USPTO Swamped With Applications As Inventors Try To Avoid AIA Changes

On March 16, 2012, some of the most significant aspects of the Leahy-Smith America Invents Act ("AIA") came into effect. These include converting the U.S. from a first-to-invent to a first-to-file priority system and potentially expanding definitions of prior art. Under the AIA, these changes, found in the new versions of 35 U.S.C. § 102, apply to applications with an effective filing date on or after March 16. The provisions also apply to applications filed after March 16 claiming priority to an earlier filed application, if those applications ever included a claim that relies for support on an application filed on or after March 16. Hoping to secure advantageous treatment under the pre-AIA rules, many applicants opted to file at least a provisional application before March 16. Today's data from the USPTO patent dashboard illustrates the huge spike in applications prior to March 16:

The upper line is non-RCE serialized applications and the lower line is provisional applications. Both show filings at more than ten times the normal volume.

AIA seminar on patent litigation comes to London

Law firm Pinsent Masons is hosting a free seminar at which US patent attorney Edward D. Manzo will be giving a presentation on the AIA.  Edward is the author of the recently-published The America Invents Act: A Guide to Patent Litigation and Patent Procedure--which quite fortuitously happens to be the title of the seminar.  PatLit would have offered a link to the book, but ten minutes online failed to uncover a link to it, even on the publishers' website.

Details of this event, which is free and open to all comers, are as follows:

The America Invents Act: A Guide to Patent Litigation and Patent Procedure  

Monday 25 February 2013 

Pinsent Masons is hosting an evening seminar on Monday 25th February. The seminar will explore the most significant changes brought about by the America Invents Act and will have plenty of opportunity to discuss the implications of these changes and draw comparisons with how things are likely to change in Europe in the not to distant future. All welcome! Please click on the link below to register. 

The seminar will be given by Edward D. Manzo, partner at US firm Husch Blackwell LLP, practicing in IP litigation, client counselling and IP portfolio development, will discuss the most significant changes brought about by the AIA. Edward is a renowned IP specialist lawyer in the US, and provides expert analysis on the AIA in his recently published book ‘The America Invents Act: A Guide to Patent Litigation and Patent Procedure’.

Key topics for discussion will include:

• What difference will “first to file” really make?
• How will the new and various post grant procedures change the landscape for the recipients of U.S. patents?

At a time when we are dealing with the prospect of significant change to the patent landscape in Europe, we have lined up a few panellists to join us. We are looking forward to some interesting discussion and comparisons relating to the proposed Unitary Patent and UPC. The panellists so far include:

Mark Platts-Mills. Mark is Head of Chambers at 8 New Square, the largest specialist IP chambers in the UK. Members of 8 New Square have been providing input into the drafting of rules of procedure for the UPC and will be continuing to work to ensure that the system provides speedy and efficient dispute resolution for those who choose to use the UPC instead of national courts.

Adrian Murray. Patent Attorney and consultant to WP Thompson.  Adrian's principal practice area is in the field of pharmaceuticals, advising clients on launch strategies and freedom to operate issues, as well as assisting them with securing protection for their inventions in Europe and internationally. Throughout his career, Adrian has worked principally in private practice, but also spent several years in house at a large pharmaceutical company.

Held at Pinsent Masons London offices at 30 Crown Place, London EC2A 4ES, registration is from 5.30pm, the presentation will begin at 6pm with questions and refreshments afterwards.

We hope you can join us.If you would like to attend this session please select the Register option below.

Date:	Monday 25 February 2013
Time:	Registration: 5.30pm; Seminar 6pm followed by questions and refreshments
Venue:	Pinsent Masons LLP, 30 Crown Place, London, EC2A 4ES

Get directions here

The America Invents Act 2011: US Marking Requirements and Pitfalls

In this, the third and final article in a series which PatLit commissioned from leading US intellectual property practice Faegre & Benson on the recently-enacted America Invents Act (AIA), Victor Jonas and Jason Kraus update readers on the changes made by the AIA to the controversial 'patent marking' provisions of US patent law:

"There are generally no legal requirements in European countries to mark a product with a patent number, though the US requires patent marking in certain circumstances, and both European countries and the US impose penalties for improperly indicating that unpatented products are so-protected. The America Invents Act 2011 (“AIA”) makes several changes to US marking requirements as well as the conditions under which penalties for “false marking” arise.

