1. April 26, 2012 Charles. R. Macedo, Esq. Partner AMSTER ROTHSTEIN & EBENSTEIN LLP Intellectual Property Law 90 PARK AVENUE, NEW YORK, NEW YORK 10016 / 212 336 8000 / www.arelaw.com

2. 1 Intellectual Property Law Charles R. Macedo, Partner with Amster, Rothstein and Ebenstein, LLP and author of The Corporate Insider’s Guide to U.S. Patent Practice (published by Oxford University Press). Mr. Macedo advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. Mr. Macedo develops patent strategies intended to prevent infringement challenges from arising in the future. J.D. 1989, Columbia Law School; B.S./M.S., Physics, 1986; former Law Clerk to Hon. Daniel M. Friedman at U.S. Court of Appeals for the Federal Circuit.

3. 2 Agenda

4. 3 One of the most sweeping changes of the Act is to change the U.S. Patent Law from a “first-to- invent” priority system to a “first-to-file” priority system. (See Sec. 3. FIRST INVENTOR TO FILE.).

5. 4 One of the most sweeping changes of the Act is to change the U.S. Patent Law from a “first-to- invent” priority system to a “first-to-file” priority system. (See Sec. 3. FIRST INVENTOR TO FILE.).

6. 5 Under current U.S. Patent Law, as to many categories of prior art, the determination whether a reference is prior art is based on whether the reference pre-dates the date of the patent applicant’s “invention.”(See, e.g., 35 U.S.C. §§ 102(a) & (e)).

7. 6 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless – (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

8. 7 Under current U.S. Patent Law, as to many categories of prior art, the determination whether a reference is prior art is based on whether the reference pre-dates the date of the patent applicant’s “invention.”(See, e.g., 35 U.S.C. §§ 102(a) & (e)). 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless – *** (e) the invention was described in - (1) an application for patent, published *** by another filed in the United States before the invention by the applicant for patent ****

9. 8 SMTWRFS 1234567 891011121314 15161718192021 22232425262728 Conceive Invention

10. 9 SMTWRFS 1234567 891011121314 15161718192021 22232425262728 Conceive Invention Working on making invention Make Invention

11. 10 SMTWRFS 1234567 89 11121314 15161718192021 22232425262728 Conceive Invention Working on making invention Make Invention File Patent Application

12. 11 SMTWRFS 1234567 891011121314 15161718192021 22232425262728 Conceive Invention Working on making invention Make Invention File Patent Application Invention Date

13. 12 Under the Act, the determination of whether a particular reference is prior art will instead be based on whether the reference pre-dates the “effective filing date of the claimed invention.” (See new 35 U.S.C. § 102(a)(1) & (2)).

14. 13 § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or *** Under the Act, the determination of whether a particular reference is prior art will instead be based on whether the reference pre-dates the “effective filing date of the claimed invention.” (See new 35 U.S.C. §102(a)(1) & (2)).

15. 14 § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— *** (2) the claimed invention was described in a patent issued ***, or in an application for patent published ***, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Under the Act, the determination of whether a particular reference is prior art will instead be based on whether the reference pre-dates the “effective filing date of the claimed invention.” (See new 35 U.S.C. §102(a)(1) & (2)).

16. 15 SMTWRFS 1234567 891011121314 15161718192021 22232425262728 Conceive Invention Working on making invention Make Invention File Patent Application Invention Date Filing Date

17. 16

18. 17 Under current U.S. Patent Law, as to many categories of prior art, the determination whether a reference is prior art is based on whether the reference pre-dates the date of the patent applicant’s “invention.”(See, e.g., 35 U.S.C. §§102(a) & (e)). Under the Act, the determination of whether a particular reference is prior art will instead be based on whether the reference pre-dates the “effective filing date of the claimed invention.” (See new 35 U.S.C. § 102(a)(1) & (2)).

