Leahy-Smith
America Invents Act
J. Gibson Lanier, JD, PhD
Ballard Spahr LLP
Leahy-Smith America Invents Act
•
Enacted September 16, 2011
•
Many changes in the Act that require rule-making activity by
the USPTO
•
Immediate changes as of September 16, 2011
September 26, 2011

September 16, 2012

March 16, 2013
2
First to Invent to First to File
•
STARTS March 16, 2013 for SOME patents/applications
•
The U.S. patent system is changed from a “first to invent”
to a “first inventor to file” system.
•
Will only apply to applications filed, and patents issuing
from applications filed, after March 16, 2013 that do not
claim priority to applications filed prior to that date.
•
Earlier effective filing date- current law applies
•
Mind the GAP- at 3/16/2013 Claims or applications that
ever had a claim in either system
3
Novelty – New Provisions
•
March 16, 2013
102(a) knowledge, use, publication, or
patenting before the invention;
102(b) knowledge, use, publication, or
patenting more than one year prior to filing;
102(a)(1)
102(d) procurement of a foreign patent by
patentee filed more than one year before
earliest filing;
No territorial limit on public
use, sale, “otherwise available”
102(e) publication of a patent or
application after filing date of claimed
invention, but having a priority date prior
to earliest filing date;
102(a)(2)
102(f) patentee didn’t invent subject matter
to be patented
291 Derivation
102(c) abandoned invention
102(g) prior invention by another who did
not abandon, suppress, or conceal
Eliminated
4
New §102
Before Effective
Filing Date
102(a)
Prior art
Entitled to a
Patent UNLESS
102(b)
Exceptions
NOT Prior
Art
Grace Period and Exceptions
“Disclosures”
Patents/Applications
102(a)(1)
102(a)(2)
Patented, Printed
publication, public use, on
sale, available to public
1st filed U.S. patent application
by another
102(b)(1)
 1 year
102(b)(2)
(A) 1st pat/app derived
invention from Inventor
(A) Any disclosure coming
directly or indirectly from (B) 1st pat/app filed after
public disclosure by Inventor
the Inventor
(C) Common assignee for
(B) Disclosure by others
Inventor and 1st pat/app-joint
after Inventor’s public
research agreement
disclosure
5
Novelty
New Law (effective
18 months after
enactment)
Current Law
102(a)
What?
1. Known
2. Used
1. Patented
2. Described in
a printed
publication
By whom?
Others
Where?
In this
country
When?
Before the invention
Anywhere
102(b)
102(d)
102(a)(1)
1. Patented
2. Described in
a printed
publication
3. In use
4. On sale
1. Patented
2. Caused to be
Patented
3. Subject of an
inventor’s
certificate
1. Patented
2. Described in a
printed
publication
3. In public use
4. On sale
5. Otherwise available
to the public
Anyone
Applicant
Legal Assigns
Anyone
Anywhere
Anywhere but US
Anywhere
More than 1
year prior to
the earliest
filing date
More than 1 year
prior to the earliest
filing date
Before the effective
filing date
6
Disclosure Scenarios
•
A & B are inventors for patent application, more than a
year before the filing, A & B publish a paper describing
the invention
9/16/2013
9/16/2014
Application is filed by A & B
Disclosure by A & B
Conclusion:
Disclosure is art under 102(a)(1)
No patent for A&B
7
Disclosure Scenarios
•
A & B are inventors for patent application, less than a year
before the filing, A & B publish a paper describing the
invention
9/16/2013
9/16/2014
Application is filed by A & B
Disclosure by A & B
Conclusion:
Disclosure is not art under 102(b)(1)(A)
8
Disclosure Scenarios
•
A & B are inventors for patent application, less than a year
before the filing, A is an author on a paper describing the
invention
9/16/2013
9/16/2014
Application is filed by A & B
Public disclosure by
A &C or A alone
Conclusion:
Disclosure is not art under 102(b)(1)(A)
because A is a joint inventor.
