america invents act. fitzpatrick, cella, harper & scinto © 2011 | 2 first-to-file u.s. will...

America Invents Act

FITZPATRICK, CELLA, HARPER & SCINTO © 2011 | www.fitzpatrickcella.com2

First-to-File

U.S. will switch to a first-inventor-to-file system

– Revision of 35 U.S.C. §§ 102 and 103

– Eventual elimination of interference proceedings

– Introduction of derivation proceedings

Section 3


35 U.S.C. § 102(a)(1)

A person shall be entitled to a patent unless 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

“Effective filing date” for a claimed invention means:

– the actual filing date of the application containing a claim to the invention

OR

– the filing date of the earliest priority application (under §§ 119, 365(a) or (b), or to the benefit of an earlier filing date under §§ 120, 121 or 365(c))

Section 3


35 U.S.C. § 102(a)(2)

A person shall be entitled to a patent unless the claimed invention was described in a patent or in a published patent application in which the patent or application:

– names another inventor

AND

– was effectively filed before the effective filing date of the claimed invention

Section 3


35 U.S.C. § 102(b)(1) (Exceptions)

Disclosures made ≤1 year before the effective filing date shall not be prior art under subsection § 102(a)(1) if:

(A) the disclosure was made by:

• an inventor, or

• another who obtained the subject matter from an inventor;

OR

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by:

• an inventor, or

• another who obtained the subject matter disclosed from an inventor

Section 3


35 U.S.C. § 102(b)(2) (Exceptions)

Disclosures appearing in applications and patents shall not be prior art if:

(A) the subject matter was obtained directly or indirectly from an inventor

(B) the subject matter was publicly disclosed by an inventor or another who obtained the subject matter from an inventor, before such subject matter was effectively filed

OR

(C) the subject matter and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person, no later than the effective filing date of the claimed invention

No 1 year limitation as required in § 102(b)(1)

Section 3


Differences in Revised 35 U.S.C. § 102(a)

Public use or sale in foreign country can now constitute prior art

– previously only public use or sale in U.S.

Potential new sources of prior art via “otherwise available to the public” catch-all

Critical date for statutory bar is now the effective filing date

– previous critical date was 1 year prior to U.S. filing date

Section 3


35 U.S.C. § 102(c):Common Ownership Under Joint Research Agreements

Subject matter disclosed and a claimed invention satisfy ownership/assignment exception under § 102(b)(2)(C) if:

(1) the subject matter was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention

(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement

AND

(3) the application discloses or is amended to disclose the names of the parties to the joint research agreement

Continues intent under the CREATE Act

Section 3


35 U.S.C. § 102(d)

U.S. patent or patent application is prior art as of:

– The actual filing date of the patent or application

OR

– The filing date of the earliest priority application that describes the subject matter

Implications

– Foreign priority in a U.S. patent document can now be used for offensive purposes, not just defensive purposes

Section 3


35 U.S.C. § 103

A patent may not be obtained if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art

Difference under new statute

– Obviousness now analyzed as of before the effective filing date, as opposed to at the time of the invention

Section 3


Interference Proceedings

Interference practice still available for applications and patents which contain or at any time contained:

– A claim to an invention having an effective filing date that occurs before the effective date of the legislation

OR

– A specific reference under §§ 120, 121, 365(c) to any patent or application that contains or contained at any time such a claim

PTO given wide latitude to determine procedures in pending interferences

Section 3


Derivation Proceedings by Civil Action – 35 U.S.C. § 291

§ 291(a) – Derivation Civil Action

– Patent owner may file a civil action against another patent owner if the invention claimed in such other patent was derived from the inventor of the patent owned by the person bringing suit, claims the same invention, and has an earlier effective filing date

Filing of derivation action in Federal district court

– Like previous interference civil actions, only patent owners may bring a derivation suit as a civil action

Patent applicants without an issued patent may only utilize USPTO derivation proceedings

§ 291(b) – Filing Limitation

– Patent owner must file before the end of 1 year after issuance of derived patent to bring suit

Section 3


USPTO Derivation Proceedings – 35 U.S.C. § 135

Applicant institutes a derivation proceeding by filing a petition which sets forth the derivation basis with particularity. The petition must be:

– filed within 1 year of the first publication of the claim that is the same or substantially the same as the earlier application’s claim

– made under oath

– supported by substantial evidence

Director makes a determination whether to institute a derivation proceeding

– determination shall be final and nonappealable

Patent Trial And Appeal Board (PTAB):

