America Invents Act September 19, 2011 Ma7 Rainey Vice President/Chief IP Policy Counsel Leahy-­‐Smith America Invents Act (AIA) Text is available at: h7p://www.gpo.gov/fdsys/pkg/BILLS-­‐112hr1249enr/pdf/BILLS-­‐112hr1249enr.pdf Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. 2 History of AIA September 16, 2011 -­‐ Enacted Latest in a series of patent bills daSng back to 2005 H.R.1249 signed into law by President Obama as “Leahy-­‐Smith America Invents Act” September 8, 2011 June 23, 2011 Amended version of H.R.
1249 passed by House March 30, 2011 H.R.1249 introduced in House H.R.1249 passed (without further amendment) by Senate March 8, 2011 Amended version of S.23 passed by Senate Ul#mately supplanted by H.R.1249 January 25, 2011 S.23 Introduced into Senate Jan Feb Mar Apr May Jun Jul Aug Sep 2011 Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. 3 Oct Nov Dec AIA Enacted September 16, 2011 Photo used by permission of the USPTO Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. 4 AIA – What’s Not in the Act Things that were fought about (or thought about) •
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Damages Court as “gatekeeper” for evidence going to jury InjuncSons Interlocutory appeals from Markman rulings Estoppels for ex parte or inter partes reexaminaSons Willfulness: limited changes Venue: limited changes Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. 5 AIA Topics •
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Timeline of EffecSve Dates ProsecuSon Post-­‐Grant Proceedings LiSgaSon USPTO Structures and Processes Studies Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon PTO Structures & Processes 6 Studies Timeline of EffecSve Dates Timeline ProsecuSon PG Proceedings LiSgaSon PTO Structures & Processes Studies AIA Timeline of EffecNve Dates Immediately SEC. 3(l): Small Business Study (due 9/16/12) 12 Months SEC. 5: Prior User Rights SEC. 4: Inventor’s oath SEC. 6(c):
Inter Partes Reexam Threshold Modified SEC. 6(a) and (d):
Inter Partes and Post-­‐grant review SEC. 7: Patent Trial and Appeal Board SEC. 8: 3rd Party Submissions SEC. 12: Supplemental examinaSon SEC. 17: Advice of counsel SEC. 18: TransiSonal Program for business method patents SEC. 20: Technical amendments SEC. 21: Travel expenses SEC. 25: Priority examinaSon for important technologies SEC. 28: Patent Ombudsman 10 Days – 9/26/11 SEC. 6(h)(2):
EliminaSon of §145 (district court) avenue for ex parte reexams. SEC. 11(h): Fees for “prioriSzed examinaSon” (see AIA SEC. 25) SEC. 7(e):
Appeals to CAFC SEC. 11(i): 15% Surcharge SEC. 9: Venue SEC. 10: USPTO Fee-­‐Sehng Authority SEC. 11 (a)-­‐(g): Specific USPTO Fees SEC. 13: Funding agreements for small businesses SEC. 14: Tax strategies: “deemed” in prior art SEC. 15: Best mode SEC. 16: Marking (Virtual & False) SEC. 19: JurisdicSon, including joinder SEC. 26: Study on AIA implementaSon (due 9/16/2015) SEC. 27: Study on geneSc tesSng (due 6/16/2012) SEC. 29: Study on diversity of applicants (due 3/16/2012) 15 Days – 10/1/11 SEC. 22: Reserve Fund Established 18 Months 60 Days – 11/15/11 SEC. 3: First to File and Related Provisions SEC. 10(h): Electronic filing incenSve SEC. 31: Study on internaSonal patent protecSon for small businesses (due 1/14/2012) SEC. 32: Pro bono program for small inventors SEC. 33: No patents on human organism SEC. 34: Study on patent liSgaSon (due 9/16/2012) SEC. 37: Patent term extension (MedCo) • 35 USC §102:
First to file • 35 USC §103:
Amended • 35 USC §135:
DerivaSon proceedings • 35 USC §157:
SIR repealed 3 Years – 9/16/14 SEC. 23 & 24: Satellite offices End of SEC. 18 TransiNonal Program 9/26 10/1 11/15/11 9/16/11 Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. 9/16/12 8 3/16/13 9/16/14 9/16/2020 EffecNve upon date of enactment (DOE): examples September 16, 2011 SEC. 3(l): Small Business Study (due 9/16/12) SEC. 16: Marking (Virtual & False) SEC. 5: Prior User Rights SEC. 19: JurisdicSon, including joinder SEC. 6(c):
Inter Partes Reexam Threshold Modified SEC. 26: Study on AIA implementaSon (due 9/16/2015) SEC. 6(h)(2):
EliminaSon of §145 (district court) avenue for ex parte reexams. SEC. 27: Study on geneSc tesSng (due 6/16/2012) SEC. 7(e):
Appeals to CAFC SEC. 29: Study on diversity of applicants (due 3/16/2012) SEC. 9: Venue SEC. 31: Study on internaSonal patent protecSon for small businesses (due 1/14/2012) SEC. 10: USPTO Fee-­‐Sehng Authority SEC. 32: Pro bono program for small inventors SEC. 11 (a)-­‐(g): Specific USPTO Fees SEC. 33: No patents on human organism SEC. 13: Funding agreements for small businesses SEC. 34: Study on patent liSgaSon (due 9/16/2012) SEC. 14: Tax strategies: “deemed” in prior art SEC. 37: Patent term extension (MedCo) SEC. 15: Best mode SEC. 16: Marking (Virtual & False) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon PTO Structures & Processes 9 Studies EffecNve 10, 15, 60 days a[er DOE 10 days aoer September 26, 2011 SEC. 11(h): Fees for “prioriSzed examinaSon” (see AIA SEC. 25) SEC. 11(i):
