Transcript Slide 1

More Complicated than 3D Chess?
CIPLA Presentation
March 28, 2012
Brad D. Pedersen
© 2011 Patterson Thuente Christensen Pedersen, P.A., May be distributed with attribution - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein are intended for educational and
informational purposes only and should not be construed as legal advice.
The AIA – Main Points
 Signed into Law

September 16th, 2011
 Three Big Changes



First-Inventor-To-File w/
Grace (FTFG)
Improvements to Patent
Validity Challenges
Fee Setting, but not Fee
Spending Authority
 Changes Not Included

2
Contentious Litigation
Issues
Timetable for the AIA Transitions
Immediately – 9/16/2011
One Year – 9/16/2012
18 Months – 3/16/2013
In – Prior User Rights (Sec. 5)
In – Assignee Oath/Decl (Sec. 4)
In – FTFG (Sec. 3)
In – Micro Entity Fee (Sec. 10)
In –
In – Virtual Marking (Sec. 16)
In – PTAB (Sec. 7)
In – Pro bono program (SEC. 32)
In – Supplemental Exam (SEC. 12)
Out – Tax strategies (SEC. 14)
In – Inter Partes Review (SEC. 6(a))
Out – Multi-Defendant (SEC. 19)
In – Bus Method Pat Review (SEC. 18)
Out – False Marking (SEC. 16)
In – Post Grant Review (SEC. 6(d))
Out – Human Organism (SEC. 33)
Out – Inter Partes Reexam (SEC. 19)
Done – Best mode (SEC. 15)
Starts – Important Tech Priority
Exam (Sec. 25)
Change – SNQ Threshold (SEC. 6(c))
9-16 9-26
2011 2011
11-15
2011
10 Days – 9/26/2011
Starts – 15% Surcharge (Sec. 11(i))
Starts – Fast Track Exam (Sec. 11(h))
3
3rd
Party Submission (Sec. 8)
3-16
2012
In – New Sec. 102
In – Derivation Proceedings
Out – Statutory Invent Registration
9-16
2012
3-16
2013
60 Days – 11/15/2011
6 Months – 3/16/2012
Starts – Electronic Filing Incentive $400 (Sec. 10(h))
Starts – First To Publish (FTP) Grace
3
AIA Changes Already In Place
• Fast Track – 9/26
–
–
–
–
–
–
–
–
–
–
4
$4800/$2400 fee (~$7K total)
Prosecuted in 1 year
4 Ind. and 30 total claims
No extensions or RCEs Only
bypass PCT, not nat’l stage
“Complete” electronic filing
PTO/SB/424 Form
Limit of 10,000 filings per FY
Only 856 filings in FY2011
So far 1600 filings in FY2012
Key is actions turned around
in about 1 month
AIA Changes For Next September
 3rd Party Submission
 Submission made before Notice
of Allowance and no later than
6 mos. after publication, or
Mailing of FAOM
 3rd party must now point out why
art is being submitted, but Office
will only reject skeleton
statements
 Submission can include non-prior
art and address other than
102/103
 Owner cannot submit
 Fee $180/10 items, but fee
waived if less than 3 items are
only submission
5
AIA Changes For Next September
 Filing by Assignee
 Combined Oath/Declaration
 Supposed to be easier proof
of obligation to assign and
filing up to Notice of
Allowability
 Proposed Rules still require
early filing and current
process for unwilling inventor
 Word is that Office is looking
to fix these problems in the
Final Rules
6
Patent Office
AIA Changes For Next September
 Supplemental Examination
 New route into ex parte reexam
 Allows owner to cleanse patent
 But attorney will not be cleared
 Proposed Rules
Expensive - $21K to file for
up to 10 items with $16K
refunded if no EPX
Requires explanation of
relevance of each item
Summarize items over 50
pages
More than 1 Supp Exam can
be filed if more than 10 items
Ex Parte Reexam fees now
$17K
7
Forgive me,
Patent
Office, for I
have …
Post Issuance Proceedings under AIA
Five Different Regimes and Three Different Standards
Ex Parte
Reexam
and Older
Inter Partes
Reexams
(EPX/IPX)
Standard
SNQ
plus IPX only
post Nov
1999
IPX Filed
before
9/16/2011
8
Cutover
Inter Partes
Reexams
(IPX)
New Inter
Partes
Reviews
(IPR)
Standard
RLP
plus post
Nov 1999
Standard
RLP
for
All patents
Filed
between
9/16/11
and
9/16/12
Filed after
9/16/12
and
After 9 mos.