9
Disclosure Scenarios
•
1st to file/ 1st to disclose
A & B are inventors for patent application, less than a year
before the filing, X publishes a paper describing the invention,
but before X’s disclosure, A&B publicly disclose their
invention
Disclosure by X
9/16/2013
9/16/2014
Application is filed by A & B
Public disclosure by A & B
Conclusion:
Intervening disclosure by X is not art
under 102(b)(1)(B)
10
Disclosure Scenarios
•
Derived from Inventors
A & B are inventors for patent application, less than a year
before the filing, Y publishes a paper describing the
invention
9/16/2013
9/16/2014
Application is filed by A & B
Public disclosure
by Y
Conclusion:
Y Disclosure is prior art to Application by A&B
UNLESS Y obtained information directly or
indirectly from A or B (102(b)(1)(A))
11
Disclosure Scenarios
•
Derived from Inventors
A & B are inventors for patent application, less than a year
before the filing, X publishes a paper describing the invention,
but prior to X’s disclosure, Y publicly discloses the invention
Disclosure by X
9/16/2013
9/16/2014
Application is filed by A & B
Disclosure by Y
Conclusion:
X is not prior art (under 102(b)(1)(B)) provided
Y obtained information directly or indirectly
from A and/or B
12
First-to-File for Applications/Patents
The first-to-file gets the patent, except where
1) The first filer obtained the invention, directly or
indirectly, from the second filer (derivation
proceedings will resolve this)
2) The second filer was the first to “publicly disclose” the
invention
3) Common assignee for the second filer and first filer-jt
research agreement
4) The first filer abandons the application prior to
publication or issuance
13
1st to File Scenarios
1st to File
X files an application, A & B file a patent application
X files a patent application
9/16/2013
9/16/2014
3/16/2013
A & B file a patent application
Conclusion:
X gets a patent, A&B get bupkis
102(a)(2)
14
st
1
to File Scenarios
Reality
A&B file a patent application, later- X’s patent issues or application
publishes
X independently arrived at same subject matter.
[X files a patent application]
9/16/2013
X’s patent issues/application publisheswill the USPTO find this?
9/16/2014
3/16/2013
A & B file a patent application
Conclusion:
X gets a patent, A&B get whatever is not taught by
X’s patent/application
15
1st to File Scenarios
1st to File
X files a patent application, A & B file a patent application,
but X derived the invention from A&B
X files a patent application
9/16/2014
9/16/2013
3/16/2013
A & B file a patent application
Conclusion:
A&B get a patent if X loses the derivation proceeding
102(b)(2)(A)
16
1st to File Scenarios
•
1st to Disclose
A & B file a patent application, less than a year before the
filing, A publishes, and X files an application after the
publication
X files a patent application
3/16/2013
9/16/2013
9/16/2014
A & B file a patent application
Disclosure by A
Conclusion:
A&B get a patent, X gets nada
102(b)(2)(B)
17
st
1
•
to File Scenarios 1st to Disclose/Derived
A & B file a patent application, less than a year before the
filing, Y publishes, and X files an application after the
publication
X files a patent application
3/16/2013
9/16/2013
9/16/2014
A & B file a patent application
Disclosure by Y
Conclusion:
A&B get a patent, X gets nada
If Y derived information from A&B
102(b)(2)(B)
18
st
1
•
to File Scenarios
1st Disclosure
A & B file a patent application, more than a year before the
filing, A publishes, and X files an application after the
publication
X files a patent application (4/16/2014)
3/16/2013
9/16/2013
9/16/2014
A & B file a patent application
Disclosure by A
(6/16/2013)
Conclusion:
No one gets a patent
if A’s disclosure anticipates the inventions
102(a)(1)
19
st
1
•
to File Scenarios
1st Disclosure
A & B file a patent application, more than a year before the
filing, A publishes, and X files an application after the
publication
X files a patent application (4/16/2014)
3/16/2013
9/16/2013
9/16/2014
A & B file a patent application
Disclosure by A
(6/16/2013)
Conclusion:
X is not prior art to A’s application 102(b)(2)(B)
but A’s disclosure is art to A&B
102(a)(1)
20
st
1
to File Scenarios
Common Assignee
X files a patent application, A & B file a patent application,
X and A&B are all employed by University, and are in a joint
research agreement
X files a patent application
3/16/2013
9/16/2013
9/16/2014
A & B file a patent application
Conclusion:
A&B get a patent, X gets patent
102(b)(2)(C)
21
st
1
to File Scenarios
Abandonment
X files a patent application, A & B file a patent application,
X’s application is abandoned without publishing
X files a patent application
3/16/2013
9/16/2013
9/16/2014
A & B file a patent application
Conclusion:
A&B get a patent- no prior art
22
First to File Suggestions
•
File before any public disclosure to prevent loss of rights
outside U.S.