15% Surcharge 15 days aoer October 1, 2011 SEC. 22: Reserve Fund Established 60 days aoer November 15, 2011 SEC. 10(h): Electronic filing incenSve Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 10 PTO Structures & Processes Studies EffecNve 12, 18, 36 months a[er DOE 12 months aoer 18 months aoer March 16, 2013 September 16, 2012 SEC. 4: SEC. 3: First to File and Related Provisions Inventor’s oath SEC. 6(a) & (d): Inter Partes and Post-­‐grant reviews •35 USC §102: First to file SEC. 7: Patent Trial and Appeal Board •35 USC §103: Amended SEC. 8: 3rd Party Submissions •35 USC §135: DerivaSon proceedings SEC. 12: Supplemental examinaSon •35 USC §157: SIR repealed SEC. 17: Advice of counsel SEC. 18: TransiSonal Program for business method patents SEC. 20: Technical amendments SEC. 21: Travel expenses SEC. 25: Priority examinaSon for important technologies SEC. 28: Patent Ombudsman Timeline ProsecuSon 36 months aoer September 16, 2014 SEC. 23 & 24: Satellite offices PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 11 PTO Structures & Processes Studies ProsecuSon Issues in AIA Timeline ProsecuSon PG Proceedings LiSgaSon PTO Structures & Processes Studies First to File •  AIA SEC. 3 rewrites 35 USC § 102 •  EffecSve 18 months aoer DOE (March 16, 2013) •  Will apply to •
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ApplicaSons with effecSve filing dates on or aoer that date ApplicaSons that (ever) include any claims with effecSve dates aoer that date •  InvenSon date no longer available to establish invenSve priority •  Eliminates interferences in favor of “derivaSon” proceedings •  Eliminates current grace periods •  Creates “first to publish” grace period Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 13 PTO Structures & Processes Studies §102 Prior Art •  35 USC §102(a) •  Following events before effecSve filing date destroy patentability •
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§102(a)(1): Before effecSve filing date, the claimed invenSon was: •  Patented •  Described in a printed publicaSon •  In public use •  On sale •  Otherwise available to the public §102(a)(2): The claimed invenSon was described in an issued patent or published applicaSon, which: •  Names another inventor; and •  Was filed before applicant’s effecSve filing date •  No geographical limitaSon Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 14 PTO Structures & Processes Studies §102 Prior Art – ExcepSons •  35 USC §102(b)(1) •  A disclosure <1 year before effecSve filing date does not count as prior art under §102(a)(1) if: •
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The disclosure was made by inventor (or joint inventor) or another who obtained subject ma7er from inventor (or joint inventor) [Let’s call this the “inventor or obtainer” or “IOO”]; or The disclosure in quesSon was made by another (not the IOO), but it was itself preceded by a disclosure by the IOO •  This creates a “first to publish” priority for the inventor •
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Publishing destroys most internaSonal patent rights (“absolute novelty”) Japan is expanding its grace period basis – will other countries follow? •  Must file within 1 year aoer publicaSon •  Open quesSon whether a sale or public use creates the grace period Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 15 PTO Structures & Processes Studies §102 Prior Art – ExcepSons •  35 USC §102(b)(2) •  A disclosure appearing in a patent or applicaSon does not count as prior art under §102(a)(2) if: •
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Subject ma7er was obtained from inventor (or joint inventor); Before the effecSve filing date of the disclosure, the subject ma7er had been publicly disclosed by IOO; or The disclosed subject ma7er and the claimed invenSon were owned by (or subject to obligaSon of assignment to) same person, no later than effecSve filing date of the claimed invenSon •  Disclosure by IOO must sSll be <1 year before effecSve filing date, per §102(a)(1) interacSng with 102(b)(1) •  Again creates a “first to publish” priority Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 16 PTO Structures & Processes Studies §102 Prior Art – Abolishment of Hilmer Doctrine •  35 USC §102(d) •  Patents and applicaSons are available as prior art under 35 USC §102(a)(2) as of filing date or priority date •  This abolishes the doctrine under In re Hilmer, 359 F.2d 859 (CCPA 1966), under which a foreign-­‐priority patent or applicaSon has a §102(e) prior art effect only as of its U.S. filing date Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 17 PTO Structures & Processes Studies DerivaSon: Civil AcSons and USPTO Proceedings •  Apply where another “derived” the invenSon from an inventor •  AIA SEC. 3(h): amends 35 USC §291 •
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Allows civil acSon against patent owner of “derived patent” Must be filed <1 year aoer issue date of allegedly derived patent •  AIA SEC. 3(i): amends 35 USC §135 •
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§135 currently defines interference proceedings Amendment provides derivaSon proceedings for invenSons derived from the inventor Must be filed <1 year aoer publicaSon date of allegedly derived applicaSon •  EffecSve 18 months aoer DOE (March 16, 2013) •  AIA SEC. 3(n)(2): Interferences will sSll apply to applicaSons with claims having effecSve filing dates <18 months aoer DOE Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 18 PTO Structures & Processes Studies §103 Prior Art •  Determines obviousness of prior art as of the effec#ve filing date of the claimed inven#on •  This will broaden available prior art •
Current §103 determines obviousness of prior art as of “the Sme the invenSon was made” Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 19 PTO Structures & Processes Studies Prior Art Submissions by Third ParSes •  AIA SEC. 8 •  Any third party may submit: •
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Patents Published applicaSons Other printed publicaSons •
