2011 US Patent Law Reform & A Global Prosecution Strategy by Lowe Hauptman Ham & Berner LLP Suite...

2011 US Patent Law Reform 2011 US Patent Law Reform & A Global Prosecution Strategy& A Global Prosecution Strategy

bybyLowe Hauptman Ham & Berner LLP Lowe Hauptman Ham & Berner LLP

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© 2011 – All Rights Reserved© 2011 – All Rights Reserved

Lowe Hauptman Ham & Berner, LLPLowe Hauptman Ham & Berner, LLP

2011 U.S. Patent Law Reform2011 U.S. Patent Law Reform

22/18/18

The 2011 America Invents Act (“AIA”)– On September 16, 2011, President Obama signed

into law the Leahy-Smith America Invents Act, H.R. 1249, 112th Cong. (2011)

– Seeking to harmonize U.S. patent laws with other systems around the world and promote strong patents to spur economic growth, the AIA represents the first major overhaul to the U.S. patent system in sixty years.


Patent Law System Harmonization

Many of the changes would harmonize U.S. patent laws with those of Europe, China and other nations. – First-Inventor–to-File system:

First-Inventor-to-File Amendments

New Definition of Prior Art

Derivation Proceedings

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First-Inventor-to-File Amendments– The first inventor to file, subject to a grace period, will

be entitled to a patent regardless of another’s prior invention.

– The first-inventor-to-file regime impacts applications with an effective filing date on or after March 16, 2013, eighteen months from the enactment of the Reform Act.

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New Definition of Prior Art– 35 U.S.C. § 102 (a) “ A person shall be entitled to a patent unless

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent …, or in an application for [U.S.] patent published or deemed published …, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

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– What’s Different in the New §102(a)?

Focus now on “effective filing date”Removal of territorial restrictions

– Public Use or On Sale activities outside of United States may now constitute prior art

Elimination of the Hilmer doctrine– An application's foreign filing date under §119 could be used to

antedate prior art but could not be used as affirmative prior art under current§102(e). In re Hilmer, 53 C.C.P.A.1288. (1966)

– Under AIA, an application is "effectively filed" for the purposes of §102(a)(2) (analogous to current § 102(e)) on the date of actual filing in the U.S. or on the date that an application under §119 was filed.

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– Grace Period Applicable

– Inventor was first to disclose– Inventor’s “disclosure” was within one year of filing date

A patentee’s disclosures about his or her invention will not act as prior art that potentially invalidates the patent.These early disclosures may serve to inoculate the patent from third-party prior art during the period from the disclosure to the patent’s effective filing date (up to one full year).

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Derivation Proceedings– Replacing interference proceedings with derivation

proceedings– A new PTO procedure at s. 135 heard before Patent

Trademark and Appeal Board – Petition to USPTO

stating that the inventor of an earlier-filed patent application derived the invention from an inventor named in the later-filed patent application. “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”

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Benefits to Chinese Applicants: First-Inventor-to-File

Simplifying and reducing costs associated with the patenting process in certain respects, e.g., by removing the necessity for interference proceedings

The filing strategies under the Hilmer doctrine, e.g., abolishing the foreign filings altogether in favor of filing U.S. provisional applications or filing concurrent foreign and U.S. provisional applications, will no longer be required under the AIA

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Strategies to Develop: First-Inventor-to-File

Although AIA brings the U.S. closer to the first-to-file system, the U.S.'s incomplete removal of the concept of inventorship requires Chinese patent applicants and practitioners to face with another, albeit similar, system. Strategies to develop: – Short window to educate inventors about elimination of grace

period and importance of filing application prior to public disclosures

– Immediately develop safeguards against inadvertent public disclosures

– Beware of enablement and written description issues — in the rush to get a filing date, it may be difficult to quickly generate an adequate description of the invention and methods of making or using the invention

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Early Challenges to Patents

AIA provides distinct procedures, or "windows" of opportunity, to allow early challenges to pending applications and newly issued patents :– Preissuance submissions by third parties. – Post-Grant Review – Inter Partes Review

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Preissuance submissions by third parties – A revised procedure that allows a third party to submit

materials to the USPTO that are of potential relevance to the examination of a pending application, along with a concise description of the asserted relevance of each submitted document.

– Timing: before the earlier of a notice of allowance or the later of (1) six months after the date of first publication or (2) the date of the first rejection.

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Post-Grant Review – A procedure similar to the EPO opposition proceeding – Within nine months after grant or reissue, a Petitioner

may request to cancel one or more claims of a patent on any ground except the best mode requirement.