1st Window
New Bus
Method
Patent
Review
(CBM)
New Post
Grant
Review
(PGR)
Standard
MLPTN
plus
Defendant*
Standard
MLPTN
For
FTFG patent
Filed after
9/16/12
but
Before 9
mos.
st
1 Window
Filed after
3/16/13
but
Before 9
mos.
st
1 Window
Post Issuance Proceedings Comparison
9
Ex Parte
Reexam
Inter Partes
Reexam (rev.)
Inter Partes
Review (new)
Post-Grant Review (PGR)
(new)
SEC. 18 Proceeding
(new)
Threshold
& Pleading
• 35 USC §303(a)
(current law):
Substantial new
question of
patentability (SNQ)
•Reasonable likelihood
of prevailing (RLP)
•SNQ continues to
apply to pre-9/16/11
requests
• 35 USC §314(a): RLP
• 35 USC §315(a): Has
not “filed” a civil action
challenging validity
• 35 USC §324(a):“More likely
than not” (MLTN) that at least 1
claim is unpatentable
• §325(a): Must not have filed a
civil action challenging validity
• SEC. 18(a)(1)(B) : must be
sued or charged with
infringement
• Otherwise same as PGR
Estoppel:
•Civil actions
•ITC
•PTO
• None
35 USC §315(c)
(current law): “Raised
or could have raised”
Applies to civil actions,
not ITC
Also not PTO
• 35 USC §315(e)
• “Raised or reasonably
could have raised”
(RORCHR)
• May not “assert” issue
• Final written decision
• Civil actions, ITC & PTO
• 35 USC §325(e)
• RORCHR
• May not “assert” issue
• Final written decision
• Civil actions ITC & PTO
• SEC. 18(a)(1)(D)
• Any ground “raised” (not
RORCHR)
• Otherwise same as PGR
Patents
Covered
All
Filed Post Nov 1999
All patents
Only FTFG patent issued under
the AIA
• SEC. 18(a)(1)(A) & (d)
• “Covered business
method patents”
• Not “technological
inventions”
Scope, Grounds,
Bases
• 35 USC §§302
and 301 (current
law): Patents and
printed
publications
• 35 USC §§311(a)
and 301 (current law):
Patents and printed
publications
• 35 USC §311(b):
Patents or printed
publications
• 35 USC §312(a)(3)(B):
Can be supported by
expert opinions,
affidavits, etc.
• 35 USC §321(b): Issues relating
to invalidity under §282(b)(2) or
(3)
• 35 USC §324(b): Novel or
unsettled question important to
other patents or patent
applications (does not require
MLTN)
•Same as PGR
When
• Any time
• Any time
• 35 USC §311(c)
• After later of:
• 9 months after
issuance (reissuance); or
• PGR is terminated
• 35 USC §321(c): ≤9 months
after issuance (or reissuance)
• 35 USC §325(f): No challenge
to non-broadened reissue claims
after original 9-month PGR period
• SEC. 18(a)(1)(B)
• Any time after suit or
charge of infringement
9
Proposed Rules for the Review Proceedings
 Umbrella Rules




Petitioner must provide evidence and propose claim construction
Sequenced time periods for each side for discovery/responses
Managed discovery w/ disclosure and APJ motion practice
Variable length oral hearing by 10 months from declaration of
“trial”
 FRE followed but not binding
 Page limits for everything, typically 50 pages w/out permission
 PGR/IPR Rules
 PGR Fees: average fee at $47K, but includes $12K per each
additional 10 claims over 20
 IPR Fees: average fee at $36K, but includes $10K per each
additional 10 claims over 20
 CBM Rules
 Same as PGR, but limited to Business Method patents that do
not recite a technological feature or solve a technical problem
with a technical solution
 Derivation Rules
 Case alleging derivation must be filed within 1 year of
publication of case from which invention was allegedly derived
 Standard for derivation will be conveyance of enough elements
of invention that claims would have been obvious
10
Our Current Understanding of
First Inventor to File w/ Grace (FTFG)
under the Leahy-Smith America Invents Act (AIA)
The Leahy-Smith
America Invents Act (AIA)
11
11
New 102(a) defines 2 kinds of Prior Art:
Publicly Disclosed (“PD”) Art + Patent Filing (“PF”) Art
§102(a)(1)
Prior art exists under new 102(a) if a disclosure establishes that:
disclosure
of the
claimed
invention
Public
(1) “theAclaimed
invention
was
patented,
describedwas
in a
publicly
accessible
before
the
effective
filing
printed
publication,
or in public
use,
on sale,
or otherwise
Disclosures
date.