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An allowance has issued If no allowance has issued, then the later of: •  6 months aoer publicaSon •  The date of the first rejecSon •  Must be submi7ed before: •  Must be accompanied by “concise descripSon of the asserted relevance of each submi7ed document” •  No requirement to associate specific prior art text or figures with idenSfied claim elements •  Cf. current 37 CFR §1.99 (Submission “shall not include any explanaSon”) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 20 PTO Structures & Processes Studies Tax Strategies •  AIA SEC. 14: Any “strategy for reducing, avoiding or deferring tax liability” shall be “deemed insufficient to differenSate a claimed invenSon from the prior art” •  EffecSve upon DOE •  Applies to any patent applicaSon pending or filed on or aoer that date, and to any patent issued aoer DOE •  Excludes: •
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Computer program products and systems used solely for preparing tax returns, including data recording, transmihng, etc. Financial management methods, systems, etc. to the extent severable from use of any tax strategy Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 21 PTO Structures & Processes Studies USPTO Fees and Fee-­‐Sehng •  EffecSve on DOE (September 16, 2011) •  AIA SEC. 11 •  Numerous fees specified •  AIA SEC. 10(a) •  At the same Sme, the Director may set or adjust any fees •  Director’s fee-­‐sehng authority terminates in 7 years (September 16, 2018) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 22 PTO Structures & Processes Studies USPTO Fee Surcharges •
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AIA SEC. 11(i) 15% surcharge on fees EffecSve 10 days aoer DOE Applies to: •
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Filing fees Search fees ExaminaSon fees Maintenance fees •  New fees are listed at h7p://www.uspto.gov/aia_implementaSon/15_Percent_Surcharge_Fee_Changes.pdf
Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 23 PTO Structures & Processes Studies No Patents on Human Organisms •  AIA SEC. 33 •  “No patent may issue on a claim directed to or encompassing a human organism” •  EffecSve immediately •  Applies to any applicaSon pending or filed on or aoer DOE •  Does not apply retroacSvely to issued patents •  DefiniSons needed: •  “human organism” •  “directed to” •  How about (e.g.) a method for generaSng stem cells? Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 24 PTO Structures & Processes Studies Post-­‐Grant Proceedings Under AIA Timeline ProsecuSon PG Proceedings LiSgaSon PTO Structures & Processes Studies Various Post-­‐Grant Proceedings Under AIA •  Ex parte reexaminaSon •  Modified by AIA SEC. 6(h)(2) •  ConSnue to be available under AIA •  Inter partes reexaminaSon •  Modified by AIA SEC. 6(c) •  Phasing out •  Inter partes review •  New under AIA SEC. 6(a) •  Will replace inter partes reexams, but there will be overlap for years •  Post-­‐grant review (PGR) •  New under AIA SEC. 6(d) •  TransiSonal program for business method patents •  New under AIA SEC. 18 •  Supplemental examinaSon •  New under AIA SEC. 12 Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 26 PTO Structures & Processes Studies Ex Parte ReexaminaSon •  AIA SEC. 6(h)(2) eliminates district court remedy currently provided by 35 USC §145 for ex parte reexams •  EffecSve on DOE •  Applies to any BPAI or PTAB appeal pending on, or brought on or aoer, DOE Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 27 PTO Structures & Processes Studies Inter Partes ReexaminaSon (TransiSon) •  SEC. 6(c) of AIA •  EffecSve on DOE •  AIA SEC. 6(c)(3)(B)(ii): Apply only to reexams filed on or aoer DOE •  New threshold for requests filed on or aoer DOE •  “Reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request” •  Old threshold (“substanSal new quesSon of patentability”) will conSnue to apply to inter partes reexam requests filed before DOE •  Estoppel unchanged •  Current 35 USC §315(c) •  “Raised or could have raised” estoppel applies to civil acSons •  Does not apply to ITC proceedings Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 28 PTO Structures & Processes Studies Inter Partes Review Created by AIA •  SEC. 6(a) of AIA •  EffecSve 1 year aoer DOE (September 16, 2012) •  New threshold •  35 USC §314(a) •  “Reasonable likelihood that the peSSoner would prevail with respect to at least 1 of the claims challenged in the request” •  New estoppel •  35 USC §315(e) •  “Raised or reasonably could have raised” (RORCHR) estoppel applies to: •  Other USPTO proceedings •  May not “request or maintain” the proceeding on that basis •  Civil acSon and ITC proceedings •  May not “assert” that the claim is invalid on that basis •  Estoppel a7aches only upon final wri7en decision Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 29 PTO Structures & Processes Studies Inter partes Review – InteracSon with DJs •  35 USC §315(a): An inter partes review will not be insStuted if peSSoner has already filed a civil acSon (e.g. a DJ) challenging the patent •  Counterclaim does not count •  If peSSoner files acSon aoer peSSoning for inter partes review, the acSon will be stayed unSl one of the following events: •  Patent owner moves to lio the stay •  Patentee files infringement acSon or counterclaim •  PeSSoner moves to dismiss the acSon Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 30 PTO Structures & Processes Studies Inter partes Review – Timing and Process •  35 USC §315(b): An inter partes review must be filed less than 1 year aoer peSSoner is sued for infringement •  35 USC §316: Mandates regulaSons for detailed processes •  Including discovery, oral hearing, etc. •  