Some aspects of US and JP patent law Pete Pollard, John Peters

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US and JP patent law

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US Patent Law – Substantive Issues For US and PCT applications having at least 1 claim with effective date ≥16/3/13, and continuation-in-parts (of any applications) filed ≥16/3/13 => First-Inventor-to-File system: • For details, see http://www.uspto.gov/aia_implementation/patents.jsp o Paris Convention priority claims (US or foreign) are recognised (effective date) when establishing who was the “first to file” (Hilmer doctrine no longer applicable) • these earlier applications, naming another inventor, are citable for novelty & obviousness o Public disclosures before effective date are prior art: • Patents, publications published anywhere in the world • Anyway otherwise made available to public • Public prior use and sales anywhere in the world o A 1-year grace period applies (including prior use or sale) only by the inventor(s) o So, invention not novel if • publicly disclosed before effective date by someone else • public prior-use or sale before effective date by someone else • US patents, US patent applications and published PCT applications designating US naming another inventor, and having an effective filing date before effective date of invention o Inventors own previous applications are not considered if not published before later filing o Derivation proceedings for “stolen” inventions (replaces interference proceedings): • Must be filed within 1 year of the first publication of the application/patent with disputed claim • Determines whether named inventor derived (obtained by “unauthorised means” – similar to EPC’s “evident abuse”) the claimed invention from true inventor (petitioner) • Fee = $400 o Best mode still required in application (and priority document), but lack of best mode is not a reason for patent to be held invalid or unenforceable

For applications filed <16/3/13 and their divisional/continuations => First-to-Invent system still applies: • First-to-invent system. A person shall be entitled to a patent, unless before the applicant’s invention thereof the invention was made by another. • Together with the application [or after US national entry from PCT], an oath or declaration is to be submitted to the USPTO. The oath or declaration is executed by the inventor(s) and states that they believe to be the first to have invented what is claimed. It can be filed later at the expense of a late filing fee.

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• The effective date of a US patent and of published US applications for prior art purposes against third parties is its US filing date, not its foreign priority date (Hilmer doctrine). • Statutory bars: Date of invention and/or the filing date of associated US patent application determine whether or not US patent can be granted. No grant possible if: o Invention was patented (in whatever country) or described in a printed publication (in whatever country) more than 1 year (“grace period”) prior to filing date of US application. o Invention was in public use in US (hidden from view or not) or was on sale in US or being offered for sale in US, more than 1 year prior to filing date of US application. o Invention was described in published US patent application, filed in US by another before the invention; or in PCT application filed by another, designating US and published in English, and having an international filing date before the invention by the person; or in US patent granted on US patent application filed by another before the invention. In other words, documents form prior art as of their effective US filing date. Note: Non-US priority date (Paris Convention date) is not effective as US filing date for the purposes of the above conditions. Non-US priority date can be used, however, to establish date of invention. • 1 year grace period: in other words, a disclosure less than 1 year prior to the filing date of the US application is not a bar to patentability. Accordingly, one can still get a patent in the US if the inventor has lost his rights to a European patent by publishing his invention. If the publication was not by the inventor, evidence is needed that his invention occurred before the publication date. The inventor will have the opportunity to “swear behind” the publication. • Interference proceedings: When two US patent applications, or a US patent application and a US patent claim the same invention, only one can give rise to a valid patent, as a result of the first-to-invent system. Consideration of the dates of conception and reduction to practice, and diligence.

