u.s. patent law reform summary of h.r. 1249, “leahy-smith america invents act”

April 24, 2012Benoît Castel

Young & Thompson

U.S. Patent Law ReformSummary of H.R. 1249, “Leahy-Smith America

Invents Act”

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Section 3. FIRST INVENTOR TO FILE

Effective filing date:§100(i)(1)(A) - If B does not apply the actual filing date of the patent or the application for the patent containing a claim to the invention” or (B)“the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c)”

Effective 18 months from the enactment (16 March 2013)

Yo u n g & T h o m p s o n

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FIRST INVENTOR TO FILE

§102(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) 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; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.


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Example:


28 March 2012French application

13 Feb. 2013Application AClaiming FR priority

16 March 2013Date of New Law

Application B20 March 2013 Claiming FR priority

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Priority would be determined based on effective filing date Exceptions: Grace Period weakened: §102(b)(1) Disclosures made within 1 year before the

effective filing date by (A) inventor or joint inventor or (B) by another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor

§102(b)(2)(C) also expands the pre-existing exclusion from prior art of commonly owned inventions in that prior patents that were co-owned at the time of filing the subsequent application are not prior art even if they disclose the subject matter claimed in the later filed application.

Similarly, §102(c). Claims of an application subject to a Joint Research Agreement are not unpatentable over disclosure in another patent or application subject to a JRA and owned by a different entity, if certain conditions are met: 1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a JRA 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 JRA ; and 3) the application for patent discloses or is amended to disclose the names of the parties to the JRA


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FIRST INVENTOR TO FILETransition

First to File system applies to any application, and to any patent issuing thereon that contains or contained at least one claim with an effective filing date of 16 March 2013 or later, or claimed the priority benefit under sections 120, 121 or 365(c) of an earlier application, which contains or contained at least one such claim Conversely, the old law of First to Invent would apply to any application having no claim with an effective filing date of 16 March 2013 or later, or which does not make reference to an earlier- filed application with such a claim If one claim has an effective filing date on or after 16 march 2013, all claims are governed by the new First to File law


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Example: 1


B’s date of invention4 January 2013

11 Jan. 2013A’s invention

13 Feb. 2013A’s application


B’s application13 March 2013

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Example: 2




6 April 2013A’s application


B’s application16 April 2013

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Example: 3




13 Feb. 2013A’s application


B’s application13 April 2013

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FIRST INVENTOR TO FILETransition Hybrid Rules

Interfering Patents- The provisions of sections 102(g), 135 and 291 as in effect on 15 March 2013 shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time: - a claim to an invention having an effective filing date before 16 March 2013; or

- claimed the priority benefit under sections 120, 121 or 365(c) of an earlier application, which contains or contained at any time such claimIf one claim has an effective filing date on or after 16 march 2013 and one claim an earlier effective filing date, all claims are governed by the hybrid rules.Claims subject to hybrid rules: are entitled to the effective filing date of any claimed foreign priority; prior sections of 102(a)-(f) are not applicable against these claims, and public use or sale is not limited to public use or sale in the US.


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Example 4:


11 Jan. 2013Application A

6 April 2013Application C(CON of A)


Application B16 April 2013

20 May 2013 Application D(CIP of A)

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Example 5:


11 Jan. 2013A invents X


20 May 2013 Application C(CIP of A)Claiming X and Y

16 Feb. 2013Application AClaiming X

2 Jan. 2013B invents X

16 April 2013Application BClaiming X

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FIRST INVENTOR TO FILE A new administrative proceeding is created to ensure that the first

person to file the application is a true inventor.

(Effective 16 March 2013)

Derivation proceeding (§ 135) in USPTO: the Patent Trial and Appeal Board shall determine whether 1) an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, 2) without authorization, filed the earlier application claiming such invention. Any such petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.


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Derivation •Under proposed rule 42.405, a derivation petition must: – Identify the application or patent for which a derivation is sought. – Certify that the petition was filed within the one year time set by statute. – Demonstrate that the petitioner has a pending application. – Show that the petitioner has at least one claim that is the same or substantially the same as the respondent’s claimed invention. – Show that the respondent’s claimed invention is not patentably distinct from the invention disclosed (directly or indirectly) to the respondent.


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Derivation – Certify that the earlier application was filed without authorization. – Provide a claim construction for the disputed claims. – Provide substantial evidence, including one affidavit, in support of the petition to show how the invention was communicated to the respondent. • A derivation is not likely to be instituted, even where the Director thinks the standard for instituting a derivation proceeding is met, until a patent with the claimed invention issues.

