Aia update2 wbp

AIA Update – Final Rules,
Sept. 16, 2012

Presented by:
Jerry Selinger and Bruce Patterson

California  Texas  New Jersey  North Carolina

TABLE OF CONTENTS
 Prosecution
 Oath and Declaration
 Public Submissions
 Third-Party Submission
 Citation of Prior Art and Written Statements
 Disciplinary Proceedings
 Reviewing/Challenging Issued Patents
 Post Grant Review
 Inter Partes Review
 Supplemental Examination

Attorney Client Privilege/Attorney Work Product 2

Effective Dates Summary
Day of Enactment 10 Days 60 Days 12 Months 18 Months
Sept 16, 2011
Sept 26, 2011 Nov 15, 2011 Sept 16, 2012 Mar 16, 2013
Reexamination transition to Prioritized Exam Electronic filing Inventor’s oath/declaration First to file
“reasonable likelihood of incentive
prevailing”
Best mode 15% surcharge TP submission of PA for New 102
patent application
Prior commercial use Supplemental examination Amended 103
defense (patents filed before, on, or
after Sept 16, 2012)
Citation of prior art in a patent Derivation
file (104)
Virtual and false marking Priority examination for Repeal of
important technologies Statutory
Invention
Registration
Venue from DDC (sec 9) Inter partes review (IPR)

Fee setting authority Post grant review (PGR)

Tax strategies deemed prior art Transition PGR for covered
business method


Prosecution - Oath and Declaration
 Oath/Declaration rules apply to applications filed on or after September 16,
2012
 35 U.S.C. 118 has been amended to allow a person, to whom the inventor
has assigned, is under an obligation to assign, or shows sufficient
proprietary interest in the invention, to file an application for patent. See
final rule 37 CFR 1.63(e) and 37 CFR 1.64
 35 U.S.C. 115 has been amended to detail the oath/declaration
requirements, and spell out:
 Required statements and information
 Requirements for use of Substitute Statements and Assignments in lieu of an
inventors oath or declaration
 Time for filing
 Ability to correct
 Acknowledgement that any willful false statements are punishable under Section
1001 of Title 18
 See final rule 37 CFR 1.63


35 U.S.C. 115 - Content
 Required Statements
 the application was made or was authorized
to be made by the affiant or declarant – 37 CFR
§1.63(a)
 such individual believes himself or herself to
be the original inventor or an original joint
inventor of a claimed invention in the
application - 37 CFR §1.63(a)
 acknowledgement that any willful false
statements are punishable under Section
1001 of Title 18 37 CFR §1.63(g)

 Required Information:
 Inventors legal name, residence, inventors mailing
address, identification of application (may be provided
in Application Data Sheet) – 37 CFR §1.63(a) – (b)
 Other Requirements;
 Declarant has reviewed and understands the contents
of the application, including the claims – 37 CFR §1.63(c)
 Declarant is aware of the duty to disclose to the Office
all information known to the person to be material to
patentability as defined in §1.56 – 37 CFR §1.63(c)


 Eliminated Requirements
 Names of all inventors (if provided in Application Data Sheet –
a.k.a. ADS)
 Identification of citizenship
 That inventor believes to be “first” inventor
 Foreign priority claim (must be provided in ADS)
 Explicit statement regarding “acknowledge duty of
disclosure” and “reviewed/understands content of
application” (but inventor is still required to be aware)


35 U.S.C. 115 – Substitute Statement

 Substitute Statement may serve as oath/declaration – 37 CFR
§1.64(a)
 Inventor is deceased or legally incapacitated
 Inventor cannot be found/reached after diligent effort
 Inventor refuses to execute oath/declaration

 Substitute Statement content – 37 CFR §1.64(b)
 Comply with 37 CFR §1.63(a)
 Identify inventor by legal name and last known mailing address
 Identify person executing substitute statement and relationship to
inventor; and
 Identify basis for substitute statement
 Proof no longer required to show diligent effort



 Substitute Statement Requirements – 37 CFR §1.64(b), (c) and (e)
 the application was made or was authorized to be made by the
affiant or declarant – 37 CFR §1.63(a)
 such individual, based on belief and facts, that the inventor to be
the original inventor or an original joint inventor of a claimed
invention in the application – 37 CFR §1.63(a)
 An acknowledgement that any willful false statements are
punishable under Section 1001 of Title 18 - 37 CFR §1.64(e)
 Other Requirements – 37 CFR §1.64(c)
 Person making the Statement has reviewed and understands the
contents of the application, including the claims
 Person making the Statement is aware of the duty to disclose to
the Office all information known to the person to be material to
patentability as defined in §1.56

