“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
America Invents Act and Its Impact on
Universities
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
America Invents Act
•
Change from “first to invent” to “first to file”
•
Post grant review
•
Other procedural changes
•
Changes affecting patent litigation
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
First to File
•
Public disclosure - subject matter made available to the public by any means
•
Earlier U.S. patent filings later published - information available to the public
•
Grace period: 1 year
•
Removal of geographic limitation for “prior use”
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
How Does First to File Affect Universities?
•
Can publish research results as long as a patent application is filed within 1
year of the publication - however be careful with other jurisdictions since
majority of countries still use “absolute novelty”
•
If you disclose, you are prior art against yourself (in other jurisdictions)
•
Should still use a lab notebook to capture the invention - although interference
procedure is going away, new derivation procedure will require extrinsic
evidence to prove that the other inventor derived the invention from applicant’s
original invention -
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
How Does First to File Affect Universities?
•
If B (publishes or applies after you disclose but before you file) makes variation
on your invention it could be cited as a section 103 (obviousness) rejection of
your application
•
If a researcher intends to use a disclosure at an event, such as an academic
conference, to establish U.S. patent rights under the grace period in the AIA,
the information presented should be sufficiently complete and detailed
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
The Effect of Non-Enabling Disclosure
•
A disclosure that does not enable PHOSITA (person having ordinary skill in the
art) to practice the invention may not anticipate third party’s filing
•
In order to qualify as a grace period-starting disclosure, a disclosure need to
be enabling
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
The Effect of Disclosure
•Because university researchers generally choose to publish first, the new AIA
system gives universities an advantage.
•It creates an incentive for university researchers to publish first not only because
of the university "publish or perish" tenure model, but also because public
disclosure by publication is often much cheaper and quicker than preparing a
patent application.
•Disclosure must be enabling to take advantage of the priority date
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Best Practice
•
Although the new law has a grace period for disclosures, it is a better practice
to file before disclosure because of the uncertainties and litigation costs
involved
•
Consider filing provisional application. This will eliminate the situation where
your own disclosure is used as a prior art against you in other jurisdictions
•
If disclosed be sure that the disclosure is an enabling disclosure to claim
priority
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Post Grant Proceedings
•
Ex-parte reexamination - stays the same
– Patent owner or a 3rd party can file but 3rd party cannot participate in
reexamination
– Patents and printed publications
– Threshold: substantial new question
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Post Grant Proceedings
•
Post-grant review - a new procedure
– Any ground can be raised
– Within 9 months of patent grant
– Threshold: it is more likely than not that at least one claim is unpatentable
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Post Grant Proceedings
•
Inter partes review - replaces the current inter partes reexamination
– 3rd party can file and can participate in the proceeding
– Estoppel applies
– 9 months after patent grant or after the conclusion of post grant
proceeding
– Threshold: reasonable likelihood of success required for petition grant
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Other Changes
•
Micro entity - 75% discount on fees
•
Supplemental examination - by patent owner, no inequitable conduct issue
•
Derivation proceedings - replaces interference proceeding
•
Submission of prior art - by 3rd party, must be filed with the Patent Office
before the earlier of either a notice of allowance or the later of 1) 6 months
after publication of the patent application or 2) the date of the first rejection
during examination. This provision will apply retroactively to all pending patent
applications.
•
Prioritized examination - $4,800 for large entity, $2,400 for small entity
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Changes Affecting Litigation
•
Prior use defense - any subject matter not only business method
•
Limitation on joinder - questions of fact common to all defendants
•
False marking -only the US has standing to sue for the statutory penalty
•
Venue limitations - new venue is US District Court for the Eastern District of
Virginia
•
Best mode - no longer a litigation defense under Section 112
•
Advice of a counsel – lack of advice of a counsel cannot be used as a
circumstantial evidence to show willful infringement
America Invents Act and Its Impact on Universities Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Prior Use Defense- What Does It Mean For
Universities?
•
Can be used as a defense against other patent owners other than universities
•
Applies to patents issued on or after date of enactment of act
•
“University exception” included, preventing assertion of this defense against
patents on inventions which, at the time the invention was “made,” belonged to
universities and technology transfer organizations
•
Any subject matter not only business method patents
•
For joint venture cases it may be better practice to assign the ownership to
university to take advantage of the exception to the prior use right
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Bayh-Dole Act of 1980
•
•
•
Started university technology transfer
Universities and small businesses retain title to inventions under federally
funded research programs
Universities must:
– grant licenses rather than assign
– disclose government interest in the patent
– share income with inventors
– use residual income for research
– grant non-exclusive license to the government
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Bayh-Dole Act of 1980
•
Since enactment:
– more than 5,000 new companies formed around university research
– over 3,000 patents a year
– approximately 30% value of NASDAQ rooted in university-based
technology
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Effective Dates
•
•
•
•
•
•
•
•
Upon enactment (September 16, 2011)
Gives the USPTO authority to set fees
Eliminates qui tam actions for false marking
Prohibits claiming human organisms
Eliminates “tax strategy patents”
Changes inter partes reexamination standard
Prohibits best mode defense in litigation
Establishes limitations on joinder of defendants
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Effective Dates
•
Less than a year after enactment
•
On September 26, 2011
•
•
15% surcharge is applied to patent-related fees
Track I priority examination is reinstated
•
•
On November15, 2011
$400 surcharge is imposed for patent applications not filed electronically
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Effective Dates
•
One year after enactment
•
Inter partes review procedures are applicable to any patent issued before, on,
or after the one year date
Post-grant review procedures take effect, but apply only to patents on
applications filed 18 months after enactment
Transitional post-grant review procedures available for covered business
method patents
Filing by assignee is applicable to any application
Third-party prior art submissions are available
•
•
•
•
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Effective Dates
•
After 18 months from enactment
•
First-to-file is applicable to applications with an effective filing date on or after
the 18-month date
Derivation proceedings are applicable to any application with an effective filing
date on or after the 18-month date
•
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Thank You
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Back Up
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Micro Entity
•
•
•
Qualifies as a small entity
Has not been named on 5 or more previously filed patent applications, not
including applications filed in another country, provisional applications under
section 111(b), or international applications filed under the treaty defined in
section 351(a) for which the basic national fee under section 41(a) was not
paid;
Did not in the prior calendar year have a gross income, as defined in section
61(a) of the Internal Revenue Code (26 U.S.C. 61(a)), exceeding 3 times the
most recently reported median household income, as reported by the Bureau
of Census;
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Micro Entity (cont.)
