aia - overview

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Brian Eller, J.D., currently works as a licensing associate for North Carolina State University (NCSU) Office of Technology Transfer (OTT), which helps university inventors to commercialize their inventions. He earned a B.S. in Materials Engineering from California Polytechnic State University, San Luis Obispo and a J.D. from U.C. Davis School of Law. Prior to joining the OTT, he completed an internship at the U.C. Davis InnovationAccess, a unit of the Office of Research, in addition to an externship at the United States Patent and Trademark Office Technology Center Unit #2800, where he examined patent applications in the field of semiconductors, electrical and optical systems, and components. During law school, Mr. Eller spent a summer as a judicial extern for the Honorable Charles R. Wolle, Senior Judge for the Southern District of Iowa. Hantel Technologies is pleased to announce the next seminar in the 2011 – 2012 Hantel Tech webinar series: Fast and flexible service for the medical device market Speaker: Brian Eller, NCSU Date: Thursday, October 27 th , 2011 Time: 11:30 AM – 1:00 PM PST First 30 minutes will be used as a networking session - with seminar to begin at noon. Location: Hantel Technologies | 703 Sandoval Way | Hayward, CA Please register on EventBrite (http://hanteltech.eventbrite.com/ ) for this free seminar – you are cordially invited to attend in person (lunch provided / limited number of seats), to join live via Webinar, or to view at a later date (links will provided to those who register for notification). Abstract: As the most significant change in patent law reform since 1952, the Leahy-Smith America Invents Act (AIA) has been signed into law this year. In addition to a change from the "first to invent" from the "first to file," there are some key challenges and benefits that both entrepreneurs and smaller developing companies should be aware of in navigating the new patent legislation. These changes include fast track examination, new satellite offices including possibly one to emerge in the Bay Area, new "derivation proceedings," a weakened filing grace period, and expansion of post grant review. Mr. Eller will share his general overview and analysis of the immediate and longer term impacts on innovation and technology development, with special relevance for those with an interest in medical devices. Navigating the new risks and rewards of the America Invents Act for start-ups and entrepreneurs

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Page 1: AIA - Overview

Brian Eller, J.D., currently works as a licensing associate for North Carolina State University (NCSU) Office of Technology Transfer (OTT), which helps university inventors to commercialize their inventions. He earned a B.S. in Materials Engineering from California Polytechnic State University, San Luis Obispo and a J.D. from U.C. Davis School of Law.  Prior to joining the OTT, he completed an internship at the U.C. Davis InnovationAccess, a unit of the Office of Research, in addition to an externship at the United States Patent and Trademark Office Technology Center Unit #2800, where he examined patent applications in the field of semiconductors, electrical and optical systems, and components.  During law school, Mr. Eller spent a summer as a judicial extern for the Honorable Charles R. Wolle, Senior Judge for the Southern District of Iowa.

Hantel Technologies is pleased to announce the next seminar in the 2011 – 2012 Hantel Tech webinar series:

Fast and flexible service for the medical device market

Speaker: Brian Eller, NCSU

Date: Thursday, October 27th, 2011

Time: 11:30 AM – 1:00 PM PSTFirst 30 minutes will be used as a networking session - with seminar to begin at noon.

Location: Hantel Technologies | 703 Sandoval Way | Hayward, CA

Please register on EventBrite (http://hanteltech.eventbrite.com/) for this free seminar – you are cordially invited to attend in person (lunch provided / limited number of seats), to join live via Webinar, or to view at a later date (links will provided to those who register for notification).

Abstract: As the most significant change in patent law reform since 1952, the Leahy-Smith America Invents Act (AIA) has been signed into law this year. In addition to a change from the "first to invent" from the "first to file," there are some key challenges and benefits that both entrepreneurs and smaller developing companies should be aware of in navigating the new patent legislation. These changes include fast track examination, new satellite offices including possibly one to emerge in the Bay Area, new "derivation proceedings," a weakened filing grace period, and expansion of post grant review. Mr. Eller will share his general overview and analysis of the immediate and longer term impacts on innovation and technology development, with special relevance for those with an interest in medical devices.