 Substitute Statement can be made by
 Assignee or person to which inventors are under an
obligation to assign
 documentary evidence of ownership (e.g., assignment for an
assignee, employment agreement for an obligated assignee)
should be recorded as no later than the date the issue fee is
paid in the application – 37 CFR §1.46(b)
 Person who shows sufficient proprietary interest in
the invention
 Must petition to evidence sufficient proprietary interest and
provide a statement that action is appropriate to preserve the
rights of the parties – 37 CFR §1.46(b)
 A discussion of the evidence necessary for a showing that a
person has sufficient proprietary interest in the matter is set
forth in MPEP Sec. 409.03(f)

35 U.S.C. 115 – Substitute Statements
Corrections
 Substitute Statements may be corrected at any time


35 U.S.C. 115 – Assignment in lieu of Oath
 Assignment may serve as oath/declaration – 37 CFR §1.63(e)
 Assignment content
 Must include information and statements required for oath/declaration
per 37 CFR 1.63(a-b) (information may be on Application Data Sheet)
 Must be recorded with Patent Office
 Assignment Coversheet has a check box which will automatically place
a copy of the Assignment in the PAIR record to satisfy declaration
requirements (SEE NEXT SLIDE)
 Surcharge required if Assignment not filed on same day as
application
 CAUTION – Assignment for a provisional application will not comply
with declaration statement requirements for the non-provisional
application


35 U.S.C. 115 – Assignment in lieu of Oath
 EPAS “Check Box” to indicate assignment to be
used in lieu of oath


35 U.S.C. 115 – Timing
 Oath/declaration requirements may be fulfilled any time
prior to the application being in condition for allowance
 Fulfilled by filing Declaration from inventors, filing a Substitute
Statement or recording an assignment in lieu of Declaration
 Proposed Rule (August 29, 2012) proposes a fee of $1000 to
correct inventorship if Declaration filed after FOAM
 Filing a signed Application Data Sheet containing
inventors names and mailing address will fulfill filing
requirements and avoid Missing Parts
 Signed Application Data Sheet does not fulfill oath/declaration
requirements, oath/declaration still must be filed in the time
period described above
 Surcharge still required if Oath/declaration requirements are not
submitted at time of filing


Application Data Sheet - Changes
 May indentify a different Applicant than the
Inventor (e.g., assignee)
 Required to recite priority claims to all foreign
and domestic applications
 Utilized to provide information otherwise
required in oath or declaration
 Allows corrections by filing subsequent
Application Data Sheets
 Must be signed to avoid issuance of Notice of
Missing Parts
 Even if oath, declaration or assignment is not filed


Application Data Sheet – Timing
 If not signed with filing of application, treated as
transmittal letter
 If signed at time of filing of the application, and
even if accompanied by declaration, ADS sets
inventorship
 Inventorship must be corrected per 37 CFR 1.48 if
inventorship in later filed declaration is different


Best Practices - Forms
 Use AIA/080 to assign POA in applications where the
inventors are the applicants but are not the owners
 37 CFR 3.73(c) statement is required with AIA/080
 Older SB/080 refers to 37 CFR 3.73(b)
FORM DECISION CHART


Best Practices - Declarations
 Update Declaration Forms
 Caution – Out of date forms will not satisfy oath/declaration
requirements for applications filed on or after September 16,
2012
 PCT filings should not inadvertently designate inventors as the
“Applicants for the United States Only” – beware out of date
forms!
 File new dec for any continuing applications claiming
benefit to filing dates before Sept. 16, 2012 (where no
new AIA approved dec has been filed in the chain)
 The PCT filing date, not National Stage Entry, decides if
the application was filed before Sept. 16, 2012
 Caution – Beware by-pass continuations!


Best Practices - Declarations
 File new dec for non-provisionals claiming priority to
provisions, regardless of filing date of provisional
 Utilize assignment in lieu of declarations
 minimizes paperwork and increases efficiency
 reduces burden on inventors and corporate administrators
 Satisfy Oath/Declaration requirements early
 Avoid potential government fees for filing after First Action


Best Practices - ADS
 To sign or Not to sign?
 If inventorship is certain, file signed ADS
 Prevents issuance of Notice of Missing Parts for applications filed without
meeting inventors oath/declaration requirements
 Allows for efficient correction of potential errors
 Ensures that priority claims are properly made and accepted
 Simplifies PCT filings and filing of power of attorney
 If inventorship is uncertain, consider filing with unsigned ADS
(not recommended in most cases)
 Avoids setting inventorship and, thus, Rule 48 paperwork
 Will get Notice of Missing Parts