Inter Partes Review – After the nine month window closes, third parties will

be able to challenge a patent through an inter partes review to be conducted by Patent Trial and Appeal Board within one year.

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Post-Grant Review V.S. Inter Partes Review

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Post-Grant Review Inter Partes Review

Timing within 9 months of

issuance after 9 months from issuance or the termination of post-grant review

Available

arguments any basis for invalidity prior art patents and printed

publications Threshold for institution:

It is “more likely than not that at least 1 of the claims

challenged” is unpatentable.

“reasonable likelihood that

the petitioner would prevail

with respect to at least 1 of the claims.”

Discovery evidence directly related to factual assertions

depositions of witnesses,and

what is otherwise necessary


Benefits to Chinese Applicants: Early Challenges to Patents

Cost savings: Challenging a patent in prosecution is more cost effective than challenging a patent in litigation

A new opportunity: at least for post-grant review, a new opportunity to challenge an issued patent based on any invalidity theory

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Strategies to Develop: Early Challenges to Patents

Implement a system of monitoring the applications of competitors to allow the entity to submit a concise description of each submitted document during patent prosecution and thus make the Examiner aware of relevant prior art.Entities should first consider post-grant review as an initial strategy.Due to the higher standard for granting Inter Partes review and the limited scope of review allowed therein, the benefits of inter partes review should be carefully considered.

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Benefits to Chinese Applicants: Other notable changes

Micro EntityMicro Entity– 75% reduction75% reduction in applicable feesin applicable fees– Requirements for micro entity statusRequirements for micro entity status

Small entitySmall entityNot named on more than 4 previous US applicationsNot named on more than 4 previous US applicationsGross income in previous year Gross income in previous year << 3 x median household income 3 x median household incomeHas not transferred and under no obligation to transfer ownership Has not transferred and under no obligation to transfer ownership interest to non micro entityinterest to non micro entity

Prioritized Examination: – a fee of $4800 (50% reduction for small entity)– Application given “special” statusApplication given “special” status

Maximum 4 Independent claims; 30 total claimsMaximum 4 Independent claims; 30 total claimsMaximum of 10,000 requests granted per yearMaximum of 10,000 requests granted per yearNo extensions of time allowed during prosecutionNo extensions of time allowed during prosecution

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Benefits to Chinese Applicants: Other notable changes

Supplemental Examination by Patentee– Patent owner may provide potentially material prior art

to the PTO after the patent is granted.– The information must be brought to the PTO and the

supplemental examination must be completed prior to litigation.

Best Mode– Eliminates “failure to disclose the best mode” as a

basis for invalidity of an issued patent.

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A Global Prosecution StrategyA Global Prosecution Strategy

Synchronization prosecution in multiple

jurisdictions– Filing in multiple jurisdictions; – Getting Office Actions from multiple jurisdictions

at the same time;– Making responses with the same information and

at the same time.

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SynchronizationSynchronization ProsecutionProsecution

The tools of synchronization - make possible– a request for examination must be made separately

from the filing of the application. – accelerated examination allowed.

Example: Synchronization prosecution in USPTO, JPO, and KIPO– The synchronization prosecution is not limited to

application in these countries. Right now, many jurisdictions, including, the UK, Germany, and Europe, have PPH pilot programs.

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2121/18/18

A step-by-step guide to synchronization prosecution

JPO/KIPO [Defer the examination]

USPTO [Office action is issued]

JPO/KIPO [Accelerate the examination]

USPTO [Delay the response (by up to six months)]

JPO/KIPO [Office actions are issued (two to three months)]

ALL Respond to all office actions at the same time

considering all cited references


Benefits:– Providing a more complete picture of the prior

art to take into consideration when crafting amendments and arguments

– Time-saving and needlessly duplicated work avoided

– Improving consistency of responses and claims

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Synchronization Prosecution : For Chinese Applicants

Statistics on applications to USPTO, JPO, KIPO by Chinese Applicants

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0

1000

2000

3000

4000

5000

6000

7000

2009 2008 2007 2006

KIPO

JPO

USPTO


Quality? – Not all patents are equally effective at

protecting IP. Beyond merely obtaining a registration, it is vital to obtain a strong patent that can stand up to validity attacks and survive litigation.

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Applicable of synchronization prosecution for Chinese applicants– No acceleration examination system in China– A foreign prosecution policy for Chinese

companies to apply outside China.

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Thank You!Thank You!

2011 US Patent Law Reform & A Global Prosecution Strategy by Lowe Hauptman Ham & Berner LLP Suite...

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