35 USC §316(a)(11): Review must be completed within 1 year •  Can be extended 6 months for “good cause shown” •  35 USC §316(d): No claim amendments as of right •  At least 1 moSon to amend allowed •  AddiSonal moSons •  Upon joint request •  To materially advance se7lement Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 31 PTO Structures & Processes Studies Three simultaneous regimes for Inter Partes Reexams and Reviews Filed before 9/16/2011 Filed on or a[er 9/16/11 and Before 9/16/12 Old inter partes reexam Filed on or A[er 9/16/2012 New inter partes review New inter partes reexam Sept. 16, 2011 Timeline ProsecuSon Sept. 16, 2012 PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 32 PTO Structures & Processes Studies Post-­‐Grant Review (PGR) Created by AIA •  SEC. 6(d) of AIA: New proceeding under new 35 USC §§321-­‐329 •  RegulaSons due from USPTO September 16, 2012 •  Provides challenge to issuance of patent at PTAB •  PeSSon must be filed within 9 months aoer patent issue date •  Basis •  Any ground for invalidity under 35 USC 282(b)(2) or (3) •  Any “novel or unse7led legal quesSon that is important to other patents or patent applicaSons” •  Needs defining •  PeSSon requirements: 35 USC §322 •  Evidence must be submi7ed supporSng the challenge to each claim Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 33 PTO Structures & Processes Studies Post-­‐Grant Review – Threshold & Estoppel •  Threshold •  35 USC §324 •  “More likely than not that at least 1 of the claims challenged in the peSSon is unpatentable” •  Estoppel •  35 USC §325(e) •  “Raised or reasonably could have raised” (RORCHR) estoppel applies to: •  Other USPTO proceedings •  May not “request or maintain” the proceeding on that basis •  Civil acSon and ITC proceedings •  May not “assert” that the claim is invalid on that basis •  Estoppel a7aches only upon final wri7en decision Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 34 PTO Structures & Processes Studies Post-­‐Grant Review (PGR) – InteracSon with DJs •  35 USC §325(a): A PGR will not be insStuted if peSSoner has already filed a civil acSon (e.g. a DJ) challenging the patent •  Counterclaim does not count •  If PGR peSSoner files acSon aoer peSSoning for PGR, the acSon will be stayed unSl one of the following events: •  Patent owner moves to lio the stay •  Patentee files infringement acSon or counterclaim •  PeSSoner moves to dismiss the acSon Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 35 PTO Structures & Processes Studies Post-­‐Grant Review (PGR) – cont’d •  35 USC §325(b): Preliminary InjuncSons •  If civil acSon is filed within 3 months aoer patent issue date: •  Court may not stay consideraSon of patentee’s moSon for preliminary injuncSon on basis that PGR peSSon has been filed at USPTO •  35 USC §326(d): No claim amendments as of right •  Amendments to claims may be made pursuant to moSon •  AddiSonal moSons may be made: •  Upon joint request by patentee and peSSoner; or •  Upon the request of the patentee “for good cause shown” •  35 USC §328(a): Intervening Rights •  Adopts intervening rights effects of §252 (for reissue) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 36 PTO Structures & Processes Studies Post-­‐Grant Review – Timing •  35 USC §324(c): Time to insStute PGR •  The Director shall determine whether to insStute a PGR within 3 months aoer later of: •  Patentee files wri7en response •  Time for filing response has passed •  35 USC §326(a)(11): Time to decide PGR •  A final determinaSon of a PGR shall be issued within 1 year •  The Director may extend the Sme up to 6 months “for good cause shown” Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 37 PTO Structures & Processes Studies Post-­‐Grant Review – Appeals Created by AIA •  35 USC §329: Appeal to CAFC •  District court remedy under §145 is not available •  Any party to PGR may appeal Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 38 PTO Structures & Processes Studies SEC. 18 Proceeding: TransiSonal Program for Covered Business Method Patents (BMPs) Created by AIA •  AIA SEC. 18: Provides challenges to “covered business method patents” (BMPs) •  EffecSve 1 year from DOE (September 16, 2012) •  Applies to any patent issued “on, before or aoer” that date •  AIA SEC. 18(a)(1)(b): May not be filed during 9-­‐month PGR window provided in 35 USC §321(c) •  AIA SEC. 18(a)(1)(b) – PeSSon may be filed if the peSSoner (or real party in interest, or privy) has been: •  Sued for infringement •  Charged with infringement •  “Charged with infringement” needs defining Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 39 PTO Structures & Processes Studies SEC. 18 Proceeding: BMP DefiniSon •  AIA SEC. 18(d) – BMP is defined as: •  “Method or corresponding apparatus” •  For performing data processing or other operaSons •  Used in the pracSce, administraSon or management of a financial product or service •  Excludes “technological invenSons” •  Director to issue regulaSons to determine whether patent is for a “technological invenSon” Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 40 PTO Structures & Processes Studies SEC. 18 Proceeding: Stay of LiSgaSon •  AIA SEC. 18(b): Court must consider, upon moSon to stay where there is a related BMP challenge, whether: •  Stay will simplify issues and streamline trial •  Discovery is complete and trial date has been set •  Issuance (or denial) of stay would: •  Unduly prejudice nonmoving party •  Present clear tacScal advantage for moving party •  Reduce the burden of liSgaSon on the parSes and the court •  Immediate interlocutory appeal is allowed from court’s decision on stay •  De novo review by CAFC Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 41 PTO Structures & Processes Studies SEC. 18 Proceeding – Basis, Threshold and Estoppel •  Basis – same as PGR (but with BMP “filter” as to patented subject ma7er) •
