March 16, 2013: Are You Ready for the New Patent Regime?

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1 PRESENTATION TITLE March 16, 2013: Are You Ready for the New Patent Regime? Chris Durkee Kilpatrick Townsend & Stockton LLP

2 What Happens on March 16, 2013? U.S. changes from a first-to-invent to a firstinventor-to-file patent system. Similar to patent systems in other jurisdictions throughout the world. Under new system, winner of a U.S. patent is the one who wins the race to the U.S. Patent & Trademark Office ( USPTO ). New law will change when third party patent applications, publications and disclosures are available as prior art.

3 Background: Current Law Hypothetical: two inventors both independently invent the same thing and file patent applications with the USPTO. Inventor A: thought of invention in March 2012 and filed application in April Inventor B: thought of invention in January 2012, created a prototype in February 2012 (not disclosed to public) and filed application in May Under current law, who gets the patent? Inventor A Inventor B

4 Background: Current Law Generally, winner is the inventor who first conceived of the invention and reduced it to practice. Actual filing date of application(s) with USPTO not relevant (except perhaps to show reduction to practice). Inventor B wins. Statutory prior art that can be cited against these applications is limited to patent applications, publications and other public disclosures made more than 1 year prior to the filing date of your application. You can swear behind third party disclosures made within one year of your application filing date. Your own disclosure within one year of your filing date is not prior art.

5 Starting March 16, 2013 Winner is the first to file the application with the USPTO. Exception for derived subject matter. Back to Hypothetical: Who gets the patent? Inventor A Inventor B

6 Starting March 16, 2013 Answer: Inventor B is first to invent but second to file. Inventor A wins because she filed first, even though she was the second to invent the subject matter. Premium on timely identification of invention and preparation/ filing of application. New rules apply to any patent application with an effective filing date on or after March 16, Effective filing date: application contains or contained at any time a claim that is not fully supported by an application disclosure filed prior to March 16, 2013.

7 Third Party Disclosures/Prior Art Any third party disclosure (e.g., publication, presentation, offer for sale) will be available as statutory prior art as of the date of disclosure (even if within one year of effective filing date). Under current rules, such disclosures are not statutory prior art and could be sworn behind with an inventor affidavit establishing prior invention. 1-year grace period still available for disclosures by or through the inventor. In addition, there is a grace period where inventor previously disclosed the invention and a third party disclosure occurs between the inventor s disclosure and filing date of the application. Under current PTO interpretation, however, grace period is very narrow.

8 Implications Much more important to gather invention disclosures and timely prepare and file applications. You want to win the race. More prior art will be usable to reject claims during prosecution or invalidate claims during litigation. Declaration practice to swear behind prior art no longer available. Patents with an effective filing date on or after March 16, 2013 will also be subject to the new post-grant review proceeding (includes availability of non-prior art validity challenges). Possible benefit of later filing date: Metallizing Engineering doctrine overruled? If so, secret commercialization/sale will not bar patentability.

9 What Should You be Doing?* q Identify pending provisional applications that will need to be converted within the next year. Accelerate conversion? q Do you have outstanding invention disclosures awaiting application preparation and filing? Can you file the application by March 16? q Don t wait until the last minute; expect busy practitioners and possible problems with e-filing close to March 16. q Streamline procedures for gathering invention disclosures and preparing/filing applications q Notify internal personnel/businesses of new time sensitivity. q Have in place by March 16. q Maintain priority to applications filed prior to March 16 where possible. * Assuming possible overrule of Metallizing Engineering does not affect your strategy.

10 Questions?