The determination by the Director whether to institute a derivation proceeding shall be final and non-appealable.


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Section 4. INVENTOR’S OATH OR DECLARATION

§118 A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. (Assignee filing of application would be permitted)

Effective 1 year from enactment (16 September 2012)


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Inventor’s Oath/Declaration Requirements • 35 U.S.C. 115(a) states in-part: Except as otherwise provided in this section, each individual who is the inventor or a joint inventor * * * shall execute an oath or declaration.Required Statements in an oath or declaration: • 35 U.S.C. 115(b)(1) the application was made or authorized to be made by the affiant or declarant; and • 35 U.S.C. 115(b)(2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application

• Oath/declaration must be submitted on filing or shortly thereafter and must identify each inventor. – Determination of prior art and potential double patenting rejections – Accuracy of inventive entity – Pendency concerns: - Potential rework - Potential delay of allowance (Examiner cannot allow the application without it)


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Assignment as Oath or Declaration

• 35 U.S.C. 115(e) provides for making the statements required in an oath or declaration in an assignment

• The requirement can be met by an assignment, § 1.63(c)(1), if: – It includes the statements required by § 1.63(a)-(b);

– Copy of the assignment is filed in the application; and

– Assignment is recorded against the application.


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Continuing Applications

• Copy of oath or declaration from parent application now permitted in a CIP application:

– Newly named inventors must continue to provide an executed oath or declaration.

– Statements in oath or declaration must be true in CIP application. § 1.63(d)(1)


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Reissue Oath/Declaration

• Claim broadened in any respect must be treated and identified as a broadened claim, even though the claim may be narrowed in another respect. § 1.175(b)

• Must identify each applicable reason that provides a statutory basis for reissue. § 1.175(a)

• Examples: – Defective specification or drawing;

– Patentee claiming more than patentee had the right to claim; or

– Patentee claiming less than patentee had a right to claim.


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Exceptions to Inventor Execution• 35 U.S.C. 115(d)(2) provides for a substitute statement where an inventor is: – Deceased; – Legally incapacitated; – Unable to be found or reached after diligent effort; or – Refuses to sign• Oath/declaration for a deceased or incapacitated inventor may now be made by: – Legal representative; – Assignee; – A party to whom the inventor is under an obligation to assign; or – A party who otherwise shows sufficient proprietary interest


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Priority and Benefit Claims• A claim for foreign priority would need to be set forth in an application data sheet (§ 1.76): – Presence of the priority claim in the oath or declaration would no longer be sufficient. § 1.55(a)(1)(i)

• A claim for domestic benefit would need to be set forth in an application data sheet: – Presence of the benefit claim in the first sentence(s) of the specification would no longer be sufficient. §§ 1.78(a)(2)(iii), 1.78(a)(5)(iii)


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Section 6. POST GRANT REVIEW PROCEEDINGSChapter 31-“INTER PARTES REVIEW”

§ 311 A petitioner (a person who is not the owner of a patent) in an inter partes

review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications (including owner’s statements filed in a Federal court or PTO proceeding relating to claim construction)

A petition for inter partes review shall be filed after the later of either 9 months after the grant of a patent or issuance of a reissue of a patent; or after the termination of a PGR, if any, instituted under chapter 32

The inter Partes Reexamination Proceeding would be abolished and replaced by this Inter Partes Review Proceeding, while Ex Parte Reexamination proceeding will continue


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POST GRANT REVIEW PROCEEDINGS “INTER PARTES REVIEW”

THRESHOLD.—The Director may not authorize an inter

partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.

This threshold is changed from the current “substantial new question of patentability standard” in reexamination.


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An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.

A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection


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PTO to establish standards and procedures for discovery of relevant evidence

Providing for protective orders Providing either party with the right to an oral hearing before a 3-

judge panel of the PTAB Final determination be issued not later than 1 year, except that the

Director may, for good cause shown, extend the 1 year period by not more than 6 months: at most 1 and ½ years

May not enlarge the scope of the claims (same as reexamination)



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Section 6. POST GRANT REVIEW PROCEEDINGSChapter 32-“POST-GRANT REVIEW”

A person who is not the owner of a patent may file with the Office a petition to institute a post-grant review of the patent and request to cancel as unpatentable 1 or more claims of a patent on any ground (all grounds of invalidity considered) except Best Mode that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim) with no restriction on the form of evidence.

