Practical Implications of the LeahySmith America Invents Act

Practical Implications of the Leahy-Smith America Invents Act Prosecution Aspects ALAN J. KASPER AIPLA AIPPI/Italy Milan, Italy February 10, 2012

Patent Reform 2011 OVERVIEW 2 © AIPLA 2012

Snapshot of Patent Reform History • Activity In 2011 - • Senate Passes Legislation (S 23) • March 8, 2011 • House Passes Legislation (HR 1249) • June 23, 2011 • Similar but NOT Identical Legislation • Senate Accepts House Text • September 8, 2011 • President Signs • September 16, 2011 • Effective Dates • Provisions become effective on various dates • Immediate or delayed - according to specific provisions • Generally 1 year from signing (September 16, 2012) © AIPLA 3 • FITF – 18 months from signing (March 16, 2013) 2012

WHAT IS THE IMPACT OF THE AIA? SCOPE OF PATENT PROTECTION § Balanced – no clear winners or losers JOBS § Politically - a Jobs Bill § § § Practically – a Jobs Bill for some § § § § 4 New investment in R&D New products to consumers New high wage jobs Economic recovery § Patent Prosecutors Patent Litigators Patent Staff – inside and outside Patent Applicants Patent support firms Patent search firms Monitoring firms CLE Providers Industry - it remains to be seen! § § Applicants Third Parties Patentees Public INTERNATIONALLY § Harmonization § § First Inventor to File Unilateral movement by the US removes decades-old barrier BUDGETS § Fees - Immediately increased § Costs - Additional Staff and Services RISKS § Uncertainty and Liability § Operating under parallel and dramatically different legal standards for the next© AIPLA 20 years 2012

Patent Reform 2011 -Key Issues Addressed Filing Reforms § First Inventor to File (§ 3)* § Assignee Filing (§ 4) Penalty for Paper filing (§ 10) Best Mode Requirement diluted (§ 15) Human Organism Patents Prohibited (§ 33) § § § Examination Reforms § § § Repeal Hilmer Definition of Prior Art (§ 3) Inventor Grace Period – publication (§ 3) § Additional Key Reforms § § § § Third Party Reforms § Expand Prior User Rights (§ 5) § Expand Post Grant Review (§ 6) § New Opposition System [56]** § § § 9 month window after grant “more likely than not” std. Any ground under § 282(b) – § 101, § 102, § 103, § 112, etc. Estoppel “ raised or reasonably could have raised”” § § Priority Examination Fee (§ 11) Supplemental Examination – Correcting Bases for Inequitable Conduct (§ 12) 15% Surcharge (§ 13) PTO Revenue Diversion (§ 22) Deceptive Intent is removed from the statute (inventorship, reissue, disclaimer, foreign filing license, etc. ) Inter Partes Review After 9 month window “Reasonable likelihood petitioner would prevail” std. Only patented or published art (§ 102 § 103) Estoppel if “raised or reasonably could have raised” Third Party Submissions (§ 8) Limit Use of Opinions (§ 17) § Other Provisions § § *reference in parens is to sections of HR 1249 as published ** reference in brackets is to page of HR 1249 as published Restrict Patents on Tax Strategies (§ 14) Virtual Marking and False Marking Limits (§ 16) Business Method Patent Opposition (§ 18) Establishment of Satellite Offices (§ 23 and § 24) § § 5 Discounts for Micro Entities [89] University exceptions Reform Inter Partes Reexam [40] § PTO Fee Setting (§ 10) Detroit specified Prioritize Examination of Important Inventions (§ 25) Creation of Ombudsman (§ 28) Others –Studies, etc. (§ 25 -34) © AIPLA 2012

Key Issues Omitted From Bill § Filing Reforms Omitted: § None § Examination Reforms Omitted: § Stricter Obviousness Standard § Third Party Protection Reforms Omitted § 18 Month Publication of all § § § applications Experimental Use Exceptions Limits on Injunctive Relief Restriction on Damages Restriction on Venue Ex parte Reexam § § Supreme Court KSR Decision current system maintained § Additional Key Issues Omitted § § 6 Applicant Quality Submission PTO General Regulatory Authority Interlocutory Appeals to CAFC “Trigger based” on JPO/EPO adopting a similar grace period © AIPLA 2012

