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This document summarizes strategies for managing patent rights after the America Invents Act. It discusses the changes to a first-inventor-to-file system, provisions of the Act like prioritized examination and third party challenges, and developing a comprehensive patent strategy including defensive and offensive patenting, monitoring competitors, and ensuring freedom to operate. The document provides an overview of patent basics, the patent process, and considerations for patent filing, review, and enforcement.
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CTO-Patent-Pres
- 1. Practical Strategies for Managing Patent Rights After the America Invents Act (AIA) Marcus Simon Partner, Patent Prosecution Group Dorsey & Whitney LLP Salt Lake City Office June 23, 2014
- 2. Clean Technology Patenting *data and graphs from the Clean Energy Patent Growth Index published by Hesling Rothenberg Farley & Mesiti P.C. The report tracks patents in solar, wind, hybrid/electric vehicles, fuel cells, hydroelectric, tidal/wave, geothermal, biomass/biofuels, and other clean energy U.S. clean energy patent grants are on the rise
- 3. Clean Technology Patenting by Subject Matter
- 4. Overview Patent Basics The America Invents Act (AIA) Patent Strategy
- 5. Patent Basics: What is a Patent? Complete description of an invention, followed by claims Claims: The claims define in words the inventive technology owned by the patent holder Rights: Patents provide the right to exclude others from making, using, selling, or importing the claimed invention into the United States a patent does not confer a right to use invention Term: of 20 years from filing (not counting various patent and regulatory extensions)
- 6. Patent Basics: Anatomy of a Patent Specification Abstract Detailed Description Figures Claims Define the territory owned or scope of the invention From U.S. Patent No. 8,541,127 assigned to Tesla Motors, Inc.
- 7. Patent Basics: Claims Independent and Dependent Claims Examples from U.S. Pat. No. 8,541,127 Assigned to Tesla Motors, Inc. 1. A thermal management system for use with a battery pack, the battery pack comprised of a plurality of cells arranged into at least a first row of cells and a second row of cells, wherein said first row of cells is adjacent to said second row of cells, said system comprising: a cooling manifold assembly interposed between said first and second rows of cells, said cooling manifold assembly comprising; a coolant tube, said coolant tube including at least one coolant channel, wherein said coolant tube is comprised of a first surface adjacent to said first row of cells and a second surface adjacent to said second row of cells; and a thermal interface layer overmolded onto said coolant tube, wherein said thermal interface layer is comprised of a plurality of pliable fingers that extend away from said coolant tube, wherein said plurality of pliable fingers are interposed between said first surface of said cooling tube and said first row of cells and between said second surface of said cooling tube and said second row of cells, and wherein said plurality of pliable fingers are deflected by and in thermal contact with said first and second rows of cells. 2. The thermal management system of claim 1, wherein said first row of cells is offset from said second row of cells.
- 8. Types of Patents: Technologies Patentable Subject Matter: Any new and useful process, machine, manufacture, or composition of matter Mechanical Inventions turbines, wind power, hydropower, electric vehicles, fueling stations, modular housing Electrical Inventions (hardware, software) solar cells, fuel cells, batteries, power distribution control, network architecture for power management, LEDs Chemistry-Related Inventions and Biotechnology biodegradable materials, polymers made from recycled pollutants, light-weight composites, high-temperature materials for more efficient combustion technologies, cement alternatives, insulation materials Methods or processes for any of the above-types of Inventions methods of use, methods of making, etc.
