Impact of US AIA: What Really Changed?

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© AIPLA 20152

Disclaimer

The purpose of this presentation is to provide educational and informational content and is not intended to provide legal services or advice. The opinions, views and other statements expressed by the presenter are solely those of the presenter and do not necessarily represent those of AIPLA or Eli Lilly and Company.

America Invents Act – AIA Sept 15, 2011 Fully implemented March 16, 2013 Major revision of the US patent law Goals 1) Transparent

2) Objective 3) Predictable 4) Simple

So what really changed? Particularly from a Chinese practitioner’s perspective?

© AIPLA 20153

Who can file? Still the Inventor, agent or assignee: Entity must have an assignment / obligation to assign(Chinese law allows an Entity with rights to a service

invention – no agreement necessary)No more concern for when invented/reduced to

practice/diligence in filing: All concern for filing date!

Inventorship error should no longer trouble invalidityEasier for joint invention by collaborators from

different Entities: Joint Research Agreement protects against self collision better.

From “First to Invent” to “First Inventor to File”

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What is Art Under Old Law?

Anything published before invention dateAnything used in USA before invention dateAnything published >1 year before inventionAnything used or ‘on sale’ in USA >1 yearAnything in a patent application filed before invention date that later publishes (Secret Art)Can also dispute who invented first???Trouble with collaborations – Self collision

Agreement must be before invention date or not insulated from 102(f) “invented by another”

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From “First to Invent” to “First Inventor to File”

What is Art Now?Anything published before filing dateAnything used or ‘on sale’ before filing dateArt in a patent publication effective for novelty and obviousness as of earliest priority date (Still Secret Art)Exceptions:

“The 1 year grace period” . . . Not art if it is your publication/obtained from you, or you published 1st

(But not applicable in rest of world)Patent publication not secret art if ‘same owner’ as of

filing date

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From “First to Invent” to “First Inventor to File”

Practice Tips: Prior art publications and uses are no longer limited

by geography – effective as art if anywhere in world Patent publications are effective as art against

novelty and obviousness from earliest priority date (secret art still an issue & now includes US provisional)

Always have employment agreements /Joint Research Agreements in place before the

inventing begins. (Absolutely before filing!!) Agreement should state:

Who owns the IP (obligations to assign in place?) What is the scope of the research Be sure the scope is well understood and is

amended if the actual work changes7 © AIPLA 2015

From “First to Invent” to “First Inventor to File”

Old law: Must disclose the best mode or patent is invalid for failure to comply with the description requirement

New law: Specifically states that ‘best mode’ can not be used as a basis for invalidation/unenforceability

Practice Tip: Still do good faith effort to disclose the best mode of

how to carry out the invention (Don’t try to hide the ball)

This assures good description for support of specific claims to most important embodiments.

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Best Mode Requirement

Old Law: Many potential problems could not be fixed by Applicants, even when owner ‘innocent’Public could submit art to an examiner or challenge a patent post grant, but

Provisions were not very effectiveWould-be challengers feared barring claims from

later court proceedingsPerceived better chances of winning in court.

Procedures slow & could be expensive 9 © AIPLA 2015

Reexamination: Fixing Problems or Challenging Validity

New Law: Applicants can reliably fix issues from original examination prior to enforcement: Supplemental Examination followed by Reexamination

InventorshipSubmission of missed referencesCorrection of errant statements

Public can more effectively submit art to an examiner or challenge a patent post grant

Post Grant ReviewInter partes Review 10 © AIPLA 2015

Reexamination: Fixing Problems or Challenging Validity

Anyone can petition for PGR Only on Applications subject to First Inventor to

File (Generally post March 16, 2013, so not many patents subject to PGR yet)

Grounds: Any grounds that can be brought in defense of infringement or any defects in the application or its examination

Timing: must petition within 9 months of Grant/reissue

Estoppel: Patentee estopped from action inconsistent with final judgment

Petitioner estopped from asserting in court any claims raised or that could have been raised.11 © AIPLA 2015

Post Grant Review

Anyone can petition for Inter Partes Review of any patent(But must name real party in interest)

Review can only be based on grounds of invalidity under 35 USC 102/103: Alleged lack of novelty or obviousness

Timing: Any time after 9 months from grant, reissue, or

termination of post grant reviewDefendant in an infringement action must file

IPR petition within one year of being served with complaint for infringement

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Inters Partes Review

IPR uses lower standard of review vs court proceeding:Claims given the broadest reasonable construction Evidentiary burden on petitioner – Preponderance vs Clear & Convincing< 3 Months after petition/response, PTAB determines: Is

there a reasonable likelihood the petitioner would prevail? . . . . Institute or Dismiss

Decision to institute or not is final and not appealable Final Decisions < 1 year (extendable 6 months for good

cause) Parties may file request for rehearing and appeal to CAFC.

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Inters Partes Review

Estoppel: After final PTAB decision, can’t further challenge a patent on any ground

that was raised or reasonably could have been raised in the IPR in another IPR or in a court proceeding

Patent owner is estopped from taking any action inconsistent with an adverse judgment, including obtaining any patent claim that is not patentably distinct from a finally refused or cancelled claim.

PTO invalidation is given statutory preclusive effect against owner in subsequent court litigation

But a district court finding of invalidity has no preclusive effect in subsequent post-grant proceedings until appeals are exhausted

No estoppel effects if settlement terminates IPR proceedings without a final decision

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Inters Partes Review

Practice Tips: Monitor published application that might be relevant to your

business so you know when they grant and consider if granted claims should be timely challenged in PGR or IPR – you only have 9 months to challenge on grounds such as written description or patentability of subject matter

Carefully consider whether your case is best fought in PGR/IPR or in Court – you’ll get ‘one bite at apple’ for any grounds raised or that could have reasonably been raised

If you’re going to settle in an IPR, do so early because PTAB does not have to stop proceedings if close to a decision

Fully prepare your case and present it focused and succinctly from the very start

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Post Grant & Inters Partes Review

Questions?

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