(SUCCESSFUL) PATENT FILING IN THE US

03-Mar-14

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(SUCCESSFUL) PATENT FILING IN THE US

Pankaj Soni, Partner

www.remfry.com

February 26th, 2014

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The America Invents Act (AIA)

Copyright © 2014 Remfry & Sagar, Attorneys-at-Law

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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First-to-file And The America Invents Act


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

First-to-invent :

Inventor A gets the patent

Inventor A discloses widget X in a trade fair

First-to-File (with Disclosure):

Inventor A gets the

patent

First-to-file:

Inventor B gets the patent

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

13 Steps to A U.S. Patent http://www.uspto.gov/patents/process/ppo_textonly.jsp

4 Copyright © 2014 Remfry & Sagar, Attorneys-at-Law

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Step 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

13 Steps to A U.S. Patent http://www.uspto.gov/patents/process/ppo_textonly.jsp


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Type of Applications


PROVISIONAL APPLICATION

Obtain priority for an invention

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

Within 12 months time

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Examination Procedures (Primary Differences – US and India)


India

• 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

U.S.A.

• 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.


US - Sample Examination Report

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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. ….

India - Sample Examination Report

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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)


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.

§ 101 STATUTORY SUBJECT MATTER AND STATE OF US CASE LAWS

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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.



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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Year Filed in USPTO Filed in India

2009 2878 7044

2010 3696 8312

2011 4482 8921

2012 5515 --

Before We Go……

USPTO and IPO – Filings by Indian Residents

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

http://www.google.co.in/url?sa=i&rct=j&q=&esrc=s&source=images&cd=&cad=rja&docid=orwz4KLiIikQlM&tbnid=usYd7nLsMfHlNM:&ved=0CAUQjRw&url=http://www.johnsanidopoulos.com/2011/06/little-known-yet-interesting-facts.html&ei=6vUFU6qpO42Crge0m4BY&bvm=bv.61725948,d.bmk&psig=AFQjCNGWp16JjokjPjU3NGMt8RgW4S1fbA&ust=1392985853847247

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(SUCCESSFUL) PATENT FILING IN THE US