Navigating the new risks and rewards of the America Invents Act for start-ups and entrepreneurs

Page 2: AIA - Overview

Hantel Technologies is pleased to announce in 2012 the upcoming topics in the Hantel Tech webinar series:

Fast and flexible service for the medical device market

In consideration of the upcoming holidays, October’s webinar will beour last public seminar scheduled for 2011 at Hantel Tech, and wewill feature a return to our webinar series in the new year (January 26, 2012).

Please email [email protected] for announcement of the next seminar/webinar in December.

• Plasma technology• Three-dimensional printing• Integrating market research into the product development process• Viewpoint on medical device inspections from the California Department of Public Health (Food and Drug Branch)

Please share what else you would like to see in our series

Future topics in 2012

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3

Navigating the New Risks and Rewards of the American Invents

Act for Start-Ups and Entrepreneurs

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4N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

Leahy-Smith America Invents Act (AIA) Overview

(Enacted September 16, 2011)

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5N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

America Invents Act Overview

The Bill is 150 pages long (in bill print style). • By comparison:

– Patent Act of 1952 – 24 pages (approx. 66 pages in modern bill print style).

– Patent Act of 1870 – 20 pages.– Patent Act of 1836 – 9 pages. – Civil Rights Act of 1963 – 28 pages. – National Labor Relations Act of 1935 – 9 pages. – Clean Air Act of 1963 – 10 pages.

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6

• Enacted September 16, 2011

• Key Provisions

– First to File

– Derivation Proceedings

– Post Grant Review Proceedings

– 3rd party submissions

– Prior User Defense

– Supplemental Examination

– Fee Setting/Fee DiversionN o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

Background of America Invents Act

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• § 102 First to File & Weakened Grace Period

• § 135 New Derivation Proceedings

• §§ 321-29 Expansion of Post Grant Review

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

Key challenges for small companies

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• Statutory Bars

• Prior Art

• Novelty, Non-obviousness

• Priority dispute, Interference

• Provisional Patent Application

• Non-Provisional Patent Application

• PCT Application

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

Patent terms to know

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9

• Establishment of micro entities

• Prior use defense

• New satellite offices (considering Bay Area as a possibility)

• Patent ombudsmen program for small business

• USPTO to work with pro-bono IP law firms to help small business

• Fast track examination

• Opinions of counsel cannot be used to prove willful infringement

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

Benefits for small companies

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One of the most sweeping changes of the Act is to change the U.S. Patent Law from a “first-to-invent” priority system to a “first-to-file” priority system.

(See Sec. 3. FIRST INVENTOR TO FILE.)

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Overview: “First Inventor To File”

The stated purpose of this change is to “promote harmonization of the United States patent systems with those commonly used in nearly all other countries throughout the world”(See Sec. 3(p)).

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Section 3 will not become effective until March 16, 2013 (18 months after enactment). This provision will apply only to applications which have an earliest effective filing date after March 16, 2013. (See Sec. 3(n)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Overview: “First Inventor To File”

This means patent applicants will have time to adjust their practices to account for this provision.  

Also, different standards of prior art will apply in the future depending upon effective filing date of the patent application or patent.

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Current Patent Law

Under current U.S. Patent Law, as to many categories of prior art, the determination whether a reference is prior art is based on whether the reference pre-dates the date of the patent applicant’s “invention.” (See, e.g., 35 U.S.C. §§ 102(a) & (e)).

Text from Act

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless –

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Existing Law (currently in effect)

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Text from Act (cont.)

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless –

***

(e) the invention was described in - (1) an application for patent, published *** by another filed in the United States before the invention by the applicant for patent ****

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Existing Law

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Text from AIA

§ 102. Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

***

Effects of AIA on Prior Art

Under the Act, the determination of whether a particular reference is prior art will instead be based on whether the reference pre-dates the “effective filing date of the claimed invention.” (See new 35 U.S.C. § 102(a)(1) & (2)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 AIA (effective March 13, 2013)

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Text from AIA

§ 102. Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— ***

(2) the claimed invention was described in a patent issued ***, or in an application for patent published ***, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 AIA (effective March 13, 2013)

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Current U.S. Law

Under current U.S. Patent Law, as to many categories of prior art, the determination whether a reference is prior art is based on whether the reference pre-dates the date of the patent applicant’s

“invention.”(See, e.g., 35 U.S.C. §§ 102(a) & (e)).