– makes the determination of derivation

– may correct the naming of the inventor in application or patent at issue

– may defer action on a derivation petition until 3 months after issuance of the allegedly derived patent

– may stay the proceeding for a re-examination or post-grant review

Section 3


Other Changes

Repeals statutory invention registrations

Repeals NAFTA/WTO requirements for inventions made abroad to the extent that evidence relating to date of invention remains applicable

Adds statute of limitations for suspension or exclusion from practice before USPTO

– The earlier of either 10 years from the misconduct, or 1 year after the date the misconduct is made known to an officer or employee of the USPTO

Section 3


Effective Date for First-To-File

18-months after enactment

Applies to patents and applications that contain or contained:

– A claim that has an effective filing date on or after the 18-month effective date of the legislation

OR

– A reference under §§ 120, 121, or 365(c) to a patent or application that contains or contained any such claim

– No exception even if such a claim is later cancelled or amended to be entitled to an earlier effective filing date

Section 3


Inventor’s Oath or Declaration

35 U.S.C. § 115 amended to no longer require citizenship

Substitute Statement under §115(d) may be filed by an applicant (e.g., corporation) for patent under certain circumstances:

– Deceased inventor

– Legal incapacity of inventor

– Inventor cannot be found or reached after diligent effort

– Inventor under obligation to assign, but has refused to make oath

Section 4


Inventor’s Oath or Declaration

Application filed by assignee under 35 U.S.C. § 118 will be granted to assignee

Effective 1 year after enactment

– Applies to any application that is filed on or after that effective date

Section 4


Prior User Rights – 35 U.S.C. § 273

Prior user rights is defense to infringement based on earlier commercial use

Prior user rights are expanded to all technologies

– No longer just business method claims

Accused infringer must prove, by clear and convincing evidence, that it commercially used the subject matter of the claimed invention in the U.S. in good faith, AND

– Such commercial use occurred at least 1 year before the earlier of:

effective filing date of claimed invention

OR

date on which the claimed invention was disclosed to the public in a manner that qualified for exception from prior art under §102(b)

Section 5


Prior User Rights - Limitations

Defense is not available if:

– Commercial use was not by person asserting defense

– Subject matter was derived from patentee

– Claimed invention was, at the time the invention was made, owned by or assigned to a university

Applies to any patent issued on or after the date of enactment

Section 5


Post-Grant Review

Non-owner of patent may file with USPTO a petition to institute post-grant review of patent

Petition for review will be granted when USPTO finds:

– “that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”

OR

– there is a “showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications”

Determinations shall be made within 3 months of patent owner’s preliminary response or the last date for filing the same

Section 6


Scope & Timing of Post-Grant Review

Petition must be filed within 9 months from grant of:

– the patent

OR

– the reissue patent if the reissue claims have been broadened

Petitioner may request cancellation of one or more claims on “any ground that could be raised under paragraph (2) or (3) of section 282(b)”

– Revised § 282(b) includes arguments under §§ 102, 103, and 112, but not best mode

Either party may appeal the Board’s decision to the Federal Circuit

Section 6


Applicability of Post-Grant Review

Effective 1 year after date of enactment

Except as set forth in the transitional program for business method patents, shall apply to patents having a claim with an effective filing date after the 18-month period from enactment

Section 6


Inter Partes Review

Non-owner of patent may file with USPTO a petition to institute an inter partes review of the patent

Petition will be granted when USPTO finds “a reasonable likelihood that petitioner would prevail with respect to at least 1 of the claims challenged in the petition”

Determinations shall be made within 3 months of patent owner’s preliminary response or the last date for filing the same

Section 6


Scope & Timing of Inter Partes Review

Petition can be filed 9 months after the date of:

– grant of the patent or issuance of a reissue of the patent

OR

– after the date of termination of a post-grant review

Petitioner may request cancellation only on a ground that could be raised under §§ 102 and 103 and only on the basis of prior art consisting of patents or printed publications

Either party may appeal the Board’s decision to the Federal Circuit

Section 6


Applicability of Inter Partes Review

Effective 1 year after date of enactment

Applies to any patent issued before, on, or after that effective date

New standard for inter partes review takes effect immediately upon enactment and applies to inter partes reexaminations filed after enactment

Section 6


Conduct During Post-Grant and Inter Partes Review If review is instituted, patent owner permitted to submit a response to the

petition, including any additional factual evidence and expert opinions on which the patent owner relies

Rules allow for limited discovery of relevant evidence

Patent owner permitted to amend patent (1) to cancel a challenged claim or (2) to propose a reasonable number of substitute claims