Effective Dates for Various Sections • § 5 – Prior User Rights (35 USC 273) • Patent issued on or after 9/16/11 • § 6 – Post Grant Review • New Interpartes reexam standard becomes effective 9/16/11 (35 USC § 312) • Ex Parte appeals under 35 USC§ 145 eliminated (35 USC § 306) • § 11 – Fees • 15% Surcharge (9/26/11) • Accelerated Exam fee (9/26/11) • Paper Filing Fee (11/15/11) • § 14 – Tax Strategies Provisions • § 15 – Best Mode Changes • Suit started on or after 9/16/11 • § 16 – Marking § 4 – Oath or Declaration (35 USC § 118) § 6 – Post Grant Review Procedures • New Opposition – limited number first 4 years • New Inter partes Review – limited number - 4 years § 8 – 3 rd Party Submissions (35 USC § 122(c)) § 12 – Supplemental Exam § 18 – Business Methods Patent Review § 35 – General Effective Date • False Marking – cases pending on or started after 9/16/11 • Virtual Marking (35 USC 273) § 3 – First Inventor to File • § 19 – Jurisdiction and Procedural • Joinder of defendants restricted • New § 102 and 103 applies (35 USC § 306) • § 22 – PTO Funding Act Signed (9/16/11) Sughrue Mion PLLC One Year 18 Months 9/16/12) 3/16/13) 7 Patent Reform 2011

USPTO Rulemaking Schedule 8

Group 2 Rulemakings Schedule Subject of Rule Making (Section of AIA) 1 Inventor’s oath / declaration (4) 2 Third party submission of prior art for a patent application (8) 3 Supplemental examination (12) 4 Citation of prior art in a patent file (6) 5 Umbrella set of rules for contested case procedure 6 Inter partes review (6) 7 Post grant review (6) 8 Transitional program for covered business methods (18) 9 Definition of technological invention (18) 10 Derivation proceeding (3) 9 Issue Date 1/6/12 1/5/12 1/25/12 1/5/12 N/A 2/7/12 ? 2/7/12?

Patent Reform 2011 KEY PROSECUTION PROVISIONS 10

Track 1 Prioritized Examination Requirements (Section 11(h)) Application original utility or plant non-provisional (Con/Div) no international design, reissue or reexam can file with an RCE Fee - $4800 Claim Limitation – 4 or fewer independent and 30 total Prior Art no search or comment required Good knowledge of prior art relevant to claims Form – PTO/SB/424 recommended Prosecution Time to respond to OA – see MPEP 710. 02(b) Final Rejection, No. All. or RCE terminates special status Final Regulations – 12/19/11 – (over 1400 as of 11/17/11) USPTO Goal – final disposition in 12 months 11 © AIPLA 2012

Prioritized Examination : What You Should be Doing Now! • • • 12 Evaluate invention disclosures and pending Applications for qualification for Prioritized Examination Become familiar with published rules Tailor new and newly filed applications for program requirements Consider use with RCE's Develop and execute your strategy © AIPLA 2012

New Standards For Filing Right of First Inventor to File (Section 3) Inventor must be an individual who invents or discovers (§ 3(a)) and must be named (§ 4(a)) Effective Filing Date includes domestic and foreign priority dates – where Section 112 disclosure is satisfied (§ 3(a)) Interferences are eliminated except for applications filed before the effective date (§ 3(j) and § 3(n)) Derivation Investigation Proceeding is created (§ 3(i)) 13 May be instituted only within 1 year after first publication Modified Interference-type proceeding Corroborated proof of (1) prior conception, and (2) communication to the deriver sufficient to enable actual reduction to practice of claimed invention © AIPLA 2012

First-to-Invent vs. First-Inventor-to-File First-to-Invent: X Can Win X CONCEIVED X RTP X FILED Y CONCEIVED Y RTP Y FILED First-Inventor-to-File: Y Wins (If Independent Inventor) 14 Patent Reform 2011

