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Expanding universe of “prior art”: Patent applications will be more vulnerable to attack if filed after March 16, 2013

21 Jan

HR1249U.S. patent law is scheduled to soon experience major changes under the America Invents Act (AIA) that will make it harder to get a patent granted and that will make it easier to challenge an issued patent.  Therefore, if contemplating filing a patent application in the near future, it’s wise for applicants to do so before March 16, 2013, the day these changes take effect.

One major change is that the “prior art” universe is expanding on March 16, 2013.  “Prior art” is the term used for references or activities that can be cited against the patentability of a patent application or the validity of an issued patent.  Under current law, for a sale, offer for sale, or public use of a product to qualify as “prior art,” this activity had to (i) occur in the U.S. and (ii) be earlier than one year before the patent application’s filing date.  Under the new law, being on sale or in public use anywhere in the world can be cited.

In addition, under current law, for a foreign patent application to qualify as “prior art” against your U.S. patent application, it has to satisfy at least one of the following conditions:

  1. published before your conception date,
  2. published more than one year before your filing date, or
  3. filed before your conception date as an international patent application under the Patent Cooperation Treaty (“a PCT application”), that was published in English, designated the U.S., and resulted in a granted patent.

Under the new law, conditions (1) and (3) of the current law disappear since the conception date no longer matters (as discussed below).  Condition (2) of the current law excludes all foreign patent applications that published less than one year before your filing date, but under the new law, condition (2) is modified to only exclude foreign patent applications by the inventors (or obtained from the inventors) that are published less than one year before your filing date. 

A second major change in U.S. patent law, receiving the bulk of the buzz regarding the new law, is that the U.S. is changing from a “first to invent” standard to a “first to file” standard.  It’s always been beneficial to file patent applications as soon as possible, but under the old “first to invent” standard, even if you filed your patent application after someone else did for the same invention, you could be awarded the patent instead of them by proving that you were the “first to invent,” i.e., you invented the claimed invention before they did.  However, under the new “first to file” standard, the first party filing their patent application is awarded the patent, regardless of who was the “first to invent.”  

(Rigorously speaking, the new law is actually a ”first inventor to file” standard, since it prevents someone from obtaining the invention from the inventors, and then racing to the patent office to file an application first for something this someone didn’t actually invent.)

It’s rare that two entities separately conceive and file patent applications for the same invention.  But this change to a “first to file” standard makes an important contribution that further expands the “prior art” universe.  Under the current “first to invent” standard, the date that you conceived of the claimed invention could be used to exclude a certain category of references that were available to the public before your filing date from being considered “prior art” against your patent application.  But under the “first to file” standard, applicants can no longer rely on their earlier date of conceiving the claimed invention to overcome any cited references.  In other words, conception date will no longer matter; only the application’s filing date will control.

Besides expanding the “prior art” universe, the new law also introduces a new “post-grant review” (PGR) mechanism for challenging the validity of U.S. patents within nine months of issuance before the Patent Trial and Appeal Board.  This mechanism became available to challenge so-called “business method” patents in September 2012, but on March 16, 2013, it will be available to challenge all U.S. patents with filing dates after this date.  In conjunction with the other mechanisms for challenging issued patents (e.g., ex parte reexamination and inter partes review), each with its own requirements and pros and cons, PGR opens up a new way for competitors to invalidate your patent.

Finally, the new law includes language that has not yet been interpreted by the federal courts, so the full effects of the new law are uncertain at present. 

For one example, with regard to the activities anywhere in the world being “prior art,” as discussed above, the new law states that the application can be rejected if the claimed invention is ”in public use, on sale, or otherwise available to the public” before the application’s filing date.  So does “otherwise available to the public” mean that a private sale of the invention would not qualify as “prior art” under the new law?  Under existing law, any sale or offer for sale in the U.S.would qualify as “prior art,” public or private.  Until the courts weigh in, it’s probably prudent to make the conservative assumption that any sales or offers for sale, public or private, would qualify as “prior art” and to strive to not enter into such activity unless a patent application is already on file.

