Preparing for Changes in the Treatment of US Patents Chinh H. Pham Greenberg Traurig Thomas A. Turano K&L Gates MassMedic March 6, 2008

Response to Judicial holdings Reduced requirements for obviousness Reduced requirements for obviousness Result: Result: May wish to do more extensive searches prior to filing to be prepared for rejections May wish to do more extensive searches prior to filing to be prepared for rejections May wish to review current portfolio in light of the new standard May wish to review current portfolio in light of the new standard May wish to review competitors portfolio in view of new standard May wish to review competitors portfolio in view of new standard

Response to Judicial holdings Increase in limitations on patentable subject matter Increase in limitations on patentable subject matter Result: Result: Need varied claiming strategy (method, apparatus, means plus function) Need varied claiming strategy (method, apparatus, means plus function) If you intend to push the envelope you will need to have conservative claims in place that will survive challenge in the PTO or the courts If you intend to push the envelope you will need to have conservative claims in place that will survive challenge in the PTO or the courts

Response to Judicial holdings Increased difficulty in proving intentional infringement Increased difficulty in proving intentional infringement Result: Result: Need to have a realistic sense of probability of success in proving intentional infringement Need to have a realistic sense of probability of success in proving intentional infringement Need to evaluate actual value of the case without enhanced damages Need to evaluate actual value of the case without enhanced damages

Response to Judicial holdings Increasing limitations on patentability Increasing limitations on patentability Result: Result: Assume software and business method claims will face greater difficulty in being allowed and surviving challenges Assume software and business method claims will face greater difficulty in being allowed and surviving challenges Software and business method should now have at least some claims with the methods coupled to hardware implementation Software and business method should now have at least some claims with the methods coupled to hardware implementation

Response to Judicial holdings Increased freedom to challenge validity and little risk of losing license Increased freedom to challenge validity and little risk of losing license Review existing license agreements to determine susceptibility to challenge validity Review existing license agreements to determine susceptibility to challenge validity Ability to terminate Ability to terminate Designated forum for any validity charge Designated forum for any validity charge Possibility of renegotiation Possibility of renegotiation Costs/risks of litigation Costs/risks of litigation Suggest higher royalty payment Suggest higher royalty payment Suggest up front payment to offset risks of future suit Suggest up front payment to offset risks of future suit

Proposed new PTO regulations Reduced the number of continuations in one family Reduced the number of continuations in one family 2 continuations or continuations-in-part 2 continuations or continuations-in-part 1 RCE 1 RCE Additional continuations or RCEs require petition and showing Additional continuations or RCEs require petition and showing A divisional may be filed if application subject to restriction A divisional may be filed if application subject to restriction Results Results Need to have claiming strategy in place at the start Need to have claiming strategy in place at the start Need not to claim overly broadly Need not to claim overly broadly

New PTO rules continued 5 independent claims and 25 total claims without ESD 5 independent claims and 25 total claims without ESD Applicant may suggest restriction requirement Applicant may suggest restriction requirement Results: Results: Need to have claimed invention as broadly claimed as permitted by prior art Need to have claimed invention as broadly claimed as permitted by prior art May not want to suggest restriction requirement May not want to suggest restriction requirement Potentially asking for restriction acts as admission that claims are patentably distinct Potentially asking for restriction acts as admission that claims are patentably distinct

New PTO rules continued You Should Consider : You Should Consider : File patent applications with an understanding of the new rules to increase your options and flexibility File patent applications with an understanding of the new rules to increase your options and flexibility File patent applications before any public disclosure is made File patent applications before any public disclosure is made Audit patent portfolios to ensure patent strategy adapts to changes in legal landscape and marketplace Audit patent portfolios to ensure patent strategy adapts to changes in legal landscape and marketplace

New PTO rules continued When prosecuting applications, you should: When prosecuting applications, you should: Remember that each family of applications will have a finite life span (two continuations and one RCE). Remember that each family of applications will have a finite life span (two continuations and one RCE). Exercise great care in filing RCEs and/or continuation applications. Exercise great care in filing RCEs and/or continuation applications. Consider filing continuation-in-part applications as stand alone applications. Consider filing continuation-in-part applications as stand alone applications. Consider filing an SRR and an election without traverse to avoid the requirement for an ESD in applications that do not comply with the 5/25 rule. Consider filing an SRR and an election without traverse to avoid the requirement for an ESD in applications that do not comply with the 5/25 rule.

New PTO rules continued When prosecuting applications, you should remember that: When prosecuting applications, you should remember that: Applications directed to similar technology (and having at least one common inventor) may be dispersed amongst a number of law firms. Applications directed to similar technology (and having at least one common inventor) may be dispersed amongst a number of law firms. The different law firms may not be aware of the related applications. The different law firms may not be aware of the related applications. Late disclosure of related applications after a first office action on the merits can result in the issuance of a final rejection. Late disclosure of related applications after a first office action on the merits can result in the issuance of a final rejection. Failure to disclose related applications may result in enforceability issues at a later date. Failure to disclose related applications may result in enforceability issues at a later date.

Significant Changes in the Law According to Senate Bill First to file First to file Removal of interference proceedings Removal of interference proceedings New proceeding available to determine true inventor New proceeding available to determine true inventor Geographic limitations on prior art removed Geographic limitations on prior art removed Result: Result: Need to file sooner than you might have normally Need to file sooner than you might have normally Still need to maintain evidentiary trail of inventorship Still need to maintain evidentiary trail of inventorship Assume there will still be issues as to whether two inventions are the same for the purposes of first to file Assume there will still be issues as to whether two inventions are the same for the purposes of first to file

Legislative Changes continued Application may be filed and prosecuted by assignees Application may be filed and prosecuted by assignees Result: Result: Need to make sure documentation is in place to give you the right to prosecute (e.g. employment agreements) Need to make sure documentation is in place to give you the right to prosecute (e.g. employment agreements) Changes to damages calculations and willful infringement Changes to damages calculations and willful infringement This attempts to codify some of the case law This attempts to codify some of the case law

Legislative Changes continued Post grant review to replace inter partes reexamination Post grant review to replace inter partes reexamination Challenge windows Challenge windows 1 st year post issue no presumption of validity 1 st year post issue no presumption of validity Remainder of patent life Remainder of patent life Results Results Need to place as much relevant prior art before the examiner as possible Need to place as much relevant prior art before the examiner as possible Need to assume that important patents will be faced with challenges during the 1 st window Need to assume that important patents will be faced with challenges during the 1 st window

Legislative Changes continued All patent applications are to be published All patent applications are to be published Third parties may submit information affecting patentability of application after publication Third parties may submit information affecting patentability of application after publication Result Result Preemptive searches should be performed to reduce the amount of material that may be submitted by third parties Preemptive searches should be performed to reduce the amount of material that may be submitted by third parties Should monitor competitors applications to determine if a submission should be made Should monitor competitors applications to determine if a submission should be made

Legislative Changes continued Unintentionally delayed filings may be accepted Unintentionally delayed filings may be accepted Result: Result: Dont rely on this provision Dont rely on this provision Certain patents (Check 21 patents) will result in limited liability to the infringer Certain patents (Check 21 patents) will result in limited liability to the infringer Result: Result: Keep this in mind for your potential infringement,; you too may lobby to change the law Keep this in mind for your potential infringement,; you too may lobby to change the law

Contact Information Chinh H. Pham Greenberg Traurig Phone: Thomas A. Turano K&L Gates Phone: