• What has changed? – New Rules Governing Prior Art – Post Grant Review – Microentity Fees – Priority Examination of “Important” Technologies – Fee Diversion • How do the changes affect small business? • What steps can you take now?

1. The America Invents Act
Historic Changes Affecting Small Business
Frisina & Smith, LLC
Innovate. Strategize. Succeed. TM
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

2. Contents
• What has changed?
– New Rules Governing Prior Art
– Post Grant Review
– Microentity Fees
– Priority Examination of “Important” Technologies
– Fee Diversion
• How do the changes affect small business?
• What steps can you take now?
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

3. What Changed?
Timeline of Effective Dates
• September 16, 2011 • November 15, 2011
– Sec. 5 Prior commercial use defense – Sec. 10 Additional fee for paper filings
– Sec. 6 New Inter Partes reexaminations std. • September 16, 2012
– Sec. 9 Venue provisions –Sec. 4 Oath and declaration requirements
– Sec. 10 Microentity –Sec. 6 Post‐grant review
– Sec. 14 Tax Strategies deemed known prior art –Sec. 6 Inter Partes review replaces reexam
– Sec. 15 Best Mode Requirement –Sec. 8 Pre‐issuance submissions by third parties
– Sec. 16 Virtual marking and false marking –Sec. 12 Supplemental examination
– Sec. 33 Limitation on issuance of patents –Sec. 17 Advice of Counsel
• September 26, 2011 –Sec. 18 Transitional program for covered business
– Sec. 11 15% fee increase method patents
– Sec. 11 prioritized examination • March 16, 2013
– Sec. 3 First‐inventor‐to‐file system
– Sec. 3 Derivation proceedings
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

4. New Rules Governing Prior Art
• Effective March 16, 2013
• First Inventor to File
– Geographic distinctions removed
– Eliminated Hilmer Doctrine
– 1‐year grace period remains
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

5. New Rules Governing Prior Art
Old Law New Law
102 sub‐section Event Where When 102 sub‐section Event Where When
public knowledge patented,
U.S. described in a printed
use by others
a anytime before DOI publication,
patented
in public use,
World Wide before the effective filing
a on sale, or
described in printed publication worldwide date of the claimed
(prior art) otherwise publicly available
in public use invention
U.S. described in a US patent of
on sale another,
b patented before critical date described in a published US or
World Wide PCT application of another
published in a printed publication
c Abandoned N/A N/A
two dates matter: (1) foreign
d foreign application by applicant. Foreign
filing date, (2) whether
foreign patent issues before
• New 102(b); Grace period provision
Issues before U.S. filing, AND filed more
than 12 months before U.S. filing.
U.S. patent.
• New 102(c); Commonly owned inventions
descibed in a published patent World Wide provided it's in
e
application english
anytime before DOI • New 102(d); Repeal of Hilmer Doctrine
described in a patent by another filed in U.S.
derived from another i.e. did not actually
f N/A N/A
invent
g another proves first inventorship within 104/WTO limits anytime before DOI
made by another U.S.
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

6. New Rules Governing Prior Art
• Grace period triggers under new 102(b)
– Disclosures made by the inventor
– Disclosures first made by the inventor
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

7. New Rules Governing Prior Art
• Common ownership under 102(c)
– A patent or application cannot be prior art if
• Commonly owned by or before the filing date OR
• Joint research agreement by or before the filing date
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

8. New Rules Governing Prior Art
• 102(d) repeal of the Hilmer Doctrine. Foreign applications can
now be prior art even if they are not in English.
“102(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of
determining whether a patent or application for patent is prior art to a claimed invention under
subsection (a)(2), such patent or application shall be considered to have been effectively filed, with
respect to any subject matter described in the patent or application—
• (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for
patent; or
• (2) if the patent or application for patent is entitled to claim a right of priority under section 119,
365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c),
based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such
application that describes the subject matter.”
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

9. New Rules Governing Prior Art
• Example 1: Old Law New
Law
A
B
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

10. New Rules Governing Prior Art
<1 year
• Example 2: Old Law New
Law
A
B
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

11. New Rules Governing Prior Art
<1 year
• Example 3: Old Law New
Law
A
B
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

12. New Rules Governing Prior Art
• Example 4: Old Law New
Law
A
B
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

13. New Rules Governing Prior Art
• Example 5: Old Law New
Law
A
B
Foreign app in PCT/US
Any language Published in English
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

14. New Rules Governing Prior Art
• Example 6: Old Law New
Law
A
B
Foreign app in PCT/US
Any language Foreign language
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

15. New Rules Governing Prior Art
• Practical effects of FITF
– Utility applications claiming a provisional
– Continuations‐in‐part
– Be mindful of prior publications
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

16. New Rules Governing Prior Art
• Has the meaning of public use changed?
– Secret use under the old law
• Secret use of a technology to make a product which is publicly sold has been
long regarded as public use
– Current status of secret use is undetermined
• Similar wording of old §102 and new §102, i.e. “public use”
• New §273 plus legislative history suggest a change in meaning
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

17. New Rules Governing Prior Art
• Prior User Rights §273
– Expanded to include all statutory subject matter
– Elements
• Prior user acting in good faith
• Prior use was in the United States
• The use was internal use, or sale of a “useful end result”
• The use occurred 1 year before
– The effective filing date
– The date of a public disclosure under 102(b)
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

18. New Rules Governing Prior Art
• Is the playing field level?
– New prior art definitions make it easier to own many closely related
patents
– Racing to the patent office
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

19. Post Grant Review
• Encompasses a variety of proceedings including Inter Partes
review, and derivation
• New higher standard: “reasonable likelihood to prevail”
• Time to file: 9 mo. after grant of patent
• Effective 9/16/2012
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

20. Preissuance Submissions
• ~ Opposition
• Effective 9/16/2012
• Any third party
• Any patents, published applications, or printed publications
relevant to examination
• Deadline:
– Before notice of allowance, OR
– The later of 6 mo. after publication, or before a first rejection
www.IPCorpLaw.com

21. Microentity Fees
• Entitled to 75% discount
• §123 Definition
– Qualifies as small entity
– Named in fewer than 4 patent applications
– Income limits (< 3x median household income)
– Has not assigned to a disqualified entity
• Effective 9/16/2011 … theoretically
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

22. Other Fees
• Fee Setting Authority
– New flexibility
– Aggregate costs of funding the USPTO
• Ex Parte Re‐exam
– $17,760 (+605%)
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

23. Other Fees
• Request for Continued Examination (RCE)
– $1700/$850 (+83%)
• Small entity filing fee:
– $920 (+74%)
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

24. Other Fees
• Notice of Appeal
– $1500/$750 (+142%)
– No fee for filing appeal brief (42% overall increase)
• Maintenance Fees
– 3.5 years: $1600/ $800 (+42%)
– 7.5 years: $3600/ $1800 (+26%)
– 11.5 years: $7600/ $3800 (+61%)
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

25. Other Fees
• Claim‐related fees substantially increase
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

26. Fee Diversion
• Has fee diversion really ended?
– Congress: “yes”
– USPTO: “not so much”
• 35 USC § 42(c)
– “To the extent and in the amounts provided in appropriations Acts…”
www.IPCorpLaw.com © 2009-2012 Frisina & Smith, LLC

27. Thank You
Frisina & Smith, LLC
Stow Office Akron Office
4301 Darrow Rd. 39 E. Market St.
Suite 1450 Suite LL‐1
Stow, Ohio 44224 Akron, Ohio 44308
Contact Us
(330)777‐0063
dominic@IPCorpLaw.com
www.IPCorpLaw.com
© 2009-2012 Frisina & Smith, LLC