More flexible marking practices

With respect to marking requirements in the US, 35 U.S.C. §287 places limitations on the damages recoverable to a patentee in the absence of patent marking. In particular, a patentee claiming infringement of a claim to a “patented article” must mark that article with the patent number in order to receive damages for up to six years of past infringement – in the absence of such marking, the patentee can only expect to recover damages after actual notice of the infringement is given to the infringer. Prior to enactment of the AIA, US law required the patentee to mark the patent number on the product itself or, when impractical, to a package or label. While the patented article must still be marked, under the newly revised §287, patentees are allowed to mark patented articles with a website that lists one or more patents on the patented article. Specifically, the patentee must mark the patented article with the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet – accessible to the public without charge – that associates the patented article with the number of the patent. Thus, it is reasonable to assume that a patentee could mark all their products with the same marking and then break out which products are believed to be covered by which patents; although court decisions will still be needed to provide guidance on whether a specific marking practice is adequate. 

False marking claim curtailment 

Prior to enactment of the AIA, a rash of false marking law suits had been filed in the US, particularly for marking products with expired patents. These suits followed closely on the heels of the Federal Circuit's decision in Forest Group, Inc. v Bon Tool Co. (Fed. Cir. 2009) that a false marker could be fined $500 per article marked. While previously 35 U.S.C. §292 provided that any member of the public was able to bring such a claim of false marking, the AIA has amended the law to require that the US government bring suit for the civil penalty or that any other plaintiff must have suffered commercial harm and be limited to recovery of damages adequate to compensate for that harm. The AIA also eliminates a finding false marking based on marking with an expired patent that covered the marked product prior to expiration".

The two earlier articles in this series are

• America Invents: what do litigators need to know? here
• America Invents Act: New Opportunities for Challenging the Validity of US Patents here

America Invents Act: New Opportunities for Challenging the Validity of US Patents

In this, the second in a series of three posts commissioned from leading US intellectual property practice Faegre & Benson on the recently-enacted America Invents Act (AIA), Jason Kraus and Walt Linder examine the impact of the AIA on challenges to a patent's validity.  This is what they say:

Granting office -- and battleground
for patent validity

"Unlike European patent practice, current US patent law does not provide for post-grant opposition. Instead, the ex parte and inter partes reexamination procedures are used to challenge the validity of granted patents in the US Patent Office. Although the strategic use of these procedures has become increasingly common in the course of US patent litigation, they have characteristics that can limit their effectiveness. One such limitation is that only patents and other printed publications can be used as the basis for validity challenges. Before granting reexamination, the Office first makes a threshold determination as to whether a “substantial new question of patentability” exists. These procedures are carried out before a centralized unit of skilled examiners, but the time frames for resolving granted reexaminations, and inter partes reexaminations in particular, have steadily increased. 

The AIA modifies US patent practice by providing for post-grant review. This new post-grant review expands the available bases for validity challenges and is structured to offer a more efficient and effective review mechanism prior to litigation. While this new post-grant review proceeding is currently receiving much attention, with the exception of certain business method patents for which post-grant review is available on September 16, 2012, post-grant review is available only for granted patents based on applications filed on or after March 16, 2013. 

In the meantime, procedures similar to current inter partes reexamination remain available under the new name “inter partes review.” One significant change to the new inter parte review, which is already applicable to newly-filed inter partes reexaminations, is the determination threshold for the grant of a petition has changed from a “substantial new question” to a “reasonable likelihood that the petitioner would prevail.” Ex parte¬ reexamination remains in place and is substantially unchanged. 

Bases for Post-Grant Review 

Any ground relating to invalidity, including novel or unsettled legal questions important to other patents, can be used as the basis of a petition for post-grant review. Challenges based on assertions that the patent is invalid because the invention was on sale or in public use by the inventor or third parties, can now be raised in and decided by the Patent Office. Prior art patents and printed publications can also be used as bases for post-grant review. 

Timing 

A petition for post-grant review must be filed within nine months after the grant of the patent. Post-grant review is the only available review procedure during this nine month time period. A petition for inter parte review cannot be filed until after the nine month time period available for filing a post-grant review petition, or until after the termination of any instituted post-grant review. Furthermore, a party is barred from filing for post-grant review if it previously filed a civil lawsuit challenging the validity of the patent. 

By law, the Office must make an initial determination of whether to grant post-grant review within three months of the petition filing. Final determination must be completed within one year, but can be extended by six months. 

Procedure 

Post-grant review proceedings will be conducted by a new Patent Trial and Appeal Board. After a challenger files a post-grant review petition, the patent owner has an opportunity to file a preliminary response before the Office acts on the petition. The board can grant the petition only if the petitioner demonstrates “that it is more likely than not” that one of the challenged claims is unpatentable. During the proceeding, the petitioner is afforded substantial opportunity to participate in the post-grant review process. And similar to a European opposition procedure, the patent owner has an opportunity to cancel claims and present new claims for the board’s consideration. 

Estoppel 

Following a final decision in a post-grant review proceeding, the petitioner cannot maintain before the Patent Office, or raise in any civil lawsuit, any invalidity ground “that the petitioner raised or reasonably could have raised during that post-grant review.”

The first blog-post in this series, "America Invents: what do litigators need to know?", can be read on PatLit here.