Petitioner has at least one opportunity to file written comments

Either party has the right to an oral hearing

Final determination will issue within 1 year of institution

– USPTO may extend that period by 6 months for good cause

Section 6


Settlement for Post-Grant and Inter Partes Review Review shall be terminated with respect to any petitioner upon joint request of

the petitioner and the patent owner, unless USPTO has decided the merits of the proceeding before the joint request is filed

No estoppel shall attach to petitioner if review is terminated

USPTO may terminate the review or proceed to a final written decision if no petitioner remains

Any agreement or understanding between the patent owner and a petitioner, made in connection with, or in contemplation of, the termination of a review shall be in writing and filed in the USPTO

Upon request, the settlement can be treated as business confidential information

Section 6


Intervening Rights for Post-Grant and Inter Partes Review Any amended or new claim determined to be patentable and incorporated into

a patent following a post-grant review shall have same effect as that for reissued patents with respect to the right of any person who, before the issuance of the certificate:

– made, purchased, or used within the United States anything patented by the amended or new claim

– imported into the United States anything patented by the amended or new claim

OR

– made substantial preparation therefor

Section 6


Estoppel for Post-Grant and Inter Partes Review

If a review results in final written decision by the Board, the petitioner may not request or maintain a “proceeding” before USPTO with respect to that “claim” on any ground that petitioner raised or reasonably could have raised during that review

If a review results in final written decision, the petitioner may not assert either in a civil action or in a proceeding before the ITC that the claim is invalid on any ground that petitioner raised or reasonably could have raised during that review

A review is not available if, before filing of the petition, the petitioner filed a civil action challenging the validity of the patent.

– A counter claim does not preclude a post-grant review

Section 6


Patent Trial and Appeal Board

Board of Patent Appeals and Interferences to be replaced by Patent Trial and Appeal Board

– Adverse examiner decisions (35 U.S.C. § 134(a))

– Re-examinations (35 U.S.C. § 134(b))

– Derivation proceedings (35 U.S.C. § 135)

– Inter-partes reviews and post-grant reviews (Chapters 31 and 32)

Section 7


Third Party Submissions Any party may submit documents to be considered by USPTO during examination

Timing – Must be made the earlier of:

– A notice of allowance

OR

– The later of 6 months after publication or date of first rejection

Effective 1 year after enactment

– Applies to any patent application filed before, on, or after that effective date

Other requirements

– Concise statement of relevance

– Fee as set by Director

– Statement affirming compliance with rules

Section 8


Venue

Venue for appeal of USPTO decisions moved from the United States District Court for the District of Columbia to the United States District Court for the Eastern District of Virginia

Effective on date of enactment

– Applies to actions commenced on or after that date

Section 9


Fee-Setting Authority

USPTO given authority to adjust its fees to recover the aggregate estimated costs of USPTO activities

50% reduction for small entity

75% reduction for micro entity

Effective Date – date of enactment

Electronic Filing Incentive

– $400 Surcharge, if not filed electronically (plant, design & provisional applications excluded)

– Effective Date – 60 days after date of enactment

Section 10


Micro Entity Status

“Micro entity” applicant must:

– Qualify as a small entity

– Not be named as an inventor on more than 4 previously filed U.S. non-provisional applications

– Have an income less than 3x the median U.S. household income

AND

– Not have conveyed or contractually promised to convey rights to an entity that has an income more than 3x the median U.S. household income

Public universities, non-profit universities, and other higher education institutes will receive the 75% discount

USPTO Director can set additional limits to restrict the impact of the micro entity status

Section 10


Prioritized Examination and Fee Increase

Prioritized Examination

– Request Fee of $4,800

Small entity fee available

Claim limits – 30 total; 4 independent

Limit of 10,000 applications annually

Fee Increase

– 15% increase in PTO fees

Effective Date – 10 Days After Enactment

Section 11


Supplemental Examination – 35 U.S.C. § 257

Patent owner may request supplemental examination by USPTO to consider, reconsider or correct information believed to be relevant to the patent

– Request must raise a substantial new question of patentability

Allows an applicant to wash away the threat of inequitable conduct charges

– Cannot use if:

Applicant committed fraud on the USPTO during original prosecution

An allegation has been alleged in an ANDA Notice Letter

OR

Art has been used as a defense under § 337 or § 281

Effective Date – 1 year after enactment

Section 12


Tax Strategies Deemed Prior Art

Strategies for reducing, avoiding, or deferring tax liability are considered prior art, and therefore not patentable

– “tax liability” broadly defined

Applies to any patent application that is pending or filed on or after the date of enactment

