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Cover Your IP Assets
| 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
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.
On June 20, 2011, the board of Internet Corporation and Assigned Names and Numbers (ICANN) approved the long awaited plan to increase the number of generic top level domains (gTLD). The previous selection included 22 gTLDs such as .com, .net., .asia, and .biz. You will be able to apply for a gTLD containing your company’s federally registered brand (e.g., .ford, .coke or .abc). If you choose not to apply for a gTLD, you may still have the opportunity to register your brand as the second level domain name in conjunction with a generic term from your company’s industry registered by a third party. Those who successfully complete the application process will be required to maintain a register for their gTLD and will be able to offer second level domains to others.
The arduous application process includes several technical requirements, as well as an objection period (similar to that of the publication period in trademark prosecution), and a fee of $185,000. This is definitely likely to discourage cybersquatters. ICANN is expected to launch a public information and education campaign. The application process is set to begin January 12, 2012.
If you are seriously considering applying for a gTLD, advance planning can only increase your chances in obtaining your desired gTLD. The application process is complex and requires expertise an Intellectual Property Attorney with knowledge in the area of gTLDs. We are located just outside of Downtown Los Angeles in the City of Pasadena.
The USPTO announces the launch of the Trademarks Dashboard, which has been modeled on the Patent Dashboard’s success and format.
The Trademarks Dashboard tracks critical metrics that contribute to the registration of trademarks — pendency and quality — and makes these measures transparent to the public.
Trademark pendency has reached historically low levels as measured by the time from filing to first action; and, at disposal or total pendency, the average time from filing to registration, notice of allowance or abandonment of the application. The USPTO is committed to consistently maintaining monthly first action pendency within a 2.5 to 3.5 month range with disposal pendency at 12.5 months or less as filings increase and fluctuate on a monthly basis. The dashboard provides greater visibility by showing both pendency metrics based on the method of filing and gives trademark applicants and trademark attorneys a better understanding of the timelines that can be expected when applying to register a trademark.
We are often asked questions like “how long will my patent be pending?” The U.S. Patent and Trademark Office (USPTO) now has a Data Visualization Center that provides information about things such as the average time to a first office action, USPTO case backlog, the average number of office actions before disposal of the case and other useful information. Check out the following URL for details:
Due to cost-cutting in the federal budget, the United States Patent and Trademark Office is putting a program to expedite patent processing on hold.
Earlier this year, the Patent Office announced a plan to expedite patent applications for an additional fee of $4000. In 2009, the Patent Office reported that the average time to process a patent application was 34.6 months. In contrast, expedited applications would be processed in 12 months. The extra fees would support the hiring of additional Examiners, which would reduce the overall backlog at the Patent
Office.
The program was originally scheduled to be implemented in May 2011. However, with the cuts in funding, the Patent Office no longer has the means to process the expedited applications without affecting
non-expedited applications. However, the Patent Office has indicated that the program may still be implemented in the future.
By filing a Request for Prioritized Examination, pursuant to new 37 CFR 1.102(e), which will be available May 4, 2011. The United States Patent and Trademark Office (USPTO) is revising the rules of practice in patent cases to implement a procedure under which applicants may request prioritized examination at the time of filing of an application, upon payment of appropriate fees and compliance with certain requirements. The aggregate goal for processing applications under prioritized examination is to provide a final disposition within twelve months of prioritized status being granted. The fee for filing a request for prioritized examination is $4,000, in addition to filing fees for the application.
A request for prioritized examination may be submitted with any original utility or plant application filed on or after May 4, 2011. Under a new 37 C.F.R. 1.102(e), the request for prioritized examination will not be granted unless:
Because plant applications may not be filed via EFS-Web, the USPTO will accept a request for prioritized examination in paper when it accompanies the filing of a plant application.
The USPTO is limiting requests for prioritized examination under § 1.102(e) to a maximum of 10,000 applications during the remainder of fiscal year 2011. The USPTO will revisit this limit at the end of fiscal year 2011.
Time is of the essence. So, make prioritized examination a priority and contact your patent attorney at your earliest opportunity. We are located just outside of Downtown Los Angeles in the City of Pasadena.
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Cotman IP