 Always file ADS when utilizing an assignment in lieu of
declaration
 Provides inventor information not present on assignment
 Identify assignee as the Applicant

Best Practices - Assignments
 Assignments include only the required statements
 Application made or authorized to be made by the declarant
 Believes him/herself to be original inventor
 Acknowledges that willful false statements are punishable
 Cover includes other scienter requirements
 Has reviewed and understands
 Declarant is aware of the duty to disclose


Best Practices - Assignments
 Record assignment the same day as filing
 Avoids surcharge
 Record Assignments of Provisional Applications
 Provides evidence of ownership should a Substitute Statement
be necessary at non-provisional filing
 Eliminates potential priority claim problems particularly in China
in subsequently filed foreign applications
 Caution – Provisional Assignment likely will not satisfy non-
provisional oath/declaration requirements


Best Practices - POA

 File separate Power of Attorney provided by Applicant
 Use of a general power of attorney to the customer number by
Applicant will reduce administrative burden on Applicant


Preissuance Submissions by 3rd Parties
 Statutory Sections: 35 U.S.C. § 122(e) and 37 CFR §
1.290
 Effective Date: effective one year after enactment
(9/16/12) and applies to any patent application filed before,
on, or after the effective date.
 Submission of any printed publication, patent or otherwise,
is permitted
 Time Period for Submission:
 Deadline is the earlier of:
 Date of the notice of allowance; or
 The later of:
 Six months from date of publication; or
 Date of first rejection under Section 132 (excludes
requirements or objections)


Preissuance Submissions – Highlights
 Submission:
 May be made in any non-provisional application or
continuing application
 No preissuance submissions in reissue or
reexamination proceedings.
 Preissuance submissions can be submitted even if
application is abandoned
 Notice to Applicants
 To receive notice of complaint preissuance submission,
Applicant must participate in e-Office Action program
 Notification provided via email


 Submission (cont.)
 Third Party
 Rule permits the Third Party to remain anonymous
 How to Submit

 May be submitted by first class mail, express mail, by
hand, or Web-based interface
 37 CFR 1.8 amended to state that preissuance
submissions receive no benefit of a certificate of mailing
or transmission
 Faxed submissions are not permitted (37 CFR 1.6(d)(3))


 Submission (cont.)
 Third Party (cont.)
 Issues of Non-compliance
 Submissions are not added to the file wrapper until
reviewed for compliance
 No refund for non-compliant submissions
 No amendment allowed to correct non-compliant
submissions; must refile
 Must provide email address to receive notice of non-
compliance
 No tolling if submission is improper
 No set time period for filing corrected submission
 Requires a statement that you are not under a duty of
disclosure


 Concise Explanation
 Unlike previous preissuance submission rules,
requires a concise explanation of each document’s
relevance
 The concise explanation should set forth facts,
explaining how an item listed is of potential relevance
to the examination to the application
 Specific examples include (i) a claim chart, (ii) a
narrative description, or (iii) citations to pages or lines
of the respective documents
 Different from 37 CFR § 1.291 (a protest) which
allows for arguments against patentability


 Treatment of Preissuance Submissions
 Submissions and concise statement treated like an IDS
 Applicants are not required to file a separate IDS to have the references
considered
 Third Parties cannot respond to Examiner’s treatment of submissions
 Preissuance submissions are printed on the patent and designated as
such
 Cost
 Free if three or fewer documents are submitted and the third party
attests that the submission is the first and only submission for a given
application
 $180 (37 CFR 17(p)) for ten or few references, regardless of the
number of submissions from the same third party
 $380 fee for more than ten but twenty or fewer references, regardless of
the number of submissions from the same third party


Preissuance Submissions – Rule Status
37 CFR § 1.290 37 CFR § 1.99 37 CFR § 1.291 37 CFR § 1.292
Title Submissions by 3rd Party Protest by Public Use
3rd Parties Submission Public Proceeding
Status New Repealed In Force Repealed
Function The new rule Subsumed by •Permits a third •Permits a
implementing new rule 1.290. party to file a petition that
35 USC protest detailing shows an
1.22(e). facts that would application had
make the grant been in public
of a patent on use or on sale
the application more than one
improper year before the
•In contrast to filing date.
rule 1.290, does • Repealed
allow because post-
submission in grant review
reissue permits this
applications. issue to be
raised


Citation of Prior Art and Written Statements
 Amendments contained in Section 6(g) of AIA
 Amends 35 U.S.C. § 301, which formerly read:
 Any person at any time may cite to the Office in writing prior art
consisting of patents or printed publications which that person
believes to have a bearing on the patentability of any claim of a
particular patent. If the person explains in writing the pertinency
and manner of applying such prior art to at least one claim of the
patent, the citation of such prior art and the explanation thereof
will become a part of the official file of the patent. At the written
request of the person citing the prior art, his or her identity will be
excluded from the patent file and kept confidential.
 Implemented by 37 C.F.R. § 1.501.