available to the public before
the
effective filing
Anywhere
in date. . .”
or
World
(2) “the claimed invention was described in a patent issued
Non-Public
Thesection
claimed
was described
in apublished
laterunder
151,invention
or in an application
for patent
“US” Patent
or
deemed published
under
section 122(b),
in which
published
U.S./U.S.
PCT patent
application
orthe
patent
patent
or application,
as theeffectively
case may be,
names
another
Filings
That
of another
inventor,
filed
before
the
inventor and
was effectively
filed before the effective filing
Later
Become
inventor’s
effective
filing date.
date . . .”
Public
§102(a)(2)
12
12
New 102(b) defines Exceptions to Prior Art:
Publicly Disclosed (PD) Art and Patent Filing (PF) Art
13
§102(b)(1)
exceptions
deal only
with
§102(a)(1)
prior art.
§102(b)(2)
exceptions
deal only
with
§102(a)(2)
prior art.
Prior PD art
have two
separate
“Exceptions.”
Prior-filed,
later-publish
PF art have
three
“Exceptions.”
13
Exceptions for art that is first publicly available not
more than than 1-year before “effective filing date” –
§102(b)(1)(A)
A disclosure under §102(a)(1) is excepted if:
(A) “the disclosure was made by the inventor or
joint
or byrepresents
another who
the
Theinventor
disclosure
theobtained
inventor’s
subject
directly
or indirectly
ownmatter
workdisclosed
– Full Year
grace
period. from
the inventor or a joint inventor“ or
(B) “the subject matter disclosed had, before such
A subsequent
by anyone
disclosure,
beendisclosure
publicly disclosed
by theelse is
not priororart
withinventor
respectortoanother
subjectwho
matter
inventor
a joint
obtained
the subject
matter
disclosed
directly or
in an inventor’s
earlier
public
disclosure
–
indirectly
from
the inventor
or agrace
joint inventor”
the First
to Publish
(FTP)
period
§102(b)(1)(B)
14
Exceptions for art that is earlier (not-yet-public) patent
filings as of when effectively filed…
§102(b)(2)(A)
An earlier patent filing under §102(a)(2) is excepted if:
(A) “theThe
subject
matter disclosed
obtained
directly
inventor’s
ownwas
work
– Full
yearor+
indirectly from the inventor or a joint inventor“ or
grace period.
(B) “the subject matter disclosed
had, before such subject
matter was effectively filed under subsection (a)(2), been
filingsorofa others
to the
publiclyEarlier
disclosedpatent
by the inventor
joint inventor
or
another
who obtained
the subject
matterdisclosures
disclosed
extent
of inventor’s
public
directly or indirectly from the inventor or a joint inventor”
§102(b)(2)(B)
or before such filings – FTP grace period.
(C) “the subject matter disclosed and the claimed invention,
not later than
effective filing
date of the claimed
Thetheinventor’s
co-workers
and
invention, were owned by the same person or subject to
research
collaborators
patent
filings.
an obligation
of assignment
to the same
person.”
