america invents act what to expect from patent reform
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America Invents ActWhat to Expect from Patent Reform
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Patent Reform
Finally.
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Patent Reform
• Patent Reform Act of 2005 (H.R. 2795) introduced in the 109th Congress.
• Patent Reform Act of 2007 (H.R. 1908, S. 1145 ) introduced in the 110th Congress.
• Patent Reform Act of 2009 (S. 515/S. 610/H.R. 1260) introduced in the 111th Congress.
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Patent Reform
• America Invents Act (S. 23,HR 1249) introduced in the 112th Congress.
• The most significant change to patent law since 1952.
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Where Does Congress Stand?• March 8, 2011: U.S. Senate Passes “America
Invents Act” (S. 23) by a vote of 95-5.
• June 23, 2011: U.S. House of Representatives passes the “Leahy-Smith America Invents Act” (HR 1249) by a vote of 304-117.
• September 8, 2011: Final passage in the Senate.
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Where Does President Obama Stand?
• Patent Reform is a key part of President Obama’s “Winning the Future Agenda.”
• President Obama has repeatedly urged Congress to immediately pass patent reform.
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Important Parts of Legislation
• Harmonizing U.S. system with the rest of the world.
• Increasing USPTO’s review of issued patents.
• Minimizing fee diversion.
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Harmonization
(Sort of)
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Harmonization
First to Invent
One Year Grace Period
First to File
Absolute Novelty
United States The World
First Inventor to File
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Harmonization
Conception by A
Conception by B
B Files Application
A Files Application
First to Invent: A Wins
A’s rights are established by conception and diligent reduction to practice.
In order to prevail, A must initiate an interference
proceeding before the USPTO.
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Harmonization
Conception by A
Conception by B
B Files Application
A Files Application
First to File: B Wins
B’s rights are established by filing application with USPTO.
Under First to File, no pre-filing activities are considered in establishing rights to the
invention.
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Harmonization
Conception by A
Conception by B
B Files Application
A Files Application
First Inventor to File: B Wins
B’s rights are established by filing application with USPTO.
Under First Inventor to File, some pre-filing activities are considered in establishing
rights to the invention.
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Harmonization
Conception by B Conception by A B Files Application
A’s U.S. rights are preserved by filing within the 1 year grace period.
Prior conception irrelevant.
Publicationby A
A Files Application
< 1yr.
A’s publication defeats B’s patent rights.
A wins in the U.S., but cannot file internationally.
First Inventor to File: A Wins
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First Inventor to File (FITF): Myths
• FITF represents the most significant change to US patent law.
• FITF favors large corporations over individual inventors.
• FITF will reduce patent filings by individual inventors.
• FITF will reduce patent quality.
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USPTO Review of Patents
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Types of Review
• Supplemental Examination
• Post Grant Review
• Inter Partes Review
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Supplemental Examination
• Available only to patent owners.
• Allows patent owners to submit additional prior art to be considered by USPTO.
• Provides an avenue for patent owners to avoid charge of inequitable conduct.
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• Third party can file for post grant review within 9 months after patent issuance.
• Challenge may be based upon more than just prior art patents or publications.
• Standard for granting: more likely than not that at least one claim is unpatentable.
Post Grant Review
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Inter Partes Review
• Can be filed 9 months after issuance.
• Must be based upon patents or printed publications.
• Decision to be made by Patent Trial and Appeal Board.
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Pre-Issuance Submissions
• Third parties would be permitted to submit prior art following publication of a patent application.
• Third party would likewise provide a statement regarding the relevance of the art.
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Fee Diversion
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Ending Fee Diversion
Source: www.uspto.gov
The USPTO is one of the few government agencies that is funded entirely by user fees.
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• In FY 2010 the USPTO collected approximately 2.1 billion in fees.
• Of this 2.1 billion, Congress permitted the USPTO to spend about 1.9 billion.
• The USPTO wants to use excess fees to hire more Examiners and reduce the backlog.
• The USPTO also wants to have fee setting authority.
Minimizing Fee Diversion
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"Three Track" Initiative
• Track One: – First Office Action within 4 months– Final Disposition within 12 months– High Filing Fee
• Track Two:– First Office Action 10 months– Final Disposition within 20 months
• Track Three:– Would permit applicants to defer examination for up to
30 months.
