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IP Bulletin, November 2011

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This issue of the Nutter IP Bulletin is devoted solely to the Leahy-Smith America Invents Act (AIA). While many of our readers have read about some of the much publicized changes that are in store as a result of the AIA, this issue will allow you to consider the practical implications the AIA may have on your practice.

We hope you enjoy Nutter’s practical take on the AIA.

It’s a First-to-File System: How Does that Impact My Practice?
Perhaps none of the provisions of the recently enacted AIA will have a more significant impact on day-to-day patent practice in the United States than the switch from the current “first-to-invent” system to a “first-to-file” system. The AIA establishes a “First-Inventor-to-File” system, in which the first inventor to file a patent application—with limited exceptions—will be entitled to a patent on that invention even if that inventor was not the first to invent. While not directly parallel to first-to-file systems throughout the world, at least because a one year publication grace period still exists under the U.S. version of “first-to-file,” most practitioners are aware of at least some of the changes this provision will bring to their practice. In view of the new U.S. system, care must be taken to optimize communication between inventors, employers, and outside counsel concerning invention disclosures to ensure that desired patent protection is obtained as broadly and efficiently as possible. 

For further discussion about how the “first-to-file” system will impact your practice, click here.

Analyzing Post-Grant Review Proceedings in View of European Opposition Proceedings
The enactment of the AIA will eventually usher in a new way to challenge granted patents—post-grant review (PGR). Any party can challenge a patent within 9 months of the patent issuing or reissuing provided that the patent was filed on or after March 16, 2013. Thus, the impact of PGR is not anticipated to be seen at least until 2015. However, many of the provisions associated with PGR are similar to the arguably counterpart procedure in Europe—oppositions. Currently, about 5% of granted patents are opposed in Europe. While the fact that estoppel provisions in the United States, which do not exist in European oppositions, may cause the number of patents challenged using PGR to be less than 5%, PGR will almost certainly be used more often than current inter partes reexamination procedures (only 0.3% of granted patents are subject to inter partes reexamination). A deeper dive into the effect opposition proceedings have in Europe may help parties consider whether they should begin preparing to challenge patents using PGR when the procedure becomes available. 

For further discussion about the similarities and differences between U.S. post-grant review and European oppositions, and trends that can be gleaned from statistics in Europe, click here.

The Expansion of the Scope of Prior Art Provides Another Reason to File Quickly
The AIA broadens the scope of prior art that can be used to reject claims of a patent application or to invalidate claims of a patent. In particular, the new law removes the limitation that a prior sale, commercial use, or public disclosure not otherwise published must be in the United States to constitute prior art. As a result, the new law extends available prior art to include any subject matter that is publically available in the world prior to the filing date of the application. More prior art potentially means that patents will be more difficult to obtain. This change may also impact Information Disclosure Statement practices and the actions of inventors and applicants in foreign countries prior to filing a patent application in the United States. These changes to the scope of prior art also provide further incentive for applicants to file patent applications as soon as possible. 

For further discussion about how expanded prior art may affect your practice, click here.

Micro Entities: Who Qualifies and What Does It Mean?
The AIA creates a new “micro entity” classification for patent applicants. Similar to “small entity” applicants, micro entity applicants are given significant reduction in fees at the U.S. Patent and Trademark Office (PTO). In order to receive the fee discount from the PTO, at least under the current, not-yet formally adopted definitions in the AIA, applicants must make a number of certifications regarding the number of patents on which they are inventors, their income, and their assignment of rights to the application in question. Applicants can also receive micro entity status by association with, and assignment of rights to, an institution of higher education. Micro entity status can offer significant benefits to applicants, but must be elected after careful consideration, as penalties for improperly electing the status can be severe. 

For further discussion about micro entities, click here.

Prioritized Examination: Track I, Take 2
After a brief hiatus following its initial proposal, the AIA officially implemented the “fast track” prioritized examination procedure at the PTO. Applicants can now seek special, expedited treatment of their application to have it considered and ultimately decided within 12 months by payment of a $4800 fee (discounted for small entities) and meeting a few other, not particularly onerous requirements. Prioritized examination is different from accelerated examination, which requires applicants to provide an up-front search and analysis in order to received expedited treatment. Statistics related to prioritized examination are promising, and they indicate that applicants interested in pursuing this procedure still have plenty of time to file a request for prioritized examination in the 2012 fiscal year (which runs through September 30, 2012) without risk of being locked out by the PTO’s 10,000 prioritized examination yearly request limit. 

For further discussion about the requirements for participating in prioritized examination, click here.

Equally Important, Miscellaneous Provisions of the America Invents Act
While the rest of the articles in this edition of Nutter’s IP Bulletin are dedicated to some of the most challenging and sweeping provisions of the AIA, this article highlights, and provides practical tips for coping with a variety of miscellaneous, but equally important, AIA provisions. These provisions should not be overlooked by practitioners that may otherwise be focused on other, more widely-publicized provisions of the AIA. The provisions discussed in this article include the best mode defense, citation of prior art in a patent file, false marking and virtual marking, inter partes review, inventor’s oath and declaration, supplemental examination, multi-defendant litigations, opinions of counsel, tax strategies in patent applications, and third party prior art submission. 

For further discussion regarding these AIA provisions, click here.

Nutter’s quick reference guide as to when some of the more significant provisions of the AIA did or will take effect:



 Best Mode Defense Elimination  Already Implemented
 False and Virtual Marking  Already Implemented
 Micro Entities

 Already Implemented*
 *Practically ~2013, when fee schedules are adjusted

 Multi-Party Patent Infringement  Already Implemented

 Prioritized Examination

 Already Implemented
 Tax Strategies Deemed Prior Art  Already Implemented
 Citation of Prior Art in Patent File  September 16, 2012
 Failure to Obtain Opinion of Counsel  September 16, 2012
 Inter Partes Review  September 16, 2012
 Inventor's Oath and Declaration  September 16, 2012
 Post-Grant Review  September 16, 2012*
 *Practically ~2014-15; applns. filed by 3/16/13 or later
 Supplemental Examination  September 16, 2012
 Third Party Art Submission  September 16, 2012
 Expansion of Prior Art Scope  March 16, 2013
 First-to-File  March 16, 2013

Nutter's IP Bulletin is a bi-monthly publication of the Intellectual Property Practice at Nutter McClennen & Fish LLP in Boston. For further information, please contact your Nutter attorney at 617-439-2000.

Recognized as a “Go-To” patent firm by IP Law & Business and Corporate Counsel, Nutter is dedicated to making its clients’ strategic goals a reality and to maximizing the protection and value of their intellectual property. The firm has a long track record as the trusted IP advisor to innovative public and private companies, medical institutions and research universities, investors, entrepreneurs and inventors.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

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