Patent Law Under AIA

Under the Act, the determination of whether a particular reference is prior art will instead be based on whether the reference pre-dates the “effective filing date of the claimed invention.”

(See new 35 U.S.C. § 102(a)(1) & (2)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Comparison of Prior Art Timing

16

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Current Patent Law

Under current U.S. Patent Law, prior art includes:

* Patents anywhere

+ before invention

Text from Act

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless –

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Existing Law Prior Art (Issued Patent)

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Current Patent Law

Under current U.S. Patent Law, prior art includes:

* Patents anywhere

+ more than 1 year before first U.S. application date

Text from Act

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless – ***

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Existing Law Prior Art (Issued Patent)

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Text from AIA

§ 102. Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

***

Effects of AIA on Prior Art

Under the Act, prior art will include:

* Patents anywhere

+ before effective filing date

(new 35 U.S.C. § 102(a)(1)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 AIA Prior Art (Issued Patent)

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Current U.S. Law

Under current U.S. Patent Law, prior art includes:

* Patents anywhere

+ before invention

+ more than 1 year before first U.S. application date

(35 U.S.C. §§ 102(a) & (b)).

Patent Law Under AIA

Under the Act, prior art will include:

* Patents anywhere

+ before earliest effective filing date

(new 35 U.S.C.§102(a)(1)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Comparison of Prior Art (Issued Patent)

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Current Patent Law

Under current U.S. Patent Law, prior art includes:

* Printed Publications anywhere

+ before invention

(35 U.S.C. §§ 102(a)).

Text from Act

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless –

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Existing Law Prior Art (Printed Publication)

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Current Patent Law

Under current U.S. Patent Law, prior art includes:

* Printed Publications anywhere

+ more than 1 year before first U.S. application date

(35 U.S.C. §§ 102 (b)).

Text from Act (statutory bar)

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless – ***

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Existing Law Prior Art (Printed Publication)

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Text from AIA

§ 102. Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

***

Effects of AIA on Prior Art

Under the Act, prior art will include:

* Printed Publications anywhere

+ before effective filing date

(new 35 U.S.C. § 102(a)(1)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 AIA Prior Art (Printed Publication)

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24N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 AIA Prior Art (Printed Publication)

What is considered a “publication”?

• Printed journal article or a book• Handout at a seminar or class • On-line meeting abstract• Poster presentation - specific contents of a poster hard

to document 1 - 2 years after the poster event; could have been photographed.

• E-journal paper, including on-line “previews”• Magazine or newspaper story• Thesis once it is cataloged and accessible• Posting to a web page or blog

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Current U.S. Law

Under current U.S. Patent Law, prior art includes:

* Printed Publications anywhere

+ before invention

+ more than 1 year before first U.S. application date

(35 U.S.C. §§ 102(a) & (b)).

Patent Law Under AIA

Under the Act, prior art will include:

* Printed Publications anywhere

+ before earliest effective filing date

(new 35 U.S.C. § 102(a)(1)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Comparison of Prior Art (Printed Publication)

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Current Patent Law

Under current U.S. Patent Law, prior art includes:

* Prior Public Use in the U.S.

+ before invention

(35 U.S.C. § 102(a)).

Text from Act

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless –

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Existing Law Prior Art (Public Use)

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Current Patent Law

Under current U.S. Patent Law, prior art includes:

* Prior Public Use in the U.S.

+ more than 1 year before first U.S. application date

(35 U.S.C. §§ 102(b)).

Text from Act

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless – ***

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Existing Law Prior Art (Public Use)

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Text from AIA

§ 102. Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

***

Effects of AIA on Prior Art

Under the Act, prior art will include:

* Prior public use anywhere

+ before effective filing date

(See new 35 U.S.C. § 102(a)(1)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 AIA Prior Art (Public Use)

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29

Current U.S. Law

Under current U.S. Patent Law, prior art includes:

* Prior public use in the U.S.

+ before invention

+ more than 1 year before first U.S. application date

(35 U.S.C. §§ 102(a) & (b)).

