1. Current Strategies for Patent Development Based on New AIA Patent Law November 21, 2012 J. Scott Southworth1

2. Introduction Leahy-Smith America Invents Act (AIA) has gone through several revisions. Effective dates are very important. Enacts a version of first-to-file, but has many other provisions. Provides a step toward harmonization with international patent law. The statute is subject to interpretation & implementation; consult your attorney. November 21, 2012 J. Scott Southworth2

3. Be Careful About Publicizing Your Invention New rules still allow one year to file after any public divulgation. Making a public disclosure can be a problem: ◦ Is it complete? ◦ Is there enough detail? ◦ Is there problematic language? ◦ Not if planning to file internationally Consider a provisional patent application. November 21, 2012 J. Scott Southworth3

4. Make Prior Art Searches A third party can submit prior art (preissuance submissions). Follow good searching practices. Submit prior art versus a competitor. ◦ Set up patent “watch” versus a competitor (e.g., monthly). November 21, 2012 J. Scott Southworth4

5. Maintain Records Keep records of inventive work. ◦ Could be an issue if there is a patent derived from your invention. Keep records of public disclosure, including conferences. November 21, 2012 J. Scott Southworth5

6. File Patent Applications Appropriately File before March 16, 2013. ◦ Provisional patent applications ◦ Utility patent applications ◦ CIPs of existing applications ◦ Continuation applications Be aware of changes to declarations and USPTO forms. Consider Priority Exam (Track 1). November 21, 2012 J. Scott Southworth6

7. Business Method Post Grant Review Transitional program targets business method patents. ◦ Business methods only ◦ Particular post grant review rules Applies in a particular situation where an infringement action has already been raised. November 21, 2012 J. Scott Southworth7

8. Contact Information J. Scott Southworth Attorney at Law Framingham, Massachusetts www.southworthpatent.com Copyright © 2012 J. Scott Southworth November 21, 2012 J. Scott Southworth8