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Archive for September, 2011

Micro-entity status

The America Invents Act of 2011 created a new micro-entity status. Previously, the United States Patent and Trademark Office (USPTO) recognized small entities, which were eligible for a 50% fee reduction. Micro-entities are eligible for a 75% reduction in fees paid to the USPTO.

A small entity is either:
An individual
A small business concern (does not exceed 500 persons)
A non-profit organization
Furthermore, if the owner has transferred some rights in the invention to one or more parties, or is under an obligation to do so, the transferee must also qualify as a small entity.

To qualify as a micro-entity, one must first qualify as a small entity. Additionally, the income of the micro-entity must be less than 3 times the median household income. Also, the micro-entity may not assign or be under an obligation to assign the application to an entity with an income that exceeds this limit.

The micro-entity is eligible for the reduced fees on the first four patent applications filed (excluding provisional patent applications).

These new provisions are designed to make the patent system more accessible to individual inventors and small businesses. Your patent attorney can help you navigate these and other changes to the patent law introduced in the America Invents Act. Cotman IP is located in Pasadena, California just outside of Downtown Los Angeles.

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American Invents Acts Timeline 2011-2012

   

Source: http://www.uspto.gov/aia_implementation/index.jsp

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Summary of Key Provisions of America Invents Act

  PATENT PROSECUTION
First-Inventor-To-File 35 U.S.C. § 102 modified to grant a patent to the first-inventor-tofilean application. It -       Precludes patenting of an invention that was disclosedbefore the effective filing date of an application claiming the

invention as a result of it having been:

- patented, described in a printed publication or used, sold,

or otherwise made it available to the public, or

- described in a patent or in a published application by

another inventor that was effectively filed before the effective filing

date of the application claiming the invention.

        Retains a one-year grace period for any otherwise patentdefeating

disclosure, that was made one year or less before the

effective filing date of the application claiming the invention, by the

inventor or by someone who obtained the invention from the

inventor.

        Enhances the one-year grace period by providing that only

the inventor who first discloses the invention can later obtain a

patent on it.

       Eliminates the geographical limitation in current law that

allows foreign inventors to obtain patents in the U.S. that were

publicly known or used in their countries but not in the U.S.

      Eliminates the possibility that a secret use of an invention or

a mere offer for sale that does not publicly disclose an invention by

an inventor can be used to prevent the inventor from obtaining a

patent.

       Enlarges the protections in current law that eliminate the

earlier patent filings of coworkers and other collaborators as patentdefeatingdisclosures to a later-sought patent by an inventor.
Prior User Rights - 35 U.S.C. § 273 amended to extend the right to assert a PURdefense to any entity that controls, is controlled by, or is undercommon control with a person or entity that performed or causedthe performance of the acts necessary to establish the defense.

-Requires the Director to compare and report on the operation of

PURs in patent laws in the United States and the laws of other

countries, including members of the EU and Japan, Canada, and

Australia.
  POST-GRANT
Ex ParteReexamination - 35 U.S.C. § 301 amended to:       Permit submission of written statements of the patentowner filed in a Federal court or the PTO expressing a position onthe scope of any claim of a patent in any post-grant proceeding.

       Upon request, exclude from the patent file and keep

confidential the identity of any person citing prior art or written

statements.

- 35 U.S.C. § 306 amended to remove review by civil action in

district court.
Inter Partes Reexamination Amends Chapter 31 by replacing “Optional Inter PartesReexamination Procedures” with “Inter Partes Review” (IPR).       Filing permitted 9 months after grant or after any PGRinitiated has been terminated.

       Only on basis of §§ 102 or 103 and only on the basis of prior

art patents or printed publications.

      Threshold: reasonable likelihood that petitioner would prevail

with respect to at least 1 challenged claim.

       IPR may not be instituted or maintained if petitioner/real

party in interest has filed a civil action challenging the validity of a

claim, or instituted if filed more than 6 months  after the date on

which the petitioner/real party in interest is served with a complaint.

       PTAB to conduct each IPR.

       Estoppels

- Final decision of validity in IPR precludes IPR

petitioner/real party in interest from requesting any proceeding

before the Office on the basis of any grounds that the party raised

or reasonably could have raised during the PGR.

- Final decision of validity in IPR precludes IPR

petitioner/real party in interest from asserting invalidity in a civil

action or ITC proceeding on the basis of any grounds the party

raised during or reasonably could have raised during the IPR.