 Any person may still file prior art
 Any person may now also file “statements of the
patent owner filed by the patent owner in [court or the
USPTO] in which the patent owner took a position on
the scope of any claim . . . .”
 Must indicate:
 Forum and proceeding in which statement was made
 In which documents the statement was made
 How each statement relates to the scope of the claims
 Must be accompanied by records from proceeding in which
the statement was made
 Must include an explanation of the pertinence of the
statements to the claims of the patent in order for the
statement to be included in the patent record


 Reexamination pending?
 Submissions by patent owner or ex parte or inter partes re
exam requesters will be entered into the re-exam file
 Submissions by others after orders for reexamination will
only be entered in the patent file after the termination of the
reexamination
 Patentee must be served
 Without certificate of service, submission will not be entered
into patent file
 May be submitted anonymously
 Change from previous provision, which provided that
submitters should request that their name be excluded from
the record.


Office Disciplinary Proceedings - Statute of
Limitations Provisions
 Statutory Sections: 35 U.S.C. 32, 37 CFR Part 11
 Effective Date: August 30, 2012
 Deadline for filing a complaint:
 Within 1 year after the date on which the OED
Director receives a grievance forming the basis of the
complaint
 In no event more than 10 years after the date on
which the misconduct forming the basis for the
proceeding occurred


Office Disciplinary Proceedings - Statute of
Limitations Provisions
 Grievance – A written submission from any
source received by the OED Director that
presents possible grounds for discipline of a
specified practitioner
 Tolling agreement – The 1 year period for filing a
complaint shall be tolled if the involved
practitioner and the OED Director agree in
writing to such tolling


Post Grant Review
 Effective Date:
 Transitional Post Grant Review
 Begins September 16, 2012, for entity who has been threatened or sued.
 Limited to questions of patentability of claims in a covered business
method patent
 A patent that claims a method or corresponding apparatus for performing data
processing or other operations used in the practice, administration or management of a
financial product or service, except patents for technological inventions are excluded

 Post Grant Review - Applies to patents issuing from applications subject to the
first-inventor-to-file provision of the AIA
 which does not even become effective until March 16, 2013.

 Post Grant Review
 Anyone not the owner of a patent may file a petition for post-grant review,
unless that person has previously filed a declaratory judgment action.
 The petition requests that one or more claims be cancelled as unpatentable
on any ground that could be raised under paragraph (2) or (3) of section
282(b) of Title 35
 A PGR petition may only be filed up to 9 months after the date of the patent
grant or the issuance of a reissue patent.


Post Grant Review
 The PTO fee begins at $35,800.
 The PGR petition must, in pertinent part:
 Identity all real parties in interest.
 Identify each claim challenged, the grounds for the challenge, and the
evidence that supports the challenge, to each claim.
 Certify that petitioner is not estopped from requesting a post-grant review
for the challenged claims, as opposed to the patent.
 The PRG petition will be granted if
 the information demonstrates that “it is more likely than not” that at least
one of the claims challenged in the petition is unpatentable, or
 a novel or unsettled legal question is presented.


Post Grant Review
 The final determination is due within one year after the date
on which the PGR proceeding starts, except, for good cause
shown, the period may be extended by up to six months.
 The one year period may also be adjusted in the case of joinder.
 The patent owner may file one motion to amend to:
 propose a reasonable number of substitute claims for each challenged
claim. What is reasonable will be determined in litigation.
 The petitioner has the burden of proving unpatentability by a
preponderance of the evidence, with claims construed under
“broadest reasonable interpretation” standard


Post Grant Review

 If petitioner files civil action after filing the petition the district
court must automatically stay the action.
 Unless the patent owner moves that the stay be lifted, files a lawsuit, or
files a counterclaim asserting infringement.
 A district must decide a patentee’s motion for preliminary
injunction in an infringement suit brought within three months
after the patent issues.
 Estoppel provisions
 One real bite on a claim in the PTO (“reasonably could have brought”).
 Estoppel in civil litigation or before the ITC from asserting any ground
that was raised or could have been raised during post grant review.