Patent Law Under AIA

Under the Act, prior art will include:

* Prior public use anywhere

+ before effective filing date

(new 35 U.S.C. § 102(a)(1)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Comparison of Prior Art (Public Use)

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30

Current Patent Law

Under current U.S. Patent Law, prior art includes:

* Prior Sale in the U.S.

+ more than 1 year before first U.S. application date

(35 U.S.C. §§ 102(b)).

Text from Act

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless – ***

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Existing Law Prior Art (On Sale)

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Text from AIA

§ 102. Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

***

Effects of AIA on Prior Art

Under the Act, prior art will include:

* On sale anywhere

+ before effective filing date

(See new 35 U.S.C. § 102(a)(1)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 AIA Prior Art (On sale)

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Current U.S. Law

Under current U.S. Patent Law, prior art includes:

* Patents anywhere

* Printed Publications anywhere

* Prior Use in the U.S.

* Prior Knowledge in U.S.

* Prior sale in the U.S. more than 1 year prior

(35 U.S.C. §§ 102(a) & (b)).

Patent Law Under AIA

Under the Act, prior art will include:

* Patents anywhere

* Printed Publications anywhere

* Prior public use anywhere

* “Otherwise available” anywhere•On sale anywhere

(new 35 U.S.C. § 102(a)(1)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Comparison of Prior Art (Overall)

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The Act retains a limited one-year “grace period” under the “exceptions” provision for disclosures made one year or less before the effective filing date of the claimed invention “by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” (new 35 U.S.C. § 102(b)(1)).

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 (b) “Exception” Weakened Filing Grace Period

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§ 102 Examples

One Year

Conception and

reduction to practice by

Ms. X of ABC

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under § 102 (OLD)

Conception and

reduction to practice by

Ms. Y of ABC

Effective Filing date of claim to ABC filed by Ms. Y

Under the old rules, who wins?

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§ 102 Examples

One Year

Conception and

reduction to practice by

Ms. X of ABC

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under § 102 (OLD)

Conception and

reduction to practice by

Ms. Y of ABC

Effective Filing date of claim to ABC filed by Ms. Y

Ms. Y not entitled to a Patent; Ms. X wins!

§ 102. (g) (2) A person shall be entitled to a patent unless – before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

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36N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Examples

One Year

Conception and

reduction to practice by

Ms. X of ABC

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under § 102 (NEW)

Conception and

reduction to practice by

Ms. Y of ABC

Effective Filing date of claim to ABC filed by Ms. Y

Under the new rules, who wins?

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37N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Examples

One Year

Conception and

reduction to practice by

Ms. X of ABC

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under § 102 (NEW)

Conception and

reduction to practice by

Ms. Y of ABC

Effective Filing date of claim to ABC filed by Ms. Y

Ms. X not entitled to a Patent; Ms. Y wins!

§ 102. (a) (2) A person shall be entitled to a patent unless— the claimed invention was described in a patent issued ***, or in an application for patent published ***, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

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38N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Examples

One Year

Conception and

reduction to practice by

Ms. X of ABC

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under § 102 (OLD)

Publication of ABC by Ms. Y

Under the old rules, is Ms. X entitled to a patent?

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39N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Examples

One Year

Conception and

reduction to practice by

Ms. X of ABC

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under § 102 (OLD)

Publication of ABC by Ms. Y Ms. X is entitled to a patent

(publication is after the invention and the filing is

within 1 year of the printed publication); Ms. X wins!

§ 102. A person shall be entitled to a patent unless - (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States,

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40N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§ 102 Examples

One Year

Conception and

reduction to practice by

Ms. X of ABC

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under § 102 (NEW)

Publication of ABC by Ms. Y

Under the new rules, is Ms. X entitled to a

patent?

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§ 102 Examples “Weakened Grace Period”

One Year

Conception and

reduction to practice by

Ms. X of ABC

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under § 102 (NEW)

Publication of ABC by Ms. Y

Ms. X is not entitled to a patent Ms. X loses!

§ 102. (a) (1) A person shall be entitled to a patent unless— the claimed invention was described in a patent issued ***, the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

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§ 102 Examples

One Year

Publication by Ms. X of

ABC

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under New § 102

Under the new rules, can Ms. X get a patent?

