A few statistics. The impact of the America Invents Act. PCT updates. Judicial trends.

1. June 25, 20181
Patent Law Update
Tom Dickson
November 13, 2012
A Few Statistics
The Impact of the America Invents Act
PCT Updates
Judicial Trends

2. © 2012 Patterson Thuente Christensen Pedersen, P.A., some rights reserved - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal
advice. Seek competent legal counsel for advice on any legal matter.
Patent Law Update
November 2012
Tom Dickson
Ideas.
Owned.
TM

3. Topics
A Few Statistics
The Impact of the America Invents Act
PCT Updates
Judicial Trends
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4. IP Statistics
(Source: WIPO Statistics Database)
International Filing Trends
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5. Contribution of the Leading Offices to the Change in
Total Volume in Filings
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6. Patent Applications by Geographical Region - 2010
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7. Patent Applications by Income Group - 2010
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8. Patent Applications for the Top 15 Offices - 2010
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10. PCT Applications
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11. Trends in Foreign Filing: Direct vs. PCT
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12. 10 Largest PCT Filers
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13. The America Invents Act
Full name: Leahy-Smith America Invents Act
Signed into law on September 16, 2011
Possibly the most significant change to US patent law since 1836
Certainly the most significant change since 1952
Contentious litigation issues not included (e.g. damages, inequitable
conduct)
Some provisions are already in effect
The most consequential provisions go into effect on March 16, 2013
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14. Impact of the America Invents Act
Move toward international “best practices”
First Inventor to File
Post Grant Review
Prior User Defense
Filing in the name of the assignee
Elimination of In Re Hilmer doctrine
Impact on PCT filing
Can file in the name of the assignee or obligated assignee
• New Request form
Change in oath or declaration
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15. First Inventor to File
US joins the rest of the world
“Effective filing date” = earliest priority date, whether US or foreign
Prior art expanded
Disclosure available to the public anywhere
In re Hilmer doctrine abolished
Foreign priority date also applies for purposes of prior art
Priority date is the effective date for both defeating novelty and obviousness
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16. Post-Grant Review
Similar to opposition proceedings in many countries
Must be filed within 9 months of issuance of reissuance of the patent
Can be based on any ground of invalidity
Threshold is whether it is more likely than not that at least one challenged
claim will be found unpatentable
The AIA also provides for Inter Partes Review (petition must be filed at least
9 months after grant) and Third Party Submissions of Prior Art
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17. Prior User Defense
Expanded from existing law to resemble prior user rights in other countries
Applies to “subject matter consisting of a process, or consisting of a machine,
manufacture, or composition of matter used in a manufacturing or other
commercial process”
To assert the defense, the prior use must be:
A prior commercial use in the US of the subject matter of a claimed
invention
By the party asserting the defense
At least one year before the effective filing date of the claimed invention or
the date on which the invention was disclosed to the public.
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18. Assignee as Applicant
Inventor no long needs to named as the applicant
Applications may be filed in the name of the assignee (employer)
Has direct impact on the PCT Request Form and the PCT declaration of
inventorship
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19. Old PCT Request Form: Inventor as Applicant
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20. New PCT Request Form (as of September 16, 2012):
Assignee as Applicant
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21. New Declaration of Inventorship
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22. Impact of the American Invents Act on US Policy:
USPTO’s Renewed Attitude Toward Harmonization
USPTO Director David Kappos, Statement before the Senate Judiciary
Committee, June 20, 2012:
“Mr. Chairman, with the adoption of the AIA, the U.S. is now able to
pursue a 21st century globally harmonized patent system – one that
international negotiations have anticipated for more than 25 years.
Congress has enabled the USPTO to not only act, but to lead in realizing
a vision of an IP world in which national and regional patent systems are
coordinated to create an optimal environment for technological innovation
and diffusion. Passage of the AIA has provided an opportunity to restart
long-stalled discussions with our foreign counterparts toward substantive
harmonization that will help U.S. businesses succeed in the global
business environment.”
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23. Re-Start of the Harmonization Process?
Failure of Negotiations in WIPO Standing Committee on Patents (SCP)
Inability to agree with “Development Agenda” nations
Disagreement on “compromise” on substantive patent law harmonization