•
and has not assigned, granted, conveyed, and is not under an obligation by
contract or law to assign, grant, or convey, a license or other ownership
interest in the particular application to an entity that had gross income, as
defined in section 61(a) of the Internal Revenue Code (26 U.S.C. 61(a)),
exceeding 3 times the most recently reported median household income, as
reported by the Bureau of the Census, in the calendar year proceeding the
calendar year in which the fee is being paid, other than an entity of higher
education where the applicant is not an employee, a relative of an employee,
or have any affiliation with the entity of higher education.
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Supplemental Examination
•
A patent owner can ask for supplemental examination to consider new or
corrected information believed to be relevant to the patent
•
If the patent owner’s request raises “a substantial new question of
patentability,” a reexamination similar to existing ex parte reexamination is
instituted
•
No inequitable conduct allegations can be based upon the information
considered, reconsidered, or corrected during a supplemental examination
•
Provides an alternative to having a court consider misconduct and validity
issues in a later patent infringement litigation.
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Derivation Proceedings
•
Initiated by patent applicant in USPTO (35 U.S.C. § 135)
•
An applicant may file a petition to institute a derivation proceeding in the
USPTO on grounds that the inventor of an earlier patent application derived
the claimed invention from an inventor named in the petitioner’s application
and, without authorization, the earlier application was filed
•
Must be filed within the 1-year period beginning on the date of the first
publication of a claim to an invention that is the same or substantially the same
as the earlier application’s claim to the invention
•
Must be supported by “substantial evidence”
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Derivation Proceedings (cont.)
•
Director determines whether a petition meets the standards and then may
institute a derivation proceeding – this determination by the Director is final and
non-appealable
•
•
Initiated by patentee in court (35 U.S.C. § 291)
A patent owner may file a civil action against an owner of another patent that
claims the same invention and has an earlier effective filing date if the
invention claimed in such other patent was derived from the inventor of the
invention claimed in the patent owned by the person seeking relief
Must be filed before the end of the 1-year period beginning on the date of the
issuance of the first patent containing a claim to the allegedly derived invention
and naming an individual alleged to have derived such invention as an inventor
•
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Transitional Post Grant Validity Review of
Covered Business Method Patents
•
•
•
•
A “covered business method patent” is a “patent that claims a method or
corresponding apparatus for performing data processing operations or other
operations utilized in the practice, administration or management of a financial
product or service, except that the term shall not include patents for
technological inventions”
The Act provides for a post-grant review proceeding to determine the validity of
these patents
Eligible petitioners are entities who have been sued for or charged with
infringement of the patent
Provision expires eight years after enactment
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Limitation on Joinder
•
Plaintiff must show that questions of fact common to all defendants will arise in
the action; common questions of law alone are insufficient;
•
An allegation that all defendants infringe the same patent is no longer sufficient
to justify suit against multiple unrelated defendants
•
Accused infringers may waive the requirement
•
Joinder section is effective for civil actions commenced on or after September
16, 2011
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Venue Limitation
•
New venue is United States District Court for the Eastern District of Virginia
•
These provisions are: 35 U.S.C. § 32 (Suspension or exclusion from practice);
§ 145 (Civil action to obtain patent); § 146 (Civil action in case of
interference); §154(b)(4)(A) (Provisional rights, Appeal of patent term
adjustment determination); and § 293 (Nonresident patentee; service and
notice on patentees not residing in the U.S.)
•
Changes apply to cases filed after enactment
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Best Mode
•
35 U.S.C. § 282 is amended to carve out the failure to disclose the best mode
from the other § 112- based litigation defenses
•
The Act does not eliminate the best-mode requirement from § 112 for patent
applications
•
As a result, a patent applicant must disclose the best mode to get a patent but
seemingly cannot be penalized for failing to do so once a patent is issued
•
This section takes immediate effect, but only applies to cases commenced on
or after the date of enactment
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
False Marking
•
Section § 292 eliminates private citizen standing to bring cases to recover the
statutory penalty
•
Only the United States has standing to sue for the statutory penalty
•
Private suits to recover actual damages for competitive injury still permitted
•
Goes into immediate effect as to all cases pending or commenced on or after
the date of enactment
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.
“IP Management @ Universities” Istanbul, May 16 to 18, 2012
Albert Long Hall, BOGAZICI UNIVERSITY
Seeking Counsel’s Advice
•
Failure to seek or produce advice of counsel no longer may be used to prove
willfulness or induced infringement
•
New § 298 codifies Federal Circuit case law that there is no affirmative
obligation for alleged infringers to obtain advice of counsel. See In re Seagate
Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc) ; Knorr-Bremse
Sys. v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc)
America Invents Act and Its Impact on Universities
Gokalp Bayramoglu, Ph.D.
Patent Attorney
U.S.A.