- 9. Example Timeline of a Typical U.S. Patent Application Year -1: Provisional application filing patent pending, Year 0: File non-provisional description substantively frozen 18 months after first filing patent application publishes unless a nonpublication request was filed Year 2 Claims are examined and, often, rejected Years 2-3.5: Patent Prosecution back and forth with Patent Office, arguing law and technology, amending claims Year 3.5: Notice of Allowance Year 4: Issued U.S. Patent Patented mark with patent #
- 10. Additional Patent Requirements: Duty of Disclosure Duty of Disclosure Must disclose anything material to patentability Applies to everyone involved with the prosecution of a patent application including non-inventors No duty to search Related cases, prior sales, publications, other prior art Consequences: Failure to comply can render patent (and even related patents) unenforceable
- 11. Additional Patent Requirements: Proper Inventorship Inventor = One who makes an inventive contribution to at least one of the claims (i.e., conceived of an essential element of the claimed invention) AN INVENTOR IS NOT: Someone who uses routine skill in the art to implement anothers idea Someone who explains how the invention works Someone who invented subject matter that is not claimed analogous to publication authorship Consequences: Incorrect inventorship can render patent unenforceable, but corrections possible for good faith mistakes
- 12. Additional Requirements: Records Why are records important? Can be used to establish date of invention Can be used to establish inventorship Document Conception and Reduction to practice (old law) and Derivation (new law) Recording Research and & Development Bound books or verifiable electronic records At start of project, describe the goals Have a non-inventor review, understand, and witness pages of your notebook
- 13. America Invents Act Main Provisions First inventor to file Prioritized examination Micro-entity status Ways to challenge patents Prior art submission Post-grant review Inter partes review Supplemental examination
- 14. America Invents Act (AIA) First Inventor to File (effective March 16, 2013) Priority given to first filed patent application Prioritized Examination (effective September 26, 2011) Patent Office will target final disposition in 12 months Limited number of claims (4 independent, 30 total) Opposition Period (effective September 16, 2012) Within 9 months of a patent grant, a party may challenge claims in a patent by Petition to the Patent Office Must demonstrate it is more likely than not the petitioner will prevail on at least one claim
- 15. First Inventor to File (effective March 16, 2013) Previous Law First to Invent Can show that one was first to invent, not first to file a patent application America Invents Act The first patent applicant to file a patent application has the rights No longer first patent applicant to invent Inventors one-year grace period remains May argue earlier filer derived the invention from you Consequence: Race to the patent office
- 16. 16 First-to-File: Invention and Filing Date Timeline Example timeline Under old first-to-invent system: Inventor B wins Conceive Of Invention Reduce To Practice File Patent Application Conceive of Invention Reduce to Practice File Patent Application Under new first-to-file system: Inventor A wins Inventor B Inventor A
- 17. 17 First-to-File: Inventors Grace Period Example timeline Third-party disclosure will not bar the application Timeline: Inventor discloses invention Application filed 1 year Third party discloses invention
- 18. 18 First-to-File: First to publish priority Example timeline Inventor may still obtain patent despite being 2nd to file, because they were 1st to disclose Timeline: Inventor discloses invention Inventors Application filed 1 year Third party discloses invention Third party files application
- 19. Pitfalls of Provisional Patent Applications You Your Competition Provisional Application Filing Date, but claim not supported Before: Even if provisional fails, could still prove earlier invention After America Invents: Provisional fails, and competition may obtain the patent Non-Provisional Application Filing Date Provisional Application Filing Date, claim is supported Non-Provisional Application Filing Date
- 20. Track I Prioritized Examination Patent Office Goal: final disposition in 12 months Application is picked-up for examination very quickly by the Patent Office Claim Limit: maximum 30 claims, 4 independent Prosecution: Costs incurred earlier Its expensive $2,000 for a small entity Program limited to 10,000 per fiscal year
- 21. 21 Micro-Entity Status Establishes micro-entity status: For small entities and universities that: filed less than 4 applications in the prior year; and had a gross income of less than 3 times the median household income in the prior year (less than $153,051); or Inventors employed by, or obligated to assign/license to, institution of higher education beware of assignments to tech transfer offices that are not institutes of higher education Micro-entity applicants receive a 75% reduction in application costs Current small entity status: 50% reduction
- 22. Third Parties: How to Mess with other peoples patents Preissuance Submission of Prior Art by Third Party Post-Grant Review Inter Partes Review (replacing inter partes re-exam)
- 23. Third Party Prior Art Submission Submitting patents or other printed materials to the Examiner of competitors patent applications Submit before the Examiner allows application or, if application has not been allowed, before a first rejection and before application has been published for 6 months Third party can describe why the materials are relevant Strategic Issues Monitor published patent applications Big Potential Liability: Could strengthen competitors patent, so only use if you would not consider challenging the patent later in court based on same prior art
- 24. Post-Grant Review (PGR) Challenge a patent during the nine months following the patent grants Basis: any ground for invalidity (broader than existing reexamination) Standard: preponderance of evidence (more likely than not) to initiate and to prevail Estoppel: precluded from using same art, or other known references, in district court action PGR may only be filed against patents issuing with priority dates later than March 15, 2013
- 25. Post-Grant Review continued Proceeding is conducted by the Patent Trial and Appeal Board Final determination must be given within 1 year of institution of proceedings (can be extended by 6 months for good cause shown) Strategic Concerns: Can be quicker, and cheaper than litigating, but can preclude your ability to litigate later!
