America Invents Act: Changes to U.S.
Patent System
Presentation by
Dr. Edwin S. Flores
Partner at Chalker Flores, LLP
© 2013 Chalker Flores, LLP—All Rights Reserved
Patents
U.S. Constitution – Article 1, Section 8:
“To promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors
the exclusive Right to their respective Writings and
Discoveries;”
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35 U.S.C. § 101: Who even invents or discovers any
new and useful process, machine, manufacture, or
composition of matter, or any new and useful
improvements thereof…
Not patentable subject matter: Mere ideas, concepts,
mathematical formulas, laws of nature (scientific or
theoretical principles), literary and artistic works, etc.
What is the Leahy-Smith America
Invents Act (“AIA”)?
• Signed into U.S. law on September 16,
2011
• Presents greatest change to our patent
statute since 1952
• Changes seen across the board in matters
concerning pre-filing, prosecution, postgrant/ “inter partes” procedures, and
litigation
• Aims to reduce costs, level economic
playing field for small and large businesses,
and create economic growth
Why did we need patent reform?
• Attempts to align U.S. patent process with
international standards and procedures
• Creates new post-grant procedures to correct
defectively issued patents/mitigate potential for bad
filings without resorting to litigation
• Reforms litigation provisions to reduce frivolous suits
Five Major Areas of Change to U.S.
Patent System:
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Shift to the new “First-Inventor-to-File”
system and other pre-filing concerns
Changes to application filing process,
new filing programs
Changes to Prosecution/examination
Creation of new post-issuance/“inter
partes” proceedings
Amendments to post-grant litigation
procedures
“First-Inventor-to-File” System, and
Other Pre-Filing Concerns
Section 1
• First-Inventor-to-File
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Shifts from old “First-to-Invent” to new “First-Inventor-to-File”
Effective on March 16, 2013
Shifts focus to the effective filing date of the claimed invention
Eliminates interferences
“First-Inventor-to-File” System, and
Other Pre-Filing Concerns
Section 1 (cont.)
• New definitions of novelty/prior art under § 102(a):
§ 102(a). Conditions for patentability. 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.
“First-Inventor-to-File” System, and
Other Pre-Filing Concerns
Section 1 (cont.)
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New one-year disclosure grace period for inventor’s own disclosures, including all
publically available disclosures (e.g., inventor’s own publications)
• Expanded in for matters involving foreign priorities and provisional applications
§ 102(b)(1). Conditions for patentability; Exceptions—
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
(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
“First-Inventor-to-File” System, and
Other Pre-Filing Concerns
Section 1 (cont.)
• Other prior art exceptions under (b)(2):
§ 102(b)(2). Conditions for patentability; Exceptions—
A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint
inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection
(a)(2), 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; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the
claimed invention, were owned by the same person or subject to an obligation of assignment to the
same person.
“First-Inventor-to-File” System, and
Other Pre-Filing Concerns
Section 1 (cont.)
• Expanded definition of prior art
Effective as of March 16, 2013
In re Hilmer Rule eliminated
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Prior art now includes:
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“Effectively filed” will include foreign priority dates; not just U.S. filing dates
Foreign public use or on sale activities
Disclosures “otherwise available to the public,” including anywhere in U.S. and
abroad
Priority date will become effective date for purposes of novelty-defeating art and
obviousness
“First-Inventor-to-File” System, and
Other Pre-Filing Concerns
Section 1 (cont.)
• New non-obvious subject matter definition:
§ 103. Conditions for patentability; non-obvious subject matter.—
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.
Changes to Application Process,
New Filing Programs
Section 2
• New Filing Fees
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Effective September 26, 2011
USPTO director has fee-setting authority, subject to review by Public Advisory
Committee and Congress
Increases many fees by as much as 15% on patents and trademarks
Fee schedule available at www.uspto.gov/about/offices/cfo/finance/fees.jsp
• Electronic Filing Incentive
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Effective November 15, 2011
Essentially a penalty by adding an additional $400 ($200 for small entities) for
each original patent not filed electronically
Changes to Application Process,
New Filing Programs
Section 2 (cont.)
New “Micro Entity” Status
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Available as of September 26, 2011
Directed towards individual and small company applicants:
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Applicants who:
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35 U.S.C. § 123(d). Institutions of Higher Education.—For purposes of this section, a micro entity
shall include an applicant who certifies that:
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(1) qualify as a small entity under 35 U.S.C. § 41(h)(1);
(2) have not been named as inventor on more than four previous U.S. applications;
(3) gross annual income of at or less than 3x U.S. median household income
(4) have not assigned, granted, or conveyed (or under obligation to do so) license or other ownership interest in
application to entity that had gross income in excess of 3x the U.S. median household income
(1) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an
institution of higher education as defined by [20 U.S.C. § 1001(a)]; or
(2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant,
or convey, a license or other ownership interest in the particular applications to such an institution of higher
education.
NOTE: “Institute of Higher Education” under 20 U.S.C. § 1001(a) does not include independent research institutes
Entitles qualifying applicants to 75% discount on USPTO fees
Changes to Application Process,
New Filing Programs
Section 2 (cont.)