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§ 102 Examples

One Year

Publication by Ms. X of

ABC

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under New § 102

EXCEPTION APPLIES, Ms. X can get a patent

§ 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if—(A) the disclosure was made by the inventor ***

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§ 102 Examples

One Year

Publication by Ms. X of

ABC

Effective Filing date of claim to ABC filed by Ms. X and Ms. Y as co-inventors

Sample Cases Under New § 102

Under the new rules, can Ms. X and Ms. Y get a

patent?

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§ 102 Examples

One Year

Publication by Ms. X of

ABC

Effective Filing date of claim to ABC filed by Ms. X and Ms. Y as co-inventors

Sample Cases Under New § 102

EXCEPTION APPLIES, Ms. X and Ms. Y can get a

patent

§ 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if—(A) the disclosure was made by the *** joint inventor ***

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§ 102 Examples

One Year

Ms. X discloses

ABC under CDA to Mr. Y

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under New § 102

Mr. Y publishes an

article disclosing

ABC Under the new rules, can Ms. X get a patent?

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§ 102 Examples

One Year

Ms. X discloses

ABC under CDA to Mr. Y

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under New § 102

Mr. Y publishes an

article disclosing

ABC NOT PRIOR ART

§ 102. (a) A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

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§ 102 Examples

One Year

Ms. X discloses

ABC under CDA to Mr. Y

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under New § 102

Mr. Y publishes an

article disclosing

ABC EXCEPTION! Ms. X can get a patent

§ 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if—(A) the disclosure was made *** by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

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§ 102 Examples

One Year

Ms. X discloses

ABC under CDA to Mr. Y

Effective Filing date of claim to ABC filed by Ms. X and Ms. Y as co-inventors

Sample Cases Under New § 102

Mr. Y publishes an

article disclosing

ABC

Mr. Z publishes an

article disclosing

ABC

Under the new rules, can Ms. X get a patent?

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§ 102 Examples

One Year

Ms. X discloses

ABC under CDA to Mr. Z

Effective Filing date of claim to ABC filed by Ms. X and Ms. Y as co-inventors

Sample Cases Under New § 102

Mr. Y publishes an

article disclosing

ABC EXCEPTION!, Ms. X can

get a patent

§ 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if—(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Mr. Z publishes an

article disclosing

ABC

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§ 102 Examples

One Year

Ms. X discloses AB under CDA

to Mr. Z

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under New § 102

Mr. Z publishes an

article disclosing

ABC Under the new rules, can Ms. X get a patent on

ABC?

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§ 102 Examples

AB versus ABC

C) Eraser

A) Body

B) Tip

A) Body

B) Tip

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§ 102 Examples

One Year

Ms. X discloses AB under CDA

to Mr. Z

Effective Filing date of claim to ABC filed by Ms. X and Ms. Y as co-inventors

Sample Cases Under New § 102

Mr. Z publishes an

article disclosing

ABC Not Prior Art!

§ 102. (a) A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

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§ 102 Examples

One Year

Ms. X discloses AB under CDA

to Mr. Z

Effective Filing date of claim to ABC filed by Ms. X and Ms. Y as co-inventors

Sample Cases Under New § 102

Mr. Z publishes an

article disclosing

ABC EXCEPTION TO PRIOR ART!?!?!; UNCLEAR

§ 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if—(A) the disclosure was made *** by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

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• Change: For priority disputes, priority is given to the first inventor to file an application, or to the first inventor to disclose the invention to the public, assuming they then file within a year. Swearing behind a reference is eliminated.

• The change effects patents that have an earliest effective filing date after March 16, 2013.

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§ 102 Summary

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• Loss of patent rights if new prior art published after the invention date but before the filing date

• Creates “race” to the patent office.• Time & funding used for costly paperwork and legal

fees - NOT to test and validate the product or market, R&D, building a business, buying inventory, jobs.

• Increased due diligence required for investors to ensure that no previous disclosures were made before filing.

• More but lower quality patents filed (increased backlog).

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§ 102 Implications

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• Consider urgency on case by case basis- Crowded/Active area; predictable versus

unpredictable art•Prompt or immediate filing of application - Inventors should report inventions to decision-

makers quickly- Make strategic patent filing decisions quickly- Work closely and quickly with patent attorneys

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§ 102 Patent Strategy: File Early!!!