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Any ground for invalidity under 35 USC 282(b)(2) or (3) Any “novel or unse7led legal quesSon that is important to other patents or patent applicaSons” •
Evidence must be submi7ed supporSng the challenge to each claim •
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35 USC §324 “More likely than not that at least 1 of the claims challenged in the peSSon is unpatentable” •
“Raised” estoppel applies to civil acSon and ITC proceedings •  Cf. RORCHR estoppels for PGR under 35 USC §325(e)(2) •  PeSSon requirements: 35 USC §322 •  Threshold – same as PGR •  AIA SEC. 18(a)(1)(D) – Estoppels for BMP challenges •
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RORCHR applies to other USPTO proceedings •
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Timeline May not “assert” the basis Eliminates estoppel as to peSSoner’s privy Same as PGR, under 35 USC §325(e)(1) May not “request or maintain” the basis ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 42 PTO Structures & Processes Studies SEC. 18 Proceeding – Threshold and Estoppel •  Threshold – same as PGR •
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35 USC §324 “More likely than not that at least 1 of the claims challenged in the peSSon is unpatentable” •  AIA SEC. 18(a)(1)(D) – Estoppels for BMP challenges •
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Timeline “Raised” estoppel applies to civil acSon and ITC proceedings •  Needs defining: presumably means the ground was actually raised •  “Raised” needs clarificaSon (does similar ground count?) •  Cf. RORCHR estoppels for PGR under 35 USC §325(e)(2) •  May not “assert” the basis for invalidity •  “Assert” needs clarificaSon •  Eliminates estoppel as to peSSoner’s privy RORCHR applies to other USPTO proceedings •  Same as PGR, under 35 USC §325(e)(1) •  May not “request or maintain” a later proceeding upon the same basis ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 43 PTO Structures & Processes Studies Differences between SEC. 18 Challenge and PGR Proceeding PGR (SEC. 6) Timeline SEC. 18 §321(c): 9-­‐month deadline to peSSon for PGR aoer issuance of patent Eliminated for SEC. 18 proceedings (See SEC. 18(a)(1)(A)) §325(b): Prohibits stay of injuncSon based on PGR if suit is filed within 3 months aoer patent grant date Eliminated for SEC. 18 proceedings (See SEC. 18(a)(1)(A)) §325(e)(2) – Estoppels for civil acNons and ITC proceedings SubsStutes SEC. 18(a)(1)(D) in place of PGR’s §325(e)(2) for civil acSons and ITC proceedings Estoppel as to issues that peSSoner “raised or reasonably could have raised” (RORCHR) Estoppel only as to issues “raised” Estoppel applies to peSSoner; any real party in interest; or privy Eliminates “privy” estoppel for SEC. 18 proceedings §325(f): Bars PGR proceedings for nonbroadened reissue claims Eliminated for SEC. 18 proceedings (See SEC. 18(a)(1)(A)) ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 44 PTO Structures & Processes Studies Threshold and Estoppel in AIA Post-­‐Grant Processes Ex Parte Reexam (current statute) 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): SubstanSal new quesSon of patentability (SNQ) • Reasonable likelihood of prevailing (RLP) • SNQ conSnues to apply to pre-­‐9/16/11 requests • 35 USC §314(a): RLP • 35 USC §315(a): Has not “filed” a civil acSon 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 acSon challenging validity •  SEC. 18(a)(1)(B) : must be sued or charged with infringement •  Otherwise same as PGR Estoppel: • Civil ac5ons • ITC proceedings • None  35 USC §315(c) (current law): “Raised or could have raised”  Applies to civil acSons, not ITC • 35 USC §315(e)(2) • “Raised or reasonably could have raised” (RORCHR) • May not “assert” issue • Final wri7en decision • Civil acSons & ITC • 35 USC §325(e)(2) • RORCHR • May not “assert” issue • Final wri7en decision • Civil acSons & ITC •  SEC. 18(a)(1)(D) •  Any ground “raised” (not RORCHR) • Otherwise same as PGR Estoppel: • Later USPTO proceedings • None • None • 35 USC §315(e)(1) • RORCHR • May not “request or maintain” proceeding based on issue • 35 USC §325(e)(1) • RORCHR • May not “request or maintain” proceeding based on issue •  SEC. 18(a)(1)(A) excludes §325(f), i.e. reissue claims may be challenged at any Sme •  Otherwise same as PGR Scope, Grounds, Bases • 35 USC §§302 and 301 (current law): Patents and printed publicaSons • 35 USC §§311(a) and 301 (current law): Patents and printed publicaSons • 35 USC §311(b): Patents or printed publicaSons • 35 USC §312(a)(3)(B): Can be supported by expert opinions, affidavits, etc. • 35 USC §321(b): Issues relaSng to invalidity under §282(b)(2) or (3) • 35 USC §324(b): Novel or unse7led quesSon important to other patents or patent applicaSons (does not require MLTN) •  SEC. 18(a)(1)(A) & (d) •  “Covered business method patents” •  Not “technological invenSons” •  Otherwise same as PGR When • Any Sme • Any Sme • 35 USC §311(c) • Aoer later of: • 9 months aoer issuance (reissuance); or • PGR is terminated • 35 USC §321(c): ≤9 months aoer issuance (or reissuance) • 35 USC §325(f): No challenge to non-­‐broadened reissue claims aoer original 9-­‐month PGR period •  SEC. 18(a)(1)(B) •  Any Sme aoer suit or charge of infringement Statutory references are to sec#ons