• Pro Bono Programs
Successfully launched pilot program in Minnesota in June 2010
Five new regional programs launched in 2012 in Denver, California, Texas,
Washington D.C. metro area, and New York City metro area
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Potentially ten new programs opening in 2013
Eligibility and acceptance determined by initial screening process based upon
factors, such as:
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(1) applicant’s knowledge of patent system,
(2) potential patentability of invention, and
(3) income qualifications
• Creation of new satellite USPTO Offices
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Opening in Detroit, Dallas-Fort Worth, Denver, and Silicon Valley
Prosecution/Pre-issuance
Matters
Section 3
• Third-Party Pre-issuance Submissions
Effective September 12, 2012
Allows any member of public to file to submit patents, published patent
applications, or other printed publications of potential relevance to
patent application
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Must include concise state of relevance of each item, along with copy of item submitted
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35 U.S.C. § 122(e)—Submissions must be made by:
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(1) later of
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(i) six months after date of publication, or
(ii) date of first Office Action on merits rejecting any claims, or
(2) before date of notice of allowance, if earlier
Prosecution/Pre-issuance
Matters
Section 3 (cont.)
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Prioritized Examination
Available for utility and plant patent applications
Accords special prosecution status to select applications before the USPTO
Provides a final determination of patentability within 12 months after receiving prioritized status
USPTO limits requests for prioritized examination limited to 10,000/year, subject to
adjustments
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Inclusion of Oath and Declaration
Effective as of September 26, 2012
Inventor must include oath or declaration that states:
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No longer required to state that
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(1) individual is an original inventor of the claimed invention; and
(2) application was made or authorized to be made by declarant, and
(1) individual is first inventor of claimed invention
(2) application is made without deceptive intent
(3) provide individual’s country of citizenship
35 U.S.C. § 115—Authorizes individual under obligation of assignment to include
required statements in the assignment in lieu of separately filing oath or
declaration
Post-Grant/“Inter Partes”
Review
Section 4
• Supplemental Examination
Effective as of September 16, 2012
Used to “consider, reconsider, or correct information believed to be relevant to patent
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Patent owner (excludes third-parties) may submit any information relevant to patent and
grounds for patentability
Has the ability to immunize patent against allegations of inequitable conduct, so long as
supplemental examination and ex parte reexamination are completed before any suit is filed
Within three months of request, USPTO will make determination by issuing certificate
indicating whether a “substantial new question of patentability” (SNQ)
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SNQ = showing that a reasonable examiner would consider the item of information
important in determining the patentability of the claims
If SNQ raised by one or more items of information in request, then reexamination will
be ordered
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Reexamination conducted pursuant to ex parte reexamination procedures
Post-Grant/“Inter Partes”
Review
Section 4 (cont.)
• Post-Grant Review
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Effective as of September 16, 2012
Must be done within nine months of grant or issuance of reissue of
patent
Allows any person, including third-parties, to petition for review upon any
invalidity theory under § 282(b)(2) and (3)
Challenger must overcome presumption of patentability by demonstrating that it
is “more likely than not that at least one of the claims is unpatentable”
If successfully challenged, patent owner will have one opportunity to amend
(may seek consent of petitioner for additional amendments)
Post-Grant/“Inter Partes”
Review
Section 4 (cont.)
• New “Inter Partes” Review
Effective as of September 16, 2012; replaces old inter partes patent reexamination
Reviews patentability of one or more claims upon grounds permitted by §§ 102, 103
Third-party petition may not be filed until later of:
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(1) termination of post-grant review, or
(2) within nine months of issuance
Petition granted if USPTO determines that there is a “reasonable likelihood that
the petitioner would prevail with respect to at least one of the claims
challenged in the petition”
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Replaces previous “substantial question of patentability” standard
Post-Grant/“Inter Partes”
Review
Section 4 (cont.)
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Derivation Proceeding
Effective March 16, 2013
Used to determine whether:
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Petition must be filed within one year of date of first publication of claim to invention
that is the same or substantially the same as the earlier application’s claim to the
invention
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(i) an inventor named in an earlier application derived the claimed invention from an inventor
named in the petitioner’s application, and
(ii) the earlier application claiming such invention was filed without authorization
Transitional Program for Business Method Patent Review
Effective September 16, 2012
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Subject to sunset for new TPCBM petitions on September 16, 2012
Limited to “covered business method patents”
Petition for TPCBM proceeding may not be filed unless person or real party in
interest has been sued for or charged with infringement of patent
Amendments to Post-Grant
Litigation Matters
Section 5
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Misjoinder of defendants
Joinder of multiple parties in a single patent infringement lawsuit only if:
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(1) cause of action arises out of same transaction, occurrence, or series of transactions or
occurrences, and
(2) there is exists questions of fact common to all defendants or counterclaim defendants
No longer sufficient to have merely infringed the same patent
False Marking Claims
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Removes qui tam (i.e., whistleblower) provision of false marking statute
Limits standing and damages to only those parties that suffer a competitive injury as a
result of the alleged false marking
Damages only permitted from the time alleged infringer was put on notice of
another’s patent, including making product or service with corresponding patent
number
Amendments to Post-Grant
Litigation Matters
Section 5 (cont.)
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New “Prior Commercial Use” Defense
Applies to patents issued on or after September 16, 2011
Exempts certain subject matter from a finding of patent infringement if claimed
subject matter is:
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Asserting party must establish, by clear and convincing evidence, that P.C.U.
occurred at least one year before the earlier of:
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“a process, or consisting of a machine, manufacture, or composition of matter used in a
manufacturing or other commercial process”
(1) effective filing date, or
(2) inventor’s disclosure that establishes a prior art grace period
Repeal of “Best Mode” Defense
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AIA removes previously-recognized defense to infringement for failure to disclose the
“best mode” to practice the claimed invention
Now, examiner may simply reject application that fails to disclose “best mode” during
prosecution of application
QUESTIONS, COMMENTS?
For more information…
1)
Contact Dr. Edwin S. Flores at (214) 866-0001 or
eflores@chalkerflores.com
or,
2)
Visit the USPTO’s website at
http://www.uspto.gov/aia_implementation/index.jsp