Recent Changes in the US Patent System Affecting Engineers Peter D. Mlynek, MBA, PhD, Esq May 1

Overview of this presentation Overview of patent system Overview of the new patent law How it effects you

New Patent Law: America Invents Act Biggest change to the Patent Law since 1952 Signed into law on September 16, 2011 – Rolling out over 18 months Many different changes – This presentation concentrates on the most relevant to this audience, and not necessarily the most legally important changes

Given Reasons for America Invents Act Improve quality of patents Harmonization with other patent systems Increase certainty in litigation Update in view of court holdings, technology

What is a Patent? Full Disclosure of an Invention Exclusive Right

Exclusive Right to… Competitors

What is a Patent? A tool to make money Marketing Tool Monopolistic Tool Capital Raising Tool Cross Licensing Tool

How Much to Get a U.S. Patent?

Process of Getting a Patent Conception Reduction to Practice Draft Prosecution Licensing Application PTO

Why so much to get a patent?

How Can We Get a Patent Cheaper? Pay less for patent lawyer Pay less to the USPTO

How Can We Get a Patent Cheaper? Pay less for the Patent Lawyer Reality: There are no economies of scale! - A patent for a small company costs just as much as for a large company Have all necessary information for lawyer ready - Business plan, marketing, etc. - Experimental data, procedures, etc. Smaller law firm – big firms charge big bucks Flat fee

How Can We Get a Patent Cheaper? Discounts at the US Patent Office Big Businesses Regular Price for USPTO fees Individual Inventors AND Universities “Micro Entity” Small Businesses “Small Entity” –50% –75% + Introduced by AIA

Speaking of Patent Office Fees… PTO $ Historically …, but the Congress sets the fees PTO can set their fees as it sees fit! Result: DRASTIC fee price increases Introduced by AIA Recently

Requirements to Obtain a Patent UsefulDescribed New Not Obvious

Requirements to Obtain a Patent Questions about patentability with respect to usefulness come up in - Biological technology - Computer programs - Finance AIA: Tax strategies are no longer patentable; Human organism is not patentable Useful Generally, a low hurdle to overcome in cases of electrical engineering and computer hardware inventions.

Requirements to Obtain a Patent Described The patent applicant must describe the invention in order to get rights to it -Description -Enablement -Best Mode AIA: Best mode needs to be in the patent, but if it is not there, the patent is still OK Unique to the US Still need to put Best Mode into the application.

Requirements to Obtain a Patent New If it is not new, then it is not patentable. If some else has a patent on it, then it is not patentable. The AIA rewrote the entire law on this requirement.

Requirements to Obtain a Patent Is the invention obvious over what is known? The MOST difficult of the 4 requirements – 60-80% of attorney’s time during prosecution Mostly unchanged by AIA Not Obvious

Comparison of Patent Systems First to File First inventor Patent Office Whoever invents first, generally wins the patent Cancelled by AIA

Treatment of Disclosures First to File First inventor NEW First Inventor to File Publications prior to filing are held against the filer Publications > 1yr before filing are held against the filer Publications by others prior to filing, and own publications > 1yr before filing, are held against the filer Publications OLD

Treatment of Disclosures 5/2014 5/2013 Application Filed Disclosure of Invention NEW Disclosure is prior art, no patent Scenario 1 OLD

Treatment of Disclosures 5/2014 5/2013 Application Filed Disclosure by Filer NEW Disclosure is prior art, no patent Disclosure is not prior art Scenario 2 OLD

Treatment of Disclosures 5/2014 5/2013 Application Filed Disclosure by Another NEW Disclosure is prior art, no patent Disclosure is not prior art Disclosure is prior art, no patent Scenario 3 OLD

Treatment of Disclosures 5/2014 5/2013 Application Filed Disclosure by Another NEW Disclosure is prior art, no patent Disclosure is not prior art Disclosure by Filer Disclosure is not prior art Scenario 4 OLD

Treatment of Competing Filings A files an application B files an application NEW A wins First inventor wins But not everything is lost for B ! 3 strategies for B Scenario 5 OLD

Treatment of Competing Filings A files an application B files an application NEW A wins B A First inventor wins Scenario 5 OLD

Treatment of Competing Filings A files an application B files an application NEW First inventor wins B wins if A derived the invention from B Scenario 5 OLD

Treatment of Competing Filings A files an application B files an application NEW First inventor wins 5/20145/2013 Disclosure by B B wins Disclosure is prior art, no patent for anyone Scenario 5 OLD

Recommendations File a patent application before any public disclosure to prevent loss of rights outside US Publish frequently and often if non-US rights are not important Keep track of competitors File patent applications early and often

Additional Changes Changes in Third Party submissions during pendency of the application New: Supplemental Examination by the patent owner New: Post Grant Review Patent pendingPatent in force Within the PTO Federal Courts More $$$

Additional Changes Changes in Third Party submissions during pendency of the application New: Supplemental Examination by the patent owner New: Post Grant Review Patent pendingPatent in force Recommendation: Keep track of competitor’s applications and patents in view of disclosures. Within the PTO Federal Courts More $$$

Additional Changes: Patent Markings Competitors US Pat.

Additional Changes: Patent Markings Competitors US Pat. Unlawful restriction of trade if products are marked as patented, but there is no valid patent Deceptive, anti-competitive

Additional Changes: Patent Markings Old law: Anyone can sue ($500/mismarked item) and split it 1:1 with the government US Pat. Deceptive, anti-competitive $$$

Additional Changes: Patent Markings Old law: Anyone can sue ($500/mismarked item) and split it 1:1 with the government AIA: only those who are hurt can sue for compensatory damages, plus U.S. gov’t US Pat. $ 10,800,000,000, Restricted by AIA

Additional Changes: Virtual Patent Markings Old: “Pat.” and numbers – Dozens or hundreds may be listed New: “Pat.” and URL

Filings by Assignee An employer now can easier file a patent application on behalf of an employee inventor, or an ex-employee inventor

Peter D. Mlynek, Ph.D., MBA, Esq