§102(b)(2)(C)
15
15
Prior Art under the AIA - Domestic
Public Disclosure (“PD”)
Prior Art - 102(a)(1)
Patented Printed Publication
Public Use
On Sale Otherwise available
Patent Filing (“PF”)
Prior Art - 102(a)(2)
Later US Patent, Published
Application, or
“Deemed Published” 122(b)
Not “PF” Prior Art:
Abandoned Applications
Applications with secrecy orders*
Unconverted Provisional
Applications*
16
Not “PD” Prior Art:
Offers for Sale
“Secret” Prior Art
Prior Art under the AIA - International
Now “PD” prior art:
In use or on sale
OUTSIDE the US - if publicly accessible
Public Disclosure “PD”
Prior Art - 102(a)(1)
Patent Filing “PF”
Prior Art - 102(a)(2)
PCT Applications designating US
17
Not “PF” prior art:
Foreign Appls/PCT Appls
Not filed in/designating the US
Scenario 1.1:
AIA RESULT:
wins
invents first and files first before
No change from current First To Invent (FTI)
Party
Party
18
18
Scenario 1.2:
AIA RESULT:
loses
invents first, but
files first
Change from FTI – Old 102(a)/(g)
can no longer swear behind or win by
interference – now must “publish ahead” to
establish a First-To-Publish (FTP) Grace Period
Party
Party
19
19
Scenario 1.3:
invents first, files first, but establishes
FTP Grace period by publishing before files
AIA RESULT:
wins
No effective change – New 102(b)(2)(B)
FTP Grace period exempts
filing even
though it is before
filing
A’s FTP Grace
Party
Party
20
20
First Inventor to File w/ Grace (FTFG) Will Be Different
Comparison of Two Filer Scenarios
21
FIG. 1 – Scenarios where both parties are seeking a patent
(based on hypothetical evaluation of weighted likelihood of 200 typical
fact patterns from “The Matrix” article at Cybaris IP Law Review)
See, http://web.wmitchell.edu/cybaris/wpcontent/uploads/2010/05/01.Pedersen.05-12-1021
vFINAL.WITHAPPENDIX.pdf
First Inventor to File w/ Grace (FTFG) Will Be Different
Comparison of One Filer Scenarios
22
FIG. 2 – Scenarios where only 1 party is seeking a patent
(based on hypothetical evaluation of weighted likelihood of 200 typical
fact patterns from “The Matrix” article at Cybaris IP Law Review)
See, http://web.wmitchell.edu/cybaris/wpcontent/uploads/2010/05/01.Pedersen.05-12-10vFINAL.WITHAPPENDIX.pdf
First Inventor to File w/ Grace (FTFG) Will Be Different
Comparison of Derivation Scenarios
23
FIG. 3 – Scenarios involving fact patterns with derivation issues
(based on hypothetical evaluation of weighted likelihood of 200 typical
fact patterns from “The Matrix” article at Cybaris IP Law Review)
See, http://web.wmitchell.edu/cybaris/wpcontent/uploads/2010/05/01.Pedersen.05-12-10vFINAL.WITHAPPENDIX.pdf
Summary Comparison of New 102 with Old 102
24
Subsection
New 102
Old 102
Notes on Changes
Non-Patent Art
New 102(a)(1) Old 102(b) Changes definition based on “publicly available” approach,
see New 102(b)(1) for first-to-publish (FTP) grace period
Patent Filing Art
New 102(a)(2) Old 102(e) Applies to both US and PCT filings that designate US and are
published in 1 of 10 PCT official languages
Full Year and
New
FTP Grace for Non- 102(b)(1)
Patent Art
Old 102(b) Up to 1 year - for inventor’s own work full year, but for 3rd
party only after triggered by ‘publicly disclosed’ FTP
Full Year + and
FTP Grace for
Patent Filing Art
New
102(b)(2)
Old 102(a) Up to 1 year after publication - for inventor’s own work full
year after publication, but for 3rd party only after triggered
by FTP - replaces swearing behind
Joint Development
New 102(c)
Old 103(c)
Expands “team” exception to both New 102/New 103
Abandoned
--------
Old 102(c)
Changes to abandoned w/out publication, see New 102(a)(2)
Foreign patent
--------
Old 102(d) Hilmer doctrine gone as non-English priority filings okayed
Not the Inventor
--------
Old 102(f)
Interference
--------
Old 102(g) Replaced by new derivation proceedings under New 135
Replaced by definitions of inventor under New 100(f)
24
Tips/Pointers for Transition
“Mind the Gap”
Pre-FTFG Transition
(Before 3/16/2013)
Post-FTFG Transition
(After 3/15/2013)
• First To Invent
• Ability to Swear Behind
• 1 Year Grace/Statutory Bar
• Team Exception
(at time of invention)
• First To File w/ Grace
• First To Publish Grace Period
(for 3rd Party NPL/Patent Filing)
• Full Year+ Grace Period
(for Work by/from Inventor)
• Expanded Team Exception
(at time of filing)
Avoid unintentionally bridging between FTI and FTFG
• For provisional-to-utility conversions
• For parent-to-child CIP applications
25
25
Open Questions for New 102:
What Will PTO Use As FTFG Search Date?