Filed not later than the date that is 9 months after the date of the grant of the patent

Threshold: it is more likely than not that at least 1 of the claims challenged in the petition is invalid

Providing either party with the right to an oral hearing


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Section 8. PREISSUANCE SUBMISSION BY THIRD PARTIES

Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of— (A) the date a notice of allowance is given or mailed; or (B) the later of—‘‘(i) 6 months after the date on which the application is first published by the Office, or ‘‘(ii) the date of the first rejection of any claim by the Examiner during the examination of the application for patent.

The submission shall include: a concise description of the asserted relevance of each document; the fee prescribed by the Director; and a statement that the submission is in compliance with 35 USC 122(e)

Time periods are statutory, and consequently cannot be waived. Submission is filed as of its date of receipt in USPTO. Cannot use certificate of mailing or transmission.



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Preissuance Submissions Filing Submission is filed as of date of receipt by the USPTO. Cannot use certificate of mailing or transmission Third party is not required to serve the submission on applicant No duty on applicant to reply to submission, absent a request from the USPTO The USPTO will not directly notify applicant of entry: - Contents of compliant submission to be made available to applicant via:

- Entry of submission in application image file wrapper

- Copy of listing showing which documents considered

(provided generally with next Office action)


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Preissuance Submissions Proposed Fee $180 fee for every 10 documents listed or fraction thereof. No fee for first submission of 3 or fewer total documents submitted: - “First and only” statement required For a first submission by a third party in an application: - No fee for 3 or fewer documents (if accompanied by statement)

- $180 for 4-10 documents; - $360 for 11-20 documents For a second or subsequent submission by the same third party in the same application: - $180 for 1-10 documents; - $360 for 11-20 documents


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Preissuance Submissions Examiner Consideration

Examiner will consider submissions in the same manner as information in an IDS

Considered documents will be printed on patent

Third party is not permitted to respond to an Examiner’s treatment of a submission


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Section 10. FEE SETTING AUTHORITY• Authorizes the USPTO to set or adjust fees by rule for a period of 7 years • Fees may be set to recover only the aggregate estimated cost of operations, including administrative costs

• USPTO will issue proposed fees in Federal Register in early June 2012 – 60-day public comment period triggered

•USTPO will issue final fees in February 2013


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FEE SETTING AUTHORITY 15% transition surcharge on the government fees, effective 10 days after the day of

enactment (26 September 2011) Additional fee of $400 ($200 for small entity) if new application (excluding design, plant and

provisional) is not filed electronically Micro Entity (certain individuals, entities, and institutions of higher education): 75%

deduction, actual fees not yet set Prioritized Examination (26 September 2011) also known as Track 1 Fee: $4,800 ($2400 for small entity) + $130 processing + $300 publication Expedited exam of original complete utility or plant application filed via EFS (not plant cases) with no more than 4 independent claims, 30 total claims, and no multiple dependent claims; initially limited to 10,000 requests per fiscal year). Does not apply to international, design, reissue, or provisional applications or in reexamination proceedings; may be requested for a continuing application and one time for RCE even of national stage applications. USPTO goal for final disposition is on average 12 months from date of prioritized status.


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Section 12. SUPPLEMENTAL EXAMINATION

Only a patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent. §257

Within 3 months from the filing date of the request, the Office will issue a Certificate indicating whether any of the items of information filed with the request raises a substantial new question of patentability

If a substantial new question of patentability is raised by one or more information in the request, ex parte reexamination of the patent will be ordered. If no substantial new question of patentability is raised by any item of information in the request, ex parte rexamination will not be ordered; and reexamination fee for supplemental examination will be refunded.Effective 1 year from enactment (16 September 2012), and will apply to any patent issued before, on or after this effective date.


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SUPPLEMENTAL EXAMINATION

A patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent (Unenforceability based on inequitable conduct can be avoided by the supplemental examination).

This immunity does not apply: – To allegations pled in a civil action or notice to the patentee before the date of the request for supplemental examination, and

– Unless the supplemental examination and any resulting ex parte reexamination is completed before the civil action is brought by the patent owner


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Supplemental ExaminationRequest Requirements Summary

•Two primary components, § 1.610(b): – Identification of the patent and each aspect of the patent for which supplemental examination is sought – Identification of each item of information that raises an issue with respect to that aspect of the patent, including: - Whether the item was not considered, not adequately considered, or incorrect; - Why consideration, reconsideration, or correction is sought; and - A detailed explanation of each issue relative to the patent




• List identifying each item of information on which the request is based and its publication date, if applicable – Information is not limited to patents and printed publications

– Any information believed to be relevant to the patent may be submitted, e.g., transcripts of audio or video recordings. § 1.610(b)(4)