of 35 USC as modified by AIA, unless otherwise specified Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 45 PTO Structures & Processes Studies Supplemental ExaminaSon Created by AIA •  AIA SEC. 12(b): New 35 USC §257 •  Allows patentee to request supplemental examinaSon •  To consider or correct relevant informaSon •  Director will conduct supplemental examinaSon within 3 months •  If there is a substanSal new quesSon of patentability, reexam is ordered •  Same process as ex parte reexam, except no patent owner statement Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 46 PTO Structures & Processes Studies Supplemental ExaminaSon – Effects on Enforcement •  AIA SEC. 12(c)(1): Patent cannot be held unenforceable based on conduct relaSng to informaSon considered, reconsidered or corrected during supplemental examinaSon •  AIA SEC. 12(c)(2): ExcepSons – bar against unenforceability does not apply if: •
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AllegaSon has been pled with parScularity under Food, Drug & CosmeSc Act before supplemental examinaSon request was filed Supplemental examinaSon and resultant reexam were not complete before civil acSon or ITC proceeding was brought •  AIA SEC. 12(e): Fraud is not curable by this process •
Timeline Director is required to refer fraud to A7orney General ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 47 PTO Structures & Processes Studies Patent Life Cycle with Post-­‐Grant Challenges under AIA Not all available post-­‐grant proceedings may occur for a given patent PotenNal Inter Partes Review or Ex Parte Reexam PotenNal Inter Partes Review or Ex Parte Reexam Patent ApplicaNon Filed Patent Issues PotenNal SecNon 18 Proceeding for BMPs Patentee SEC. 18 MoNon PeNNon Process Appeal Patent Suit Files PeNNon to Stay Ends; Ends Restarts Suit Filed (Note 1) Appeal begins Possible Post-­‐Grant Review Process & Appeal (See Note 3) (See Note 2) 0 1 2 3 4 5 6 7 8 9 10 11 Patent Expires Possible addiNonal Ex Parte Reexams, Inter Partes Reviews and SEC. 18 Processes 12 13 14 15 16 17 18 19 Note 1: There is an immediate right to interlocutory appeal to CAFC from district court decision on MoSon to Stay for a SecSon 18 proceeding. No USPTO proceeding pending USPTO proceeding pending Note 2: There is a range of possible pendencies for a SecSon 18 proceeding: shorter if the USPTO can meet the statutory deadlines, and longer if not. This may depend on the USPTO receiving sufficient funding to properly carry out SecSon 18 proceedings. Enforcement stayed Note 3: CompleSon date depends upon pendencies in the SecSon 18 proceeding. Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 48 PTO Structures & Processes Studies 20 LiSgaSon-­‐Specific Issues Under AIA Timeline ProsecuSon PG Proceedings LiSgaSon PTO Structures & Processes Studies Joinder •  AIA SEC. 19(d) adds new 35 USC §299 •  Allows joinder of defendants in patent cases only in cases: •  Arising out of the same transacSon, occurrence or series of transacSons or occurrences; •  Tracks Rule 20(a) of Federal Rules of Civil Procedure •  RelaSng to the making, using, imporSng into the United States, offering for sale, or selling of the same accused product or process; and •  Supersedes MyMail, Ltd. v. America Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004) •  Where quesSons of fact will arise that are common to all defendants or counterclaim defendants •  Tracks Rule 20(b) of Federal Rules of Civil Procedure •  EffecSve upon DOE •  Applies to any civil acSon commenced on or aoer DOE Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 50 PTO Structures & Processes Studies Prior User Rights •  AIA SEC. 5 amends 35 USC §273 •  EffecSve upon DOE •  Applies to any patent issued on or aoer DOE •  Defense to infringement based upon prior commercial use •  Internal commercial use •  Arm’s-­‐length sale or commercial transfer of “useful end result of such commercial use” •  Commercial use occurred at least 1 year before earlier of: •  EffecSve filing date of patent applicaSon •  Public disclosure that qualified as prior art excepSon under (new) 35 USC §102(b) •  Prior user rights defense now applies to all subject ma7er •  Previously was confined under 35 USC §273(a)(3) to methods of doing or conducSng business Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 51 PTO Structures & Processes Studies Prior User Rights – Uses deemed “commercial” to qualify for PUR •  §273(c)(1): Regulatory review period under 35 USC §156(g) •  Defines patent term extension for drugs and biological products •  §273(c)(2): Nonprofit laboratory use, provided that: •  Use is by nonprofit enSty (e.g. research laboratory, university or hospital); •  Public is intended beneficiary; and •  Defense applies only to conSnued noncommercial use Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 52 PTO Structures & Processes Studies Prior User Rights •  §273(b): Burden of Proof •  Person asserSng the defense has burden of proof •  Clear and convincing evidence standard •  §273(d): ExhausSon •  Sale of “useful end result” to which PUR defense applies exhausts patent rights as if patentee had sold product •  §273(f): Unreasonable asserSon of defense •  If defendant fails to demonstrate reasonable basis for asserSon, the court shall find the case excepSonal under 35 USC §285 (for award of a7orney fees) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 53 PTO Structures & Processes Studies Prior User Rights -­‐ LimitaSons •  §273(e): LimitaSons on PUR •  Defense is personal to: •  Person who performed or directed the commercial use; or •  EnSty