19. 18 Section 3 will not become effective until March 16, 2013 (18 months after enactment). This provision will apply only to applications which have an earliest effective filing date after March 16, 2013. (See Sec. 3(n)).

20. 19 Section 3 will not become effective until March 16, 2013 (18 months after enactment). This provision will apply only to applications which have an earliest effective filing date after March 16, 2013. (See Sec. 3(n)).

21. 20 Section 3 will not become effective until March 16, 2013 (18 months after enactment). This provision will apply only to applications which have an earliest effective filing date after March 16, 2013. (See Sec. 3(n)).

22. 21 Implementation of First Inventor to File (n) Effective Date- (1) IN GENERAL- Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time-- (A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

23. 22 Agenda

24. 23 Under current U.S. Patent Law, prior art includes: * Patents anywhere + before invention (35 U.S.C. §§ 102(a)). New definitions of prior art: Types of Prior Art – Issued patent 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless – (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

25. 24 Under current U.S. Patent Law, prior art includes: * Patents anywhere + more than 1 year before first U.S. application date (35 U.S.C. §§ 102 (b)). New definitions of prior art: 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless – *** (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or Types of Prior Art – Issued patent

26. 25 Under the Act, prior art will include: * Patents anywhere + before effective filing date (new 35 U.S.C. §102(a)(1)). New definitions of prior art: § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or *** Types of Prior Art – Issued patent

27. 26 Under current U.S. Patent Law, prior art includes: * Patents anywhere + before invention + more than 1 year before first U.S. application date (35 U.S.C. §§ 102(a) & (b)). New definitions of prior art: Types of Prior Art – Issued patent Under the Act, prior art will include: * Patents anywhere + before earliest effective filing date (new 35 U.S.C. §102(a)(1)).

28. 27 Under current U.S. Patent Law, prior art includes: * Earlier filed U.S. and PCT patent applications (35 U.S.C. §§ 102(e)). Under the Act, prior art will include: * Earlier filed U.S. and PCT patent applications (new 35 U.S.C. §102(a)(2)). New definitions of prior art: Types of Prior Art – Patent applications

29. 28 § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— *** (2) the claimed invention was described in a patent issued ***, or in an application for patent published ***, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. New definitions of prior art: Under the Act, an issued patent or published patent application is prior art as of its effective filing date. (See new 35 U.S.C. §102(a)(1) & (2)). Types of Prior Art – Patents and patent applications

30. 29 PRIOR ART AS OF: December 25, 2007 Issue Date July 27, 2003 Filing Date January 27, 2005 Publication Date

31. 30 PRIOR ART AS OF: December 25, 2007 Issue Date July 27, 2003 Filing Date January 27, 2005 Publication Date

32. 31 PRIOR ART AS OF: January 27, 2005 Publication Date July 27, 2003 Filing Date

33. 32 PRIOR ART AS OF: January 27, 2005 Publication Date July 27, 2003 Filing Date

34. 33 PRIOR ART AS OF: May 26, 2006 Publication Date To extent U.S. is designated July 16, 2004 PCT Filing Date

35. 34 PRIOR ART AS OF: March 3, 2008 Publication And Grant Date (87) International publication number: WO 2003/070456 (28.08.2003 Gazette 2003/35)

36. 35 Under current U.S. Patent Law, prior art includes: * Printed Publications anywhere + before invention (35 U.S.C. §§ 102(a)). New definitions of prior art: 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless – (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or Types of Prior Art – Described in printed publication

37. 36 Under current U.S. Patent Law, prior art includes: * Printed Publications anywhere + more than 1 year before first U.S. application date (35 U.S.C. §§ 102 (b)). New definitions of prior art: 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless – *** (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or Types of Prior Art – Described in printed publication

38. 37 Under the Act, prior art will include: * Printed Publications anywhere + before effective filing date (new 35 U.S.C. §102(a)(1)). New definitions of prior art: § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or *** Types of Prior Art – Described in printed publication

39. 38 Under current U.S. Patent Law, prior art includes: * Printed Publications anywhere + before invention + more than 1 year before first U.S. application date (35 U.S.C. §§ 102(a) & (b)). New definitions of prior art: Types of Prior Art – Described in printed publication Under the Act, prior art will include: * Printed Publications anywhere + before earliest effective filing date (new 35 U.S.C. §102(a)(1)).

