An overview of the changes to the patent laws for 49th Annual IP Conference of the Institute of Technology and Law at the Center for American and International Law in Plano, Texas on November 8, 2011

1. LEAHY SMITH AMERICA INVENTS ACT
Center for American and International Law
49th Annual Intellectual Property Conference
Plano, Texas
November 8, 2011
Marc A. Hubbard
Gardere Wynne Sewell, LLP
mhubbard@gardere.com

2. Facilitators
• Larry Bassuk Texas Instruments
• Brad Williams Baker Botts
• Brian McCormack Baker McKenzie
• Chris Rourk Jackson Walker
• Marc Delflache Fulbright Jaworski
• Steven Geiszler SNR Denton

3. What s New
• Absolute novelty with grace period for • Supplemental examination
inventor disclosures
• Limits on joinder of parties in patent
• Derivation proceedings infringement action
• Additional inter partes proceedings • Pre-issuance submissions by third
parties §122(e)
• Post grant review (9 months after;
any grounds under §§101, 102, 103, • Tax strategies deemed within prior art
112, but not best mode)
• Virtual marking
• Inter partes review (any time after
• No adverse inference from failure to
opposition period; all patents; only seek advice of counsel, or to produce
§§102/103; publications only) such advice, in willfulness / inducement
• Financial business methods review cases
(called the Transitional Program for
Covered Business Methods )

4. What s Changed
• Some liberalization of requirements for inventor declarations
• False-marking actions — competitive injury requirement (no qui tam)
• Expansion of prior commercial user defense

5. What s Gone
• Section 102 as we know it, including 102(c)(abandonment), 102(e)
(applications filed before invention), 102(g)(prior invention as determined
by interference)
• Interference proceedings under §§135, 291 (retained for claims with
effective filing dates before March 16, 2013)
• Inter partes reexamination (cannot be filed after Sept. 16, 2012)
• Ex parte reexamination is unchanged
• Best mode defense (but best mode retained in Section 112)

6. Effective Now or Very Soon
• September 16, 2011 • 15% surcharge goes into effect;
PTO keeps all fees
• Best mode defense elimination
• November 15, 2011
• Joinder of parties
• Paper filing surcharge
• Marking changes
• Prior commercial use defense
• Fee setting authority
• Micro-entity fees (but not until
fee setting authority exercised)
• September 26, 2011

7. Future Effective Dates
• September 16, 2012
• New inter partes proceedings
• Pre-issuance 3rd party submissions
• Inventor declaration changes
• Transitional business method patent review
• March 16, 2013
• First to file provisions
• New §102
• Derivation proceedings; elimination of interference

8. Recommended Topics for Discussion
• Preparing clients for transition to first inventor to file regime
• Role of new prior commercial user defense in advising a client on a
patenting strategy
• Contending with new requirements for joinder of multiple defendants
• strategies being used by plaintiffs
• Strategies for 3rd party participation in patenting
• Post grant review
• Pre-issuance third party submissions
• Interplay of new inter partes review and litigation

9. First inventor to file — absolute novelty
(§102(a))
• Current §102 completely replaced
• New §102(a) defines what is prior art
• Claimed invention cannot have been —
• (1) patented, described in printed publication, in public use, or on
sale, or otherwise available to public prior to effective filing date of
claim
• (2) described in granted patent or an application
• which has published or deemed published,
• names another inventor, and
• has an earlier effective filing date

10. Exceptions to Absolute Novelty (§102(b))
• Disclosures within 1 year of effective filing date are not prior art under §102(a)(1) if —
• by inventor or others who obtained subject matter from inventor, or
• subject matter disclosed had been previously disclosed publicly by inventor or
someone who obtained it from the inventor
• Covers 3rd parties who did not derive it from inventor
• Subject matter in a prior filed application is not prior art under §102(a))(2) as to a claim
with later effective filing date if —
• it was obtained from inventor (directly or indirectly)
• publicly disclosed by inventor (or someone who obtained it from the inventor)
before the effective filing date of the subject matter
• both the prior filed subject matter and the claimed invention are commonly owned,
or subject to obligation to assign, as of claim s effective filing date

