The Patent Process and the America Invents Act

The Patent Process and the America Invents Act Evan Boetticher, M. S. Judy Mohr, Ph. D. Mc. Dermott Will & Emery LLP March 11, 2013 www. mwe. com Boston Brussels Chicago Düsseldorf Frankfurt Houston London Los Angeles Miami Milan Munich New York Orange County Paris Rome Seoul Silicon Valley Washington, D. C. Strategic alliance with MWE China Law Offices (Shanghai) © 2013 Mc. Dermott Will & Emery. The following legal entities are collectively referred to as "Mc. Dermott Will & Emery, " "Mc. Dermott" or "the Firm": Mc. Dermott Will & Emery LLP, Mc. Dermott Will & Emery AARPI, Mc. Dermott Will & Emery Belgium LLP, Mc. Dermott Will & Emery Rechtsanwälte Steuerberater LLP, Mc. Dermott Will & Emery Studio Legale Associato and Mc. Dermott Will & Emery UK LLP. These entities coordinate their activities through service agreements. This communication may be considered attorney advertising. Previous results are not a guarantee of future outcome. 1

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3 http: //www. whitehouse. gov/photos-andvideo/2011/09/16/president-obama-signs-america-invents-act

Tonight’s Topics How did Ms. Rebecca Hyndman obtain her patent? 4 – what is a patent? – what is the process to obtain a patent? – how does the America Invents Act change the patent system?

§ what is a patent § patent process § impact of AIA – first to file 5

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+ 20 years Expires: Jan. 4, 2028 7

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What is a Patent? Granted U. S. Design Patent on i. Phone Date of patent + 14 years Expires: June 29, 2024 11

Lesson #1 § a patent gives the right to exclude others from making, using, selling the idea set forth in the claims of the patent for 20 years from the earliest non-provisional application filing date § patent application publications are not legally enforceable property rights 12

§ what is a patent § patent process § impact of AIA – first to file 13

How to Obtain a Patent § Basic requirements: – novel – not obvious – patent eligible subject matter – sufficient written description of the idea to teach how to make and use the full scope of the claims 14

How to Obtain a Patent 1 year Provisional Application “ 6 x/xxx, xxx” Non-provisional (“utility”) Application “ 1 x/xxx, xxx” 15

How to Obtain a Patent (cont’d) Published i. Pod Patent Application 16

Patent Application Lifecycle 1 year 1 st Provisional Application Filed in October 2001 Non-provisional (“utility”) Application Filed October 2002 2 nd Provisional Application Filed in February 2002 3 rd Provisional Application Filed in June 2002 17

Patent Application Lifecycle (cont’d) International Applications U. S. Provisional Application(s) 1 year Pay Issue Fee; Patent Grants U. S. Non. Provisional (“utility”) Application 14 months (can be 2 -3 years) 1 st Office Action Final Office Action or Notice of Allowance 4 months 18 app. publishes 18 months from provisional filing 3 -6 months Written Response to Office Action

Patent Application Lifecycle (cont’d) Provisional Application Filed “ 60/xxx, xxx” 1 year Regular (“utility”) Application Filed 14 months Pay Issue Fee; Patent Grants 1 st Office Action Final Office Action or Notice of Allowance 4 months 3 -6 months Written Response to Office Action 19

Patent Application Lifecycle (cont’d) Provisional Application Filed “ 60/xxx, xxx” 1 year Regular (“utility”) Application Filed 14 months if Examiner refuses to consider response, then file a “Request for Continued Examination (RCE)” 1 st/3 rd Office Action 4 months Written Response to Office Action 3 -6 months Final Office Action Written Response to Office Action 4 months 20

Costs Associated with Patent Application Lifecycle U. S. Provisional Application $8, 000 - $15, 000 Atty Fees; $260 USPTO Fee Pay Issue Fee $1, 780 USPTO Fee 1 year non-provisional application $1, 000 - $8, 000 Atty Fees; $1, 600 USPTO Fee File “Request for Continued Examination (RCE)” $1, 200 or $1, 700 USPTO Fee Final Office Action or Notice of Allowance 4 months *USPTO 21 Fees shown are “large entity” fees 14 months 1 st Office Action 3 -6 months Written Response to Office Action $3, 000 - $6, 000 Atty Fees