•
Continue this practice after March 16, 2013
•
Pay attention to any public disclosures and document them
•
Track disclosures, access by others (derivation) and
others’ activities
•
Monitor competitors closely
•
File early and often- multiple provisionals
23
st
1
to File Scenarios Multiple disclosures
X files on ZY
3/16/2013
9/16/2013
9/16/2014
A & B file on ZM
A files on Z
Conclusion:
A&B get Z and ZM
X gets ZY
24
Obviousness – 103(a)
35 U.S.C. § 103(a)
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.
25
Non-obvious subject matter § 103
103(a) largely unchanged from current law, but amended to
account for first to file.
DELETED- 103(b) (biotechnology-the non-obviousness of
methods for making or using novel and
non-obvious composition)
DELETED- 103(c) (exclusion as prior art subject matter
which is subject to assignment or
commonly owned at the time the
invention was made)
103 is changed with respect to availability of prior art as it
relates to new standards and exceptions under 102.
103(c) is provided for in the prior art exception in 102(b)(2)(C)
26
Leahy-Smith America Invents Act
September 16, 2011
Immediate changes as of September 16, 2011
• September 26, 2011
15% surcharge on particular fees
Prioritized examination program effective
*IF USPTO doesn’t get extra funding, because the statutory
changes are a priority, other programs may cease, no new
examiners, slow down at USPTO
September 16, 2012
March 16, 2013
27
9/16/2011 Effective Date
Proceedings commenced on/after 9/16/11
1) Best mode defense - Civil/USPTO
2) Marking - Pending cases
Virtual marking – pat + website
No Qui Tam actions- except commercial
damage
3) Joinder- All defendants must have common
facts, not just infringing patent
4) USPTO sued in E.D. of Va- not D Ct of DC
28
Best Mode - § 282(b)3(A)
• Effective September 16, 2011, best mode no
longer raised as an invalidity or
unenforceability defense in any subsequentlyfiled litigation.
• But, § 112 still requires disclosure of best
mode known to inventor at time of filing.
29
Virtual Marking - § 287(a)
• Current: marking patented article with “patent”
or “pat.” along with patent number.
• New: affix “patent” or “pat.” together with an
address of a posting on the Internet, accessible
to the public without charge, that associates the
patented article with the number of the patent.
30
False Marking - § 292(a)
• Only the United States may now sue for false
marking.
• The marking with a patent that covered product but
now is expired is not a violation.
• Allows only a person who suffered competitive injury
to file civil action for compensatory damages instead
of $500/offense.
• Effective September 16, 2011 for any then pending or
later filed case.
31
Dis-Joinder of Parties - § 299
• On Thursday, September 15, 2011, at least 54
new patent cases were filed against a total of
804 named defendants with the average
complaint accusing 16 entities of patent
infringement.
• No more.
• Can’t join multiple defendants in a single
lawsuit simply based upon the fact that the
defendants are all alleged to infringe the same
patent.
32
Dis-Joinder of Parties - § 299
Accused infringers may be joined (by you-know-who)
as defendants or have their actions joined for trial only
if the right to relief is against all the parties:
(1) arises out of the same transaction, occurrence, or
series of transactions or occurrences relating to the
making, using, importing into the United States,
offering for sale, or selling of the same accused
product or process and
(2) is based on common questions of fact.
33
Patents pending/filed on/after 9/16/11
Prior commercial use defense for patents issued on or
after 9/16/11
Before- Prior commercial use defense applied to
Business Method patents
Now, applies to all technologies
•
Prior user right is a personal defense to infringement
liability; it does not invalidate a patent.
•
So if A sues B for infringement, and B successfully
defends by showing prior use, A’s patent is still valid
against others.
34
Prior User Rights – University Exception
X is sued by University. X used tech > 1 yr b/f
filing. UNVERSITY EXCEPTION- X can’t use
defense
X is sued by CORP, X used tech > 1yr b/f filing
date, UNIVERSITY EXCEPTION- owned by U
at time of filing, X can’t use the defense
X is sued by U, X used tech > 1yr. Tech is not
funded by FedGov, NO UNIVERSITY EXCEPX uses the defense
35
9/16/2011 Effective Date
Patents pending/filed on/after 9/16/11
Strategy for reducing, avoiding, or deferring
tax liability is in the prior art - pending
applications
No claims to human organisms- pending
applications
Patent Term Extension- date of notification is
extended
36
Actions/Challenges to Patents and Applications
9/16/2012
1. Supplemental Examination- any patent - before/on/after 9/16/2012
2. Pre-Issuance Submissions- any application - before/on/after 9/16/2012
3. Inter-Partes Review- any patent - before/on/after 9/16/2012
Transition period- higher standard- reasonable likelihood to prevail
4. Transitional Post Grant Review for validity of Business
Method Patents
3/16/2013
1. Derivation Proceedings (Interference Proceedings)
2. Post-Grant Review
37
A Goal of AIA
“One major aim of the reform legislation is to
establish the USPTO as an alternative forum to
U.S. district courts for vetting the validity of
issued U.S. patents.”