America Invents: what do litigators need to know?

All smiles as President Obama signs
the Act -- but who will be smiling
once the litigation commences?

PatLit asked leading US intellectual property practice Faegre & Benson for some comments for its largely non-US-based readership on what the recently-enacted America Invents Act means in terms of litigation.  The firm has kindly responded to this request for an 'insider's view' with the following piece by Calvin Litsey and Kevin Wagner, whom we thank for their effort.

"The America Invents Act (AIA) has received a lot of press but, given its staggered implementation, its impact on patent litigation in the U.S. in the short term is likely to be minor. For example, the fundamental shift from “first to invent” to “first to file” only applies to patents filed after March 16, 2013, so the first litigation under the new system is not likely to occur until some point in 2014. In the meantime, smaller changes relating to joinder of multiple defendants, the best mode defense, the prior commercial use defence, defences relating to inventorship, and use of opinions of counsel in litigation will change some current litigation practices. 

Multiple Defendants 

It has become common practice for plaintiffs (especially for non-practising entities) to sue multiple defendants in the same action. The AIA makes this tactic much more difficult. With immediate effect, multiple defendants cannot be sued in the same action “based solely on allegations that they have infringed the patent.” Instead, joinder is allowed only when defendants are alleged to be liable jointly, severally, or in the alternative, and when there are common questions of fact to all defendants. This provision is largely a win for defendants, because it raises litigation expenses for plaintiffs and may expose plaintiffs to inconsistent claim construction rulings and multiple invalidity determinations. Because courts will still have the opportunity to consolidate cases for discovery and claim construction, however, not all of these advantages for defendants may be fully realized. Defendants who wish to pool resources can opt out of this provision. 

Best Mode 

One infrequently-used defence to a patent infringement is that the patent failed to disclose the best mode of practising the claimed invention that was known to the inventors as of the filing. The AIA eliminates this defence in all newly-filed cases. 

Prior Commercial Use 

For all patents issued after September 16, 2011, the AIA expands the prior commercial use defense beyond its traditional use in business method cases. Under this defense, almost any claim of infringement can be defeated by showing the defendant commercially used the invention at least 1 year before the filing date of the patent. 

Inventorship 

Another rarely-used defence is that an asserted patent is invalid because it names the wrong inventors. In all cases filed after September 16, 2012, the AIA eliminates the need to show lack of “deceptive intent” before inventorship can be fixed, effectively eliminating this defence. 

Opinions of Counsel 

When intent becomes an issue, as for allegations of willfulness or induced infringement, plaintiffs frequently seek to introduce the lack of an opinion of counsel as evidence of the defendant’s bad intent. Case law already discouraged this practice for willfulness, but this approach was permitted for inducement claims. The AIA eliminates reliance on the lack of an opinion of counsel for both situations for patents issued after September 16, 2012. 

First to File 

The change to a “first to file” system was implemented largely by changing the definition of prior art. For patents filed after March 16, 2013, prior art includes anything patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the filing date of the claimed invention. This change expands prior art to include third-party prior art dated less than 1 year before the patent filing, eliminates the ability of the patentee to “swear behind” certain prior art, and allows use of additional foreign prior art. The AIA does include exceptions that allow some public disclosure by the patentee before patent filing. Concurrent with these changes, obviousness will be determined as of the filing date, rather than the date of invention".

US Patent reform: fears to changes

I was planning what to do during last warm long weekend in Madrid when I realised that the America Invents Act passed in Congress with a vote of 304-117.

Much has been said in the last days about the inconvenience of this reform. Most of the comments I have read refer to its negative impact. Some of those describe drastically the effects. How does it look if we put some of them together?

“The anti-innovation patent reform act of 2011” “creates strong financial incentives for usurping patent rights by hacking and industrial espionage”, “could end up making it more difficult for inventors to defend their patents against infringement” and would be “dangerous to U.S. Security”.

Not bad, write?

Changes always cause fear. Modification of the system means that the new regime will have to be studied, bring some uncertainty and most of the times have economic effects (this Act has also been called the “job-killing Patent-Bill”).

I prefer trying to see the benefits and among those, the comment that brings the attention of this Patlit is the “attempt to keep patent battles out of the courts”. How this would happen? Damages regulation may have an important role. According to the Executive summary published in the website of the Republican Majority in Congress (here) “only a person who suffers a competitive injury as a result of false marking may bring a civil action in federal court for compensatory damages”. If this is correct, what would be the future of Patent Trolls?

If you want to read what do politicians say, you may like to read "The America Invents Act - Promoting American Innovation, Creating American Jobs, Growing America's Eeconomy" (here) (pdf alert)

In any case, experience show that changes are very rarely as bad (neither as good) as seemed.

We’ll see who is right.

What do you think?