Provisional
Filing Date
Utility Filing Date
Assume Support
in Earliest
Provisional Case
and Search for
Art Before That
Date
Assume No Support in
Provisional or Use of FTP
Grace Period with
Applicant Having to
Prove Entitlement to
Earlier Date
FTP Publication
Date
Ask Applicant’s to
Submit Earliest
Asserted FTP Date
and Search Only
Art Dated Prior to
that Date
26
Current FTI Answer:
MPEP 201.08 provides that
there is no need to determine
whether applicant is entitled to
an earlier claimed priority date
unless that filing date is actually
need to overcome a reference
26
Open Questions for New 102:
What Is “Publicly Disclosed” for 102(b)(1/2)(B) Exceptions?
Enabled
Meets
Section 112
Standards
Anticipation
Only Express
Disclosures
“Publicly
Disclosed”
Inherency
Express and
Implied
Disclosure
Obviousness
What POSITA
would know
27
27
Open Questions for New 102:
What Is “Described In” for 102(d) Prior Art Filing Date?
Enabled
Meets
Section 112
Standards
Anticipation
Only Express
Disclosures
“Described
In”
Inherency
Express and
Implied
Disclosure
Obviousness
What POSITA
would know
28
28
The New 102 - FTFG:
Theory vs. Practice
29
Idealized
Patent Filing
Fully Complete
Disclosure with
no Additional
Development
Always Filed
Before Any
Public Availability
First-to-Publish
(FTP) Grace
Period Not Used
Reality for
Most Corps.
Initial Invention
Disclosure with
Subsequent
Development
Filed After
Approval By
Patent Review
Committee
Limited Use of
Provisional/FTP
Grace Based on
Product Release
Reality for
Startups
Initial Concepts
with Subsequent
Development
Patent Filings
Efforts
Competing with
Fund Raising
Typical Use of
Provisional
Filings to
Minimize Cost
Reality for
Universities
Research
Concepts Instead
of Product
Concepts
Patent Filings
Contend with
Demands of
Publish or Perish
Will Make Most
Use of
Provisional/FTP
Grace
29
So, What Might the AIA Do?
More Complicated:
> 49 claims
> 2 priority claims
> 1 inventive entity
Less Complicated:
< 50 claims
< 3 priority claims
1 inventive entity
AFTER THE TRANSITION
Less Complicated Cases will be Easier
More Complicated Cases will have More Options and Expense
So, expectation is there will be a relative increase in Less Complicated Filings
30
Changes Impact Different Technologies Differently
31
31
Timetable for AIA Regulations
Group 1
Group 2
Group 3
In – Micro Entity Fee (Sec. 10)
In – Assignee Oath/Decl (Sec. 4)
In – FTFG (Sec. 3)
3rd
In – Pro bono program (SEC. 32)
In –
Out – Tax strategies (SEC. 14)
In – Supplemental Exam (SEC. 12)
Out – Human Organism (SEC. 33)
In – Inter Partes Review (SEC. 6(a))
Done – Best mode (SEC. 15)
In – Bus Method Pat Review (SEC. 18)
Change – SNQ Threshold (SEC. 6(c))
In – Post Grant Review (SEC. 6(d))
Starts – 15% Surcharge (Sec. 11(i))
Starts – Important Tech Priority
Exam (Sec. 25)
Starts – Fast Track Exam (Sec. 11(h))
9-16
2011
1-16
2012
3-16
2012
Party Submission (Sec. 8)
6-16
2012
In – New Sec. 102
In – Derivation Proceedings
9-16
2012
12-16
2012
3-16
2013
USPTO needs lots of input with comments
• 8 month Notice/Comment process for each rule package
32
32
How Long Will It Take For the Courts
To Get Up to Speed on the AIA?