For another example, the new law excludes “disclosures” made by the inventors (or obtained from the inventors) within one year before the application’s filing date from being considered as “prior art” against the application.  But are being ”on sale” or “in public use” considered to be ”disclosures” under the new law?  Under existing law, sales, offers for sale, and public uses are excluded from being “prior art” if within one year before the application’s filing date.  Here, until the courts weigh in, the conservative assumption to make is that this one-year grace period does not apply to these activities.  In other words, don’t do anything that might be considered to be a disclosure of the invention until you first have a patent application filed.

In summary, under the new regime of the AIA, patent applications filed after March 16, 2013 will have to overcome a larger universe of “prior art” references to be granted as a U.S. patent, there will be more options for competitors to challenge the validity of such patents, and there will be uncertainty in how the law applies to various situations.  Therefore, potential applicants should consider filing their patent applications before March 16, 2013, to avoid this new regime.

 
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Posted by on January 21, 2013 in aia, america invents act, patent law

 

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Your patent is invalid if you’re not the first inventor: The Fox Group, Inc. v. Cree, Inc.

01 Dec

The Federal Circuit recently handed down a decision affirming a lower district court ruling that found the claims of U.S. Pat. No. 6,562,130 asserted against Cree, Inc. by The Fox Group, Inc. to be invalid, since Cree had produced the claimed single-crystal silicon carbide (SiC) material before the priority date of the ’130 patent.

This result was based on the “first to invent” requirement under current U.S. patent law, which is scheduled to change to a “first inventor to file” requirement on March 16, 2013 as part of the Leahy-Smith America Invents Act (AIA).  But as described at the end of this post, under the facts of this case, the result would be the same even if the upcoming “first inventor to file” requirement were used instead.

SiC is a man-made material that has been around for more than a century in a multicrystalline and high defect density form, primarily used as an abrasive.  But in single-crystal form with low intrinsic defect densities (e.g., dislocations, micropipes, and inclusions of a secondary phase within the crystal), SiC is a semiconductor that can be used in LED light sources and electronics designed to withstand high power levels and high temperatures.  In addition, single-crystal SiC can be used as a substrate material for epitaxial growth of bulk Group III nitrides (e.g., gallium nitride) for high speed electronics.

  

Cree markets a wide variety of LED-based lighting components, power MOSFETs, and electronic devices for RF communications, all  based on single-crystal SiC.  For fiscal year 2012, Cree reported revenues of $1.16 billion.  The Fox Group is apparently affiliated with Nitride Crystals, Inc., a supplier of SiC wafers which lists the ’130 patent on its website as one of its patents.

Under current U.S. patent law’s “first to invent” requirement, a patent is invalid if the listed inventors were not the first inventors of the claimed invention (i.e., the claimed invention was first invented by someone else), as long as the first inventors had not “abandoned, suppressed, or concealed” the invention (35 U.S.C. 102(g)).  To get a patent deemed invalid under this provision, the accused infringer can prove that the invention was made by someone else prior to the listed inventors doing so.  The prior inventor does not have to be the accused infringer, but in many cases, this is the case since the accused infringer typically has much more information and evidence regarding its activities than it does of the activities of some third party.

Cree showed that in 1995 it had produced a SiC wafer that included a region with an exceptionally low intrinsic defect density, as evidenced by x-ray topographs, and that this wafer met the features of the material claimed in the ’130 patent.  Cree also showed that it had publicized this result at a technical conference in 1995 and in a journal article in 1996.  Since the priority date of the ’130 patent was in 1997, the district court held that the asserted claims of the ’130 patent were invalid, and granted summary judgement to Cree.  The Federal Circuit affirmed the lower court ruling on the basis that Cree had proved that (i) it had once made the claimed material in 1995 so its researchers were prior inventors to those of the ’130 patent and (ii) it had promptly and publicly disclosed its findings regarding the wafer’s low defect density to the public, so it had not abandoned, suppressed, or concealed the invention.

