HRFM Today

Does the First Inventor Get the Patent?

Maybe. Kind of.  Not so much... could be the answer to this question after recent changes in the Patent Law.  The US has moved from a first to invent system (which is almost like it sounds) to a first inventor to file system.   Under the old first to invent system, in the event of an applicant encountering a problem getting a patent through the patent office, or another trying to allege that a real inventor committed patent infringement,  an inventor could always pull out his inventor notebooks and prove that he invented his widget or process before another, assuming he was also diligent about filing a patent application.  By proving he was the first to invent, all the inventor's problems (or at least those relating to inventorship) would melt away.  With the new law, the US has edged closer to how the rest of the world treats its inventors and has moved to a system where the first to file (almost) gets the patent.  

PTAB Trial Update: USPTO Releases Proposed Improvements to Rules Governing PTAB Trial Practice and Key PTAB Statistics

Today the United States Patent and Trademark Office (USPTO) issued proposed improvements to the rules governing trial practice in post-patent issuance proceedings before the Patent Trial and Appeal Board (PTAB).  With the proposed improvements (which are set forth in the Federal Register Notice), the USPTO shared key statistics summarizing the activity before the PTAB in the three years since the America Invents Act (AIA) created three new post-issuance review proceedings: inter partes review (IPR), post-grant review (PGR) and transitional post-grant review for covered business method patents (CBM).

The proposed rules address public comments directed to the several trial issues, including the claim construction standard for AIA trials, a new option to submit testimonial/expert evidence with a patent owner’s preliminary opposition to a petition to institute a new proceeding, and a Rule 11 type certification for all PTAB filings to police misconduct.

The Director of the USPTO, Michelle K. Lee, highlighted the following PTAB statistics on her blog:

• As of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
• Of all of the AIA petitions filed so far, 63 percent were filed directed to electrical/computer technology, 23 percent to mechanical/business methods subject matter, 9 percent in bio/pharma, and 5 percent in the chemical field.
• Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
• Of the first IPRs to reach a conclusion, 12 percent of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable.  Of the first IPRs to reach a conclusion, 25 percent of claims actually challenged (4,496 of 17,675) were found to be unpatentable.

Director Lee noted that the total number of petitions filed to date is approximately three times more than what was anticipated.  Despite the unexpected volume, the PTAB has rendered final decisions within the required one year time period in all of the cases.

A more thorough and in-depth review will follow once the proposed rules are finalized.

By Shanna K. Sanders, Esq.

Blocking Issuance of Competitors’ Patent Applications via Third Party Preissuance Submissions

The America Invents Act (AIA) introduced procedures that allow parties to submit prior art (e.g., other patents or patent applications) to challenge competitors' U.S. patent applications.  Our clients have already begun to advantageously incorporate these procedures into their intellectual property strategies.

Pre-AIA, prior art submission timing was considerably limiting, and parties were not permitted to include any explanation of art being submitted, which severely limited the potential benefit of pre-AIA third party submissions.  Under the AIA, however, expanded timeframes for submitting art are provided for, and in addition to submitting important art, parties also submit descriptions that inform examiners how submitted art is relevant to the claims of patent application. 

Bringing in the New Year with Lower PTO Fees

The America Invents Act gave authority to the US Patent & Trademark Office to set or adjust fees associated with patent examinations.  Through this fee-setting authority, the USPTO will reduce certain fees effective January 1, 2014.  The changes impact Post-Allowance patent fees, PCT International Stage fees, and assignment recordation fees.  Many Post-Allowance patent fees will decrease by almost 50%.  For example utility patent issue fees will decrease from $1,780 to $960 for large entities, $890 to $480 for small entities, and $445 to $240 for micro entities.  In addition, publication fees for early, voluntary, or normal publication have been eliminated.  The basic PCT International Stage fees will not change, but a few small entity and micro entity rates will.  Some of those fees include: 

• Transmittal fee;
• Search fee;
• Supplemental search fee;
• Transmittal fee to International Bureau to act as Receiving Office;
• Preliminary Examination fee;
• Supplemental examination fee; and
• Late payment fee;

The USPTO is also eliminating the fee for recording a patent assignment, agreement or other paper submitted electronically.  The updated fee schedule effective January 1, 2014 can be accessed here.  The changes in fees will most likely result in a substantial amount of small and micro entity applicants delaying payment of issue fees until after the changes take effect to take advantage of the new schedule of fees. 

Nick Mesiti to be Speaker in Free NY-BEST Webinar: Intellectual Property and Patent Law: What you should know about recent changes

Nick Mesiti, a partner at HRFM will be one of three speakers in the upcoming NY-BEST Webinar titled "Intellectual Property and Patent Law:  What you should know about recent changes." The webinar, April 24, 2013 from 2:00-3:00 PM EST, is free and registration is available here. Mr. Mesiti is part of an expert panel on patent law that will adress the recent changes to US patent law and focussing on the "first to file" rule, new post-grant review, and how changes affect litigation.

USPTO Releases Highly Anticipated Final Rules and Examination Guidelines Governing the First-Inventor-to-File Provisions of the AIA

Yesterday, the United States Patent and Trademark Office (USPTO) published the final rules implementing the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), which will take effect on March 16, 2013.  The USPTO also published final examination guidelines to assist the public and patent examiners with the implementation of the new first-to-file provisions.

Speakers announced for Cleantech IP Forum July 19th NYC

Come join us for a half day program on Cleantech Intellectual Property on the second day of the New Energy Symposium in NYC focused on successful strategies and intellectual property protection for clean energy technologies and startups. This will include presentations on : Clean Energy Patent Trends: Solar Technology Analysis,and two panels of experts on the following topics: Strategies for Cleantech Companies Under the New America Invents Act and Importance of IP &Strategies for Commercialization

Speakers for this event include:

• Keynote Speaker

•              Michael Hervey,   Chief Operating Officer, Long Island Power Authority

• Clean Energy Patent Trends: Solar Technology Analysis
  • Victor Cardona,  Partner, Heslin Rothenberg Farley & Mesiti P.C.
• Strategies for Cleantech Companies Under the New America Invents Act
  • Janet Gongola,  Patent Reform Coordinator, U.S. Patent and Trademark Office
  • Eric Lane, Of  Counsel, McKenna, Long & Aldridge LLP
  • Nicholas  Mesiti, Partner, Heslin Rothenberg Farley & Mesiti P.C.
• Importance of IP & Strategies for Commercialization
  • Stephen Filler, Director of Corporate Development, Prism Solar Technologies
  • James Groelinger, Executive Director, Clean Energy Alliance
  • Pradeep Haldar, Vice President for Clean Energy Programs, College of Nanoscale Science       and Engineering
  • George Powch, Chief Executive Officer, Versatilis    

To view the speakers and investors participating at this year's New Energy Symposium, please click here. To register, please click here .