       Final determination in 1 year (18 months upon showing of

good cause).
Post-Grant Review - Establishes a new Chapter 32 post-grant review proceeding(PGR) in which cancellation of a patent may be sought on anyground of invalidity within 9 months after the patent is issued.       Scope: any ground that could be raised under paragraph

(2) or (3) of section 282(b) (relating to invalidity.

       Real parties in interest must be identified.

       Threshold:

- petition presents information that, if not rebutted, would

demonstrate it more likely than not that at least 1 challenged claim

is unpatentable, or

- petition raises a novel or unsettled legal question

important to other patents.

       PGR may not be instituted or maintained if real party in

interest has filed a civil action challenging the validity of a claim.

       A court may not stay consideration of motion for preliminary

injunction on the basis that a PGR has been requested or instituted

if an infringement action is filed within 3 months of patent grant.

       PTAB to conduct each IPR.

       Patentee may propose a reasonable number of substitute

claims for each challenged claim.

       Burden of proof on petitioner is by a preponderance of

evidence.

       PGR to conclude in 1 year (18 months for good cause).

       Estoppels:

- Final decision of validity in PGR precludes PGR

petitioner/real party in interest from requesting any proceeding

before the Office on the basis of any grounds that the party raised

or reasonably could have raised during the PGR.

- Final decision of validity precludes PGR petitioner/real

party in interest from asserting invalidity in a civil action or ITC

proceeding on the basis of any grounds the party raised during

PGR.
Inequitable Conduct No provisions.
Supplemental Examination Adds a new section 257 permitting a patent owner to request a“supplemental examination” of a patent to consider or correctinformation believed to be relevant to the patent. A patent emergingfrom such procedure shall, if certain time limits are met, not be

unenforceable on the ground that the information was not

previously considered.
Best Mode Requirement - 35 U.S.C. § 112 requirement to disclose best mode is retained,but 35 U.S.C. § 282 amended to remove failure to disclose bestmode as a defense.
Willful Infringement - Contains no definition of the acts that constitute willfulinfringement.- Provides that failure to obtain advice of counsel with respect to anallegedly infringed patent or the failure to present such advice may

not be used to prove willful infringement.
Damages No provision.
Venue - No provision on where actions for infringement may be brought.
3rd Part Submission of Prior Art - 35 U.S.C. § 122 amended to permit the public to submit patentsand other publications before the earlier of (i) the date a notice ofallowance is mailed, or (ii) the later of either six months after theapplication’s publication, or the date of the first action on the merits.
Patent Marking - Provides that only the United States may bring an action torecover the penalty for false marking.- Provides a private right of action to recover damages adequate tocompensate for competitive injury suffered from false marking.
Tax Patents -Provides that inventions for reducing or deferring tax liabilitycannot be differentiated from prior art.- Also provides that inventions for reducing or deferring tax liabilitycannot be differentiated from prior art, but adds express exclusions

for inventions that are used solely for preparing a tax return, or

used solely for financial management ( to the extent it is severable

from, or does not limit the use of, any tax strategy).
Business Method Patents - Establishes a four-year transitional post-grant review proceedingunder which -             the validity of certain defined business-method patents maybe reviewed;

             a party may seek a stay of any civil action involving a patent in

a transitional proceeding and the court shall decide whether to

enter a stay; and

             an immediate interlocutory appeal to the Federal Circuit of any

district court stay decision shall be available and such review may

be de novo.
Joinder Customer/User Suits No provision.
USPTO FeeSettingAuthority  - Authorizes the Director to fix all patent and trademark fees,subject to 45 day review by the PPAC and TPAC, 45 day publiccomment period, and a 45 day review by Congress.
USPTO Funding Authority (Anti-Diversion) - Establishes a revolving fund (USPTO Public Enterprise Fund) into which all fees shall be deposited for use by the Director to cover Office expenses without fiscal year limitation.

Based on a Summary prepared by http://judiciary.house.gov

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Obama Signs Patent Reform Legislation

On September 16, 2011, President Obama signed legislation know as the America Invents Act (H.R. 1249). This legislation enacts the most extensive changes to US patent laws in nearly 60 years.

The White House press release states “This much-needed reform will speed up the patent process so that innovators and entrepreneurs can turn a new invention into a business as quickly as possible.”   To read the press release visit the White House website here.  To view a video of the bill signing ceremony at the Thomas Jefferson High School for Science and Technology, click here.

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