First Inventor to File : What You Should be doing Now! Right of First Inventor to File (Section 3) Inventor Identification – maintain current practices and records of invention to comply with old and new law Effective Filing Date – establish guidelines to ensure that all application filings in all countries comply with 35 USC 112 Interferences – should still be considered part of a competitive strategy for several years Derivation Investigation Proceeding – establish systems for (1) keeping records of disclosures (private and public) by inventors and (2) independent development of inventions 15 © AIPLA 2012

New Standards for Novelty Revised Definition of Prior Art (Section 3(b)) Eliminates Content of Original Sections 102(a) and (c) – (g) • New Section 102(a)(1) keeps Section 102(b) standards • On Sale & Public Use • Published and patented • Adds “otherwise available to public” • New Section 102(b) excludes from "prior art" public disclosures by inventor less than 1 year • New Section 102(a)(2) includes earlier filed application naming another inventor ( substitute for old 102(e)) Excludes inventor-derived information or public disclosure Excludes commonly owned patents and applications Excludes joint research agreements (CRADA) • 16 © AIPLA 2012

New 35 U. S. C. § 102(a): Defines Prior Art Under the AIA § 102 Conditions for patentability (a) NOVELTY; PRIOR ART. A person shall be entitled to a patent unless— (1) the claimed invention was patented [anywhere in the world], described in a printed publication [anywhere in the world], or in public use [anywhere in the world], on sale [anywhere in the world], or otherwise available to the public [anywhere in the world] before the effective filing date of the claimed invention; 17 © AIPLA 2012

35 U. S. C. § 102(a) – Cont’d § 102 Conditions for patentability (a) NOVELTY; PRIOR ART. A person shall be entitled to a patent unless— … (2) the claimed invention was described in a [US] patent issued under section 151, or in an application for [US or PCT application designating the US (§ 374)] patent published or deemed published under section 122(b) [US or PCT designating the US], in which the [US] patent or [US or PCT designating the US] application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. [see § 102(d)(next slide): effective filing date can be earliest foreign priority document] 18 [§ 102(a)(2)somewhat like old § 102(e); filed before effective filing date but not disclosed before effective filing date, otherwise would be under © AIPLA 2012 § 102(a)(1)]

§ 102(a)(2)/§ 102(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART. —For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the [US] patent or [US or PCT designating the US] application“(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or [entitled] to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter. ” [“entitlement” trumps “describes”- therefore enablement is required? ] ‘‘(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent” Earlier-Filed but Later-Published [US] Patent Documents Somewhat like old § 102(e) - but cannot be antedated by earlier invention. 19 Following publication, the disclosure has retroactive availability as prior art as of effective © AIPLA 2012 filing date Available as prior art for novelty and obviousness purposes

Hilmer Doctrine Abolished by § 102(d) eliminates need foreign applicants to file provisional applications by establishing that an application is “effectively filed” on the date an application was filed under § 119 or § 365. Hilmer Doctrine evidenced bias of U. S. law against inventions originating outside the U. S. Based on two U. S. litigations (Hilmer I and II) that held that the foreign right of priority of a U. S. patent does not provide a prior art effect under § 102(e) as of that foreign priority date, nor does inventive work outside the U. S. have a prior art effect under § 102(g). Rather, one needed a U. S. filing date to have a prior art effect. Created “shield vs. sword” distinction Foreign applicant needed to file in the U. S. to get a § 102(e) or § 102(g) © AIPLA 2012 20 prior art effect date – e. g. , provisional.

Impact of § 102(d)(2) – Prior Art Date Prior art date U. S. Prov. Appl. Pub. Appl. U. S. Appl. Non-Prov. Prior art date UK Prior art date FR English USPAT Pub. Appl. PCT (U. S. ) English USPAT Pub. Appl. USPAT PCT (U. S. ) French • NO geographical or language distinction • Assuming entitlement to date benefit of US Prov App. , UK app. , and FR app.

Definition of Prior Art: Scenario 1 X FILED X PUBLISHED IN US Y FILED Old: Y Could Antedate X with evidence of earlier invention. New: Since X filed first, X is Prior Art to Y (for § § 102 and 103 purposes) Sughrue Mion PLLC 22 Patent Reform 2011 Assuming § 102(b)(2) exceptions do not apply.

