The America Invents Act requires new strategies for filing and prosecuting patents

by Arles Taylor

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Arles Taylor is a partner at Durham-based Jenkins, Wilson, Taylor & Hunt PA, a law practice devoted exclusively to providing intellectual-property counseling and services to clients. He has significant experience in managing patent portfolios in the United States and abroad in fields such as medical biotechnology, agricultural biotechnology, biochemistry, immunology and pharmaceuticals. He earned a Bachelor of Science degree in biochemistry and Bachelor of Arts degree in chemistry, summa cum laude, at N.C. State University and his law degree at the UNC Chapel Hill School of Law. 

U.S. patent law has undergone the most significant change since 1952 with the recent enactment of the America Invents Act. The final provisions of the act took effect March 16. Presented here are several strategies for how to deal with the new provisions.

Filing strategy considerations
The most publicized change is that the U.S. became a first-inventor-to-file jurisdiction. When two patent applications directed to the same invention are filed by different parties, the U.S. Patent and Trademark Office will award the patent to the inventor who filed first. The pressure to file applications early has increased. To meet this pressure, the filing of provisional patent applications can be a strategy to obtain early filing dates. To facilitate early filing of provisional patent applications, employee inventors could be encouraged to provide more complete invention write-ups.

Further, consider filing serial provisional patent applications to establish a series of early filing dates as the inventors make new observations about a patentable discovery. This can be particularly effective in biotechnology and life sciences, where additional observations in the laboratory can enhance the scope of the invention. To optimize this strategy, at the one-year anniversary of the earliest filed provisional application, file a nonprovisional patent application, claiming priority to all of the serially filed provisional applications. 

Pending and continuation applications
Pending patent applications and applications that claim priority to patent applications — such as continuation applications — filed before March 16 are subject to the previous rules and provisions. A potential risk associated with filing patent applications after March 16 that claim priority to an application filed before that date is that if at any time during prosecution even one claim contains subject matter that was not originally disclosed in the priority application the new rules and provisions apply in determining the patentability of every claim. 
Expansion of prior art and public disclosures
The body of prior art available to be cited against U.S.-patent applications expanded as of March 16. The term “prior art” refers to the body of literature in the field of the invention that exists before the date of invention or, under the act, before the filing of a patent application on the invention. For example, a scientific journal article that is published just one day before a patent application is filed can be applied as prior art by the patent office under the act and, if cited, would need to be substantively distinguished. Also, patent application publications claiming priority to foreign patent applications are available as prior art as of the filing date of the foreign priority application. For example, a published U.S. patent application with a German priority application is effective as prior art as of its German filing date. Additionally, public use, public sale or other availability to the public in a foreign country is available as prior art as of March 16.

In the case of a public disclosure by the inventor or by a joint inventor, a one-year grace period continues for a U.S. filing under the act. Any action by an inventor that results in a public disclosure of the invented subject matter — the invention is described in a printed publication, for example, or is in public use, on sale or otherwise available to the public — will trigger the one-year grace period under the act. Further, the public disclosure will negatively impact foreign filing rights. 

An additional point that should be discussed with employee inventors is the need to document all public disclosures and maintain laboratory notebooks. This can be useful for several reasons, such as when a derivation proceeding arises. A derivation proceeding is a new proceeding under the act where it is determined whether a first filer in fact derived the subject matter of the application from a different inventor.

Post-grant review and inter partes review
The act provides for post-grant review, which is similar to opposition proceedings in other countries. Post-grant review went into effect Sept. 16, 2012, but will only be available for patents issued on applications filed after March 16. A petition for post-grant review can be filed by anyone who is not the owner of the patent. The petition must be filed no later than nine months after the patent is granted. The petition involves a request to cancel as unpatentable one or more claims in an issued patent and permits invalidity challenges based on any aspect of U.S. patent statutes, including sections related to patentable subject matter and utility, novelty, obviousness, enablement and written description. 

Inter partes review — a trial-like proceeding — became available and replaced inter partes re-examination as of Sept. 16, 2012. This basis for review is limited to presentation of patents and printed publications. A request for inter partes review must be filed after the later of nine months since the issuance of a patent or the date of termination of post-grant review. The invalidity of the patent claims must be proved by a preponderance of evidence. 

With regard to both post-grant review and inter partes review, estoppel effects can be encountered by the parties in these procedures; positions taken during such procedures could be used to limit a party’s positions in later civil actions or before the patent office. Also, the fees for these proceedings are significant. For example, the official filing fee for an inter partes review request for up to 20 claims is $9,000, and the fee for a post-grant review of up to 20 claims is $12,000. Careful consideration should be given in view of the expense and estoppel issues. Nevertheless, these procedures are options that could be considered by clients, especially when compared with litigation, which can be more expensive. 

Supplemental examination
As of Sept. 16, 2012, a patent owner can request supplemental examination of its own patent. This affords the ability to have additional information — such as prior art believed to be relevant to the patent but that was not part of the prosecution of the patent application that issued as the patent — considered by the patent office. Thus, this procedure could afford a patentee the ability to avoid contentions of inequitable conduct where prior art was observed but was not disclosed to the patent office during prosecution of the application that issued as the patent. 

Third-party submissions
The window of time to submit prior art against the patent applications of others has increased under the act. A third party can submit in the record of a published U.S. patent application prior art if the submission is made in writing before the earlier of a Notice of Allowance or the later of six months after publication or the date of first rejection. The window of time for submission of prior art under the previous laws and regulations was two months after publication. As one might imagine, this window of time was difficult to monitor. However, the broader window of time under the act could result in more third-party submissions of prior art. 

Expedited prosecution
Another procedure available under the act is the expedited-prosecution procedure. It is often referred to as Track I. Initial filing fees can be expensive — currently $4,000 for a large entity. But in certain situations, expedited prosecution might be advantageous because current statistics show that such applications proceed to allowance at a higher rate as compared with applications when it is not sought. It is noted that the $4,000 official filing fee could be recaptured by avoiding multiple responses to office actions from the patent office that cite problems with the application.

The America Invents Act brings significant changes to U.S. patent practice. Regular consultation with patent counsel is suggested to manage considerations and optimize patent positions under the act.