controlled by (or controlling/under common control with) such person •  No transfer of PUR, except: •  To patent owner; or •  Ancillary to good-­‐faith transfer of enSre enterprise or line of business •  Upon transfer, PUR restricted to site of acSvity before later of: •  EffecSve filing date of claimed invenSon; or •  Date of transfer •  Abandonment of use eliminates defense •  AsserSon of defense does not invalidate patent Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 54 PTO Structures & Processes Studies Appeals Under AIA •  Ex Parte Reexams •  AIA Sec. 6(h)(2): Eliminates U.S. district court remedy under 35 USC §145 as opSon for patentee in ex parte reexam •  PGRs •  35 USC §329: Blocks PGRs from §145 remedy •  BMP Challenges •  AIA Sec. 18(b): provides as-­‐of-­‐right interlocutory appeals from denial or grant of stay of infringement acSon Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 55 PTO Structures & Processes Studies Best Mode •  AIA SEC. 15 •  Best mode eliminated as basis for invalidity or unenforceability •  Applies to all proceedings commenced on or aoer DOE Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 56 PTO Structures & Processes Studies Virtual Marking •  AIA SEC. 16(a) •  35 USC §287(a) is amended •  Internet web addresses associaSng patented arScle with patent number •  Report due 9/16/2014 on effecSveness of virtual marking •  Applies to all cases pending or commenced on or aoer DOE Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 57 PTO Structures & Processes Studies False Marking •  AIA SEC. 16(b) •  Only United States may sue for penalty under 35 USC §292(a) •  35 USC §292(b) is amended •  A person “who has suffered a compeSSve injury” may sue •  Damages are “adequate to compensate for the injury” •  Applies to all proceedings pending or commenced on or aoer DOE •  “Without excepSon” Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 58 PTO Structures & Processes Studies JurisdicSon •  AIA SEC. 19(a)-­‐(c) •  Clarifies exclusive federal court jurisdicSon •  Patents •  Plant variety protecSon •  Copyright Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 59 PTO Structures & Processes Studies Advice of Counsel •  AIA SEC. 17 adds new 35 USC §298 •  Applies to patents issued on or aoer one year aoer DOE (September 16, 2012) •  But not to parent cases: possibly two standards in one case •  Failure of an infringer to obtain advice of counsel, or present such advice to the court or jury, may not be used to prove: •  Willful infringement •  Codifies In re Seagate Technology, L.L.C., 497 F.3d 1360 (Fed. Cir. 2007) (en banc) •  Intent to induce infringement •  Overrules Broadcom v. Qualcomm, 543 F.3d 683 (Fed. Cir. 2008) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 60 PTO Structures & Processes Studies USPTO Structures and Processes Timeline ProsecuSon PG Proceedings LiSgaSon PTO Structures & Processes Studies USPTO Structures and Processes •  AIA SEC. 7: New Patent Trial and Appeal Board (PTAB) •  AIA SEC. 22: Patent and Trademark Office Reserve Fund •  AIA SEC. 23 & 24: USPTO Satellite Offices Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 62 PTO Structures & Processes Studies PTAB •  AIA SEC. 7 modifies 35 USC §6 •  DuSes •
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Patent applicaSon appeals Reexam appeals Conduct derivaSon proceedings Conduct inter partes reviews Conduct PGRs •  Appeals are to CAFC •  District court acSons are available for: •
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Patent applicaSons – 35 USC §145 DerivaSon proceedings – 35 USC §§141(d), 145, 146 •  Appeal to CAFC waives right to district court acSon •
35 USC §§141(a) & (d)(2)(A) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 63 PTO Structures & Processes Studies Patent Office Funding •  AIA SEC. 22: Establishes “Patent and Trademark Office Reserve Fund” •  EffecSve October 1, 2011 •  Does not end USPTO fee withholding (“fee diversion”) by Congress •  Senate bill (S.23) would have ended fee diversion •  Fees collected beyond “appropriated amount” are placed in Fund •  Amounts in Fund will be made available to USPTO •  “To the extent and in the amounts provided in appropriaSons Acts” Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 64 PTO Structures & Processes Studies USPTO Satellite Offices •  AIA SEC. 23 & 24 •  3 satellite offices within 3 years aoer DOE •  Report to Congress aoer 3rd year •  First satellite office in Detroit •  “Elijah J. McCoy United States Patent and Trademark Office” Elijah McCoy was a prolific African-­‐Canadian-­‐American inventor (1844-­‐1929), the son of slaves who escaped to Canada. He studied mechanical engineering in Edinburgh, then se7led in Detroit and specialized in designs relaSng to locomoSve engines. He received 57 patents, and was inducted into the NaSonal Inventors Hall of Fame in 2001. Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 65 PTO Structures & Processes Studies Studies Timeline ProsecuSon PG Proceedings LiSgaSon PTO Structures & Processes Studies Studies AIA SEC. 3(l): Small Business Concerns AIA SEC. 3(m): Prior User Rights AIA SEC. 26: ImplementaSon of AIA AIA SEC. 27: GeneSc TesSng AIA SEC. 29: Diversity of Applicants AIA SEC. 31: InternaSonal Patent ProtecSons for Small Businesses •  AIA SEC. 34: Patent LiSgaSon Involving NPEs •