38
Supplemental Examination
USPTO
•
Patent owners request supplemental examination of their
own issued patents
•
The procedure allows a patent owner to make submissions
to the USPTO to correct mistakes in disclosures during
prosecution
•
Evidence disclosed by a patent owner to the USPTO
during the supplemental examination cannot later be
asserted by a defendant as evidence of inequitable conduct,
provided the supplemental examination proceeding has
concluded
9/16/2012
39
Supplemental Examination
USPTO
• Within 3 months of receiving a request only from
patent owner.
• If substantial new question of patentability is
raised by at least one of the items cited in the
request, PTO will order a reexamination of the
patent.
• Can be used to “cure” not only simple oversights
by patent owner but actual intentional failures to
disclose prior art.
40
Supplemental Examination
USPTO
• A purpose: limit inequitable conduct claims in
litigation.
• Cannot be used to cure: (1) prior allegations of
inequitable conduct in lawsuit before request is
filed; and (2) defenses to a patent enforcement
action raised before the supplemental examination
is concluded.
41
3RD Party Pre-Issuance Submission
USPTO
During prosecution, a third party may submit
1) Any patent, patent application
2) Other printed publication
along with
3) Statement of relevance
4) Fee
Consider the effects of this filing should later litigation occur
9/16/2012
42
Inter Partes Review (IPR)
•
PTAB
Who files
Anyone other than patent owner
•
When filed
Nine months after patent issues or end of PGR
•
Grounds for challenge
Patents and printed publications
•
Threshold
Reasonable likelihood that petitioner would prevail on at least one of
the claims challenged in the petition
•
Duration of Review
Within one year after initiation
Patent Trial and Appeal Board
9/16/2012
43
Post Grant Rev of Biz M Patents
•
PTAB
What is it
Request to cancel as unpatentable 1 or more claims of a patent
•
Who files
Person sued for infringement
•
Applies to
Patents with any effective date
•
Grounds for challenge
Prior art under old rules or new rules
Creates ESTOPPEL in civil action- cannot use again
•
When To File
From 9/16/12 to 9/16/20
9/16/2012
44
Interference/Derivation Proceeding USPTO
Interference applies to claims before 3/16/2013 effective
filing date
•
Declared by the patent office/requested by Applicant
•
Instituted between an existing application and a
patent/application claiming the same invention
•
Can be declared anytime during the pendency of the patent
application
Current
45
Interference/Derivation Proceeding USPTO
Derivation only for claims with 3/16/2013 effective filing date
•
Started by a petition by patent owner against another
patent owner with an earlier filing date
•
Patent owner with earlier filing date must have derived
invention from patent owner instituting the derivation
proceeding
•
Must be filed within 1 year of the issue date of the first
patent alleged to have derived the invention or the
publication of substantially same claims
3/16/2013
46
Post Grant Review (PGR)
PTAB
•
Only applies to patents with effective filing date of 3/16/2013
•
Who files
Anyone other than Patent owner
•
When filed
Within 9 months of issue or broadening reissue
•
Grounds for challenge
Any ground of invalidity as well as prior art
•
Threshold
More likely than not that at least one challenged claim is unpatentable
or there is a novel question of law
•
Duration of Review
One year with possible 6 month extension
3/16/2013
47
Reduced Fees for Micro entity
•
•
Micro entities receive 75% fee reduction
Who Qualifies?
Applicant is paid/employed by institution of higher
education
or conveys some rights to institution
Particular small entities
•
•
•
•
Where the inventor not named as inventor on > 4 applications filed
in US
Excludes prior employment
Gross income in prior year < 3x median household income
No obligation to assign or convey to non-micro entity
Effective on 9/16/2011, but fees must be set by USPTO
48
Advice of Counsel
The Act codifies the doctrine created by federal case law,
which provides that
 neither the failure of an accused infringer to obtain the
advice of counsel
 nor the failure to present such advice to a court or jury
 may be used to prove that the accused infringer willfully
infringed a patent
49
Questions?
Thank you!
Ballard Spahr