Sept 2011
March 2013
AIA Enacted
FTFG Starts
Sept 2017
Sept 2015
Earliest
Possible
PTAB ruling
on a PGR
case
1st Federal
Circuit
Rulings on
Litigated
Cases
Sept 2012
March 2014
Sept 2016
New Post
Issuance
Proceedings
1st FTFG
patents
start issuing
1st District
Court Cases
Completed*
and
1st CAFC
Appeal on
PTAB-PGR
33
First Inventor to File w/ Grace (FTFG) Examples of How New 102
works under the AIA
Party
Scenario 1:
Scenario 2:
Scenario 3:
Scenario 4:
Scenario 5:
Scenario 6:
Scenario 7:
Scenario 8:
Scenario 9:
34
Party
and both file, but neither publishes
publishes and files, but only publishes
and both publish and file
claims priority to OUS filings
has non-published patent filing
and have cases with varying disclosures
derives from
and are working together
and are bridging “the Gap”
Scenario 1.1:
AIA RESULT:
wins
Party
Party
35
invents first and files first before
No change from current First To Invent (FTI)
Scenario 1.2:
AIA RESULT :
loses
Party
Party
36
invents first, but
files first
Change from FTI – Old 102(a)/(g)
can no longer swear behind or win by
interference – now must “publish ahead” to
establish a First-To-Publish (FTP) Grace Period
Scenario 1.3:
invents first, files first, but establishes
FTP Grace period by publishing before files
AIA RESULT:
wins
No effective change – New 102(b)(2)(B)
FTP Grace period exempts
filing even though
it is before
filing
A’s FTP Grace
Party
Party
37
Scenario 2.1:
AIA RESULT:
wins
Party
Party
38
invents first and files first before
publicly available
No change from FTI
is
Scenario 2.2a:
invents first, but files after has itself
been publicly available for more than 1 year
AIA RESULT:
wins
No effective change – New 102(b)(1)(A)
public actions are outside Full Year Grace
period for actions by/for or derived from inventor
Party
39
A’s Full Year Grace
Scenario 2.2b:
invents first, but files after has itself
been publicly available for less than 1 year
AIA RESULT:
wins
No effective change – New 102(b)(1)(A)
public actions are inside Full Year Grace
period for actions by/for or derived from inventor
Party
40
A’s Full Year Grace
Scenario 2.3:
invents first, but files after has been
publicly available for more than 1 year
AIA RESULT:
loses
No change from FTI
Party
Party
41
1 year
Scenario 2.4a:
invents first, but files after has been
publicly available for less than 1 year
AIA RESULT:
loses
Change from FTI - New 102(b)(1)(B)
3rd party First To Publish (FTP) Grace period
only if makes invention publicly available
Party
Party
42
1 year
Scenario 2.4b:
invents first and publishes first, but files after
has been publicly available for less than 1 year
AIA RESULT:
wins
Change from FTI - New 102(b)(1)(B)
If is publicly available for less than 1 year and
before is publicly available – inside FTP Grace period
A’s FTP Grace
Party
1 year
Party
43
Scenario 2.4c:
invents first, but publishes and files after
been publicly available for less than 1 year
AIA RESULT:
loses
Change from FTI - New 102(b)(1)(B)
If is publicly available for less than 1 year but
after was publicly available – outside FTP grace period
A’s FTP
Party
1 year
Party
44
has
Scenario 3:
invents first, publishes first and files before
files or is publicly available for less than 1 year
AIA RESULT:
wins
No effective change – New 102(b)(1)(B)
FTP Grace period (exempting
public
activity) is before
FTP Grace period
A’s FTP Grace
Party
1 year
Party
45
B’s FTP Grace
Scenario 4.1a:
files US application after
claimed
priority in PCT/US case published in English
AIA RESULT:
wins
No effective change – New 102(a)(2)
PCT filing designating the US is given the earlier effective
filing date (even if B doesn’t enter national stage in the US)
Party
Party
1 year Paris
Filed as nat’l case
in any language
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18 mo nat’l stage
Filed as PCT/US
in English
Scenario 4.1b:
files US application after
priority in
PCT/US case published in any PCT language
AIA RESULT:
loses
Change from FTI – New 102(a)(2)
PCT filing no longer has to be in English
(Current - Arabic, Chinese, English, French, German,
Japanese, Korean, Portuguese, Russian, and Spanish)
Party
Party
1 year Paris
Filed as nat’l case
in any language
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18 mo nat’l stage
Filed as PCT/US in
any PCT language
Scenario 4.2a:
files US application after
priority date
but before is published as national case
AIA RESULT:
wins
No effective change – New 102(a)(2)
patent publication alone other than by US
or PCT is not prior art to as of priority date
Party
Party
18 mo publication
Filed as nat’l case
in any language
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Published as
nat’l case
Doesn’t
matter if
patent
issues or
not
Scenario 4.2b: Same as 4.2a, except
case is patented
AIA RESULT:
wins
invented first and
No effective change – New 102(a)(1)
patent outside of US or PCT/US case is only prior
by US art to as of issue date – In re Ekenstam.
