Recent Changes to Patent Law ( America Invents Act )

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Mark McCoy
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1 Recent Changes to Patent Law ( America Invents Act ) Jared Pitts Griffiths & Seaton PLLC 2108 N. Lemon Street Mesa, AZ Mobile: (480) jared.pitts@gs-iplaw.com

2 Brief Summary of Some Important Aspects of the America Invents Act of 2011 (AIA) Intended to Harmonize U.S. Patent Law with International Patent Systems (first-to-file, absolute novelty) Effective March 16, 2013, the law changed the U.S. Patent System from First-to-Invent to First-Inventor-to-File. New patent applications filed after March 16, 2013 will fall under the U.S. new First-Inventor-to-File regime created by the America Invents Act of Those new applications: will have priority based on filing date not invention date; will have much more limited pre-filing grace period; and will be subject to prior user rights. 2

3 Comparison of Pre-AIA U.S. Patent Laws with New AIA Provisions PRE-AIA First to Invent system (the inventor who can prove first to invent wins) One-year grace period to file in the U.S. if there is a public disclosure, use, or sale Secret sales and secret offers for sale trigger a oneyear grace period. AIA First Inventor to File system (the inventor who files an application first wins the race to the patent office ) One-year grace period is limited to public disclosure by the inventor(s) or another who obtained the subject matter from the inventor(s). Secret sales and secret offers for sale do not trigger any grace period, and may not be considered as prior art. 3

4 FIRST-INVENTOR-TO-FILE: Priority Based on Filing Date, Not Invention Date The first inventor to file an application for a claimed invention with the USPTO will generally maintain the application against all subsequent filers. Exception: A subsequent filer may win if he/she can prove (in a derivation proceeding ) that someone else derived their patent or product from an invention disclosed by the inventor to the first filer. This may be particularly important in the joint development context or in the context of customer or supplier disclosures. 4

5 First-Inventor-to-File Timeline (independent inventors A and B ) A invents A files B invents B files B prevails *** Prior to the AIA, A would have prevailed with sufficient proof *** 5

6 First-Inventor-to-File Timeline ( B derives invention from A ) A invents A files A discloses to B B files A prevails ONLY IF A can prove that B derived the invention from A s disclosure 6

7 Grace Period under Pre-AIA Law Old law provided a one-year grace period for U.S. patent application filings for public sales, secret sales, public offers for sale, secret offers for sale, publication, and use of the invention in the U.S. or in a foreign country within which a patent could still be filed. 7

8 Limited Pre-Filing Grace Periods under AIA LIMITED Grace Period (One-Year) for inventor disclosure, or inventor derived disclosure. LIMITED Grace Period (One-Year) created by prior first-todisclose disclosure by inventor (defensive publication). 8

9 Limited Pre-Filing Grace Period under AIA LIMITED New Grace Period (One-Year) for Inventor Disclosure Grace period is limited to disclosures by the inventor(s) or by another who obtained the disclosed information from the inventor(s); For disclosures by another, the subject matter of the preapplication disclosure must be the same as the disclosure in the application Even minor differences may remove a disclosure by another from grace period protection, thus allowing the disclosure to be used as prior art against the application. 9

10 Limited Pre-Filing Grace Period under AIA (cont d) To extend the grace period to cover disclosure by another, must be able to prove: - the inventor(s) actually invented the disclosed subject matter; and - the inventor(s) provided enabling communication (direct or indirect) to those who disclosed. - Or show first-to-disclose defensive publication 10

11 Limited Pre-Filing Grace Period (cont d) Authorship determines whether a disclosure is by another : Just one different author on a prior disclosure from those who are named as inventors can change the status from being disclosed by the inventor to being disclosed by another (thus potentially removing the disclosure from the grace period protection if there are minor differences) This may open the prior disclosure to being available as prior art against the patent application. Publication: Authors A, B Patent Application: Inventors A, B or A, B, C Publication: Authors A, B Patent Application: Inventors A or A,D OK (disclosed by inventor) PROBLEMATIC (disclosed by another) 11