Since the claims of the ’130 patent were directed to the SiC material itself, and not the process of making the material, it was enough for Cree to have shown that it once made the claimed material before the priority date of the ’130 patent, and that Cree had promptly publicized this result.  Had the claims of the ’130 patent been directed instead to a process of making such materials, Cree’s proof might have been insufficient, since it is not clear whether Cree’s public disclosure was sufficiently detailed to enable someone skilled in the technology to perform such a process.

It’s interesting to consider how the same facts would play out under the AIA’s upcoming “first inventor to file” requirement scheduled to go into effect on March 16, 2013.  Under the AIA, 35 U.S.C. 102 omits subsection (g), and the relevant portion states that “a person shall be entitled to a patent unless …  the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”  Since Cree publicized the properties of its low-defect-density SiC wafer in 1995 and 1996, before the effective filing date of the ’130 patent in 1997, the ’130 patent would be held invalid under this statute as well.

(The AIA’s statute includes an exception if the public disclosure was made by the inventors listed on the patent within one year of the patent’s effective filing date, but since the disclosure at issue was by Cree and not the listed inventors of the ’130 patent, this exception does not apply under these facts.)

 
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Posted by on December 1, 2012 in aia, america invents act, inventorship, materials, patent law

 

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Paying a Premium: How to get a U.S. patent within one year

23 Jan

One of the most common gripes I hear about the patent process cites the excessively long time it takes between filing a patent application and getting the patent to issue.  For example, the latest statistics out of the USPTO show that for applications in the “Semiconductor, Electrical, Optical Systems & Components” category, it takes an average of 26.5 months after filing to get the first office action, and an average of 29.3 months for the patent to issue.  This technical category is actually one of the fastest, with ”Computer Networks, Multiplex Communication, Video Distribution, and Security” being the worst, with averages of 33.6 and 40.7 months, respectively.

The USPTO has been working to reduce this pendency time, and has announced its “2010-2015 Strategic Plan” that sets the goal of reducing the average total pendency of patent applications to 20 months by 2015.  Much of this effort is focused on the USPTO’s internal processes, and as a patent practitioner, I support these improvements.

But even beyond these improvements, there are ways that applicants can help themselves and position their applications to be among the fastest through the USPTO.  In my opinion, these measures are currently underused in general, and many companies, especially those in high-tech fields such as photonics and optics, can reap the substantial benefit of getting a patent in hand within one to one-and-one-half years.  In this blogpost (and following blogposts), I’ll explain some of the measures that can be used by applicants to expedite their applications through the USPTO.

Paying a Premium: The easiest and most potent way to get a U.S. patent to issue within one year is to use the USPTO’s newly-enacted “Prioritized Patent Examination Program” (also known as “Track I”) which started this past September as part of the “America Invents Act” (“AIA”).  Under this “fast track” program, an applicant can file a petition and pay an extra fee to the USPTO ($2,400 for small entities, $4,800 for large entities).  Upon approval of the petition (99% approval rate so far), the USPTO will expedite the application with the goal of having the patent processed to completion within 12 months. 

The early results from the program are very attractive:

  • Over half of the approximately 1,200 “fast-track” requests filed since the program began in September 2011 have already received their first office action, with an average time of 66.4 days after filing.
  • There have already been 23 allowances under the program, with the average time to allowance being 39.2 days from petition approval.  The first allowance came 103 days after the application was filed (U.S. Pat. No. 8,094,942 issued to Google).
  • The program was initially open to only newly-filed applications.  However, it has recently been expanded to include pending applications for which a “Request for Continued Examination” has been filed.

Acceptance into the program is not a guarantee of issuance.  The USPTO will still apply the same standards of patentability as are used for all other applications.  For example, some applications in the program have already received their final rejections, with the average being 34.3 days measured from approval of the petition to enter the program.  In addition, the program is limited to accept only 10,000 applications during the fiscal year. 

For a company planning on going through the due diligence accompanying funding events or acquisition in the foreseeable future, it can make sense to improve its IP portfolio in the eyes of the VCs or acquisition entity by getting patents in hand sooner rather than later using the “Prioritized Patent Examination Program.” 

 
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Posted by on January 23, 2012 in aia, america invents act, patent law, prioritized examination

 

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