MPEP 2126.
Party
Party
18 mo publication
Filed in any language
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Published in
any language
Patented in
any language
Scenario 5:
invents first and files first, but
never published or issued
case is
AIA RESULT:
wins
No effective change – New 102(a)(2)
patent application is not prior art because
it never publishes and is equivalent to
abandoned aspect of Old 102(g)
Party
Party
Request for non-publication or
non-converted provisional
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Abandoned
Scenario 6.1a:
invents X + Y and invents X +Z Y and Z are patentably distinct from X alone
AIA RESULT:
No change from FTI
and both win
Party
Party
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Scenario 6.1b: Same as 6.1a, except
invents X + Y
AIA RESULT:
and
both win
Party
Party
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invents X + Z before
Change from FTI – Old 102(a)/(g)
But wins patent to X instead of , who wins
under FTI by swearing behind or interference
Scenario 6.1c: Same as 6.1b, except Y’ Z’ are patentably
indistinct when added with X
AIA RESULT:
Only wins
Party
Party
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Change from FTI for X – Old 102(a)/(g)
wins patent to X instead of , and
filing
is now patent filing prior art to for X + Z’
Scenario 6.1d: Same as 6.1b, but Y” Z” are distinct when
added with X, but indistinct from each other
AIA RESULT:
Only wins
Party
Party
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Change from FTI – Old 102(a)/(g)
wins patent to X instead of , and cannot
swear behind
filing for X + Y” for X + Z”
Scenario 6.2a:
files provisional with X and then utility with
X Y, files utility with X Z before
utility
AIA RESULT:
and
both win
No change from FTI
If X + Y and X + Z patentable over X and each
other,
prov. only defeats
claim to X
and
filing, while prior, does not defeat
Party
Party
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1 year conversion deadline
Scenario 6.2b: Same as 6.2a, except
invents X + Z
AIA RESULT:
and
both win
invents X + Y before
No change from FTI
Same as 4.1a,
invention date does not
change this example where Y and Z are
patentably distinct when added to X
Party
Party
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1 year conversion deadline
Scenario 6.3a: Same as 6.2a, but Y” Z” are distinct when
added with X, but indistinct from each other
AIA RESULT:
and
both win
No effective change
filing for X + Z” now defeats
claim to
X + Y” instead of being unable to swear
behind
earlier invention of X + Z”
Party
Party
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1 year conversion deadline
Scenario 6.3b: Same as 6.3a, except
invents X + Z”
AIA RESULT:
and
both win
invents X + Y” before
Change from FTI – Old 102(a)/(g)
filing for X + Z” now defeats
claim to
X + Y” instead of being unable to swear
behind
earlier invention of X + Z”
Party
Party
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1 year conversion deadline
Scenario 6.4a: Same as 6.2a and 6.2b, except that
publishes X Y before files with X Z
AIA RESULT:
and
both win
Party
Party
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No change from FTI
Same result as 4.2a and 4.2b –
period doesn’t change results
A’s FTP
1 year conversion deadline
FTP grace
Scenario 6.4b: Same as 6.4a, except that publishes X, Y
and Z before files with X and Z
AIA RESULT:
Only wins
Party
Party
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Change from FTI – New 102(b)(1)(B)
wins patent to X+Z and X+Y instead of
because uses FTP grace period to trump
A’s FTP
1 year conversion deadline
Scenario 6.4c: Similar to 6.3a and 6.3b, except publishes
X Y” before files and files for X Y” Z”
AIA RESULT:
Only wins
Party
Party
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Change from FTI – New 102(b)(1)(B)
wins patent to X+Z” instead of
because uses FTP grace period to trump
A’s FTP
1 year conversion deadline