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•Provisional applicationsDevelop rolling provisional application filing strategy Revisit invention disclosure form(s) – include description of

invention in application formatPre-emptive disclosure strategy for U.S. filings (NOT

WORLD)Importance of setting “stake in the ground”Extent of disclosure may determine extent of rightsCarefully document disclosures and preserve the records

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§ 102 Patent Strategy: File Early!!! (Provisional)

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Basic strategy generally not impacted - continue to file a provisional application before any public disclosure to retain foreign rights.

So, FILE EARLY AND OFTEN? Filing early and often as a risk mitigation strategy requires a significant budget commitment or a lower "acceptance rate“ for conversion to utilities.

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§ 102 Patent Strategy: File Early (continued)!!!

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• Change: Interference proceedings are replaced with “derivation proceedings” in cases in which the applicant claims that a competing application or prior disclosure was derived from the applicant’s own work.

• Effective Date: Applies to applications with effective filing dates after March 16, 2013.

• Effect: Creates a proceeding where an owner of a later-filed application can challenge that an earlier-filed patent was derived from their inventor. – The action must be filed within 1 year from the publication of the first

application or within 1 year from the issuance of a first patent– USPTO proceeding if it is a pending application and civil action if an

issued patent.

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§ 135 New “Derivation Proceedings”

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An applicant may succeed in the derivation proceeding against the owner of another patent or patent application that claims the same invention and has an earlier effective filing date, if he can establish that the invention claimed in the other patent or patent application was derived from the inventor of the later-filed patent application.  (See new 35 U.S.C. §135).

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§ 135 New “Derivation Proceedings”

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§ 135 Examples

One Year

Ms. X discloses

ABC under CDA to Mr. Y

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under New § 102

Under the new rules, can Ms. X get a patent?

Effective Filing date of claim to ABC filed by Mr. Y

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§ 135 Examples

One Year

Ms. X discloses

ABC under CDA to Mr. Y

Effective Filing date of claim to ABC filed by Ms. X

Sample Cases Under New § 102

Ms X. must initiate a derivation proceeding

against Mr. Y; To win, Ms. X must establish that the invention claimed in the other patent or patent

application was derived from the inventor of the

later-filed patent application

Effective Filing date of claim to ABC filed by Mr. Y

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• Consider implementing documentation procedures for communications regarding disclosures – This will help “establish that the invention claimed in the other

patent or patent application was derived from the inventor of the later-filed patent application”

• Showing access will be key! – Law might develop similarly to copyright with respect to

derivative works

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§ 135 Patent Strategy

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• Good lab notebook practice is still important for derivation evidence

• Consider monitoring published applications and issued patents of parties with whom information is shared

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§ 135 Patent Strategy

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• Replaces current inter partes reexamination proceeding

• Includes two distinct new proceedings• Post-Grant Review• Inter Partes Review

• Proceedings handled by newly established Patent Trial and Appeal Board (PTAB) rather than an Examiner

• Effective September 16, 2012N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

§§ 321-29 Expansion of Post Grant Review

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• Filed by a third party within 9 months of patent grant• Claims can be challenged on virtually any grounds

• Allows for submissions of factual evidence and expert opinions, and discovery (i.e., deposition of witnesses), and an oral hearing

• Standard for granting petition is “more likely than not” that at least one claim is unpatentable

• Can appeal to the Court of Appeals for the Federal Circuit (CAFC)

• Applicable only to patents issued from applications filed under the first to file system

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§§ 321-29 Post-Grant Review

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• Third-party challenge similar to current inter partes reexamination

• Can only be filed after the later of 9 months after the patent grants or termination of a post-grant review proceeding

• Lack of novelty or obviousness based on patents or printed publications

• Standard for granting petition is “reasonable likelihood” at least one claim is unpatentable

• Can appeal to the CAFC (Court of Appeals for Federal Circuit)• Applicable to all patents, regardless of filing or issuance date• Bill expands the existing inter partes procedure, adding

discovery and a hearing in the Patent Trial and Appeal Board.