11. First to File — As Compared to Other Countries
• A poor man s priority document
• removal from prior art of all disclosures after publication by inventor for
up to a year
• Secret prior art
• Prior filed applications can be used to determine obviousness as of the
filing date rather than as of their publication date
• Grace periods for inventor disclosures
• Exclusion from prior art commonly owned inventions, and inventions
arising from joint research agreements

12. First to Invent Issues
• Are public use and on sale activities prior art if they do not disclose the
invention?
• A person shall be entitled to a patent unless—(1) the claimed invention
was patented, described in a printed publication, or in public use, on sale,
or otherwise available to the public before the effective filing date of the
claimed invention;
• Legislative history
• If secret public use and sales would qualify as prior art, would these be
disclosures within the meaning of the 102(b)?

13. Prior Commercial User Defense (§273)
• Expansion of prior inventor defense under §273 that had been limited to
methods for conducting business to all subject matter.
• Subject matter of commercial use limited to either (1) processes or (2)
machines, etc., used in manufacturing or commercial processes (and certain
nonprofit lab uses)
• Commercial use of subject matter must have first occurred at least one year
prior to effective filing date of patent or inventor s public disclosure; cannot
have been derived from inventor
• Personal; cannot be transferred except with business; not a license
• Right is lost when commercial use establishing right is abandoned

14. Joinder of Parties (new §299)
• Effective immediately
• No joinder of defendants in single action, or consolidation of actions for
trial, unless —
• any relief
• is asserted against the parties jointly, severally or in the alternative
• arises out of the same transaction or occurrence, or out of the same
series of transactions or occurrences
• relating to infringement by the same product or process
• and, questions of fact common to all defendants will arise in action
• Mere allegations that each defendant has infringed is insufficient

15. Pre-issuance Submissions
• New §122(e)
• Any third party may submit for consideration any printed publication of
potential relevance to examination of an application
• Submission must be made before —
• Notice of allowance mailed, or
• date of first rejection (but may submit after rejection if within 6
months from publication)
• Must also include concise explanation of relevance
• Fee required

16. Post Grant Review
• Must be filed within 9 months of grant of patent
• May be opposed on the following grounds:
• Invalidity on any ground specified in part II of Title 35 as a condition for
patentability or for failure to comply with any requirement of §112 (best
mode excluded)
• Failure to comply with §251 (reissue)
• Threshold: information presented in the petition, if such information is
not rebutted, would demonstrate that it is more likely than not that at least
1 of the claims challenged in the petition is unpatentable
• Petition must identify real parties in interest

17. Inter Partes Review
• Grounds limited to §§102 and 103
• Prior art limited to printed publications and patents
• Threshold: reasonable likelihood of petitioner prevailing on cancellation of
at least one claim challenged in the petition
• Must be concluded within 1 year (or 18 months if extended by Director)
• Must be brought within 1 year of claim of infringement by patent owners,
or before DJ action is filed by accused infringer (counter claims do not
count)

18. Estoppel for Post Grant Review and Inter
Partes Review
• Estoppel effect is expanded to all PTO proceedings
• Standard: raised or could have raised
• PTO proceeding:
• Petitioner, or his real party in interest or privy, may not request any proceeding
before PTO with respect to a claim on any ground that that the petitioner raised
or reasonably could have raised during review that resulted in final written
decision.
• Civil action or other proceeding:
• Petitioner, or his real party in interest or privy, may not assert either in a civil
action arising in whole or in part under section 1338 of title 28 or in a proceeding
before the International Trade Commission that a claim in a patent is invalid on
any ground that the petitioner raised or reasonably could have raised during a
review of the claim that resulted in a final written decision.

19. Marc Hubbard | Partner
Gardere Wynne Sewell LLP
1601 Elm Street, Suite 3000 | Dallas, TX 75201
214.999.4880 direct
214.208.2601 cell
214.999.3880 fax
mhubbard@gardere.com
www.gardere.com