Definition of Prior Art: Scenario 2 X SOLD IN EUROPE (Confidential? ? ? ) Y FILED Old: Sale of X Not Prior Art to Y because not in US. New: Sale of X Is Prior Art to Y. [§ 102(a)(1) only] Consider if 102(b)(1) exception applies. Sughrue Mion PLLC 23 Patent Reform 2011

Definition of Prior Art: Scenario 3 X PUBLICLY USED: ex US > 1 Year Y INVENTED Y FILED Old: Public use outside US was not prior art. New: X’s use outside the 1 -year period is prior art to Y wherever it occurred; exception under § 102(b)(2) cannot apply because no patent or patent application. Sughrue Mion PLLC 24 Patent Reform 2011

Definition of Prior Art: Scenario 4 X PUBLICLY USED < 1 Year Y INVENTED Y FILED Old: Y could antedate X’s use. New: X’s use inside the 1 -year period may be prior art to Y wherever it occurred: grace period exception under 102(b)(1) may apply. Sughrue Mion PLLC 25 Patent Reform 2011

New Definition of the Grace Period More Limited Grace Period (Section 3(b)) Absolute Bar if More than One Year before Effective Filing Date for All Persons Bar if Less than One Year with Exception for Inventor and Assignee Only for Public Disclosure by or derived from the Inventor Only for Commonly Owned Inventions Owned or subject to duty to assign 26 © AIPLA 2012

New 35 U. S. C. § 102(b) – Exceptions to Prior Art 27 § 102 (b) EXCEPTIONS. (1) Disclosures [anywhere in the world] made 1 year or less before the effective filing date [anywhere in the world; see § 100(i)(1)] of the claimed invention shall not be prior art under (a)(1) if: (A) made by an inventor or by another who obtained the subject matter directly or indirectly from an inventor, or (B) if the subject matter had been previously publicly disclosed by an inventor or one who obtained it from an inventor These exceptions define what is not prior art under §§ © AIPLA 2012 102(a)(1) and (a)(2), respectively, and are generally personal to the inventor

New 35 U. S. C. § 102(b) – Cont’d § 102 (b) EXCEPTIONS – … (2) Disclosures appearing in [US or PCT designating the US] applications and [US] patents are not prior art under (a)(2) if: (A) obtained directly/indirectly from an inventor; (B) the subject matter was publicly disclosed before filing by an inventor or one obtained it directly or indirectly from an inventor; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Provision twins with § 102 (a)(2) NOTE: NO RECITATION OF “ONE YEAR OR LESS” 28 © AIPLA 2012

How the NEW U. S. Grace Period Will Work: § 102(b)(1)(A) and (B) Respectively Apply Grace Land Disclosure “by or obtained from” an INVENTOR Disclosure by ANYONE § 102(b)(1)(A) § 102(b)(1)(B) Public use U. S. Patent 12 mos. Effective Filing Date Sughrue Mion PLLC 29 Patent Reform 2011

How the NEW U. S. Prior Art Provisions Will Work: A Sword and A Shield Disclosure “by or obtained from” Inventor B Filing by independent inventor A § 102(b)(1)(A) § 102(b)(2)(B) § 102(a)(1) Public use A Pat. App. Filed A’s US application published B’s U. S. Patent Effective Filing Date of B’s Patent App. 12 mos. B avoids public use through § 102(b)(1)(A); B’s public use avoids A’s publication through § 102(b)(2)(B) and defeats A through § 102(a)(1); First inventor to file loses because other inventor disclosed first. Sughrue Mion PLLC 30 Patent Reform 2011

US Patent Reform: Effect on § 103 New law modifies § 103 to read: 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… Present § 103 reads: would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains Hence, the new US law switches from “at the time the invention was made” (earlier or equal to filing date) to the time “before the effective filing date of the claimed invention” Generally broadens the scope and content of the prior art in the U. S. – primarily based on elimination of the Hilmer Rule © AIPLA 2012 31