among industrialized nations
Effect of American Invents Act
USPTO using the Act to encourage harmonization
By adopting “first inventor to file” (FITF) as an international “best practice,”
USPTO can now pursue other “best practices” that it would like to see
adopted in other offices (e.g., grace period).
Focus now on “best practices” not “compromise”
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24. Re-Start of the Harmonization Process
Asia-Pacific Patent Cooperation in the 21st Century Forum – March 2011.
Officials from 23 patent offices participated
Organized by the USPTO
Official Statement
• “The time for substantive harmonization is now. We are operating in
a global economy, business innovation is happening across
borders. The IP system needs to be supportive of this new reality”
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25. Re-Start of the Harmonization Process
IP5 Developments
EPO, JPO, KIPO, SIPO,USPTO
Nearly 80% of all patent applications worldwide are processed through the
five patent offices
“Patent Harmonization Expert Panel” created at 5th IP5 Meeting of Office
Heads in June 2012
Discussions on creating the “Global Dossier”
• One-shop document filing and international collaborative
examination
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26. Steps toward Harmonization
Korea-US Free Trade Agreement
USPTO has expressed gratitude to Korea for extending the safety net
grace period to 12 months
Korea being praised out as a model for other countries to follow
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27. PCT Developments
Third party observation system
ePCT
Supplementary international search
Decision to continue the system for three more years despite low uptake
Designation of Chile as an International Searching Authority
Inventors no longer need to be applicants for purposes of designating the US
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28. Third Party Observation System
Third parties may make observations on international applications
System implemented in July 2012
Web based and accessible via Patentscope
Observations consist of prior art references which the third party
considers to be relevant in respect of novelty and inventive step of the
claimed invention
Observations may be anonymous and may be filed from the date of
publication to 28 months from the priority date
Free of charge
A Guide to Using WIPO’s Third Party Observation Service available at
http://www.wipo.int/pct/en/epct/pdf/epct_observations.pdf
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29. Expanding ePCT
ePCT is a secure online service that provides access to international
applications at WIPO
Permits uploading and consulting of application documents
Newest development is the ePCT Private Service
Allows electronic withdrawal of designations, priority claims, declarations
of inventorship, Article 19 amendments, etc.
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30. Judicial Trends
Continuing tension between the US Supreme Court and the US Court of
Appeals for the Federal Circuit, and between the courts and the USPTO
Supreme Court rulings perhaps more in line with the rulings of other
countries
2012 US Supreme Court decisions
Mayo Collaborative Services v. Prometheus Labs
• A newly discovered law of nature is unpatentable, and the
application of that law of nature is also unpatentable if the
application merely relies upon elements already known in the art
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31. Judicial Trends
2012 Supreme Court decisions
Kappos v. Hyatt
• When an applicant appeals a decision of the Board of Patent
Appeals and Interferences to the US District Court under Section
145 of the Patent Act, there are no limits on the patent applicant’s
ability to introduce new evidence (new matter).
• If new evidence is presented on a disputed question of fact, the
district court must make de novo factual findings that take account
of both the new evidence and the record before the USPTO
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32. Judicial Trends
2012 decisions of the US Court of Appeals for the Federal Circuit
Association for Molecular Pathology v. USPTO and Myriad
• Isolated DNA which does not exist alone in nature can be patented
– The process of removing DNA from the human body transforms
those molecules into something new and different.
– The Federal Circuit’s ruling seems at odds with the Supreme
Court’s decision in Mayo v. Prometheus
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33. Judicial Trends
2012 Federal Circuit decisions
Akamai Technologies v. Limelight Networks
• Proving liability under the doctrine of inducing infringement no
longer requires proof of a single actor directly infringing the patent
– With method claims, inducement liability exists where the
accused infringer
» Knew of the patent, and
» Induced performance of the steps of the method, and
» The steps of the method were actually performed
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34. Judicial Trends
Patent cases scheduled to be argued before the US Supreme Court
Bowman v. Monsanto
• Issue is whether the patent rights of self-replicating technology
(such as seeds) expire after an authorized sale
Gunn v. Minton
• Issue is whether the US federal courts have exclusive jurisdiction in
cases of patent attorney malpractice
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35. Thank You
Tom Dickson | dickson@ptslaw.com | +1 612-349-5740
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