IP Update, Vol. 9, No. 5 (21 September 2011)

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

In this Issue:



Patent Reform in Brief

The America Invents Act (AIA) was signed into law by President Obama on September 16, 2011. Various portions of the AIA become effective at different times. Below, we present a brief overview of the changes that will affect applicants and patent owners now and in the future.

USPTO Fees Increase 15% on September 26, 2011

The most visible and immediate change to most applicants will be a 15% surcharge on almost all USPTO fees, effective September 26, 2011. A new fee schedule is available at the USPTO.

Effective dates for all provisions of the Act may be viewed at the USPTO web site (click here). However, the overview below presents the effective dates of select provisions.

Effective Dates of Select Provisions

At enactment (September 16, 2011):
  • Changed threshold standard for Inter Partes Reexamination (reasonable likelihood that requester would prevail)
  • failure to recite best mode no longer a grounds for unenforceability or invalidity in court; not required to show priority (however, still a consideration for examination at USPTO)
  • prior user rights defense expanded to all patents under 35 U.S.C. 273
  • virtual marking acceptable and no qui tam
  • no tax strategy or human organism patents
  • 75% discount for “micro-entities”
  • Patent owner in civil infringement case must establish joint liability of all defendants, such that the infringement issues all relate to transaction or question of fact common to all defendants (see "America Invents Act Exhibits 'Con-Troll' Over Patent Litigation" article for detailed analysis)
10 days after enactment (September 26, 2011):
  • 15% surcharge on almost all USPTO fees
  • prioritized examination (Track 1) implemented, intends 12-month disposal of application, $4800 additional fee at filing, no more than 4 independent and 30 total claims
60 days after enactment (November 15, 2011 – per USPTO document):
  • $400 surcharge for non-electronic filing of application
12 months after enactment (September 16, 2012):
  • Post-Grant Review: filed within 9 months after issue; any grounds of rejection can be asserted (i.e., not just prior art) except failure to disclose best mode; no previous pending court action allowed; estops later proceedings using same or available grounds
  • Inter Partes Review: like Inter Partes Reexamination, but different standards and timelines, after later of Post-Grant Review and 9 months after issue; limited to prior art grounds of rejection
  • Supplemental Examination: patent owner can submit additional art references for consideration – but no fraud on the Office
  • Pre-Issuance Submissions: 3rd parties can submit art references in pending patent applications
  • Filing oath/declaration by assignee: if inventor not able/available, assignee can file and prosecute, submit oath/declaration
18 months after enactment (March 16, 2013):
  • First inventor to file system applies to all patent claims with this effective filing date or later
  • Derivation proceedings (to determine if filing inventor derived invention from earlier inventor) - Interference Proceedings persist until March 16, 2013
Before 3 years after enactment (September 16, 2014):
  • Establishment of 3 USPTO satellite offices (including one in Detroit, MI)

For more detail, please refer to the IP Update of September 16, 2011 or the America Invents Act itself. Please contact one of our professionals for additional information about how the changes in U.S. patent law may affect applicants and litigants.

Summary provided by James C. Larsen

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Federal Circuit Tightens the Inequitable Conduct Standards

The Federal Circuit issued an en banc decision in Therasense Inc. v. Becton Dickinson and Co. on May 25, 2011, in which issues related to inequitable conduct were considered. In the decision the Court stated that it was tightening “the standards for finding both intent and materiality to redirect a doctrine that has been overused to the detriment of the public”.

According to Therasense, to prevail on an inequitable conduct claim, “the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.” The Court maintained that materiality and intent are separate elements, but eliminated the “sliding scale” approach that balanced materiality with intent. To meet the clear and convincing standard, the specific intent to deceive must be “the single most reasonable inference able to be drawn from the evidence,”

Further, the Court held that materiality is now to be determined using the “but-for” standard, which means the withheld prior art is material only if the PTO would not have allowed a claim if it had been aware of the undisclosed prior art. That determination is made using a preponderance of the evidence standard while giving claims their broadest reasonable construction. The Court stated that it declines to adopt the current version of the USPTO regulation, 37 CFR § 1.56, that defines materiality.

The USPTO has published a Notice of Proposed Rule Making (Fed. Reg. Vol.76, No. 140) proposing a revision of the standard for materiality defined in 37 CFR §1.56 in light of the Therasense decision. The public comment period on the proposed rule change closed on September 19, 2011 and it is expected that the USPTO will issue the final rule within the next three months.

Summary Provided by Nicholas Godici

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