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BEST PR

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OST AIA

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JUNE

7, 2013 L

AS VEG

AS

PANELISTS – OUR DEALERS TONIGHT!

Andrew D. Mickelsen – McDermott Will & Emery Dealer One

Robert Z. Evora - Patent Counsel – Legal Munchkin, Inc.Dealer Two

David L. Hoffman – Hoffman Patent GroupDealer Three

Georgann S. Grunebach – Vice President, IP Fox Group Legal

Dealer FourTeresa Stanek Rea - Acting Under Secretary of Commerce for IP and Acting Director of the United States Patent and

Trademark OfficeThe Pit Boss

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BEST PRACTICES POST AIA – DEALER ONEAdapting Day to Day Practices to a “First to File”

World

• Filing Decisions

• In-House Education and Training

• Docketing

Understanding Disclosures Under Section 102

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BEST PRACTICES UNDER AIA

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TRANSFORM REACTIVE INTO PROACTIVE

PORTFOLIO OBJECTIVES Define from multiple perspectives Management buy-in Use to motivate and educate

INVENTION HARVESTING Meetings

Frequency and duration Invitees

Invention Disclosure Submissions Simplify forms and submission process Incentives

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TRANSFORM REACTIVE INTO PROACTIVE

FILING DECISIONS Designate decision makers Evaluate and act on submissions frequently Increase transparency

APPLICATION PREP AND FILING Specify and follow reasonable timeline

Drafting Review

Plan/Docket prospectively Use provisional filing strategies

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RECORDS AND DISCLOSURES

EVIDENCE OF INVENTION Continue to maintain inventor notebooks, design documents, etc. Evidence in derivation proceedings Document trade secrets

EVIDENCE OF DISCLOSURE Track and record external business activity

Technical presentations, marketing materials, JRAs, NDAs, etc. Who? What? When? Where? Why?

Disqualify art under § 102(b) exceptions Preclude competitor patenting Evidence in derivation proceedings

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BEST PRACTICES POST AIA – DEALER TWOVirtual Marking of Manufactured Products

– From a Corporate Perspective

Priority Issues Pre and Post March 15, 2013

Additional First To File Considerations

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BEST PRACTICES UNDER AIA – DEALER TWO

Preserving the “First-To-Invent” (pre-AIA) §102 / §103 Status

• For Applications filed before March 16, 2013.

Each claim has an EFD of 3/15/13 or earlier.

• Caveats:

1. Filing a non-prov app based on pre-AIA prov app.

2. Filing a CIP app based on pre-AIA app.

3. Claims in post AIA app are literally supported but invention was enabled on, or after, 3/16/13.

4 Claims in post-AIA app constitute new mater.

• Continuation Applications

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BEST PRACTICES UNDER AIA – DEALER TWOFirst-To-File

• Effective Filing DateGrace Period:

Disclosures made by an inventorPatent Applications

• No geographical limitations

• No Antedating

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BEST PRACTICES UNDER AIA – DEALER TWOVirtual Marking

• U.S. virtual marking v. International marking

• Patents: http://www.munchkin.com.patent

Although most search engines are fairly intuitive, keep http://.

• Does packaging and products have to be changed at the same time?

Transition time for package vs. tooling changes is reasonable.

• Patent marking review embedded in the company package review process.

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BEST PRACTICES POST AIA – DEALER THREE

Post Grant Review (PGR)

Inter Partes Review (IPR)

Business Methods Patents Under AIA

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TIMELINE FOR PGR, IPR & CBMPetition

Filed

Patent Owner

PreliminaryResponse(Optional)

PTO (Initial)

DECISION ON

PETITION (then

scheduling order)

1mo3mo

Patent Owner

Response To

Decision &

Optional Motion

To Amend Claims

3mo

Petitioner Reply To Patent Owner

Response &

Opposition to Motion to Amend

(if any)

3mo

Patent Owner Reply

To Opposi-tion (if any) to Amend-

ment

Oral Hearing

On Reques

t

PTO Final Decision (≤12 mos

from initial

decision)

Patent Owner

Discovery Period

Petitioner Discovery

Period

≤ 3mo

Patent Owner Second

Discovery Period

Period For Observations Re

Testimony & Motions To Exclude

Petitioner Motion To

Supplement

1mo

Cross Examination After

Supplemental Evidence Due

FACTORS FOR STAYS OF CO-PENDING LITIGATION

1. SIMPLIFY ISSUES & TRIAL?

2. DISCOVERY COMPLETE/TRIAL DATE SET?

3. UNDUE PREJUDICE TO NON-MOVING PARTY?

4. REDUCE LITIGATION BURDEN ON PARTIES & COURT?

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PGR

ESTOPPEL EFFECTS UPON FINAL DECISIONFor the claims attacked or added

Any ground that petitioner raised or reasonably could have raised

IPR

CBM

Any ground that petitioner raised or reasonably could have raised

Any ground that petitioner actually raised

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BEST PRACTICES POST AIA- DEALER FOURDeveloping Patent Portfolios in

Underdeveloped Technology Areas

Documentation of Prior Commercial Use Under AIA

Pro Bono Work in Support of Financially Challenged Inventors

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BEST PRACTICES POST AIA- DEALER FOUR

Developing portfolios in underdeveloped technology areas, you are seldom dealt a winning hand!

•Establish and understand business and patent portfolio goals

•Evaluate the Company assets by mining and analyzing existing IP assets

•Determine if the Company must procure assets to fill out their portfolio

•Deploy the IP assets through licensing and litigation

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BEST PRACTICES POST AIA- DEALER FOURCarefully study the hand you’ve been dealt!

