Cross Border Patent Protection

Cross Border Patent Protection
November 18, 2014
Dr. Keith D. Weiss
Presented to
Cross-Border Institute
Law, Technology, & Entrepreneurship Clinic (LTEC)
University of Windsor
Foreign Entity Filing in U.S.
U.S. Patent Requirements
The Process of Obtaining a U.S. Patent
America Invents Act (AIA) – Key Changes
Foreign Entity Filing in U.S.
176 Contracting Countries to Paris Convention
National Treatment – each country will provide same
protection to nationals of all contracting states that it provides to its
own nationals
Right of Priority – applicant may file application in any
contracting state within 12 months of first national application and
be given priority date of first national application
Common Rules –
(a) Patents that are issued are country specific
(b) Inventors have the right to be named
Foreign Entity Filing in U.S.
148 Patent Cooperation Treaty (PCT) Member Countries (in Blue)
Foreign Entity Filing in U.S.
PCT Timeline
Foreign Entity Filing in U.S.
35 U.S.C. § 371
National Stage
Specification is same as
international phase, change
requires preliminary amendment
IDS only needed if PCT search
results not submitted to USPTO
Certified copy of priority
document only needed if not
submitted to USPTO
Treated as the same application
as the PCT
35 U.S.C. §363
"[a]n international application designating
the United States shall have the effect,
from its international filing date under
article 11 of the treaty, of a national
application for patent regularly filed in
the Patent and Trademark Office....”
“ByPass” Continuation
Specification does not have to be
the same, i.e. no preliminary
amendment required
New IDS needed
Certified copy of priority document
not required (*can submit copy
and link from WIPO)
Treated as a new application
Foreign Entity Filing in U.S.
Summary of Benefits
Easier changes to specification/claims
New matter
Provisional rights
Lower preparation costs
Delayed payment of fees
Total USPTO fees
Non-English language application
Reduced USPTO delays
Easier restriction practice
Patent Term Adjustment (PTA)
Accelerated Examination
A U.S. Patent Is…
Article I, Section 8, Clause 8
Congress Shall Have the Power …..
To promote the progress of science
and useful arts, by securing for
limited times to authors and
inventors the exclusive right to their
respective writings and discoveries;
 A contract with the U.S.
 Inventor discloses and
describes the invention.
 The U.S. government gives
the inventor a 20 year right to
exclude others from making,
using, or offering the claimed
invention for sale.
 Does not provide permission
to manufacture and sell.
 Patent rights are for U.S. only.
U.S. Patent Act -- 35 USC Sections 1 - 376
A legal tool which permits the inventor or assignee to protect the
investment of time, money, and resources expended in contributing
to the advancement of technology for a period of time reasonable to
realize a monetary return.
• Protects Product/Service
Create Value
– Discourages competitors from entering market
– Sue infringers
– Creates licensing opportunities
• Builds Image as Technology Leader
Important to Seek Protection for Your Invention
How are Patent Rights Protected?
Polaroid vs. Kodak
Polaroid sued Kodak for infringing
on 12 patents protecting their
instant photography products. The
court ruled in Polaroid’s favor and
stopped Kodak from making such
cameras. Kodak’s losses included a
cash settlement with Polaroid, the
inability to provide film for 16M
cameras already sold, and the
rendering of $200M in plant
equipment useless.
An inventor’s right to exclude others from
practicing the invention is protected from
infringement. A party whom makes, uses, or
sells the invention without the consent of the
inventor can be held liable to pay damages. If
the infringing party continues to infringe upon an
invention after being notified, they may be liable
for triple damages and attorney fees.
A typical defense used in court is to have the
patent or specific claims declared invalid due to
prior art. A Federal District Court has jurisdiction
to render a decision.
Obtaining a patent does not grant the right to make, use or sell the
invention. The non-existence of dominating patents must be determined.
(Example: 3-legged stool vs. 4-legged chair)
Statute (35 U.S.C. 101-103)
What is an Invention?
