The America Invents Act

Manny D. Pokotilow Caesar Rivise Bernstein Cohen & Pokotilow, Ltd.

1635 Market Street – 7 Penn Center – 12th Floor

Philadelphia, PA 19103-2212.

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America Invents Act First-To-File System § 3

• First-To-File

• Prior Art

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AIA First-To-File Provisions

Generally, between two U.S. patent applications, the application with the earliest effective filing date will constitute prior art against the application with the later effective filing date.

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FTF Significant Effects

• Patent award based on the U.S. patent application with the earliest effective filing date, instead of who invented first, with exceptions.

• Exceptions include disclosures by the inventor within one year of the filing date.

• Earliest disclosure wins.

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FTF Significant Effects

• Increased scope of Prior Art available to invalidate an application to include all art that exists anywhere in the world prior to the earliest effective filing date, with exceptions.

• Exceptions include the inventor’s earlier disclosure and disclosures by others between the inventor’s disclosure and filing date.

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Applications Subject to FTF

• All applications filed after March 16, 2013 that:

• (1) include or included a claimed

invention with an earliest effective filing date on or after March 16, 2013, or

• (2) claimed the benefit of a U.S. non-provisional application or an international application that includes or included a claimed invention with an effective filing date on or after March 16, 2013.

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FTF 35 U.S.C. § 102 Novelty

• (a) 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

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FTF 35 U.S.C. § 102 Novelty

• (a) A person shall be entitled to a patent unless—

• (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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FTF 35 U.S.C. § 102 Novelty

• (b) EXCEPTIONS— • (1) Disclosures Made 1 Year Or Less

Before The Effective Filing Date Of The Claimed Invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

• (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

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FTF 35 U.S.C. § 102 Novelty • (b) EXCEPTIONS— • (1) Disclosures Made 1 Year Or Less Before

The Effective Filing Date Of The Claimed Invention.— A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

• (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

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FTF 35 U.S.C. § 103 Non-Obviousness

• A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

• No longer includes §§ 103(b) and (c).

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Strategies for First-to-file

• Do not publish first!!!

• Lose patent rights in other countries.

• Competitors will have access to the publication to invent around and lessen blocking protection.

• Publication only preserves priority date to the disclosed invention, invites prior art comments that may limit scope and affect patentability.

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Post Patent Grant AIA Amendments

• Supplemental Examination

• Post Grant Review

• Inter Partes Review

• New Patent Marking

• Covered Business Method Patents

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Supplemental Examination

• New procedure available September 16, 2012.

• For patentees to correct patents and eliminate inequitable conduct allegations by requesting that the Patent Office (PTO) assess any information believed to be relevant to the patent.

• Not limited to prior patents or printed publications.

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Supplemental Examination

• Ordered if a substantial new question of patentability is raised.

• If the requirements are met, the PTO must conduct supplemental examination within three months.

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Supplemental Examination Benefit

• “A patent shall not be held unenforceable if the information was considered, reconsidered, or corrected in supplemental examination.”

• Note: Supplemental examination must be concluded before an allegation is pled in a civil action.

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Supplemental Examination Drawbacks

• Other exclusions include “material fraud” on the PTO; antitrust claims; and prior allegations of fraud pleaded in litigation or in an ANDA notice letter.

• The Request is a publicly available admission of a substantial new question of patentability possibly based on a non-submitted reference or misrepresentation by the patentee.

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Post Grant Review

• A new procedure in which a 3rd party may file a petition to cancel one or more opponent patent claims

• A PGR Petition must be filed within nine months of issue or reissue date.

• Standard: PGR will be granted if it is “more likely than not” that: – at least one of the claims challenged in the

petition is unpatentable; or

– if the petition raises a novel or unsettled legal question.

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Post Grant Review

• Petitioner may assert any basis for asserting invalidity, including evidence of public use, on-sale activity, or other public disclosures.

• PGR can be sought based on lack of compliance with the written description, enablement, or patent eligibility rules (except failure to disclose best mode).

• Petitioner may rely on patents, printed publications, affidavits, or declarations of supporting evidence and opinions.

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Post Grant Review

• Not available if petitioner had first filed a civil action (not including counterclaims) challenging the validity of the patent.

• PGR may include several litigation-like aspects, such as limited discovery, protective orders, and settlement.

• After a final written decision by the PTO on the merits, the challenger is estopped from further challenging the patent. In other words, the challenger cannot appeal an adverse decision.

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Inter Partes Review

• IPR is a new trial proceeding conducted at the Patent Trial and Appeal Board (PTAB) to review the patentability of one or more claims in a patent.

• IPR becomes available only after the time period for post-grant review has expired (i.e., more than nine months after issuance (or reissuance), or if a post-grant review is ongoing only after it concludes).

• Based only on patents and printed publications.

• Not available if petitioner had first filed a civil action (not including counterclaims) challenging the validity of the patent.

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Inter Partes Review

• Standard: The USPTO will institute an IPR when it finds that the third-party petitioner has shown that there is a “reasonable likelihood” that the petitioner can succeed in invalidating at least one patent claim.

• This standard contrasts with the previous standard for initiating an Inter Partes reexamination, which is whether the petitioner has shown there to be a substantial new question of patentability affecting any claim of the patent.

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Inter Partes Review

• The IPR proceeding will be conducted by the PTAB. A final determination by the PTAB will be issued within 1 year of the initiation of the IPR (or within 1½ years with good cause for the delay).

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Patent Marking Background

• Patent owners selling product who do not mark their products are prevented from recovering any damages for infringements of product patents occurring prior to serving an actual, specific, notice of infringement or bringing suit.

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Patent Marking – New under the AIA • The AIA has removed almost all of the

prior dangers of mismarking products with patent numbers:

- Only the U.S. may sue for penalty

- A person who has suffered competitive injury may sue for damages. Marking with the number of an expired patent number is not a violation.

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Covered Business Method Patent Review

• Transistional program started September 16, 2012 for PTO review of the validity of CBM patents.

• CBM patents claim a method or corresponding apparatus for performing data processing operations utilized in the practice, administration, or management of a financial product or service, but not patents for technological inventions. 26

Covered Business Method Patent Review

• Petitioner must have been sued for or charged with patent infringement of a CBM patent.

• CBM patents that issued at any time are subject to review.

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Thank You

Manny D. Pokotilow

Caesar Rivise Bernstein Cohen & Pokotilow, Ltd.

1635 Market Street · 7 Penn Center · 12th Floor

Philadelphia, PA 19103-2212

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