Patent strategy needs to be reconsidered in light of the coming changes under the AIA. Taking a three-pronged approach is advised by Wes Klimczak.
Despite being in place for only a few months, and while still not fully implemented, the America Invents Act (AIA) has already shown that the patent system needs to be approached in an entirely new way. Patent strategy now requires litigation and prosecution counsel to have a detailed understanding
of how the AIA effects litigation, prosecution and postgrant proceedings.
With the changes implemented across these areas, there is an opportunity to create and preserve shareholder value so long as companies appropriately balance their approach across these disciplines. Accordingly, what this article highlights are some of the factors that practitioners must consider when handling patent matters post-AIA.
It is broken up into three sections:
• post-grant proceedings, and
Each section will address issues that patent strategy decision makers, and those who advise the same, should consider when creating a balanced approach for their
One of the most widely discussed prosecution aspects of the AIA is the first-inventor-to-file system, which will replace the existing first-to-invent system on 16 March 2013. On paper, this is a dramatic shift in how patent rights are determined. From a practical perspective, though, one would hope that this would have little effect on patent prosecution, as filing an application early is generally advisable. While there are certainly exceptions and roadblocks to the preferred process of filing early and often, the new first-inventor-to-file system should, at a minimum, be a disincentive to those who procrastinate.
In addition to the first-inventor-to-file provisions, on 16 March 2013, practitioners will also be operating under multiple versions of 35 U.S.C. § 102: the “old” 102 (a) through (g); and the “new” 102(a)(1) and (2) (describing novelty/prior art) and section 102(b)(1) and (2) (describing exceptions). The “old” 102 still applies to patent applications in which all claims have an effective filing date before 16 March 2013. A thorough understanding of the differences between the “old” and the “new”, and when they apply, is critical to effectively managing the application of prior art. To help illustrate the general differences between them, the tables on the following page are provided.
As can be seen in Table 1, Congress essentially combined old subsections (a), (b), and (d) into new subsection (a)(1). Additionally, old subsection (e) was transposed into new subsection (a)(2) (as illustrated in Table 2). In comparing the novelty aspects of old subsection 102(e) with new subsection 102(a)(2), the change increases the importance of filing early for most patent applicants who seek international protection. Accordingly, patent applicants and their counsel need to shorten the timing for filing applications and ensure that innovators disclose their inventions early.
Furthermore, the exceptions to prior art under the new section 102(b) will impact how patentees organize their patent procurement procedures. The new subsection 102(b)(1) exception of the AIA allows a patentee to consider defensive publications where the patentee is not concerned with foreign filing or maintaining trade secrets on subject matter as to which the patentee does not want to be beaten in the race to the US Patent and Trademark Office (USPTO) under a First to File system.
The new subsection 102(b)(2) exception basically restates the (b)(1) exception in the context of the disclosure of the subject matter appearing in patent applications and patents, removes the one year or less period, and adds to the exception those applications and patents that were owned or subject to an obligation of assignment not later than the effective filing date of the claimed invention. The new section 102(b)(2)(C) exception, which excludes as prior art what was commonly owned or under an obligation of assignment, can be leveraged by companies. For key technologies, a company should monitor competitors, public disclosures, classes, etc to find acquisition targets. If the acquisition is successful, the company could then file its own applications naming its own inventors to distance itself from the acquisition and exploit the technological advancement. As can be seen, litigators and post-grant review practitioners must become intimately familiar with all of the differences between the “old” 102 and the “new” 102 so that they can evaluate whether items are prior art or not.
Another important aspect of the AIA is the ability of third parties to submit prior art for any pending patent application prior to the granting of the patent. The preissuance submission must be timely and provide a description of the asserted relevance of each suggested prior art reference.
Furthermore, the AIA has implemented a new expedited examination program entitled “Track One.” The old accelerated examination program pre-AIA is still retained, but now applicants can decide which program, accelerated or Track One, suits their particular needs. A major benefit of Track One is that, unlike accelerated examination, it does not require an expensive pre-examination search document to illustrate how the claims of an application are allowable over known related art. Similar to accelerated examination, Track One also envisions completion of prosecution within twelve months. As can be seen, Track One allows applicants the ability to quickly develop a patent family around their core technologies by expediting initial patents on those technologies and then filing continuing applications to expand the family. Furthermore, Track One applications can be used to prevent third party submissions via the use of expedited prosecution.
The area of patent practice arguably most affected by the AIA is in the area of post-grant review. The Patent Trial and Appeal Board (PTAB), formerly called the Board of Patent Appeals and Interferences (BPAI), was established by the AIA to review ex parte reexamination appeals and to conduct inter partes reviews and post-grant reviews. All patent practitioners need to familiarize themselves with these practices because they require intimate knowledge of USPTO rules and procedures, and can be used to support litigation.
The AIA left ex parte reexamination effectively unchanged. Inter partes reexamination, though, was eliminated on 16 September 2012 and replaced with inter partes review. An inter partes review can be instituted any time 9 months after the issuance of a patent or, if a post-grant review has been initiated, the date of termination of such post-grant review. However, if you have been sued for patent infringement, an inter partes review must be filed within 1 year of being served the complaint. Inter partes review can be requested based on prior art consisting of patents or printed publications. The threshold standard for initiating an inter partes review is “reasonable likelihood to prevail,” which is stronger than the previous “substantial new question of patentability” standard.
Unlike previous reexamination, petitioners can present similar arguments previously presented to the USPTO. The current civil action estoppel standard of “reasonably could have raised” remains in effect and the civil action estoppel is extended to administrative proceeding before the USPTO. The AIA permits inter partes review on all patents that have issued, eliminating the 1999 filing date limit of inter partes reexaminations. The evidentiary standard for inter partes review is preponderance of the evidence, lower than in district courts. In addition, the petitioner would be barred from seeking or ….click here to subscribe and read the whole article
Wes Klimczak’s practice focuses on trademark and patent issues, including patent litigation, reexamination, appeals, and trademark prosecution for domestic and foreign applicants.
Mr. Klimczak litigates patent cases in federal courts throughout the United States and has appellate experience in various forums, including the Board of Patent Appeals and Interferences, matters on judicial review to various U.S. District Courts, the 10th Circuit U.S. Court of Appeals, and the Federal Circuit Court of Appeals.
Prior to joining the firm, Mr. Klimczak gained experience by representing clients in state and federal administrative hearings, state court, and federal court. Wes had the opportunity to first-chair numerous trials in which successful results were achieved for his clients.
Mr. Klimczak is also currently pursuing his master’s degree in computer science.
Recipient of pro bono public service commendation from the Washington State Bar Association for 2011.
* Patent Prosecution
* U.S. District Court, Western District of Washington
* U.S. Court of Appeals for the 10th Circuit
* University of Oregon School of Law, J.D.
* University of Illinois at Urbana-Champaign, B.S., with honors
* University of Illinois at Springfield, M.S., degree expected 2014-2015
Located in the Silicon Valley, CA office.