- 26. Post-Issuance: Inter Partes Review (IPR) Available 9 months after issuance or after termination of post-grant review The 3rd party also participates Basis: only novelty and non-obviousness Standard: to initiate reasonable likelihood of prevailing (slightly lower threshold than PGR); to prevail preponderance of evidence Estoppel: precluded from using same art, or other known references, in district court action 26
- 27. 27 Supplemental Examination Process effective Sept. 16, 2012 Patentee may request the patent office consider or correct information that may be relevant to the patent Patent Office will order re-examination if a substantial new question of patentability is identified Cannot be used if an infringement suit is already underway Strategic Considerations Can cure your own questionable patents Information considered during supplemental examination cannot be used later in court for an unenforceability claim
- 28. Patent Strategy: Developing a Cohesive Approach Business Goals What is the Market? Competitors? Develop a long-term patent strategy Protect current and future product developments Patents protecting current R&D trajectory Patents protecting new products Freedom to Practice Does the product, component of the product, or performance of a process infringe a third party patent? In-license Patent Portfolios
- 29. Patent Strategy: General Guides for First-to-File Consider Competitive Strategy Early Define your market Define your competitors File Patent Applications Early Before public disclosure even though there is still a grace period Use of provisional applications as an integral component of the overall strategy Cover IP through multiple filings over time Claim invention in a variety of ways File Patent Applications Fully Support the claimed subject matter Monitor new technological developments/directions of competitors
- 30. Patent Strategy: Goals of a Robust Patent Portfolio Enforcement prevent a third party from practicing Monitor marketplace for competitors; notify & pursue Support licensing and business negotiations Exclusive or non-exclusive licensees Geographic areas Patent pooling, patent warfare, patent sales Freedom to Practice
- 31. Patent Strategy Defensive and Offensive Patents Defensive Patents protect what Company is doing or wants to do Define against licensed-in patents Offensive Patents protect what others might do to get around Company Publication of applications serves as prior art against others seeking broad coverage Many companies stop here Savvy companies implement these IP strategies
- 32. 32 Patent Strategy: Patent Infringement Are we infringing this patent? We just got a letter Develop an understanding of the product Analyze the patent; construe the claim terms Compare Does the product/activity meet all the limitations of any claim? Formal opinion may be used to help protect a client against a willful infringement claim (treble damages) Claims of patent vs. Product or activity
- 33. 33 Patent Strategy: Freedom to Operate If we make this widget, will we infringe anyones patents? Develop an understanding of the widget Conduct search for patents in the field Compare Does the widget meet all the limitations of any claim? Difficult to find all art May be able to find design-around to minimize risk Claims of 3rd party patents vs. Proposed Widget
- 34. Consider your patent strategy before you disclose technology!! After public disclosure, have 1 year to file (in the U.S.) Public disclosure defeats most foreign patent rights Includes sales, offers for sale Can include trade shows, marketing materials, posters, websites or demos Institute an Internal Patent Review Patent Strategy: Timing of Filing
- 35. Thank You! Questions Marcus S. Simon Partner, U.S. Patent Attorney Patent Group Head SLC Office Dorsey & Whitney LLP 136 South Main Street, Suite 1000 Salt Lake City, Utah 84101 Phone: (801) 933-7360 simon.marcus@dorsey.com