Any new, useful, and non-obvious process, device (+ improvements) or
composition of matter, provided it is different from prior art of which you are
aware. Except….. 1. Printed matter or arrangement
2. Scientific principle, equation, law of nature
3. Naturally occurring substance
4. Method of doing business
5. A mental process
Useful (Utility):
You must demonstrate that the invention has
an intended purpose
New (Novelty):
The invention can not be known or used by
others prior to submitting an application
NOTE: U.S. (only) allows 1 year leeway
(Inventive Step)
The differences between the invention and prior
art are great enough that the basic concept is
not obvious to anyone of ordinary skill.
Patent Requirements
1. The statute defines things that the patent office considers prior
art. Prior Art is a term used to describe existing knowledge
found within the public domain in the form of ….
Issued patents
Published patent applications
Printed publications or articles
Products or items in public use
or for sale
Duty of Candor
Anyone involved with a patent
application (e.g., inventors, attorneys,
etc.) must disclose to the patent
office any pertinent prior art to which
they are personally aware of.
2. In the United States, an inventor’s own activities may not
destroy novelty so long as a patent application is filed within
one year of the activity (12-month grace period).
3. Many countries, however, have an absolute novelty
requirement—there is no grace period. Thus, file application
before public disclosure.
Patent Requirements
Non-Obvious is a Subjective Judgment...
Factors Used to Evaluate Non-Obviousness
The knowledge disclosed by prior art
(issued patents, published articles, existing
products for use/sale, etc.)
The differences that exist between the
invention and the prior art
Resolution of what should be considered
ordinary skill
Secondary considerations, e.g., commercial
success of the invention
Patent Requirements
Written Description and Enablement (35 U.S.C. § 112)
“The specification shall contain a written description of
the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms
as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to
make and use the same, and shall set forth the BEST MODE
contemplated by the inventor of carrying out his invention.”
Enablement requirement requires that the public knowledge is enriched
by the specification commensurate in scope with the claims.
The written description requirement is construed so that the claims do not
cover more than that which the inventor described.
Patent Requirements
Claims - Apparatus, Composition, Method (making or using)
Claims are the legal “metes and bounds” defining a patent holder’s
rights and what a patent holder can exclude someone else from doing
during the term of the patent.
Claims define elements of the invention and their interrelationship to
one another.
Claims include independent and dependent claims.
1. An independent claim is necessarily broader in its scope than any
claim that depends from the independent claim. (Think of a
2. Dependent claims depend from other dependent claims or an
independent claim. (Think of a subgenus or species.)
Each claim stands on its own for purposes of assessing patentability,
enforceability, and infringement.
The Patenting Process
Protect the Invention Before the Patent Application is Filed …
 Do not publish invention in any public forum (either as a
written document or presented as a seminar)
 Do not offer invention for sale
 Properly use a Confidentiality Agreement with potential
customers. Document the relationship and any sample
testing as EXPERIMENTAL. (“This will avoid any secret
offer for sale”)
 Label all samples and documents as Confidential
The Patenting Process
What Happens After a Patent Application is Submitted?
(1) A patent examiner is assigned from an appropriate
technical area
(2) Examiner conducts a search for existence of prior art
(3) Examiner may reject invention in part or whole as being
similar to and/or obvious; Examiner may also reject due to
unclear invention description
(4) Applicant/Attorney files a formal response to Examiner’s action;
A reduction in scope of the claims may result
(5) Steps (3) and (4) repeat until a decision is reached or a final
rejection is received
(6) Either a PATENT ISSUES or a decision is made to file a
continuation or an appeal to the Patent Appeal Board
American Invents Act (AIA)
 Prior to passage of the American Invents Act (AIA), the
U.S. employed a “First to Invent” system.
 The AIA changed that standard to a first-inventor-to-file
system on March 16, 2013.
- Not a true “first-to-file” system
- Named inventor must be a true inventor; filing by a
non-inventor is still prohibited.
- The application with earlier “effective filing date”
American Invents Act (AIA)
Effective Filing Date
 Actual filing date of the patent or application for
 Earliest claimed priority date
Paris Convention priority
PCT practice
U.S. continuation and divisional practice
AIA – Inter Partes Review (IPR)
 Created by AIA, effective September 16, 2012 (but applicable to all
 Replaces Inter Partes Reexamination
 Tribunal is the Patent Trial and Appeal Board (PTAB) in USPTO
 Who can request? Anyone not the patent owner (must identify
real party in interest)
 What is the basis? Prior art under Sections 102 and 103
consisting of patents or printed publications
 What is the standard to initiate? “A reasonable likelihood” of
invalidity of at least one challenged claim
 Claims are given their “broadest reasonable construction in light of
the specification”
 What is the cost? A request fee of $9,000 (partially refunded if IPR
not ordered), and $14,000 if a review is instituted
 Who participates? Once an IPR is initiated, both the patent owner
and the requester participate
AIA – Inter Partes Review (cont.)