Determination of ownership and inventorship is critical under AIA

Carefully examine all Company agreements related to:

• Executives

• Employees

• Vendors

• Contractors/Subcontractors/Consultants

• Joint Development and R & D Relationships

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BEST PRACTICES POST AIA- DEALER FOUR

Draw some new ‘cards’ into your hand

• Propose Standard Terms and Conditions

• Focus on IP Ownership, Indemnification, Third Party Licenses

• Audit your Client’s internal and external communications

• Interject your Office into the Communication flow

• Interject your Office into the Agreement Review/Approval Process

• Interject your Office into the HR function

• Interject your Office into the Configuration Control Function

• Interject your Office into Project Review Process (PDRs and CDRs)

• Audit all publications released in any form transmitted.

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BEST PRACTICES POST AIA- DEALER FOUR

Prior Users Rights Under AIA

The AIA expanded the “prior user rights” defense to infringement and broadened the classes of patents eligible for this defense.

Prior user rights protect third parties who can demonstrate they were commercially using the invention for at least one year prior to the filing date of a patent application relative to such invention.

Prior user rights are not NEW! Previously established in 1999, limited to patents directed to methods of conducting business.

Prior user rights now extend under AIA to patents covering ALL technologies.

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BEST PRACTICES POST AIA- DEALER FOUR

Limitations to Prior Users Rights Under AIA

• Prohibition against license, assignment or transfer of the defense other than in connection with an assignment or transfer of the entire business to which the defense relates

• Defense geographically limited to cover only those sites where invention was used before the critical date (patent filing date).

• Explicit exception to the defense for patents owned by or assigned to universities or affiliated tech transfer organizations.

DOCUMENTATION OF YOUR CLIENT’S INTERNAL USE ACTIVITY IS CRITICAL TO SUPPORT THIS DEFENSE!

KNOW YOUR CLIENT’S HAND!

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BEST PRACTICES POST AIA- DEALER FOUR

Pro Bono Work in Support of Challenged Inventors – Section 32 of the AIA

Section 32 of the AIA established:

“The Director shall work with and support Intellectual Property Law Associations across the Country in the Establishment of Pro Bono Programs designed to assist financially under-resourced independent inventors and small businesses.”

Section 32 ‘levels the gaming table’ and facilitates participation in the patent process by innovators who don’t have the requisite ‘grub stake’ to sit at the table.

In 2011 Pilot Program initiated in Minnesota with first ‘player’ joining the ‘table’ within moments of signing of AIA

Pilot has produced 20 clients, 2 issued patents

In 2012 – Additional programs established in CA, CO and DC Metro Area, and Nationwide Clearing House Established with the Federal Circuit Bar

Nationwide Task Force – AIPLA, ABA, IPO, USPTO Fed Cir Bar, Judiciary

Goal of 2013 an additional 10 Programs

Goal of 2014 Regional Programs

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BEST PRACTICES POST AIA- DEALER FOURNationwide Clearing House

Initial Screening and Referral of Prospective Pro Bono Clients (linked to USPTO.gov)

Three Criteria of Potential “Players”

Understanding the Patent Processs

Filing Receipt – Provisional or Non Provisional

Successful completion of USPTO Certificate training

Patent Search Question

Brief Description of the Invention

Matching with Volunteer In-House or Outside Counsel

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Q AND A WITH OUR “PIT BOSS”

Questions for and Comments by Acting Director Rea

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SCENARIO ONE

• A start-up company, with an exciting new product consists of a small team of key personnel who have known each other since their university days.  They wish to document and capture through a series of filings a portfolio that they can monetize.  They have approached outside counsel for suggestions on this incubator?

• The key personnel work out of an open store front in a business center, which is open to the public.

• They attend every meeting of peer groups in their technology area, often making sole and joint presentations on their latest research.

• During their start up, they have ‘paid’ for vendor work by allowing the vendors to work for free, but providing their review and analysis of the vendor’s products.

• This company has no written agreements between the key personnel, vendors or others that you can locate.

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SCENARIO TWO

• A multi-national corporation specializes in software development for the financial industry (BANKSOFT) has adopted a new docketing system in response to requests from management to facilitate support of the new issues associated with AIA, and evaluation of their patent portfolio under the new rules. 

• The corporation institutes an OG watch for financial industry patents issuing in their field and becomes aware of a recently issued patent of concern. The patent has an effective filing date of after March 16, 2013. The corporation dockets the PGR 9 month deadline. The patent has claims that may cover a newly implemented computer driven process (post filing date of the patent) that sends financial information to its customers’ smart phones, but there is a key “means plus function” term in one claim and a key phrase in another claim that are difficult to interpret. The corporation has not done a patent validity search yet on this patent, but is aware of its own patent that is prior art.

• What should the corporation consider in deciding whether to bring a PGR proceeding against the patent versus a subsequent CBM petition or IPR petition?  

• What impact does the AIA in conjunction with various case law have on this unique area covered by business method patents?

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SCENARIO THREE

• A traditional US based aerospace corporation (AEROFLIT) with a massive (16,000 plus) patent portfolio must update their traditional patent disclosure, committee and award system in light of AIA.  They have approached your firm for recommendations?

• AEROFLIT has a well entrenched patent disclosure system and an existing patent committee, the system is primarily on paper, but they have recently expanded to a electronic docketing system. The company has dozens of specialized divisions which are located throughout the US and Europe.

• The Company has two in-house counsel, one senior, one junior. They primarily manage the portfolio and outside counsel from their offices in CA. They travel seldom to the outlying divisions and are not engaged on a daily basis with the business executives or engineers.

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QUESTIONS FROM OUR PLAYERS?

• Thank you all and thank the Los Angeles Intellectual Property Law Association for their gracious invitation to speak to you today!

• Good luck as you ‘play’ under the AIA!!!

• And remember, don’t GAMBLE with your Client’s IP rights!

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