Scenario 7.1:
invents first and files not more than 1 year
after , but derived invention X from
AIA RESULT:
wins
No effective change – New 102(b)(2)(1)
“Anticipation-type” derivation will definitely
be protected under the AIA
A’s Full Year+ Grace
Party
18 mo publication
Party
62
1 year grace
Scenario 7.2:
invents first and files not more than 1 year
after , but derived invention X from
AIA RESULT:
wins
Uncertain – New 102(b)(2)(1)
“Obviousness-type” derivation may/may not
be protected under the AIA (but should be)
A’s Full Year+ Grace
Party
18 mo publication
Party
63
1 year grace
Scenario 8.1:
invents first and files after , but
work for same company
AIA RESULT:
and
Change from FTI – New 102(b)(3)
filing for X + Y” is not prior art to
claim both win
to X if and are at same company as of
filing date; compared to invention date for FTI
Party
Party
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Same Company
and
Scenario 8.2:
AIA RESULT:
and
both win
Party
Party
65
invents first and files after , but and
are parties for CREATE Act joint development
Change from FTI – New 102(c)
filing for X + Y” is not prior art to
claim
to X if and are under JDA as of
filing date; compared to invention date for FTI
Create Act JDA
Scenario 9.1: New Matter Added From Provisional to Utility
AIA RESULT:
can
Patent Both
Changeover from FTI to FTFG
claims for X + Y are evaluated under FTI unless
also includes claims to X + Y + Z, then both claims
are evaluated under FTFG - AIA Sec 3(n)
Party
FTI
FTFG
March 16, 2013
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Scenario 9.2: New Matter Added After 3/16/13 but not claimed
AIA RESULT:
wins
No Change because FTI applies
wins patent to X+Y governed by FTI and
can swear behind
Party
Party
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March 16, 2013
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Some Really Helpful Links
USPTO Links to AIA Related Materials
• Final AIA bill as enacted – a required read, and then reread
• http://www.uspto.gov/aia_implementation/bills-112hr1249enr.pdf
• Patent Office website on AIA implementation
• http://www.uspto.gov/aia_implementation/index.jsp
• Patent Office effective dates of various AIA provisions
• http://www.uspto.gov/aia_implementation/aia-effective-dates.pdf
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Thank You!
About Brad Pedersen
Brad Pedersen is a patent attorney with more than 25 years of experience in patent law, engineering,
business and entrepreneurship. He is a partner and the chair of the patent practice group at Patterson
Thuente Christensen Pedersen, P.A., an intellectual property law firm in Minneapolis, Minnesota. Brad
concentrates his practice in the areas of high-technology, computer, software and medical device patent
prosecution strategy, licensing and litigation.
Brad is one of the more knowledgeable IP attorneys in the U.S. when it comes to the patent reform. Since
it was first introduced in 2005, he has actively followed the developments and debate surrounding patent
reform at the agency, legislative and judicial levels. He educates clients and colleagues by writing and
presenting on the imminent changes and strategies for dealing with the reforms.
A special thanks to Robert Armitage, Matt Rainey, Steve Kunin, Justin Woo, Tracy Dann, and Michelle
Arcand for their invaluable help on these materials.
Brad can be reached at [email protected] or (612) 349.5774
About Patterson Thuente IP
Patterson Thuente Christensen Pedersen, P.A. helps creative and inventive clients worldwide protect, and
profit from, their ideas. Practicing in the areas of patents, trademark, copyright, trade secrets, IP litigation,
international IP protection, licensing and post-grant proceedings, the firm’s attorneys excel at finding
strategic solutions to complex intellectual property matters.
Visit us online at www.ptslaw.com.
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