12 A publicly discloses A files within 1 year B publicly discloses the same subject matter as in A s publication B s disclosure is not prior art against A s application B publicly discloses an obvious variant of that which is in A s publication B s disclosure may be used as prior art against A s application 12

13 A invents B publicly discloses A files within 1 year identical B s disclosure is not prior art IF A can prove prior invention and communication to B minor differences B s disclosure may be used as prior art against A s application 13

14 Risks of Relying on First-to-Disclose Defensive Publication as a Protection Strategy The ability to obtain a U.S. patent may be compromised when: after the inventor or another makes a disclosure, a U.S. application is not filed within one year; another who obtained the subject matter from the inventor makes a disclosure that is not identical to the subsequently filed application; the authorship of a publication and the inventorship on a subsequently-filed application are different; the inventor is unable to prove inventorship and communication of the innovation to another ; or someone else discloses an obvious variant of the inventor s publication. In most foreign countries, the ability to obtain a patent may be immediately lost for any pre-u.s. filing disclosure. 14

15 Other Changes to 35 U.S.C. 102 and 103 New category of prior art includes otherwise available to the public No geographic restrictions on public disclosures Earlier-filed but later published foreign patent applications have effect as prior art as of the effective filing date The determination of novelty and obviousness is at the time of the effective filing date not at the time of invention 15

16 Good-faith, prior commercial use is a defense to alleged infringement of a patent. Inventors may have the right to ongoing use of undisclosed inventions, even if another entity is granted a patent for the invention. * Only applies to asserted patents issued after Sept. 16, * "Commercial use includes an actual use, such as an internal use, or an arm'slength sale or transfer of an end result of the use. To prevail with a prior use defense, must show: Clear and convincing evidence of good-faith "commercial use more than one year before the patent's effective filing date (or new 102(b)'s public-disclosure date); Independent creation of the invention without derivation from the patentee; Use was in the U.S.; Good faith actions in the use of the invention; and The invention was not abandoned. 16

17 A commercially uses greater than 1 year B files patent application B s patent issues and B sues A for infringement A may successfully assert prior user rights defense, IF A can meet burdens of proof 17

18 Some Additional AIA Changes Preissuance Sumbissions by Third Parties: Third parties may anonymously submit and comment on documents prior to allowance of a patent application. Allows a challenge to another s patent application without fear of retaliation. Enhanced post-grant challenges (Post-Grant Review and Inter partes review): Third parties may request a post-grant review to challenge any claim as unpatentable on the grounds of statutory subject matter, novelty, obviousness, or insufficient/incorrect specification. Supplemental Examination now available to consider, reconsider, or correct information: Any information not considered, inadequately considered, or incorrectly considered during the examination of a patent which is believed by the patent owner to be relevant may be presented to the Office in a supplemental examination. 18

19 REMEMBER Under the AIA, the first inventor to file an application will typically receive the patent, not the first to invent. Disclosures of inventions before filing a patent application can lead to loss of rights, even if no one else files for a patent first. Thus, if at all possible, an application should be filed with USPTO prior to any disclosure (including public sales and public offers for sale). Consider Defensive publication Documenting development of an innovation and communications to other parties is important to be able to meet the burdens of proof for derivation proceedings, establishing disclosure by the inventor or another, and prior use as a defense to alleged infringement. Documenting internal use of processes (commercialization) is important to establish prior use as a defense to alleged infringement. Update employment agreements 19

20 AIA Advice File Early File Early File Early File Early 20

America Invents Act of 2011: First to File Overview. Prof. Robert Merges, UC Berkeley (with help from Prof. John Duffy, Univ. of Va.

America Invents Act of 2011: First to File Overview Prof. Robert Merges, UC Berkeley (with help from Prof. John Duffy, Univ. of Va.) 10.21.2011 Major Substantive Changes Very important major overhaul for