the america invents act: impact on licensing · the america invents act: impact on licensing mark...

DUKE LAWCENTER FOR JUDICIAL STUDIES

PATENT LAW INSTITUTE

The America Invents Act:Impact on Licensing

Mark H. WebbinkSenior Lecturing Fellow

Duke University School of Law



• New Prior Art Rules• Opportunities to Challenge Validity• Saving a Patent• Other AIA Changes



LIMITATIONS ON SCOPE:PRIOR ART



Prior art now defined by filing date



Maintains one‐year grace period



Cannot claim someone else’s disclosed invention



Obviousness measured from filing date, not date of invention



No geographic limitation on prior art



Hilmer doctrine abolished



Prior art distinctions from EPC



Private offers for sale?



Tax avoidance, reduction, deferral strategies barred



CHANGING OR CHALLENGING THESCOPE OF CLAIMS



Derivation proceeding



Public disclosure



Direct Patent Validity Challenges



Post‐grant review



None‐month window from date of issuance



Lower threshold of proof thaninter partes reexamination



Must file before DJ action(but not counterclaim)



Broader basis for seeking review



Legal estoppel of filer• All forums• Regardless of appeal• On grounds that reasonably could have been raised

• Virtually bars invalidity defense in litigation



Post‐grant review not overly attractive



Inter partes review



Only available after post‐grant review period expires



Differences with post‐grant review• Available for all patents• Must be filed within one year of litigation commencement

• Different threshold for review• Limited to prior art grounds• Does not bar invalidity defense on other grounds



Prior Commercial Use



Prior Commercial Use Defense• Clear and convincing evidence• Good faith commercial use• At least one year prior to filing or disclosure

• Personal defense



Business Methods



Business Method Transitional Program• Only for eight years• Standards and procedures of post‐grant review

• Filing window same as inter partes review



Invites proactive approach



SAVING A PATENT



Reissue



Supplemental Examination



PATENT MARKING



No longer need to provide patent number



No more private Qui Tam actions



JURISDICTIONAL AND PROCEDURALMATTERS



BAYH‐DOLE

the america invents act: impact on licensing · the america invents act: impact on licensing mark...

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