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US Patent Law – Procedural Issues For all granted US patents, procedures available on or after 16/9/12: o Supplemental examination of an issued patent • May be requested by patent owner, e.g. if prior art found after grant • Any time during enforceability of patent, up to 6 years after expiration • Request USPTO “to consider, reconsider, or correct information believed to be relevant to the patent” • Fee = $5140 • Up to 12 items of information may be considered in each request • USPTO determines whether substantial new question of patentability raised. If so, ex parte re-examination will be ordered. o Inter-partes review (replaces Inter-partes re-examination) • Similar to opposition – A.99(1) EPC • Petition to be filed >9m after grant, or after any post-grant review is terminated • Expensive: fee = $27200 for 1-20 claims, $600 for each additional claim • Fee will be split into components, permitting refunds if procedure is stopped before the end • Fast: Will normally be concluded within 1 year from start, only 3m to respond to responses • Decided by technical experts of USPTO (Patent Trials and Appeal Board) • Both parties may appeal decision to Federal Circuit • Opportunities for “discovery” (parties requesting information from each other) • Patent owner may not obtain a claim that is not patentably distinct from a finally refused or cancelled claim. Also may not obtain an amendment of specification or drawing that was denied in proceeding, unless patent has a different written description • Petition may be filed by any person except patent owner - real parties must be identified • Limited to grounds of novelty or non-obviousness, based on patents and patent publications • Not permitted if petitioner filed a civil action earlier, or more than 1 year after petitioner served with infringement complaint • Petition and evidence must also be sent to patent owner

For granted US patents falling under First-Inventor-to-File system: o Post-grant review • Similar to opposition – A.99(1) EPC • Petition to be filed ≤9m of grant • Expensive: fee = $35800 for 1-20 claims, $800 for each additional claim • Procedurally similar to inter-partes review, but - may be based on any invalidity ground - not limited to patents & printed publications

For any pending US application or granted patent, payment made on or after 16/3/13: o Increased fees o New micro-entity – pays only 25% o Small entity is retained (paying 50%) January 14

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For any pending US application, request available on or after 16/9/12:

o Preissuance submissions possible (3rd-party submission) • Printed publications may be submitted, with concise description of relevance • Fee = $180 for up to 10 documents • May be anonymous • May be filed up to notice of allowance • No fee if first observation by third-party and 1-3 documents • Possible via on-line filing or on paper • Also for abandoned (revivable) applications • Consideration of prior art by examiner will be acknowledged o Patent owner statements may be submitted • by patent owner of third-party • statement of owner made in a proceeding before a Federal Court or USPTO in which patent owner took a position on the scope of any claim

For any pending US application, request available on or after 16/9/11: o Prioritized examination (Track 1) • Goal is to provide allowance/rejection within 12m from date prioritized status has been accepted • Fee must be paid - $4800 • Deadlines to respond to Office Actions are shortened • Prioritization status terminates if extension requested, or if amendments result in > 4 independent claims or > 30 claims. No refund of fee. •

Not the same as Accelerated Examination (where must respond to OA < 1m)

For any US or PCT applications, filed on or after 16/9/12 o Simplified procedure where applicant is not inventor. • Person to whom inventor has assigned (or is obliged to assign) may be applicant. This is for direct US filings and PCT filings. • So for international applications on or after 16 Sept 2012: - inventors can be indicated as “inventor only” and applicants as “applicant for all designated states” in RO/101 request form - for US national entry, US inventors must still sign an oath or declaration - PCT rules will only formally change from 1 Jan 2013 •

For US-filings, and following US entry from PCT: - Assignee may provide substitute declaration if inventor deceased, cannot be found, refuses to sign - Grant is then to applicant - Country of citizenship no longer required for inventor

For any PCT applications, filed on or after 1/1/13 • •

Procedure to solve a missing inventor signature in international phase is deleted signature of inventor(s) no longer needed for withdrawal – R.90bis January 14

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For any US applications, filed on or after 18/12/13, certain provisions from the Patent Law Treaty (PLT) have been implemented. Similar provisions are already found in EPC and PCT. o Claims are not required for a filing date for a non-provisional application. • If not provided, the USPTO will send an invitation to supply the claims, together with the payment of a surcharge o An application may be filed incorporating the specification and drawings of a previously filed application • If prior application is a non-us application, a certified copy and a translation into English (if applicable) are required o Restoration of priority available if subsequent application was unintentionally filed too late • Must be filed within 2 months of expiry of priority period • The petiton must include a statement that the delay was unintentional • This is also available when using the US as RO since 18/12/13. However, the US still does not recognise such a restoration as DO or EO. o Use of these PLT provisions can delay grant, so to avoid any negative Patent Term Adjustment (PTA), the application must be in condition for examination within 8 months of the filing date, or within 8 months of entry of a PCT into the US national phase

