Grace Period, FirsttoInvent, Interferences, Reexamination in the U'S'

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Grace Period, First-to-Invent, Interferences,
Reexamination in the U.S.
Asia Pacific Legal Institute Summer 2005
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35 USC 102(b) Grace Period

• patented/published anywhere,
• or public use or sale in USA, MORE THAN 1 YEAR
  BEFORE FILING IN USA
• Grace Period Benefits
• Provides for U.S. market to be maintained in
  event of accidental publication or offer for sale
• Provides for U.S. only technologies to be
  shopped at trade shows, venture capital fairs,
  seed funding meetings, etc. without loss of rights

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35 USC 102(e)

• e) (1) described in published application by
  another filed in USA before invention,
• e)(2) described in patent by another filed in USA
  before the invention by the applicant, except
  patent filing date is date of US Nat'l entry
  (filing shall not be on basis of PCT filing),
• except that PCT's will not be prior art or
  provide a filing date unless they designate the
  U.S. and are in the English language.

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35 USC 102(e) Strategy

• Important Note the filed in the USA clause
  provides a substantial benefit to applicants
  vis-à-vis competitors when a fully enabled U.S.
  provisional is the earliest filed.
• For example, if a European applicant wishes to
  maximize the prior art effect of his or her
  patent application and avoid getting into an
  interference, it would be advisable to filing the
  application as early as possible in the U.S.

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Swearing Behind a Reference

• Idea
• Under U.S. law it is possible to remove a prior
  art reference which has an effective date of one
  year or less before the date your application was
  filed.
• 37 CFR 1.131
• allows an inventor to submit his or her redacted
  lab notebook pages along with a Declaration under
  penalty of law to show conception of the
  invention before the prior art date.
• Effect
• the Examiner drops the rejection, but may
  investigate whether an interference should be set.

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35 USC 102(g)

• 102(g)(1) invented by another who did not
  abandon/suppress/conceal as established in an
  interference
• 102(g)(2) made by another in USA w/o
  abandon/suppress/conceal BEFORE THE INVENTION

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Interferences 35 USC 135

• Idea
• A contest at the USPTO (BPAI) to determine who
  invented it first
• Scope
• Between a patent and an allowed application which
  claims the same or substantially the same subject
  matter (also rarely between two applications)
• Filing dates must be within 1 year of each other
• Comparison of lab notebooks
• Result
• Winner takes all

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Interferences 35 USC 291

• Idea
• A contest at Federal Court to determine who
  invented it first
• Scope
• Between a patent and patent which claims the same
  or substantially the same subject matter
• Comparison of lab notebooks
• Result
• Winner takes all

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Interferences

• Count
• A claim to a patentable invention
• Senior Party
• The party having the earliest published filing
  date
• Junior Party
• The party who must prove prior conception and
  daily diligence until filing

• Publicly available files
• Most files involved with or related to an
  interference are open to the public
• Phantom Count
• A claim strategically drafted to encompass both
  parties claim sets
• Winning Party
• party which is awarded all of the patents and
  applications.

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Interferences

• The contest proceeds under an ALJ, much like a
  full trial with motions, discovery, timelines,
  and Judge-ordered submissions.

• An application for interference must be filed
  within one year
• of the date of the granted patent or
• of the date of the other application.

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Reissue Application

• Idea
• Under U.S. law a patent holder may fix a
  defective patent by re-submitting it to the
  USPTO.
• Scope
• Any defect may be remedied, e.g. inventorship,
  prior art, IDS submissions, etc.
• It is possible to broaden the patent claims (w/in
  2 yrs)
• Strategy
• Use this before litigation to strengthen patent
• Use it during litigation to stay the lawsuit
• Tricks
• The patent does not have to be surrendered until
  allowed claims are received

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Re-Examination Proceeding

• Idea
• Patent holders may have their patent re-examined
  for prior art issues only (must be a substantial
  new question of patentability)
• Scope
• Participation limited to patent holder
• Any prior art, even prior art which was put in
  IDS, can be the basis for the request.
• Timing
• May be done at any time during life of patent

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Third-Party Re-Examination

• Idea
• Anyone can request that a patent be re-examined
  by the USPTO
• Scope
• Participation limited to patent holder (full
  rights of participation) and party requesting
  re-exam (limited right of participation).
• Any prior art, even prior art which was put in
  IDS, can be the basis for the request.
• Timing
• May be done at any time during life of patent

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Third-Party Re-Examination

• Strategy vs. Patent Holder
• All issues raised in reexam may not be re-raised
  in litigation so it may be worth considering not
  using your best prior art in a reexam.
• Reexam can delay a patent holders lawsuit
• Previous advice was that
• weak patents go into reexam, strong ones come
  out
• Current Advice
• nobody knows yet, since it is a recently new law.

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Thank you.

• Todd L. Juneau
• todd_at_juneaupartners.com