 When can IPR be requested? Anytime, except:
 Not within nine months of grant or until a PGR has concluded
 Not if petitioner has filed a civil action challenging validity of a
claim of the patent
 Not if petitioner was sued for infringement of the patent more
than one year before
 How long can an IPR last? One year by statute, with a 6-month
extension for “good cause”
 What is the petitioner’s burden of proof? Must prove unpatentability
by a preponderance of the evidence
 Is there estoppel? Yes, if the IPR results in a final decision
 As to any ground raised or that reasonably could have been raised
 On claim-by-claim basis
 In the USPTO, a civil action, and the ITC
AIA – Inter Partes Review (cont.)
 Discovery is available but limited
 No “fishing expeditions”
 A protective order is available to protect confidential information
 Claim amendments by the patent owner are limited
 One motion to cancel a challenged claim and/or propose a
reasonable number of substitute claims
 Claims cannot be broadened
 Intervening rights available for amended claims
 Settlement is possible between the patent owner and a requester
 In writing and filed with the USPTO
 No estoppel applies
 Appeal of a final PTAB decision is to the Court of Appeals for the
Federal Circuit (CAFC)
AIA – Inter Partes Review (cont.)
 Compared to a patent litigation in federal court, IPR is:
 Faster (12-18 months versus years)
 Less expensive ($100,000-300,000 versus 10X that, or more)
 Focused on validity
 Handled by a tribunal experienced with patents and technology
(versus a judge or jury)
 No presumption of validity (prove invalidity by preponderance of
evidence versus clear and convincing evidence)
 Claims given “broadest reasonable construction” versus
interpretation by one skilled in the art
 More costly than ex parte reexamination
 Estoppel applies (but estoppel also applies in litigation)
 Much more limited discovery than in litigation
AIA - Post-Grant Review (PGR)
 Created by AIA, effective September 16, 2012 (but only applies to
patents with an effective filing date of March 15, 2013 or later)
 Tribunal is the PTAB
 Who can request? Anyone not the patent owner (must identify
real party in interest)
 What is the basis? Any ground of invalidity under:
 Section 101 (patentable subject matter)
 Section 102, 103 (prior art)
 Section 112 (enablement, written description - - but not best
 “A novel or unsettled legal question that is important to other
patents or patent applications”
 What is the cost? A request fee of $12,000, plus $18,000 if a
review is instituted
AIA - Post-Grant Review (cont.)
 When can a PGR petition be filed? Only within nine months of
patent issuance, except:
 Not if petitioner has filed a civil action challenging validity of a
claim of the patent
 What is the standard to initiate? Invalidity of at least one
challenged claim is “more likely than not”
 Like IPR, claims are given their “broadest reasonable construction
in light of the specification”
 Is there estoppel? Yes, if the PGR results in a final decision
 As to any ground raised or that reasonably could have been
 On claim-by-claim basis
 In the USPTO, a civil action, and the ITC
AIA - Post-Grant Review (cont.)
 Like an IPR, a PGR:
 Must conclude within one year (with a 6-month extension
possible for “good cause”)
 Imposes a burden of proving invalidity by a preponderance of
the evidence
 Allows both the patent owner and the requester to participate
 Allows limited discovery
 Allows the patent owner to make a motion to cancel any
challenged claim and/or add a reasonable number of (not
broader) substitute claims
 Provides intervening rights for amended or new claims
 Allows for settlement
 May be appealed to the CAFC
AIA - Post-Grant Review (cont.)
 Generally the same as for IPR, but more invalidity grounds may be
 Can track competitors’ patent applications and “oppose” dangerous
patents when they issue
 Generally the same as for IPR, but estoppel is broader (because
more invalidity grounds are available)
 Limited window of time to request (9 months)

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