America Invents Act What to Expect from Patent Reform

2 Patent Reform Finally.

3 Patent Reform Patent Reform Act of 2005 (H.R. 2795) introduced in the 109 th Congress. Patent Reform Act of 2007 (H.R. 1908, S ) introduced in the 110 th Congress. Patent Reform Act of 2009 (S. 515/S. 610/H.R. 1260) introduced in the 111 th Congress.

4 Patent Reform America Invents Act (S. 23,HR 1249) introduced in the 112 th Congress. The most significant change to patent law since 1952.

5 Where Does Congress Stand? March 8, 2011: U.S. Senate Passes America Invents Act (S. 23) by a vote of June 23, 2011: U.S. House of Representatives passes the Leahy-Smith America Invents Act (HR 1249) by a vote of September 8, 2011: Final passage in the Senate.

6 Where Does President Obama Stand? Patent Reform is a key part of President Obamas Winning the Future Agenda. President Obama has repeatedly urged Congress to immediately pass patent reform.

7 Important Parts of Legislation Harmonizing U.S. system with the rest of the world. Increasing USPTOs review of issued patents. Minimizing fee diversion.

8 Harmonization (Sort of)

9 Harmonization First to Invent One Year Grace Period First to File Absolute Novelty United StatesThe World First Inventor to File

10 Harmonization Conception by A Conception by B B Files Application A Files Application First to Invent: A Wins As rights are established by conception and diligent reduction to practice. In order to prevail, A must initiate an interference proceeding before the USPTO.

11 Harmonization Conception by A Conception by B B Files Application A Files Application First to File: B Wins Bs rights are established by filing application with USPTO. Under First to File, no pre-filing activities are considered in establishing rights to the invention.

12 Harmonization Conception by A Conception by B B Files Application A Files Application First Inventor to File: B Wins Bs rights are established by filing application with USPTO. Under First Inventor to File, some pre-filing activities are considered in establishing rights to the invention.

13 Harmonization Conception by BConception by A B Files Application As U.S. rights are preserved by filing within the 1 year grace period. Prior conception irrelevant. Publication by A A Files Application < 1yr. As publication defeats Bs patent rights. A wins in the U.S., but cannot file internationally. First Inventor to File: A Wins

14 First Inventor to File (FITF): Myths FITF represents the most significant change to US patent law. FITF favors large corporations over individual inventors. FITF will reduce patent filings by individual inventors. FITF will reduce patent quality.

15 USPTO Review of Patents

16 Types of Review Supplemental Examination Post Grant Review Inter Partes Review

17 Supplemental Examination Available only to patent owners. Allows patent owners to submit additional prior art to be considered by USPTO. Provides an avenue for patent owners to avoid charge of inequitable conduct.

18 Third party can file for post grant review within 9 months after patent issuance. Challenge may be based upon more than just prior art patents or publications. Standard for granting: more likely than not that at least one claim is unpatentable. Post Grant Review

19 Inter Partes Review Can be filed 9 months after issuance. Must be based upon patents or printed publications. Decision to be made by Patent Trial and Appeal Board.

20 Pre-Issuance Submissions Third parties would be permitted to submit prior art following publication of a patent application. Third party would likewise provide a statement regarding the relevance of the art.

21 Fee Diversion

22 Ending Fee Diversion Source: The USPTO is one of the few government agencies that is funded entirely by user fees.

23 In FY 2010 the USPTO collected approximately 2.1 billion in fees. Of this 2.1 billion, Congress permitted the USPTO to spend about 1.9 billion. The USPTO wants to use excess fees to hire more Examiners and reduce the backlog. The USPTO also wants to have fee setting authority. Minimizing Fee Diversion

24 "Three Track" Initiative Track One: –First Office Action within 4 months –Final Disposition within 12 months –High Filing Fee Track Two: –First Office Action 10 months –Final Disposition within 20 months Track Three: –Would permit applicants to defer examination for up to 30 months.

Thank you. Michael J. Colitz, III