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Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 67 PTO Structures & Processes Studies Study on Small Business Concerns (SBCs) •  AIA SEC. 3(l) •  USPTO Chief Counsel will study •  Effect of eliminaSng invenSon priority, including •  How this change would affect ability of SBCs to obtain patents •  How this change would affect costs to SBCs •  Whether this change creates, miSgates or exacerbates disadvantages of SBC applicants relaSve to non-­‐SBC applicants •  Cost savings and other potenSal benefits to SBCs •  Feasibility, cost & benefits to SBCs of “alternaSve means” of determining whether an applicant is enStled to a patent •  Report due to relevant Congressional commi7ees 1 year aoer DOE (September 16, 2012) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 68 PTO Structures & Processes Studies Report on Prior User Rights (PUR) •  AIA SEC. 3(m) •  USPTO will report on •  Comparison of laws of U.S. with other industrialized countries (including EU, Japan, Canada, Australia) •  Analysis of: •  Effect of PUR on innovaSon rates •  CorrelaSon, if any, between PUR and: •  Start-­‐up enterprises •  Ability to a7ract venture capital to start new companies •  Effect of PUR on small businesses, universiSes, individual inventors •  Legal and consStuSonal issues arising from placing trade secret law in patent law •  Whether change to first-­‐to-­‐file system creates parScular need for PUR •  Report due to Congressional Judiciary Commi7ees 4 months aoer DOE (January 16, 2012) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 69 PTO Structures & Processes Studies Study on ImplementaSon of AIA •  AIA SEC. 26 •  USPTO will study •  Manner of implementaSon of AIA by USPTO, relaSng to: •  Patent rights •  U.S. innovaSon •  U.S. compeSSveness •  Access by small businesses to investment capital •  Other appropriate issues •  Report and recommendaSons due to Congress 4 years aoer DOE (September 16, 2015) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 70 PTO Structures & Processes Studies Study on GeneSc TesSng •  AIA SEC. 27 •  USPTO will study •  EffecSve ways to provide geneSc diagnosSc tests, where there exist: •  Gene patents; and •  Exclusive licensing for primary geneSc diagnosScs tests •  Report and recommendaSons due to Congressional Judiciary Commi7ees 9 months aoer DOE (June 16, 2012) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 71 PTO Structures & Processes Studies Study on Diversity of Applicants •  AIA SEC. 29 •  USPTO will establish methods for studying applicant diversity •  Including minoriSes, women and veterans •  Director may not use results to provide preferenSal treatment •  Must be complete 6 months aoer DOE (March 16, 2012) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 72 PTO Structures & Processes Studies Study on InternaSonal Patent ProtecSons for Small Businesses •  AIA SEC. 31 •  USPTO will study •  How USPTO can help small business with internaSonal patent protecSon •  Whether loan or grant programs should be established •  Director may not use results to provide preferenSal treatment •  Report and recommendaSons due to Congress 120 days aoer DOE (January 14, 2012) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 73 PTO Structures & Processes Studies Study on Patent LiSgaSon Involving NPEs •  AIA SEC. 34 •  GAO will study •  Consequences of patent liSgaSon by •  Non-­‐pracScing enSSes (NPEs) •  Patent asserSon enSSes •  To address Annual volume of liSgaSon over 20-­‐year period preceding DOE Volume of meritless liSgaSon Impact of such liSgaSon on Sme required to resolve patent claims EsSmated costs (including defense costs) for patent holders, licensors, licensees, inventors & users of alternate or compeSng innovaSons •  Economic impact of such liSgaSon on U.S. economy, including on inventors, job creaSon, employers, employees and consumers •  Benefit to commerce, if any, supplied by NPEs or patent asserSon enSSes that engage in such liSgaSon •
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•  Report and recommendaSons due by Comptroller General to Congress 1 year aoer DOE (September 16, 2012) Timeline ProsecuSon PG Proceedings Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. LiSgaSon 74 PTO Structures & Processes Studies What next? •  USPTO implementaSon – already in the works for many months •  Public input is solicited: h7p://www.uspto.gov/aia_implementaSon/index.jsp •  USPTO's Timeline: •  Technical correcSons bill Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. 75 Thank you The beat goes on…. Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. About Ma7 Rainey Ma7 Rainey is Vice President/Chief IP Policy Counsel at Intellectual Ventures, and handles licensing and public policy ma7ers for Intellectual Ventures. He has 28 years of experience in various aspects of intellectual property protecSon, licensing, liSgaSon and policy ma7ers, working both in-­‐house and in law firms and including work on European patent ma7ers in Munich. He has studied in detail and worked on language for each of the series of patent bills introduced in Congress since 2005, and addiSonally works on USPTO regulaSon proposals, amicus briefs and other policy ma7ers. Mr. Rainey has a B.S. in Physics from the University of Maryland and a J.D. from University of Southern California. Email: ma7r@intven.com About Intellectual Ventures Founded in 2000, Intellectual Ventures (IV) is the global leader in the business of invenSon. IV collaborates with leading inventors, partners with pioneering companies, and invests both experSse and capital in the process of invenSon. IV’s mission is to energize and streamline an invenSon economy that will drive innovaSon around the world. h7p://www.intellectualventures.com Copyright © 2011 Intellectual Ventures Management, LLC (IV). All rights reserved. 77