IP Outlook in the Reform Era

Transcription

1 1 IP Outlook in the Reform Era May 8, 2009 Attorney Advertising Prior results do not guarantee a similar outcome Models used are not clients but may be representative of clients 321 N. Clark Street, Suite 2800, Chicago, IL

2 Presenters Moderator Jonathan Spivey Partner, IP Litigation Practice Jon Dudas Partner and Former Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos Vice President and Assistant General Counsel, Intellectual Property Law and Strategy, IBM Corporation Courtenay Brinckerhoff Vice Chair Chemical & Pharmaceutic al Practice Sharon Barner Chair, IP Department

3 What Does the Future Hold for Patent Reform Legislation? Jon Dudas Partner and Former Under Secretary of Commerce for Intellectual Property and Director of the USPTO

4 Patent Reform What is Next? Regular Process--Six more votes four in full Senate or House Fastest Process Two more votes Senate Judiciary Compromise Signals Real Momentum The House will have its say

5 Now is the Critical Time Patent Reform issues have ripened Debate is no longer whether to move forward but how to move forward. Passage is likely but outcome is uncertain Companies must be deeply focused now or risk being left behind Negotiations are ongoing Report language will be considered Consider effects of passage

6 High Profile Issues Damages provision is still the key issue. Original version vs. Gatekeeper Post Grant Opposition and proposed changes to Reexamination A key issue not in either bill but still to be determined Inequitable Conduct

7 Other Issues to Watch Pilot Program for Patent Cases in District Courts Get patent cases to judges who want them and away from judges who do not 10 year pilot program with two reports to Congress Where to file to be an even more strategic decision Key International Issues First to file differences in House and Senate bill US only provision is a threat to efficiency gains, harmonization, worksharing, PCT and PPH.

8 What Does the Future Hold for Patent Reform Legislation? Question/Discussion Moderator Jonathan Spivey Jon Dudas David Kappos Courtenay Brinckerhoff Sharon Barner

9 How Can New Technology Impact the Patent System? David Kappos Vice President and Assistant General Counsel, Intellectual Property Law and Strategy, IBM Corporation

10 Projects International Collaborative Examination (ICE) Enabling collaboration between examiners in different patent offices Examiner Y. Shao is offline. Transferring to Message Board. 11/15/08 Y. Shao We received an amended claim 1 including a new feature: a Server Cache. Do you know of any art? Document D4 was found by the EPO and discloses this feature. A combination of D1 and D4 renders amended claim 1 obvious.

11 Peer to Patent Peer to Patent (P2P) Enabling collaboration between examiners and the public, and among the public

12 OSAPA Open Source As Prior Art (OSAPA) Enabling examiner access to open source code as potential prior art Interface Tool + OTHER OPEN SOURCE REPOSITORIES

13 Patent Quality Index Patent Quality Index (PQI) Creating reliable metrics for patent quality Examiner Thoroughness of review Patent Application Detailed Description -- clearly describe invention? Claims -- supported by spec? Drawings -- correlate to spec? File Scope and content of art cited Effectiveness of rejections Applicant Scope and content of art cited Claim amendments -- considers prior art Issue Issued Patent Detailed Description Claims Drawings Art Cited -- useful record Examiner and Applicant Patent Prep Index Prosecution Index Patent Quality Index

14 How Can New Technology Impact the Patent System? Question/Discussion Moderator Jonathan Spivey Jon Dudas David Kappos Courtenay Brinckerhoff Sharon Barner

15 What is the Outlook for and Benefits of the Revised Reexamination Practice and Post-Grant Review Procedure? Courtenay Brinckerhoff Vice Chair Chemical & Pharmaceutical Practice

16 Current Options Ex Parte Reexamination Third party may request reexamination based on prior publication(s) Third party is not involved after Patent Office decides to conduct reexamination Low cost, but low success rate No estoppel against third-party requestor

17 Current Options Inter Partes Reexamination Third party may request reexamination based on prior publication(s) Third party remains involved throughout reexamination proceedings Higher cost, higher success rate Long process, as either party can appeal to Board, then court Estoppel against third party requestor for all issues that could have been raised

18 Proposed Legislative Changes New Post-Grant Review Process Third party can challenge patent on grounds of prior art, written description, or enablement Single challenge window 12 months from grant Conducted by Board Discovery available Mandated completion within 12 months Estoppel against requestor for all upheld claims and issues raised

19 Proposed Legislative Changes Modifications to Inter Partes Reexamination To be conducted by APJ instead of Examiner Limit scope of estoppel to issues that were actually raised during reexamination

20 Proposed Legislative Changes Provides more options for challenging patent Balances competing demands on window for post-grant review single 12 month window for post-grant review reduced scope of estoppel for inter partes reexam limits on sequential challenges by same party Makes inter partes reexam more attractive Post-grant review will provide alternate path to challenge a patent on many grounds with the promise of a quick decision

21 What is the Outlook for and Benefits of the Revised Reexamination Practice and Post-Grant Review Procedure? Question/Discussion Moderator Jonathan Spivey Jon Dudas David Kappos Courtenay Brinckerhoff Sharon Barner

22 What Will Be the Impact on Patent Litigation? Sharon Barner Chair, IP Department

23 Making Patent Litigation More Certain and Less Costly Venue Changing the burden of proof from Clear and Convincing to Preponderance of the Evidence Post grant opposition Apportionment of Damages Interlocutory appeal of claim construction

24 What Will Be the Impact on Patent Litigation? Question/Discussion Moderator Jonathan Spivey Jon Dudas David Kappos Courtenay Brinckerhoff Sharon Barner