Recent Changes in the US Patent System Affecting Engineers Peter D. Mlynek, MBA, PhD, Esq. 2012 May 1 Overview of this presentation • Overview of patent system • Overview of the new patent law • How it effects you New Patent Law: America Invents Act • Biggest change to the Patent Law since 1952 • Signed into law on September 16, 2011 – Rolling out over 18 months • Many different changes – This presentation concentrates on the most relevant to this audience, and not necessarily the most legally important changes Given Reasons for America Invents Act • • • • Improve quality of patents Harmonization with other patent systems Increase certainty in litigation Update in view of court holdings, technology What is a Patent? Full Disclosure of an Invention Exclusive Right Exclusive Right to… Competitors What is a Patent? Monopolistic Tool Capital Raising Tool Marketing Tool Cross Licensing Tool A tool to make money How Much to Get a U.S. Patent? Process of Getting a Patent Draft Reduction to Practice Application Conception Licensing PTO Prosecution Why so much to get a patent? Drafting Maintenance Filing Issue Prosecution How Can We Get a Patent Cheaper? Pay less to the USPTO Pay less for patent lawyer Drafting Maintenance Filing Issue Prosecution How Can We Get a Patent Cheaper? Pay less for the Patent Lawyer • Reality: There are no economies of scale! - A patent for a small company costs just as much as for a large company • Have all necessary information for lawyer ready - Business plan, marketing, etc. - Experimental data, procedures, etc. • Smaller law firm – big firms charge big bucks • Flat fee How Can We Get a Patent Cheaper? Discounts at the US Patent Office Introduced by AIA + Big Businesses Small Businesses “Small Entity” Regular Price for USPTO fees –50% Individual Inventors AND Universities “Micro Entity” –75% Speaking of Patent Office Fees… Introduced by AIA Historically $ PTO Recently …, but the Congress sets the fees PTO can set their fees as it sees fit! Result: DRASTIC fee price increases Requirements to Obtain a Patent Useful Described New Not Obvious Requirements to Obtain a Patent Useful Generally, a low hurdle to overcome in cases of electrical engineering and computer hardware inventions. Questions about patentability with respect to usefulness come up in - Biological technology - Computer programs - Finance AIA: Tax strategies are no longer patentable; Human organism is not patentable Requirements to Obtain a Patent The patent applicant must describe the invention in order to get rights to it -Description -Enablement -Best Mode Unique to the US Described Still need to put Best Mode into the application. AIA: Best mode needs to be in the patent, but if it is not there, the patent is still OK Requirements to Obtain a Patent If it is not new, then it is not patentable. If some else has a patent on it, then it is not patentable. The AIA rewrote the entire law on this requirement. New Requirements to Obtain a Patent • Is the invention obvious over what is known? • The MOST difficult of the 4 requirements – 60-80% of attorney’s time during prosecution • Mostly unchanged by AIA Not Obvious Comparison of Patent Systems First to File First inventor Patent Office Whoever invents first, generally wins the patent Treatment of Disclosures Publications First to File NEW OLD Publications prior to filing are held against the filer First Inventor to File Publications by others prior to filing, and own publications > 1yr before filing, are held against the filer First inventor Publications > 1yr before filing are held against the filer Scenario Treatment of Disclosures 1 Disclosure of Invention Application Filed 5/2013 5/2014 Disclosure is prior art, no patent NEW OLD Disclosure is prior art, no patent Disclosure is prior art, no patent Scenario Treatment of Disclosures 2 Disclosure by Filer 5/2013 Application Filed 5/2014 Disclosure is prior art, no patent NEW Disclosure is not prior art OLD Disclosure is not prior art Scenario Treatment of Disclosures 3 Application Filed 5/2013 Disclosure by Another 5/2014 Disclosure is prior art, no patent NEW Disclosure is prior art, no patent OLD Disclosure is not prior art Scenario Treatment of Disclosures 4 Disclosure by Filer 5/2013 Disclosure by Another Application Filed 5/2014 Disclosure is prior art, no patent NEW Disclosure is not prior art OLD Disclosure is not prior art Treatment of Competing Filings Scenario A files an 5 application B files an application A wins But not everything is lost for NEW A wins OLD First inventor wins 3 strategies for B B! Treatment of Competing Filings Scenario A files an 5 application B files an application B A wins A NEW A wins OLD First inventor wins Treatment of Competing Filings Scenario A files an 5 application B files an application NEW OLD B wins if A derived the invention from B First inventor wins Treatment of Competing Filings Scenario A files an 5 5/2013 application Disclosure by B 5/2014 B files an application Disclosure is prior art, no patent for anyone NEW OLD B wins First inventor wins Recommendations • File a patent application before any public disclosure to prevent loss of rights outside US • Publish frequently and often if non-US rights are not important • Keep track of competitors • File patent applications early and often Additional Changes Patent pending Patent in force Federal Courts More $$$ Within the PTO • Changes in Third Party submissions during pendency of the application • New: Supplemental Examination by the patent owner • New: Post Grant Review Additional Changes Patent pending Patent in force Federal Courts More $$$ Within the PTO • Changes in Third Party submissions during pendency of Recommendation: the application Keep track of competitor’s applications • New: Supplemental Examination by the patent owner and patents in view of disclosures. • New: Post Grant Review Additional Changes: Patent Markings Competitors Additional Changes: Patent Markings Unlawful restriction of trade if products are marked as patented, but there is no valid patent Deceptive, anti-competitive Competitors Additional Changes: Patent Markings $$$ Deceptive, anti-competitive • Old law: Anyone can sue ($500/mismarked item) and split it 1:1 with the government Additional Changes: Patent Markings $ 10,800,000,000,000.00 • Old law: Anyone can sue ($500/mismarked item) and split it 1:1 with the government • AIA: only those who are hurt can sue for compensatory damages, plus U.S. gov’t Additional Changes: Virtual Patent Markings • Old: “Pat.” and numbers – Dozens or hundreds may be listed • New: “Pat.” and URL Filings by Assignee • An employer now can easier file a patent application on behalf of an employee inventor, or an ex-employee inventor Peter D. Mlynek, Ph.D., MBA, Esq. peter@mlyneklaw.com 856-787-0880