40. 39 Key considerations Form of “publication” “Accessibility” Timing

41. 40 Printed Publications can be INDUSTRIAL PUBLICATIONS Magazines Catalogs Brochures User manuals Product description handouts

42. 41 Printed Publications can be INDUSTRIAL PUBLICATIONS Magazines Catalogs Brochures User manuals Product description handouts ACADEMIC PUBLICATIONS Electronic documents Doctorial dissertations Presentations at conferences Abstracts Journal publications

43. 42 Public Accessibility Is A Touchstone of “Printed Publications” “upon a satisfactory showing that it has been disseminated or otherwise made available to the extent that persons interested and of ordinary skill in the subject matter or art, exercising reasonable diligence can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.” In re Wyer, 655 F.2d 221, 226 (CCPA 1981).

44. 43 Cataloging Impacts Accessibility Ph.D. Dissertations of Department John’s Dissertation

45. 44 Limitations on Access Impact Prior Art Status Limiting Access And Placing Confidentiality Restrictions impact prior art status USER NAME: __________ PASSWORD: ___________ USER NAME: __________ PASSWORD: ___________

46. 45 Date Publication Received Is Prior Art Date Received June 10, 2012 Received June 10, 2012 Prior art as of June 10, 2012, when received by Library

47. 46 Presentations when made, depending upon access restrictions

48. 47 Under current U.S. Patent Law, prior art includes: * Prior Public Use in the U.S. + before invention (35 U.S.C. § 102(a)). New definitions of prior art: Types of Prior Art -- Prior public use 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless – (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

49. 48 New definitions of prior art: 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless – *** (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or Under current U.S. Patent Law, prior art includes: * Prior Public Use in the U.S. + more than 1 year before first U.S. application date (35 U.S.C. §§ 102(b)). Types of Prior Art -- Prior public use

50. 49 Under the Act, prior art will include: * Prior public use anywhere + before effective filing date (See new 35 U.S.C. §102(a)(1)). New definitions of prior art: § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or *** Types of Prior Art -- Prior public use

51. 50 Under current U.S. Patent Law, prior art includes: * Prior public use in the U.S. + before invention + more than 1 year before first U.S. application date (See 35 U.S.C. §§ 102(a) & (b)). New definitions of prior art: Types of Prior Art -- Prior public use Under the Act, prior art will include: * Prior public use anywhere + before effective filing date (See new 35 U.S.C. §102(a)(1)).

52. 51 Public Demonstrations

53. 52 Hidden Invention Public Demonstrations Even when the invention is hidden it could potentially be in public use.

54. 53 Laboratories Considerations Are laboratories locked? Is access restricted? Are NDA agreements executed and enforced?

55. 54 Under current U.S. Patent Law, prior art includes: * Prior Public Knowledge in U.S. + before invention (See 35 U.S.C. §§ 102(a)). New definitions of prior art: Types of Prior Art – Prior public knowledge 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless – (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

56. 55 Under the Act, prior art will include: * Otherwise available anywhere + before effective filing date (See new 35 U.S.C. §102(a)(1)). New definitions of prior art: Types of Prior Art – Otherwise available § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or ***

57. 56 Under current U.S. Patent Law, prior art includes: * Prior sale in the U.S. + more than 1 year before first U.S. application date (See 35 U.S.C. § 102(b)). New definitions of prior art: Types of Prior Art – On sale 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless – *** (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

58. 57 Under the Act, prior art will include: * On sale anywhere + before effective filing date (See new 35 U.S.C. §102(a)(1)). New definitions of prior art: Types of Prior Art – On sale § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or ***

