HOW WILL THE AMERICA INVENTS ACT (AIA) CHANGE THE WAY WE PROTECT AMERICAN
IMAGINEERING? Michael A. Guiliana
April 24, 2012Disney’s Grand Californian Hotel
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AIA Makes 3 Major Changes
1. “First-to-File”
2. Eliminates Interferences
3. Post Grant Oppositions
• Accelerate Patent Filing Process
• Segregate Patent Applications re March 16, 2013 Deadline
• Last Call for Interferences
• Revise Pre-Litigation Checklist with Post Grant PTO Options
• Consider Monitoring Policy
AIA Changes Consider…
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Patent Reform – what needed reforming?
What are YOUR thoughts?
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Kappos on Keeping Up With the Speed of Business
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Patent Monetization Landscape – Key Players
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Patent Applications Under First-to-Invent
Inventor A InventsIDF
Decision to Draft and File Patent App. Filing Date
Committee Review of IDF• Searching• Market Analysis
Patent Filing Lag(Can Be Long)
USPTO Procedures
Inventor B InventsFiles Patent Fast
“Swear Behind”(37 CFR § 1.131)
-or-Interference
INVENTOR A WINS!
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Patent Applications Under First-to-FileStarting March 16, 2013
Inventor A InventsIDF
Decision to Draft and File Patent App. Filing Date
Committee Review of IDF• Searching• Market Analysis
USPTO Procedures
Inventor B InventsFiles Patent Fast
INVENTOR B WINS!
“Swear Behind”(37 CFR § 1.131)
-or-Interference
Patent Filing Lag(Can Be Long)
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Preparations for First-to-File System
Inventor A InventsIDF and:
• Files Patent App., or• Files Provisional App.
Decision to Draft and File Patent App. Filing Date
Committee Review of IDF• Searching• Market Analysis
USPTO Procedures
Inventor B InventsFiles Patent Fast
INVENTOR A WINS!
Patent Filing Lag(Can Be Long)
• Reduce Your Patent Lag•Provisional Applications - IDFs•Patent Application Training
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Preparations for First-to-File System
Reducing Patent Filing Lag / File First – Vet Later
• Train R&D Staff to Assist Writing Patent Applications
– File IDFs as Provisional Applications
• Segregate Unnecessary Information
– PTO Fee < $100
– 10 Months Available for:
• Searching
• Market Research
• Prototyping
• Foreign Filing Decisions
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Invention Tracking – Prior Use Defense
Prior Commercial Use is a Defense to ANY Patent Infringement
• Invention Disclosure Forms are Vehicle for Capturing Evidence
– Revise IDFs to include “Date of First Commercialization”
– Keep IDF Open Until DFC Established (even if no patent filing)
– Preserve All IDFs (even if no patent filing)
• Defense Potentially Available Even if Commercial Use of Invention is Trade Secret
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Simplified Product Marking
• 35 U.S.C. § 287(a) – Virtual Marking
– The word ‘patent’ or the abbreviation ‘pat.’ AND
– A website address “accessible to the public without charge”
• Must associate “the patented article with the number of the patent”
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Challenging Patent Applications in the PTO – New Reasons to Monitor
Challenging Pending Patent Applications
• “Third Party Submissions” 35 U.S.C. § 122(e)(2)
– TP Can Submit Patent/Published App., Printed Pub. +
– Argument
– Deadline – A Very Narrow Window:
• Before Allowance, AND
• Within 6 Months After Publication, or
• Before First Rejection
• Monitoring is the ONLY Way to Identify Opportunities
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Challenging Patents in the PTO – More Reasons to Monitor
Challenging Issued Patents
• Post Grant Review:
– Requester can use ANY Prior Art/Any Basis for Invalidity
• (except failure to disclose Best Mode)
– Deadline:
• 9 Months from Issuance
• Monitoring Only Practical Way to Identify Opportunities
– Appealable/Estoppel
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Challenging Patents in the PTO – More Reasons to Monitor
Challenging Issued Patents
• Inter Partes Review:
– Prior Art Limited to Printed Publications/Patents
– At Least 9 Months After Issuance/After Post Grant Review
– Appealable + Estoppel
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Best Mode Requirement – Dead?
• Disclosure of Best Mode Still Required 35 U.S.C. § 112, 1st
• Failure to Disclose Best Mode No Longer Grounds for Invalidity
– 35 U.S.C. 282
• Not Clear if Duty of Candor to the PTO will Have Any Effect
– Patent Attorney Subject to OED
– Possibly No Recourse Against Inventor or Patent Owner¶
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18
Thank You!
Michael A. Guiliana [email protected]