proceedings

• Amendments - permitted – no enlargement• Intervening Rights if Amended

• Discovery – limited discovery - Sanctions and Protective Orders Provided (§316)

• Burden of Proof – preponderance – no presumption of validity (§316)

• Stay - Possible Stay of Civil Actions• Deadline - One year to decision (extendable by 6 months) (§316) • Appeal - only to CAFC – no Section 145 action• Estoppel – for litigation and other proceedings (ITC)

• same grounds actually raised or could have been raised)

• Effective Date – applies currently to all patents issued anytime• Delay for first to file patents

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•Director Initiates Proceeding•Discovery and Prosecution•At least 1 chance for Petitioner to reply and amend

One Year

First to invent – upon grant

First to file -9 months minimum after grant

6 Months

Maximum Extension for Good Cause

•Decision by Director•3 months after Owner Reply•No appeal

•Preliminary Reply by Patent Owner•Period to be set by Director

•Petition to cancel claim(s)•More than 9 months after grant•Copies of patents and pubs•Declarations and Expert Opinions•Fee Maximum

Time to Decision

Time for Inter Partes Review

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• POST GRANT PROCEDURES– What is the scope of the standards for implementing

PGR and IPR, and how do they differ??– What is the scope of permitted amendments to claims?– What is the proper limit on discovery under the Umbrella

Rules?– What is the scope of the estoppel under PGR and IPR ,

especially grounds that "could have been raised"?– What is the definition of a "real party in interest,"

especially as to affiliated entities and the impact of estoppels?

– What happens if the proceeding does not reach decision within the statutory period of 18 months?

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SUPPLEMENTAL EXAMINATION

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Supplemental Examination

Supp Exam – Initiation of Proceedings

• Patentee intending to enforce in litigation can correct errors and omissions that may be:

• (1) a basis for an inequitable conduct defense• Missing Prior Art• Erroneous Declarations• Erroneous Argument

• (2) a basis for substantive defense• Sections 101, 102, 103, 112, etc.

• ONLY Patentee Can File for Supplemental Exam• Test - Substantial New Question of Patentablilty (SNQ)• Fee has 2 parts – petition ($4,400) and reexamination ($12,100)• Fraud, if discovered, is referred to Attorney General

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•Director concludes supplemental examination to determine SNQ•Certificate issued re SNQ•If SNQ, Director Orders Ex-parte Reexamination Proceeding•Address each SNQ•If No SNQ – no unenforceability for reviewed conduct

Petition Filed

Ex-parte Reexamination Conducted3 months to decide if SNQ

•Patentee files request to consider, reconsider or correct information believed relevant to patent•Supplemental Examination conducted – does information raise a substantial new question (SNQ) of patentability?

•Issued Patent is being considered for enforcement•Review of file history or negotiations raise concern about omissions or errors in submitted art, declarations or argument•Suit has not yet been filed

•Patent not Unenforceable for reviewed conduct

Supp Exam Finished

Re exam Finished

Litigation

Time Line for Supplemental Examination

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• SUPPLEMENTAL EXAMINATION– What is the scope and effect on a defendant's

inequitable conduct defense activity during litigation?– What is the effect of a withholding of relevant material

during the Supplemental Examination process?– Can the SNQ involve all statutory and non-statutory

bases for attack, including erroneous small entity claims, etc.?

– What is the scope of the USPTO reexamination once a SNQ has been identified in response to a Supp Exam petition? Can it be broadened? Can the patentee object?

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Thanks for your attention! Questions?

Alan J. KasperPartner

Sughrue Mion PLLC2100 Pennsylvania Ave.Washington DC 20037

+1-202-293-7060+1-202-368-5259 (mobile)

[email protected]