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Other aspects of US patent law relevant for EQE 2014 • Non-provisional and provisional US patent applications may be filed in any language o A translation into English is required only if application is non-provisional [i.e. a grant is desired] o If translation not filed, applicant will be notified and given a time period to remedy. If not supplied, application considered abandoned. o IA filed with USPTO as rO must be filed in English. • US-Provisional Application may give rise to a priority right - A.87(1) EPC - OJ 1996, 81: o In order to establish an effective filing date, all that need be submitted are a description & the drawings necessary for an understanding of the invention o Since the provisional application meets in substantive terms the requirements ... for a duly filed national application and because the subsequent fate of this filing is immaterial, the EPO ... recognises the provisional application ... as giving rise to a right of priority within the meaning of Article 87(1) EPC. • The following applications may be derived, without time limit, during pendency of the parent [a co-pending US patent application or PCT application designating US]. They must have at least one inventor in common with the parent application. o Continuation: same disclosure as parent, claims same invention, no new subjectmatter. Benefits from parent US filing date. Example of use: let parent issue as a patent with allowed claims, and continue in continuation with claims rejected in parent or with claims on unclaimed embodiments o Continuation-in-part (C.I.P): contains new subject-matter in addition to original disclosure of parent. Two effective dates: filing date of parent for common subjectmatter, and filing date of C.I.P. for new subject-matter. Note: a continuation-in-part can never be the basis for a priority claim for the original subject-matter, only for the new subject-matter. Example of use: to protect a further embodiment of parent application which may be considered obvious if parent application was full prior art o Divisional: same disclosure as parent, no new subject-matter. Benefits from parent US filing date. Example of use: USPTO rules that your application contains two inventions, requiring "restriction” to a single invention. Applicant then “elects” an invention to pursue in the parent application, and optionally files a "divisional" with claims to the other invention. • Foreign filing license. If an invention has been made in the US and a US application has been filed, applicant must obtain a foreign filing license if he wants to file a foreign patent application earlier than 6m after filing US application. The license can be obtained retroactively if foreign application filed before 6m period through error and without deceptive intent. Penalty may be that US patent is not granted or, if granted will be declared invalid. If applicant does not intend to file a US patent application on an invention made in the US, applicant has to obtain a foreign filing license immediately. January 14

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• “Applicant” is used in US practice to refer to the party applying for the patent • “Assignee” is used in US practice to refer to the party to whom the inventor has assigned his/her rights to the invention. • US patent applications are published 18 months after the priority date. Patent applications will be published promptly after the expiration of 18 months from the filing/priority date. Provisional applications are not published. Publication can be prevented upon request, provided that no corresponding patent application has been filed outside the US in a country that has a publication system 18 months after the priority date. • Patent term = 20 years after original US filing date since 1995) Patent term is extended upon request if the USPTO does not meet certain time limits during prosecution. Term is also extended if the patent application leads to an issued patent later than 3 years after US filing due to failure of the USPTO. This guarantees a diligent applicant a term of at least 17 years. Delays due to interferences and to successful appeals are added to the term of protection. The applicant will have to apply for an extension. Note: a US patent can be enforced up to six years after it has expired. The 6-year period allows the patent owner to enforce the patent after expiry against parties that had begun infringement before the patent expired. • Before grant, no renewal fees are due. Renewal fees should be paid 3½, 7½ and 11½ years after date of grant. • Duty of “Candor and Good Faith”: Everyone involved in the preparation and prosecution of the US application has the duty to disclose to the USPTO information that is “material” to the examination. Failure to do so may invalidate the US patent. This information is submitted as an IDS – Information Disclosure Statement. •

Re-issue application is a correction to replace an unexpired issued US patent, if the patent is deemed wholly or partly inoperative or invalid through error without deceptive intent. The scope of the claims may be enlarged in a reissue patent if applied for within two years from grant of the defective patent (“Broadening re-issue”).