Excludes any method, apparatus, technology, computer program product, or system that is used solely:

– for preparing a tax, information return or other tax filing

OR

– for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy

Section 14


Best Mode

Failing to disclose the best mode cannot be used to invalidate an issued patent

Inventor still required to set forth the best mode for accomplishing the invention

– USPTO still has a duty to only issue patents where the best mode requirement has been satisfied

Section 15


Marking

Virtual Marking – 35 U.S.C. § 287

– Mark product with “patent” or “pat.” and web address

– Web address (free access) associates patented article with patent number(s)

Section 16


Marking

False Marking – 35 U.S.C. § 292

– Only United States may sue for penalty

$500 for each offense

– A person who has suffered competitive injury can sue for recovery of damages adequate to compensate for the injury

Marking a product with a patent that covered that product but has expired is not a violation

Effective Date – applies to any case that is pending on, or commenced on or after, the date of enactment

Section 16


Advice of Counsel – 35 U.S.C. § 298

The following cannot be used to prove willful infringement or that the infringer intended to induce infringement:

– failure to obtain legal advice with respect to any allegedly infringed patent

OR

– failure to present such advice to the court or jury

Section 17


Transitional Program for Covered Business Method Patents

A specific post-grant review program for Covered Business Method Patents

– Only persons sued for or charged with infringement of the patent may file

– The Director may institute a transitional proceeding

– Begins within 1 year of enactment and expires 8 years thereafter

Broader than post-grant review

– No 9 month time limit

– Provisions regarding preliminary injunctions and reissue patents in post-grant review do not apply

– Estoppel does not extend to grounds that “could have been raised”

Section 18


Transitional Program for Covered Business Method Patents

Covered Business Method Patent

– A method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service

A challenge under previous §§ 102 or 103 can only be supported by:

– prior art under previous 102(a)

OR

– prior art that discloses the invention more than one year before the U.S. filing date, and would have been described in previous § 102(a) if it had been made by another

Section 18


Amends 35 U.S.C. § 1338(a)

– No State court has jurisdiction over any claim arising under an Act of Congress relating to patents, plant variety protection, or copyrights

Amends 28 U.S.C. § 1295(a)(1)

– Grants Federal Circuit jurisdiction over an appeal from a final decision arising under any Act of Congress relating to patents or plant variety protection

New 35 U.S.C § 1454

– Allows for removal to the district and division embracing the place where action is pending

– District Court is not precluded from deciding a claim because the State court did not have jurisdiction

– District Court may remand claims within their supplemental jurisdiction, but shall remand claims with no jurisdictional basis

Jurisdiction and Procedural Matters

Section 19


New 35 U.S.C. § 299 – Joinder of Parties

– Allowed only when right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of same transaction, and

questions of fact common to all defendants will arise

– Accused infringers cannot be joined based solely on allegations that they each have infringed any patents in suit

Jurisdiction and Procedural Matters

Section 19


Technical Amendments

Revised 35 U.S.C. § 282 - Presumption of Validity

– (a) In General – A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. Notwithstanding the preceding sentence, if a claim to a composition of matter is held invalid and that claim was the basis of a determination of nonobviousness under section 103(b)(1), the process shall no longer be considered nonobvious solely on the basis of section 103(b)(1). The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

Section 20


Patent and Trademark Office Funding & Satellite Offices

Establishes a Patent and Trademark Fee Reserve Fund

– If fee collections by the PTO exceed the amount appropriated to the PTO in a fiscal year, the excess shall be deposited into the Fund and made available until expended only for obligation and expenditure by the PTO

Congressional approval needed

– Effective Date – October 1, 2011

Requirement for Satellite Offices

– Director required to establish 3 or more satellite offices within 3 years after enactment

Sections 22 and 23


Priority Examination for Important Technologies

Grants the Director the ability, at the request of the applicant, to provide for prioritized examination of products, processes, or technologies that are important to the national economy or to the national competitiveness, without recovering the aggregate extra cost of doing so

Section 25


USPTO Study on International Patent Protections for Small Businesses Director, in conjunction with other agencies, shall conduct a study:

– to determine how the USPTO can best help small businesses with international patent protection

and

– whether, in order to help with costs, there should be established either:

a revolving fund loan program to make loans to small businesses to defray the costs of applying, maintaining and enforcing international patents

or

a grant program to defray the costs.

Report due to Congress within 120 days of enactment

Section 31


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america invents act. fitzpatrick, cella, harper & scinto © 2011 | 2 first-to-file u.s. will...

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