•Statement that: – Identifies each item of information being submitted; and

– Explains why consideration or reconsideration of the information is being requested, or how the incorrect information is being corrected. § 1.610(b)(4)(i)-(iii)

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• Identification of each aspect of the patent for which supplemental examination is requested, including: – An identification of the structure/material/acts in the specification that correspond to each means or step-plus-function element in any claim for which supplemental examination is requested. § 1.610(b)(6)

• Identification of each issue of patentability raised by each item of information. § 1.610(b)(7)

• Explanation for each identified issue of: – How each item of information is relevant to each aspect of the patent requested to be examined; and

– How the item of information raises the identified issue. § 1.610(b)(8)


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• Copy of each listed item of information (except for U.S. patent and patent application publications), including – English translation of the pertinent parts of any non-English language document. § 1.610(b)(10)

• Summary of the relevant portions of any submitted document, other than the request itself, that is over 50 pages in length. § 1.610(b)(11)

• Request may not include more than 10 items of information. § 1.605(a)

• But more than one request for supplemental examination of the same patent may be filed at any time – USPTO must be able to make a timely decision whether to order ex parte reexamination


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• No amendment to any aspect of the patent may be filed in the supplemental examination proceeding • If ex parte reexamination is ordered, an amendment may be filed after the issuance of the initial Office action in the ex parte reexamination proceeding • Supplemental examination proceeding will conclude with the electronic issuance of the supplemental examination certificate • This Certificate will indicate the result of the Office’s determination whether any item of information filed with the request raises a substantial new question of patentability


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• Ex parte reexamination regulations govern, except that: – patent owner will not have the right to file a patent owner statement under 37 CFR 1.530; and – reexamination is not limited to patents and printed publications or to subject matter added or deleted during reexamination

• If the Office becomes aware of a material fraud on the Office in connection with the patent under supplemental examination, then the matter will confidentially be referred to the U.S. Attorney General

• Office may take other action as set forth in 35 U.S.C. 257(e)

• Office regards “material fraud” to be narrower in scope than inequitable conduct


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Section 15. BEST MODE REQUIREMENT

Failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. This change applies only in patent validity or infringement proceedings.

Effective upon enactment (16 September 2011).

Best mode requirement would be maintained during the examination of the application.


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Section 18. TRANSITIONAL PROGRAM FOR COVERED BUSINESS METHOD PATENTS Not later than the date that is 1 year after the date of the enactment of this Act, the

Director shall issue regulations establishing and implementing a transitional post-grant review proceeding for review of the validity of covered business method patents.

The term ‘‘covered business method patent’’ means a patent that claims 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 (§42.301(a)), except that the term does not include patents for technological inventions, as defined in proposed §42.301(b).

A person may not file a petition to initiate review with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.

Effective 1-year from enactment (16 Sept. 2012), and terminates in about 8 years


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COVERED BUSINESS METHODS

• Generally, employs PGR Procedures and Standards.

• Differences between a covered business method review and a post grant review include: – Cannot file CBM review during time a PGR could be filed, i.e., 9 months after issuance of a patent. § 18(a)(2) of AIA; § 42.303. – Petitioner must be sued or charged with infringement. § 18(a)(1)(B) of AIA; § 42.302(a).

– Petitioner has burden of establishing that patent is eligible for CBM review. § 42.304(a).

– Petitioner must certify that it is not estopped from proceeding. § 42.304(a).

– Prior Art is limited when challenging a first-to-invention patent.


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COVERED BUSINESS METHODS

• Proposed rule 42.301(b) provides that solely for purposes of a CBM review the following will be considered on a case-by-case basis to determine if a patent is for a “technological invention”: – whether the claimed subject matter as a whole:

(1) recites a technological feature that is novel and unobvious over the prior art; and

(2) solves a technical problem using a technical solution.


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Section 23. SATELLITE OFFICES

The Director shall, by not later than the date that is 3 years after the date of the enactment of this Act, establish 3 or more satellite offices in the United States to carry out the responsibilities of the Office

Detroit Office to open not later than July 2012

Other cities under consideration include: Austin, Denver, Boston, Silicon Valley and Las Vegas


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Section 34. STUDY OF PATENT LITIGATION

The Comptroller General of the United States shall conduct a study of the consequences of litigation by non-practicing entities, or by patent assertion entities, related to patent claims made under title 35, United States Code, and regulations authorized by that title.

recommendations for any changes to laws and regulations that will minimize any negative impact of patent litigation that was the subject of such study.


50You ng & T homp so n

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u.s. patent law reform summary of h.r. 1249, “leahy-smith america invents act”

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