the race to the patent office – the impact of the america invents act
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The Race to the Patent Office – The Impact of the America Invents Act. James T. Hagler Senior Patent Counsel Qualcomm Incorporated. America Invents Act. US Patent System transitioned from First-To-Invent to First-To-File System on March 16, 2013. - PowerPoint PPT PresentationTRANSCRIPT
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The Race to the Patent Office – The Impact of the America Invents Act
James T. HaglerSenior Patent Counsel
Qualcomm Incorporated
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America Invents Act
• US Patent System transitioned from First-To-Invent to First-To-File System on March 16, 2013.
• Filing an application before March 16, 2013 created potential value because it decreases the pool of prior art available to the Examiner.
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America Invents ActFirst-to-Invent (FTI) to First-Inventor-to-File (FITF) Transition
• Effective Date – March 16, 2013– “shall apply to any application for patent, and to any
patent issuing thereon, that contains or contained at any time … a claim to a claimed invention that has an effective filing date … that is on or after the effective date described in this paragraph [March 16, 2013]”
• Benefits Lost under FITF(1) Open to new, previously unconsidered, class of prior art(2) Can’t swear behind any reference(3) One-year grace period limited to applicant’s own disclosure of invention
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New Class of Prior Art Previously Not Considered by USPTO
12 months
Foreign application filedUS application filed claiming priority to Foreign application
Application filed
Potentially 12 months prior art now considered that wasn’t under FTI
Application publishes
6 mo
Not Prior Art under previous FTI
Prior art as of filingdate under AIA
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New Class of Prior Art Previously Not Considered by USPTO
6 mo12 months
Foreign application not in English language filed
PCT application designating US but not in English filed
PCT application published
Application filed
Potentially 18 months prior art now considered that wasn’t under FTI
Prior art as of filingdate under AIA
Not Prior Art under previous FTI
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New Class of Prior Art Previously Not Considered by USPTO
12 mo18 months
PCT application publishes not in English language
PCT application designating US but not in English filed
US National Phase entered w/ English translation
Application filed
Potentially 30 months prior art now considered that wasn’t under FTI
Prior art as of filingdate under AIA
Not Prior Art under previous FTI
![Page 7: The Race to the Patent Office – The Impact of the America Invents Act](https://reader036.vdocument.in/reader036/viewer/2022062321/56813079550346895d96566c/html5/thumbnails/7.jpg)
New Class of Prior Art Previously Not Considered by USPTO
18 mo12 months
Foreign application not in English language filed
PCT application designating US but not in English filed
US National Phase entered w/ English translation
Application filedPotentially 30 months prior art now considered that wasn’t under FTI
Prior art as of filingdate under AIA
Not Prior Art under previous FTI
![Page 8: The Race to the Patent Office – The Impact of the America Invents Act](https://reader036.vdocument.in/reader036/viewer/2022062321/56813079550346895d96566c/html5/thumbnails/8.jpg)
AIA Prosecution Strategy• Accelerate selected cases to ensure that they were filed
before March 16, 2013 and are examined under first-to-invent system.
• Tightly manage prosecution timeline of cases, advance from invention disclosure to filing quickly
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Start of the Race
• Compressed Prosecution Timeline– Shortened timeline for Patent Review Board disposition for a submitted IDF– Concurrent Search and Drafting– Shortened window for patent attorney to prepare draft application– Shortened window for inventor to review and attorney to finalize
application
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Head Start on the Race
Mar
chQ
1, Ja
n., F
eb.
Q3/
Q4
Est.
March surpassed annual totals though
FY07
Q1/Q2 surpassed
annual totals
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USPTO New Filings
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Results of the RaceReduction of Backlogged Cases
12
Pre-AIA filing push reduced backlog in Q2
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AIA Acceleration Impact– Avg. time to filing reduced 44%
• Time to PRB disposition - reduced 38 days• Disposition to draft received - reduced 63 days (concurrent PFS)• Review - reduced 23 days