(SUCCESSFUL) PATENT FILING IN THE US

Transcription

03-Mar-14
(SUCCESSFUL)
PATENT FILING IN THE US
February 26th, 2014
Pankaj Soni, Partner
www.remfry.com
The America Invents Act (AIA)
 The America Invents Act, enacted in law on September 16, 2011
 Represents a significant change to United States patent law
 Provisions went into effect on March 16, 2013

First To File

Filing By Assignee

Prioritized examination

Best mode requirement diluted

Interference proceedings eliminated

New Post-Grant Review Proceedings
 Post-Grant review
 Transitional Program for Covered Business Method
 Inter Partes review
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Copyright © 2014 Remfry & Sagar, Attorneys-at-Law
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03-Mar-14
First-to-file And The America Invents Act
First-to-invent :
Time
Activity
Jan 2014
Inventor A invents widget X
Feb 2014
Inventor B invents widget X
March 2014
Inventor B files patent
application
April 2014
Inventor A files patent
application
Inventor A gets the
patent
Inventor A discloses widget X
in a trade fair
First-to-File
(with Disclosure):
First-to-file:
Inventor A gets the
Inventor
B gets the
patent
patent
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13 Steps to A U.S. Patent
http://www.uspto.gov/patents/process/ppo_textonly.jsp
Step
Actor
Activity
1
Applicant
Threshold determination
Has your invention already been patented?  Search
If already patented, end of process
If not already patented, continue to Step 2
2
Applicant
Application type – Design/Plant/Utility
Design Patent (ornamental characteristics)
Plant Patent (new variety of asexually reproduced plant)
Utility Patent (useful process, machine, article , composition)
3
Applicant
Determine Filing Strategy
File Globally?
File in U.S.? - continue to Step 4
4
Applicant
Utility Application type
Provisional or Non-provisional
5
Applicant
Consider Expedited Examination
Prioritized Examination
Accelerated Examination Program
First Action Interview
Patent Prosecution Highway
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13 Steps to A U.S. Patent
http://www.uspto.gov/patents/process/ppo_textonly.jsp
Step
5
Actor
Activity
6
Applicant
Filing Strategy
File Yourself OR Use an Agent (Recommended)
7
Applicant
Prepare For Electronic Filing
Use filing checklist for preparing documents
8
Applicant
File Application
Use Electronic Filing System as a Registered e-Filer (Recommended)
9
USPTO
USPTO Examines Application
Allowed?  Yes, Got To Step 12 | No, continue to Step 10
10
Applicant
Prosecution
File replies, requests for reconsideration, and appeals (as necessary)
11
USPTO
Allowance
If objections and rejection of the examiner are overcome, USPTO
sends Notice of Allowance and Fee(s) due
12
Applicant
Grant
Pay the issue fee/publication fee - USPTO Grants Patent
13
Applicant
Maintenance
Pay Maintenance Fees - 31/2, 71/2 and 111/2 years after grant
Type of Applications
PROVISIONAL APPLICATION
Obtain priority for an invention
Within 12 months time
COMPLETE APPLICATION
CONTINUATION APPLICATION
(1) Filed for covering distinct subject
matter
(2) Claim priority from basic
application
CONTINUATION-IN PART
APPLICATION
(1) Filed for covering
improved/additional subject matter
(2) Claim priority to basic application
for original subject matter
(3) Claim priority to instant
application for new subject matter
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Examination Procedures
(Primary Differences – US and India)
India
U.S.A.
• Request For Examination Filed Separately Within 48 Months From Earliest Priority
• No Extensions Available
• No Continued Examination Procedure
• Examination Reports are (often) vague on substantive objections
• Duty of disclosure – Section 8(1), 8(2); Rule 12
• No separate Examination Request
• Extension Available
• Continued Examination Can Be Requested
• Office Actions are very detailed
• Duty of disclosure - 37 C.F.R. 1.56 and 1.97(b)-(d) and 1.98.
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US - Sample Examination Report
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India - Sample Examination Report
1. Subject matter as described and claimed in
claims 1-25 does not constitute an invention under
section 2(1)(j) (lacking novelty) of the Patents Act,
1970 as amended Patent Act 2005 in view of cited
documents i.e. D1: WO 03/001696 A
2. Subject matter of method claims (claims 1-12)
fall u/s 3(k) being an computer network based
algorithm. ….
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US - Duty To Disclose Requirements
37 C.F.R. 1.56 – Duty of Candor
“…. Each individual associated with the filing and prosecution of a patent
application has a duty of candor and good faith in dealing with the Office,
which includes a duty to disclose to the Office all information known to
that individual to be material to patentability as defined in this
section.....[and] in the manner prescribed by § § 1.97(b)-(d) and 1.98. ”
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Patentable Subject Matter
 An invention must meet the subject matter eligibility
requirements under § 101
§101. Inventions patentable
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this
title.
 Judicially created exceptions – laws of nature,
physical phenomena, abstract ideas
 This is different from the patentability requirement
under § 102 (novelty) and § 103 (non-obvious
subject matter)
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§ 101 STATUTORY SUBJECT MATTER AND
STATE OF US CASE LAWS
1.
Bilski v. Kappos, 561 U.S.
, 130 S.Ct. 3218 (2010)

Patent applied for methods of hedging risks in commodities trading.

Observation of court

patentable methods do not include “laws of nature, natural
phenomena, [or] abstract ideas.”

“machine-or-transformation test” cannot be the sole test for
patent-eligible methods.

Use of specific machine or transformation of article must impose
meaningful limits.
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03-Mar-14
2.
CLS Bank International v. Alice Corporation Pty. Ltd., 717 F. 3d 1269 (Fed. Cir. 2013)

Patent applied for a computerized trading platform for exchanging obligations in
which a trusted third party settles obligations between a first and second party
so as to eliminate ‘settlement risk’.

District Court held that (Post Bilski) Alice’s 4 patents were invalid under §101.

Federal Circuit En banc Decision - released seven different opinions but held,
without clarification- that the method and computer-readable medium claims
lack subject matter eligibility; system claims were affirmed without agreement.

Appealed to Supreme Court and will be heard in 2014.
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3.
Ultramercial, Inc. v. Hulu, LLC (Fed. Cir. 2013)

Patent for method for distributing copyrighted products over the Internet where
the consumer receives a copyrighted item paid by an advertiser in exchange for
viewing the advertisement.

Federal Circuit (reversed the District Courts finding) and held that:

Congress intended § 101 to be read expansively.

A claim can embrace an abstract idea and be patentable  claims an
application of an abstract idea.

Patent was valid "no risk of preempting all forms of advertising, let alone
advertising on the Internet" and met the requirements of § 101.
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03-Mar-14
Before We Go……
USPTO and IPO – Filings by Indian Residents





Year
Filed in USPTO
Filed in India
2009
2878
7044
2010
3696
8312
2011
4482
8921
2012
5515
--
US is an important jurisdiction to protect your inventions
US has specific procedures for filing patent applications, but is not as harsh
as India when it comes to deadlines
Disclosure requirement is different in the US
Case law, while advanced, leaves room for ambiguity
Critical “subject matter” issues coming up before the Supreme Court in 2014
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(SUCCESSFUL) PATENT FILING IN THE US

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