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§§ 311-19 Inter Partes Review

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Third parties may submit prior art for consideration in application, where the prior art is

"any patent, published patent application, or other printed publication of potential relevance to the examination of [an] application" for consideration and inclusion in the file, provided that the submission is made:

• before notice of allowance is issued

• 6 months after application is published or first rejection of any claim, whichever is later

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§ 8 Third Party Submissions

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• Submissions must also include:

a) concise description of asserted relevance

b) statement that submission was made in compliance with section

c) A fee (if USPTO prescribes one)

• Provision will apply to all applications filed before, on, or after effective date

• Third party submission of written statements by inventor at any time for inclusion in file (§6)

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§ 8 Third Party Submissions

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• Even after USPTO re-affirms validity of patent, violator can mount consecutive claims– Endlessly keeping new technology from the market.– Weakens small companies when revenue and investment

capital used for legal fees, not jobs.– Increases legal tools for well-funded incumbents to attack

a competitive threat and to delay potential liability on damages for infringing.

• Incumbents may start targeting start-ups for post-grant review - Perhaps instead of taking a license?- Low risk – high reward for incumbents

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Effects of post grant review and third party

submissions

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• The new PTO processes to challenge patents will add more unpredictability to whether or not one will get an enforceable patent

• Increased risk to investors means greater demand for risk reduction/de-risking inventions- Can additional de-risking of technical and business risks

compensate for increased IP risk under AIA?

• New Opportunity?- If a patent survives the gauntlet of possible challenges, it should

have less risk and a greater relative value.- In start-up licenses one may need to forego some upfront $ and

ask for $$ when a patent gets beyond the opposition time periods.

- Companies well positioned to protect IP under new rules may be more competitive in attracting funding for their startups.

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Effects of post grant review and third party

submissions (cont.)

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• Predatory corporations can and do file multiple post-grant oppositions against startup companies for the purpose of inflicting financial pain.

– Weakens small companies when revenue & investment capital used for legal fees, not jobs.

• The existing inter partes process in a contested case now takes 34 to 53 months for an un-appealed reexam

– Assumptions include no “rework” by the patent office and no secondary appeals to the BPAI, the Federal Circuit, or the Supreme Court)

– 5 – 8 years for appealed cases

• Stock Fluctuation: Impact of PTO and Court Decisions on Stock Price – The practical impact of reexam on patent owners can be enormous.

– Example: Stocks dropping 40% in hours after the release of a non-final office action rejecting claims in a suit (even though this development is not controlling on a court case because the reexam is not final).

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Empirical evidence of effects of inter-partes review.

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Immediate 15% increase in all fees (including maintenance fees) under § 11(i).

Includes filing and basic national fees, excess page and claims fees, multiple dependent claim, examination, issue, disclaimer, appeal, revival, extension fees), (b) (maintenance fees), and d(1) (search fees) and 132(b) (RCEs)

November 15, 2011 -- additional fee of $400 for non-electronic filing of applications (other than design, plant, or provisional applications) established under § 10 of AIA

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§11 Increased fees

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• Change: The PTO is given fee-setting authority. Fees can only be set to recover “aggregate costs” for each side of the PTO (patents or trademarks). New “micro entities” (which don’t make more than three times median household income and haven’t filed more than four other patents, or which happen to be universities) get a 75% fee reduction.

• Effective Date: September 16, 2011. Sunsets on September 16, 2018.

• Implication: Fees may increase (except for micro-entities). PTO may be better funded and may process applications more quickly, more thoroughly, or both.

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§10 (b) Benefits for small companies: micro entities

(not yet implemented)

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USPTO Fee Type Before After Difference

Basic Utility Fee $165 $95 $70

Utility Search Fee $270 $155 $115

Utility Exam Fee $110 $63 $48

Issue Fee $755 $435 $320

3.5 Year Fee $490 $283 $208

7.5 Year Fee $1240 $713 $528

11.5 Year Fee $2,055 $1,183 $873

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Micro Entity Fees (from small entity to micro entity;

includes 15% surcharge)

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Available for all patent applications in any technology

Requirements:• $4,800 fee for filing request for prioritized

examination of nonprovisional application

– Does not include filing, search, examination fees, excess claims and pages fees, processing and publication fees

– Fee reduced 50% for small entities

• Application limited to 4 independent claims or 30 total claims

• Limited to 10,000 requests per fiscal year

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§11 Prioritized Examination

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• Change: Provides that failure to obtain or to present advice of counsel can’t be used as evidence of willful infringement or inducement.

