Patent Law

Under the
America Invents Act
Peter J. Timbers, PhD
Patent Attorney
Casper, Wyoming
Schwartz, Bon, Walker & Studer, LLC
 Disclaimer

This presentation is provided for general informational only.

The information is not legal advice for your particular legal needs.

Always, always, always consult with an attorney for specific

related to your specific business and intellectual property
needs.

All images of trademarked, copyrighted, and/or patented

material in this presentation is for informational and
educational purposes only.
 PATENT VARIETIES
Utility Patent Protects inventions. Useful
systems, methods, apparatus and formulations

Design Patent Protects ornamental designs

Plant Patent Protects invented or discovered

and asexually reproduced distinct and new
variety of plant, other than a tuber propagated
plant or a plant found in an uncultivated state.
 PATENT PROCESS
Search Use Wyoming Research Product
Center to search publication databases
Provisional Patent Application ONE year
only must disclose - Enabling
Non-Provisional Patent Application Claims,
Claims, Claims - Enabling
USPTO Rejections a battle
Issuance The WAR
Claims ???
ENABLEMENT
 PRIOR ART ?????
All information that has been available
to the public in any form before a given
date that might be relevant to a patent's
claims of novelty and non-obviousness.
If an invention has been described in the
prior art, a patent on that invention is
not valid.
DISCLOSURE, NOT CLAIMS
 America Invents Act

Conception filing derivation grace period

public use onsale
America Invents Act

March 16, 2013

 America Invents Act
First-to-File

First-to-Invent - novelty and non-obviousness

determining at conception, not filing.

The rest of the world is first to file.

NOW
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.
 Prior Art
Prior art is now the effective filing date of
the application-in-question and dates of
conception and reduction to practice are
no longer relevant.
except for grace period and derivation.
Someone else invented your idea first ???
- Irrelevant , except for:
derivation proceeding; and/or
whether that other party created prior
art. (Prior commercial users will have
limited prior user rights.)
Derivation A derivation proceeding requires that an applicant for patent file
a petition to institute the proceeding. The petition must set
Proceedings forth with particularity the basis for finding that an inventor
named in an earlier application derived the claimed invention
from the petitioner. The petition must be made under oath and
supported by substantial evidence. The petition must be filed
within 1 year of the date of the first publication of a claim to an
invention that is the same or substantially the same as the
earlier applications claim to the invention.

In a petition for a derivation proceeding, the petitioner must (i)

identify which application or patent is disputed; and (ii) provide at
least one affidavit addressing communication of the derived
invention and the lack of authorization for filing the earlier
application.

A derivation may be instituted where the petition sets forth a basis

for finding that the inventor named in an earlier application derived
the claimed invention and there is substantial evidence to support
the allegations raised in the petition. The Patent Trial and Appeal
Board will decide petitions for derivation and conduct any ensuing
derivation proceeding.
 102 (b) Grace Period
Pre-filing disclosures of the claimed invention" by the
patent applicant are not prior art against the inventor
as long as the application is filed within one year.
Despite that "claimed invention" safe-harbor language,
disqualify all inventor-disclosed subject matter, even if
the disclosure only suggests portions of the invention
or motivations behind the invention.
Extreme caution for publish-early strategy - that
publication will likely negate the possibility of non-US
patent rights.
 102 continued
A prior-filed US patent application will continue to
serve as prior art once it is either published or
patented and will have a prior art date of its earliest
priority filing date that includes the relevant disclosure.
Foreign applications will only count as prior art as of
their publication date unless versions of those
applications are filed in the US.
Example: Korean patent application considered prior
art in the US as of its publication date.
However, if a US application is filed that claims priority to
that Korean application then the US application (once it
publishes) is considered prior art as of the date that the
Korean application was filed.
 102 continued
Large companies filing many patent applications receive
additional relief from their own prior art under 102(b)(2)(C)
and 102(c). Basically, a company's prior filed patent
application will not count as prior art (for any reason)
against the company's later-filed application (so long as the
prior application has not published or issued as of the filing
date of the later application).
If the later-filed application was developed as part of a joint
research agreement, then the law will negate the prior art
status of prior filed applications of any of the parties to the
joint research agreement (so long as the prior application(s)
were unpublished as of the filing date of the later
application).
 One year grace period before invention falls into
public domain No rights attached.

Publication prior to filing application:

Patent application filed within one year
Possible foreign patent rights implications
An early public disclosure by the inventor can prevent
a later disclosure or application of another from
barring the patentability of the inventors subsequent
application directed to the earlier-disclosed subject
matter and filed within the grace period.
 Strategic Considerations
Race to the Patent Office to be first to file.
Tension with disclosure requirements in 112, to
provide sufficient enabling description and to
support full breadth of claims
Commonly-owned patents will be exempt as
102(a)(2) prior art
Consider whether to file follow-on applications as
stand-alones (rather than as CIPs) to maximize
patent term
Prior art searching
How to identify worldwide sales and public uses
Laboratory notebook practices
 Public Use & On Sale
On sale and public use activities are claim
elements found from prior art arising from
anywhere in the world.

The USPTO interprets "on sale" activity to be:

1. public sales or
2. public offers for sale.
 AIA Assignee prosecution:
Inventors can assign (e.g. sell or transfer) their patent
rights to a third party entity.

Traditionally these third parties (assignees) could move

the application through the Patent Office with certain
authorizations from the inventor.

Original inventor still identified.

Assignment to a third party, authorizes third party to

take control the application as it moves through the
Patent Office.

Resultant patent issues in the third partys name.

 America Invents Act
Personal infringement defense based on prior use.

The act provides a broader prior use defense, for use in

cases in which a business is using a process or machine as
part of a process, and has been doing so for more than one
year prior to the effective filing date of a patent that would
cover the process or machine.

The defense is personal to the user, and can only be

transferred with the business to which the process or
machine relates.

The defense addresses situations in which private first-

users have been accused of infringement of anothers later-
filed patent, where the non-public first use cannot be used
to invalidate the patent.
 America Invents Act
Post-grant review of patents:

Two separate proceedings are created by the

new law:

The inter partes review permits allegations of

invalidity pertaining to prior art.

The post-grant review permits allegations of

invalidity on any ground in the statute, and must
be filed within nine months of the patents
issuance.
 America Invents Act
Supplemental examination:

Supplemental examination is not a Re-examination.

However, if the Patent Office discovers a substantial new

question of patentability during a supplemental
examination, a re-examination will be ordered using the
current re-examination procedure.

A supplemental examination can be used to cure what

might be inequitable conduct in the original prosecution, if
the previously unconsidered or incorrect information was
considered or corrected in the supplemental examination.
 America Invents Act
Micro Entity Filing fees:

75% Discount on Large Entity Fees

A micro entity
no more than 4 applications, and h
as an income that is less than certain specified
limits.

$250 for filing, examination and search

fees.
 America Invents Act
Prioritized Examination

Technologies important to American

competitiveness

$4,800 fee.
 America Invents Act
Satellite Offices and Pro Bono

Congress requires the USPTO to establish three satellite

offices within three years of the date of enactment
Increase outreach activities, enhance employee retention,
improve recruiting, decrease the application backlog, and
improve examination quality.
Dallas, San Jose, Detroit
Establish pro bono programs for financially under-resourced
inventors and small businesses.
A pilot program in Minnesota was launched in June of
2010 to provide legal services to help such individuals
and businesses obtain solid patent protection.
Thank you!