1. Patent Strategy Under the AIA Washington in the West January 29, 2013

2. Timeline 9/16/2011  Best Mode  Prioritized Exam.  Micro-Entities  Prior User Rights 9/16/2012  Inventor’s Oath or Decl.  3rd Party Subm. of Prior Art  Supplemental Exam.  Post-Grant Review  Inter Partes Review 3/16/2013  First to File System  Derivation Proceedings 9/16/2014  3+ USPTO satellite offices

3. Statutory Framework 102(a)(1) precludes patent if, before applicant’s effective filing date of claimed invention:  patented or described in printed publication, or  in public use, on sale, or otherwise available to public, anywhere 102(a)(2) precludes patent if:  described in US patent or published US application effectively filed before applicant’s effective filing date of claimed invention But 102(b)(1) provides a one year grace period if:  disclosure by inventor or someone who obtained subject matter from inventor, or  pre-filing public disclosure by inventor … before third party disclosure

4. Novelty Defeating Who? Applicant  What? (a) Patent / printed publication, (b) public use, (c) on sale, or (d) make available to public  Where? Anywhere  When? More than one year before applicant’s effective filing date Who? Third Party  What? Same as above  Where? Same as above  When? Before applicant’s effective filing date  More than one year before, or  Less than a year before, unless applicant made pre-filing disclosure first

5. Effect of Foreign Priority Dates  Hilmer Doctrine  foreign priority used as shield against intervening prior art, but not as sword against intervening inventions  New 102(a)(2) and (d)(2) eliminate Hilmer Doctrine  U.S. patents and applications = prior art as of foreign priority date  File EARLY !

6. Before March 16, 2013  File, File, File  Elimination of Hilmer Doctrine post-3/16  Take advantage of current law  Continuations, Divisionals, CIPs* Filing Strategies…

7. After March 16, 2013  Publishing  102(a)(1): defeats rights of others to later patent invention  102(b)(1)(A): preserves discloser’s U.S. patent rights  102(b)(1)(B): insulates discloser from prior art effect of subsequent disclosure by others  BUT  Can defeat foreign rights  Puts invention in hands of competitors  Provisional  Skimpy provisional could be risky

8. In-House Procedures  Filing process  SPEED UP!  Educate inventors  Simplify disclosure process  Accelerate reviews/approvals  Provide extra incentives  Inventors and Law Firms  Early/timely reviews  Inventor oath/declaration/assignments

9. Derivation Proceedings  Pre-3/16/13 priority = Interferences (declared by Director)  3/16/13 and beyond = Derivation  Director institutes after applicant petitions  PTAB hears evidence from parties  May correct naming of inventors  Appeal or civil action if dissatisfied  Inventor records remain crucial

10. Prior User Defense  35 U.S.C. 273 (original)  limited defense to infringement for use of method of doing or conducting business in the U.S. prior to effective filing date  35 U.S.C. 273 (new) (post 9/16/11 grant) – limited defense to infringement  use of process, machine, manufacture, or composition of matter in U.S.  more than one year before effective filing date or public disclosure  Personal/Burden of Proof/Exhaustion/No License/Some Variations

11. Miscellaneous  Patent marking  Third Party Submissions  Post-Grant Review  Inter Partes Review