Effect on § 103 and § 104 Additional Changes to Section 103 and Deletion of Section 104 (Section 3(c) and (d)) Section 103 also revised to eliminate exceptions • Common assignment provisions are now in Section 102 • Section 103(b) on non-obviousness of biotech processes is deleted 32 Section 104 is deleted © AIPLA 2012

Strategy for Filing New Applications: Act Signed Section 3(n)(1)(A) provides an 18 month window before new § 102 applies to new applications 18 -month Window Closes New Filing of regular, provisional, PCT or foreign application to get old law grace period Sughrue Mion PLLC 33 Applications claiming priority from applications filed in the Window may have old law grace period Continuation, Divisional and CIP Filing to get old law grace period – no claim with effective filing date (Section 101(i)) after the window closes Patent Reform 2011

Straddling the Effective Date First to Invent System Applies PCT Filing Enactment: Sept. 16, 2011 PCT Filing Priority Date “First To Invent” System or “First Inventor to File” System? (see SEC. 3(n)(1)(A)) Scenario 1: no claims entitled to priority date: first-to-file Scenario 2: all claims entitled to priority date: first-to-invent Scenario: 3: at least 1 claim not entitled to priority date: first-to-file Enactment: Sept. 16, 2011 Priority PCT Date Filing Enactment: Sept. 16, 2011 Effective Date: March 16, 2013 “First Inventor to File” System Applies Assumes “priority date” is ex-US 34

What You Should be doing Now File before 18 months after enactment (on or before March 15, 2013) New applications; CIPs; New claims (disclosed but not previously claimed)? Develop a strategy for using predeadline filed applications as a basis for. BEWARE interferences (§ 2(n)(2)) THE IDES OF MARCH! 35 © AIPLA 2012

Key Actions to be Taken-Prosecution • • FEES • Adjust budgets for 15% surcharge • Instruct Filing Electronically (save $400 fee) ASSIGNEE FILING • Redraft Employee Agreements and Disclosure Forms to: • Provide clear obligation to assign all rights • Authorize preparation of Application • Include required statements (belief to be original inventor) • DERIVATION, GRACE PERIOD AND PRIOR RIGHTS • • 36 Maintain records of invention activity and public disclosure NEW PRIOR ART DEFINITIONS – 18 months after enactment • Develop a Filing Schedule and Strategy for Using Old Law • Evaluate Possibility of Interferences Under Old Law © AIPLA 2012

Key Actions to be Taken-Prosecution • • 37 PRIORITIZED EXAMINATION • Discuss and Develop a Strategy for use of Enhanced Examination • Develop a System to Review filed and unfiled applications and invention disclosures for qualification for Enhanced Examination • Budget for New Expenses THIRD PARTY SUBMISSIONS • Develop a Policy and Strategy for identifying competitor published applications and possibly relevant prior art and submitting art to the USPTO • Budget for New Expenses © AIPLA 2012

Thank you! akasper@sughrue. com. 38 © AIPLA 2012

Alan J. Kasper is a senior partner in the International IP law firm Sughrue Mion, PLLC, where he has been practicing law since 1985. Alan’s practice focuses on patent matters and consists primarily of prosecution, litigation, licensing, opinions and counseling on patent strategies for a wide variety of clients in the advanced electrical, optical, semiconductor, computer-based and mechanical technologies, and he presently manages the firm’s International Department. He graduated from the State University of New York with a B. S. in Electrical Engineering and obtained a JD at the Georgetown University Law Center. He initially worked as an Examiner in the U. S. Patent and Trademark Office and later served as Assistant General Counsel and head of the corporation's Patent Department for the internationally known telecommunications satellite company, COMSAT. Alan is active in several professional associations, including A. I. P. P. I. , F. I. C. P. I. , ABA, IPO and A. I. P. L. A, where he served last year as President and now is a member of the Board of Directors. He also is a Vice President of AIPPI-US. Alan has lectured internationally on U. S. patent and commercial matters, and has authored numerous articles published in the U. S. and elsewhere in the world. He can be reached by email at akasper@sughrue. com. 39 © AIPLA 2012