59. 58 Under current U.S. Patent Law, prior art includes: * Patents anywhere * Printed Publications anywhere * Prior Use in the U.S. * Prior Public Knowledge in U.S. * Prior sale in the U.S. more than 1 year prior (35 U.S.C. §§ 102(a) & (b)). Under the Act, prior art will include: * Patents anywhere * Printed Publications anywhere * Prior public use anywhere * Otherwise available anywhere * On sale anywhere (new 35 U.S.C. § 102(a)(1)). New definitions of prior art: Types of Prior Art

60. 59 Under current U.S. Patent Law, prior art includes: * Earlier filed U.S. and PCT patent applications (35 U.S.C. §§ 102(e)). Under the Act, prior art will include: * Earlier U.S. and PCT filed patent applications (new 35 U.S.C. § 102(a) (2)). New definitions of prior art: Types of Prior Art

61. 60 Prior Conception, Reduction to Practice and Diligence Is No Longer Prior Art 35 U.S.C. §102 Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

62. 61 Prior Conception, Reduction to Practice and Diligence Is No Longer Prior Art NO MORE 102(g) PRIOR ART 35 U.S.C. §102 Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, orsection 135 section 291section 104 (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

63. 62 Agenda

64. 63 The Act retains a limited one-year “grace period” under the “exceptions” provision for “disclosures” and “public disclosures” made one year or less before the effective filing date of the claimed invention “by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” (new 35 U.S.C. § 102(b)(1)).

65. 64 § 102. Conditions for patentability; novelty (b) EXCEPTIONS.— (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

66. 65 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Mr. X as inventor Publication by Mr. X of ABC

67. 66 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Mr. X as inventor Publication by Mr. X of ABC § 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if—(A) the disclosure was made by the inventor *** Exception to prior art

68. 67 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Publication by Mr. X of ABC

69. 68 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Publication by Mr. X of ABC § 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if—(A) the disclosure was made by the *** joint inventor *** Exception to prior art

70. 69 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X discloses ABC under an NDA to Ms. Z Ms. Z publishes an article disclosing ABC

71. 70 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X discloses ABC under an NDA to Ms. Z Not prior art Ms. Z publishes an article disclosing ABC § 102. (a) A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

72. 71 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X discloses ABC under an NDA to Ms. Z § 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if— (A) the disclosure was made *** by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor Not prior art Ms. Z publishes an article disclosing ABC Exception to prior art

73. 72 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X discloses ABC under an NDA to Ms. Z § 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if— (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Not prior art Ms. Z publishes an article disclosing ABC Exception to prior art Ms. W independently publishes an article disclosing ABC Exception to Prior art

74. 73 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X discloses ABC under an NDA to Ms. Z Not prior art Ms. Z discloses to Ms. W ABC under NDA Still Not prior art § 102. (a) A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

75. 74 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X discloses ABC under an NDA to Ms. Z § 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if— (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Not prior art Ms. Z discloses to Ms. W ABC under NDA Still Not prior art Ms. W publishes an article disclosing ABC Exception to prior art

76. 75 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X discloses AB under an NDA to Ms. Z Ms. Z publishes an article disclosing ABC

77. 76 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X discloses AB under an NDA to Ms. Z Not prior art Ms. Z publishes an article disclosing ABC § 102. (a) A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;

78. 77 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X discloses AB under an NDA to Ms. Z § 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if— (A) the disclosure was made *** by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor Not prior art Ms. Z publishes an article disclosing ABC Exception to prior art?

79. 78 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X publicly discloses ABC Ms. Z publishes an article disclosing ABC

80. 79 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X publicly discloses ABC § 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if— (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Ms. Z publishes an article disclosing ABC Not prior art

81. 80 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X publicly discloses ABC § 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if— (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Ms. Z publishes an article disclosing ABC Not prior art Poor Man’s Provisional

82. 81 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X publicly discloses ABC Ms. Z sells article ABC

83. 82 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X publicly discloses ABC Ms. Z sells article ABC § 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if— (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Not prior art

84. 83 Examples of Application of Exceptions under new 102(b) One year Effective filing date of claim to ABC filed by Messrs. X and Y as co- inventors Mr. X publicly discloses ABC Ms. Z sells article ABC § 102. (b) (1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention *** if— (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Not prior art Prior Art ? Sale = Disclosure ?