Patent Application Lifecycle (cont’d) International Applications U. S. Provisional Application(s) 1 year Pay Issue Fee; Patent Grants U. S. Non. Provisional (“utility”) Application 14 months (can be 2 -3 years) 1 st Office Action Final Office Action or Notice of Allowance 4 months 22 app. publishes 18 months from provisional filing 3 -6 months Written Response to Office Action

International Patent Filings 1 year U. S. Provisional Application International (PCT) Application(s) 4 months national phase filings (30 or 31 months from provisional appln. filing date) Korea India Japan Brazil China Canad a Mexico 23 Austr. Europe International Search Report and Written Opinion 2 months 12 months PCT Application Publication

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Section 1: Patent Process § what is a patent § patent process § impact of AIA – first to file 25

First to Invent: Current US Patent System a (B becc lue) Re patent application filed on floor storage tiles 26

First to Invent: Current US Patent System Rebecca (Blue) can provide evidence of having the idea first, and Rebecca is entitled to the patent even though Rebecca filed after Grey 27

First to Invent: Current US Patent System One Year Grace Period 1 year date of publication date of patent application filing 28

First to Invent: Current US Patent System FIRST TO FILE: Effective March 16, 2013 Blue can no longer “swear behind” Grey’s earlier patent application filing date by proving Blue invented first Blue can provide evidence of having the idea first, and Blue is entitled to the patent even though Blue filed after Grey 29

FIRST TO FILE: Effective March 16, 2013 A person shall be entitled to a patent, unless: • before the filing date, the invention was: • patented • described in printed publication • in public use • on sale • otherwise available to the public (35 USC 102(a)(1)) or • the claimed invention was described in an issued patent or published application, which • names another inventor; and • was filed before applicant’s filing date (35 USC 102(a)(2)) 30

FIRST TO FILE: Effective March 16, 2013 the following events destroy patentability if they occur before the application filing date: • patented • described in printed publication • in public use • on sale • otherwise available to the public • described in a patent publication filed by another (35 USC 102(a)(1) and 102(a)(2)) 31

FIRST TO FILE: Effective March 16, 2013 EXCEPT: • A “disclosure” (printed publication, public use, sale, etc. ) <1 year before the application filing date is not prior art if • (i) it was made by the inventor or another who obtained it from the inventor; or • (ii) it was made by another but preceded by a disclosure by the inventor or another who obtained it from the inventor • Effect of the Exception “first to publish” regime 32

FIRST TO FILE: Inspect the Exception: 1 Year Grace Period Retained Example 1/6 1 year date of publication date of patent application filing 33

FIRST TO FILE: Effect of Publishing? Example 2/6 34

FIRST TO FILE: First to Publish Example 2/6 Although Blue is the First to File, Gray is entitled to the patent because Gray is first to publish 1 year 35

FIRST TO FILE: First to Publish Example 3/6 Although Gray is the First to File, Gray is NOT entitled to the patent because Blue is first to publish 36

FIRST TO FILE: Does First to Publish Always Win? Example 4/6 1 year 37

FIRST TO FILE: Does First to Publish Always Win? Example 5/6 38

FIRST TO FILE: Is the strategy to first publish and then file a patent application a viable strategy? 1 year Yes, but only if • the patent application is filed within 1 year of the date of disclosure • the disclosure/publication and patent application have a substantially identical disclosure • patent protection outside the U. S. is not desired 39

FIRST TO FILE: Complications and Unknowns Example 6/6 1 year prov. app A A A B A B AND/OR A B A B 40

THANK YOU 41

Patent Searching and Patent Copies • USPTO database • http: //uspto. gov • Google patent database • http: //www. google. com/advanced_patent_search • Espace database • http: //worldwide. espacenet. com/? locale=en_EP • WIPO (World Intellectual Property Organization) • http: //www. wipo. int/pctdb/en/ • Patent. Fetcher • http: //www. patentfetcher. com/ 42