Recent Developments in Obtaining and Enforcing Intellectual Property Rights in Nanocomposites Michael P. Dilworth February 28, 2012

America Invents Act of 2011 US now a First-Inventor-to-File Country Applies to all applications with a claim having a priority date after 3/16/13 Implementation will be delayed from months New Patent Trial and Appeal Board has been created Definition of Prior Art significantly expanded New PTO procedures have been created: Derivation Proceedings Inter Partes Review – replaces interferences Post Grant Review – new US opposition proceeding Supplemental Examination

F-I-T-F and Prior Art First inventor to file wins Limited one year grace period Implementation delayed for 18 months Hilmer doctrine abolished – applications filed in US deemed to be prior art as of their “earliest effective filing date”, normally the priority date, even if filed outside the US and not in English

Derivation Proceedings Interferences have been eliminated Derivation proceeding must be filed within a year of publication of a claim that is the same or substantially the same as petitioner’s Petition must contain substantial evidence of derivation from the petitioner

Post Grant Review PGR filed within 9 months of grant; applies to patents with filing date of 3/16/13 or after Not a right, must file a petition (decision in 3 months; nonappeable) Identity of petitioner must be revealed Patents can be attacked on all grounds Standard – more likely than not unpatentable Estoppel Final determination in months

Inter Partes Review IPR replaces Inter Partes Reexamination Effective on 9/16/12 Limited to printed patents and publications Petition filed after the later of 9 months of date of grant or termination of PGR Standard – reasonable likelihood that petitioner will prevail No IPR if petitioner already filed a DJ action in court No IPR if more than one year has elapsed from filing complaint for patent infringement Estoppel – cannot later raise issues that were or could have been raised earlier in the IPR (no estoppel effect if parties settle) Final Determination in months

Supplemental Examination Means to introduce information into the record post issuance Anything can be submitted – prior art, prior sales, unpublished information, etc. Shield against Inequitable Conduct attacks PTO to respond in 3 months Might lead to ex parte reexamination

Prior Use Defense Prior commercial use defense now extends to all prior commercial uses (not just business methods) Defendant must prove its prior use – high burden of proof Prior use must be in US and have occurred at least one year prior to filing date of patent Abandonment of prior use will restrict applicability of the defense to pre-abandonment activities only Defense shields the commercial activity only Not a general license Strengthens trade secret rights

Third Party Submission of Prior Art During Prosecution – Any information can be submitted – Must be submitted within 6 months of publication of application or first office action, whichever is later – Rules to be promulgated by Patent & Trademark Office

Key Strategic Considerations File applications promptly Closely monitor third party competitors’ patents Carefully document and record all disclosures to third parties