85. 84 Major Open Question: What is “a disclosure” / “public disclosure”? –Discussions or information exchanged under NDA? –Written Presentations distributed to audience? –Oral Presentations to audience? –Sale of to be patented item? Capable of reverse engineering? Not capable of reverse engineering?

86. 85 Agenda

87. 86 Replacement of interferences with derivation In addition, the Act has eliminated “interference” practice, which under the current law may be used to determine the priority of invention between two applicants for the same invention based on which applicant invented the subject matter first. Instead, the Act provides for a new “Derivation Proceeding” to prevent an invention from being patented by anyone other than the “first inventor to file.”

88. 87 Replacement of interferences with derivation An applicant may succeed in the derivation proceeding against the owner of another patent or patent application that claims the same invention and has an earlier effective filing date, if he can establish that the invention claimed in the other patent or patent application was derived from the inventor of the later-filed patent application. (See new 35 U.S.C. §135).

89. 88 Replacement of interferences with derivation A petition for a derivation proceeding may be filed “only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.”

90. 89 Replacement of interferences with derivation A petition for a derivation proceeding may be filed “only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.” Considerations: Monitoring publications? What about published applications with new claims? Do you have to monitor pair?

91. 90 Derivation Proceedings (§3)  Derivation proceedings to establish that inventor in earlier application derived invention from inventor in petitioner's application  Must file petition within 1 year of publication of claim that is “the same or substantially same” as claim in earlier application  Derivation determined by Patent Trial and Appeal Board, which may defer action until 3 months after patent directed to claimed invention issues  Parties to proceeding may terminate proceeding by filing agreement to correct inventorship

92. 91 Agenda

93. 92 Unfortunately..... While the PTO has issued some helpful guidance on other parts of the AIA, the PTO has not gotten to this one yet.....

94. 93 Agenda

95. 94 New Law Expanded Scope Hurts TTOs who don’t make products! Available now for any process-oriented technology, not just business methods Prior use must be commercial (internal, arm’s length sale, commercial transfer) Use must be over 1 year before effective filing date Prior user rights cannot invalidate a patent Personal defense only; may not be transferred unless M&A, etc Applies to patents filed on or after September 16, 2011 Old Law Very limited availability Defense could only be asserted for business method patents

96. 95 Agenda

97. 96 Transition Applications Try to convert provisional applications to nonprovisional applications before March 16, 2013 implementation date. For inventions which have been published, but no provisional or nonprovisional applications have been filed, if timely, file provisional or nonprovisional applications after March 16, 2013.

98. 97 Proposed policies for TTOs to implement in advance of March 2013 File early. All public disclosures will become absolute bars to patent unless the disclosure originated “directly or indirectly” from the inventor. No commercial offer of sale should be made until after the patent application has been filed Even confidential disclosures can potentially lead to bars to patent protection after one year

99. 98 Earlier Filed Applications Become More Important Put procedures in place that ensure provisional applications are converted to nonprovisional applications well in advance of the 1 year deadline in order to avoid effective filing date ambiguities.

100. 99 Role of Provisional Applications Best Practices File Provisional Applications before publications Even if you can’t afford a patent attorney, file as a provisional any papers before submitted Follow up on important inventions

101. 100 Controlling public disclosures of the invention Public disclosures can be an offensive weapon. (A poor man’s provisional).

102. 101 Questions? – Please utilize the public chat box located at the lower portion of your screen. – Press “01” on your touch tone phone.

103. 102 Thank You For Attending To purchase this program on: –CD –On demand video –PDF Transcript Please call 877-729-0959 or visit www.technologytransfertactics.com