• Effective Date: Not specified, which means that it applies only to patents issued on or after September 16, 2012.

– Note that this significant delay is probably unintentional.

• Implication: No immediate change in the law. – No substantive change in the law of willfulness, which already provides

this, though it clarifies that courts should not allow in evidence of failure to rely on advice of counsel.

– Will eventually reverse Broadcom, in which the Federal Circuit suggested that failure to obtain advice of counsel could be evidence of inducement.

– Should help small companies that cannot afford advice of counsel opinions

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Advice of Counsel and Inducement

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• Change: Under the current law, a limited “prior user right” is available with respects to “methods of doing business” (See 35 U.S.C. 273(a)(3)). Under the Act, the prior user right is expanded and not limited by subject matter. (See Sec. 5 and new 35 U.S.C. 273).

• Effective Date: Effective as of September 16, 2011 to any patent issued on or after that date.

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Prior User Rights

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Under the Act, a prior user defense may be used as a defense to infringement • by a person “acting in good faith, [who] commercially used the

subject matter in the United States, either in connection with an internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use”

• which occurs at least one year before the “effective filing date of the claimed invention” or “the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art” under new 35 U.S.C. 102(b).

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Prior User Rights (cont.)

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The prior user right is subject to several significant restrictions:• It remains personal to the actual entity that performed or directed the performance of

the commercial use (see new 35 U.S.C. § 273(e)(1)(A));• It may not be separately licensed, assigned or transferred (see new 35 U.S.C. §

273(e)(1)(B));• It is limited to the sites of the prior use (see new 35 U.S.C. § 273(e)(1)(C));• It does not apply to any prior use that derived from the patentee or persons in privity

with the patentee (see new 35 U.S.C. § 273(e)(2));• It only applies to particular claims that were in prior use, and does not apply to other

claims (see new 35 U.S.C. § 273(e)(3));• It does not apply when the prior use has been abandoned (see new 35 U.S.C. §

273(e)(4));• It does not apply to inventions originating from Universities (unless activities to

reduce the invention to practice could not have been undertaken using Federal Government funds) (see new 35 U.S.C. § 273(e)(5)).

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Prior User Rights (Restrictions)

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If the defense is pled “by a person who is found to infringe the patent and who subsequently fails to demonstrate a reasonable basis for asserting the defense, the court shall find the case exceptional for purposes of awarding attorney fees under section 285.” (See new 35 U.S.C. § 273(f) (emphasis added)).

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Prior User Rights (RISK!)

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• Change: Forbids parties or courts from joining multiple defendants or consolidating cases against those defendants unless there are common issues of fact or the cases arise out of the same transaction or occurrence. The fact that they are accused of infringing the same patent is not enough.

• Effective Date: Applies to all lawsuits filed on or after September 16, 2011.

• Implication: Multi-defendant patent litigation will become a thing of the past. The number of patent cases filed will likely increase significantly. Patent plaintiff costs will increase, and patentees suing multiple defendants will face multiple assessments of validity, each with potential collateral estoppel effect.

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Joinder

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Section 33 of the Act provides that “no patent may issue on a claim directed to or encompassing a human organism.”(Sec. 33 (a))

The implications will depend on how “human organism” is interpreted.

Could affect stem cell research, organ research etc.

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“Human Organism” Claims

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By September 16, 2014, the PTO is to set up at least three new Satellite Offices around the Country, including one currently planned for Detroit, Michigan. (See Secs. 23 & 24).

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New Satellite Offices

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• New challenges but still a lot of new opportunities!

• March 16, 2013 is the day we change over• Don’t be afraid to engage patent lawyers and

ask questions!

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Take-home messages

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Brian Eller J.D.Licensing AssociateCampus Box 8210

Raleigh, NC 27695-8210

919-515-7199 (phone)919-515-3773 (fax)

[email protected]

N o r t h C a r o l i n a S t a t e U n i v e r s i t y © 2 0 1 1

THANK YOU

www.ncsu.edu/ott

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§ 102 (b) “Exception” Weakened Filing Grace Period

§ 102. Conditions for patentability; novelty

(b) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.