The Transition from IP Re-Exam to IP Review
 The standard has changed in theory
 Requests for Inter Partes Re-examination filed before September 16, 2011 were
decided based upon whether a substantial new question (SNQ) of patentability
exists.
 Inter Partes Re-examination requests filed on or after September 16, 2011, but
before September 16, 2012, were, and will be, decided based upon a
“reasonable likelihood of success” standard.
 As of September 16, 2012, the PTO will only accept Inter Partes Review
requests. The threshold for granting an IPR petition is a “reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims challenged
in the petition.”
 Do the nuances in standard really matter??
 Cannot be filed until the later of:
 Nine months after the grant of the patent/issuance of a reissue;
or the date of termination of a post grant review.


Inter Partes Review
 Cost – $27,200 for the first 20 claims challenged in any
patent. That does not include attorney fees.
 One petition per patent. Multi-patent, multiple claim disputes can become
expensive quickly – even with subject matter overlap.
 Petition for review is limited to patents or printed publications,
and limited to non-patentability under §§ 102 or 103.
 But not limited to new art.
 The patent owner may file one motion to amend the patent by:
 For each challenged claim, proposing a “reasonable number” of substitute
claims. “Reasonable” will be defined through case law.
 Petitioner need only prove non-patentability by preponderance of
the evidence, under “broadest reasonable interpretation” claim
construction rule.
 Double standard for IPR invalidity and district court infringement


Inter Partes Review
 The petition for Inter Partes Review must include, inter alia:
 The identity of the real party in interest
 The grounds on which the challenge to each claim is made, and the grounds
must be presented in writing with particularity.
 Any affidavits or declarations of supporting evidence or opinions
 Everything must be provided to the patent owner.
 An Inter Partes Review may not be instituted if
 the petitioner or real party in interest filed a civil action challenging the validity
of the patent before filing the petition or
 the petition is filed more than one year after the petitioner, real party in interest
or privy of the petitioner is served with a complaint alleging infringement.
 No automatic stay of litigation instituted by patent owner


Inter Partes Review
 If the petitioner or real party in interest files a civil suit
challenging the validity of the patent after filing the petition,
the civil action is automatically stayed until:
 The patent owner moves the court to lift the stay; or
 The patent owner files a civil action or counterclaim alleging the
petitioner or real party of interest has infringed the patent; or
 The petitioner or real party in interest moves to dismiss the civil action.
 A counterclaim challenging the validity of a claim of the patent does
not constitute such a civil action.
 Once the PTAB issues a final written decision, collateral estoppel
attaches against the petitioner, the real party in interest and any
privy of the petitioner
 Bars attacking a claim on any ground raised or which reasonably could
have been raised in a new IPR petition, a civil action, or before the ITC.


Supplemental Examination
 Effective September 16, 2012
 A patent owner may request supplemental examination of a patent to consider,
reconsider, or correct information believed to be relevant to the patent.
 The PTO conducts the supplemental examination within 3 months of receiving
the request, and, if one or more substantial new questions of patentability are
found, then ex parte re-examination of the patent is ordered
 Interviews and amendments are prohibited during supplemental examination
 A patent shall not be held unenforceable on the basis of conduct relating to
information that (1) had not been considered, (2) was inadequately considered,
or (3) was incorrect in a prior examination of the patent if the information was
considered, reconsidered, or corrected during a supplemental examination of the
patent
 This can be used during the period of enforceability of the patent
(i.e., up to 6 years after expiration of the patent).


Section 12 – Supplemental Examination
 The contents of a request must include:
 (1) A list of each item of information:
 “Information” is not limited to patents and printed publications and may
include, for example, issues of patentability under § 101 and § 112, or
transcripts of audio or video recordings;
 Limited to 12 “items” of information per request, but more than one request
may be filed concurrently;
 (2) an identification of each claim of the patent for which supplemental
examination is requested;
 (3) a separate explanation of the relevance and manner of applying each item of
information to each claim of the patent for which it was identified; and
 (4) a summary of the relevant portions of any submitted document, other than
the request, that is over fifty pages in length.


Section 12 – Supplemental Examination
 Major Fees:
 (1) $5,140.00 for the request for supplemental examination;
 (2) $16,120.00 for an ex parte reexamination ordered as a result of a
supplemental examination proceeding; but
 The $16,120.00 will be refunded if no substantial new questions of
patentability are discovered during supplemental examination


Patterson & Sheridan, LLP

Jerry Selinger
jselinger@pattersonsheridan.com

Bruce Patterson
bpatterson@pattersonsheridan.com

47

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