• Re-examination: An issued US patent can be re-examined during its enforceability and upon request from the patentee or from any member of the public if written prior art in the form of printed publication and patents, not considered previously by the USPTO, raises a substantial new question of patentability of one or more of the issued claims. The procedure is ex partes between the applicant and the USPTO. • PCT filing in US (USPTO as rO) o Request for restoration of priority – R.26bis.3 - accepted as rO (unintentional) o File in English o Competent ISA’s: AU, EP, RU, KR or US o No agent required • PCT entry into US o Deadline for entry is 30 months o No agent required o Translation in English to be provided o Request for restoration of priority – R.49ter.2 - not accepted as dO January 14

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o Oath or declaration from inventor required o Information Disclosure Statement (IDS) to be provided within 3m of entry o For more details, see AG-NP, Annex US at http://www.wipo.int/pct/guide/en/gdvol2/annexes/us.pdf

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Aspects of JP patent law relevant for EQE 2014 • For a direct filing in JP, English is accepted, when followed by a translation into Japanese within 1 year and two months from earliest of filing date/priority date. o Application form, title of each document and headings ofeach section must eb in Japanese o This provision does not apply for utility model applications • Grace period of 6 months: Certain disclosures less than 6 months prior to the filing date of the JP application are not a bar to patentability: 1. disclosure by the inventor 2. disclosure against the will of the applicant (similar to evident abuse) 3. disclosures at designated scientific bodies and exhibitions o It must be a filing in JP, or a PCT-filing designating JP. Such a filing may serve as the basis for priority of a later filing. o It is not a foreign (non-JP) filing which serves as a priority filing for a later JP-filing. o The patent application must be filed with the JPO together with the request for the grace period o Evidence of the disclosure (publication) has to be filed within 30 days from the filing date. Accordingly, one can still get a patent in JP when the inventor has lost his rights to a European patent by publishing his invention. • Publication of application 18 months after priority date (Kokai). From 1 January 2000: upon request the application can be published earlier than 18 months. • Third-Party Observations: Yes o Preferably highlight /underline cited part of prior art o If not in Japanese, may need to provide translation if requested • Examination upon request (3 years from filing; before 1 October 2001: 7 years). The applicant or any third party may file a request for examination. • Prior public use: before the filing date anywhere in the world may be prejudicial (before 1 January 2000: prior public use in Japan only was prejudicial). • Accelerated examination upon request: o by applicant if a priority application for a PCT filing; o by applicant if a PCT-filing that enters the JP national phase; o by an alleged infringer following publication of the application. • For utility models, only formalities are examined; there is no substantive examination. The term of the right is 10 years (before 1 April 2005, it was 6 years). • Post-grant opposition o This is no longer possible. A third party can only seek invalidation through the courts. o For grants before 1 Jan 2003, an opposition could be filed by anyone, including a strawman, within 6 months after the public notice of the grant of the patent. When the decision is in favour of the proprietor, the opponent is not entitled to appeal.

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• Patent term = 20 years from filing date. From 1 January 2000 the term of 20 years may in some cases be extended by 5 years, especially for pharmaceuticals and agricultural chemicals. • PCT filing in JP (JPO as rO) o Request for restoration of priority – R.26bis.3 - not accepted as rO o File in English or Japanese o Competent ISA’s: EP or JP o Agent required if applicant not resident in JP • PCT entry into JP o Deadline for entry is 30 months o A translation in Japanese must be provided o Agent required if applicant not resident in JP o In principle, JPO does not excuse failure to comply with a time limit, either during international or national phase o Request for restoration of priority – R.49ter.2 - not accepted as dO o Request for examination must be made within 3 years of international filing date o JP utility model may be pursued if request made on entry. No examination will be done – they will just be registered. o For more details, see AG-NP, Annex JP at www.wipo.int/pct/guide/en/gdvol2/annexes/jp.pdf

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