BIO and the America Invents Act

[author: Andrew Williams]

The 2012 BIO International Convention begins in Boston next week.  Patent Docs has been highlighting a few sessions, in thematic fashion, to help you navigate your way through the convention.  Today, in this final installment, we review a few opportunities for those interested in learning how the Leahy-Smith America Invents Act will impact U.S. patent practice, with the use of patent systems from other countries to serve as a guide.  Please note, however, that even though we have highlighted several sessions from a spectrum of disciplinary tracks over the past week, we have only begun to scratch the surface of opportunities available at the BIO convention.  Of course, if you want to share your favorite session with us, or let us know how the America Invents Act is going to affect you or your company (or for that matter, any other topic that is on your mind), the Patent Docs authors and contributors will be present at BIO as part of the MBHB contingent, and you are encouraged to stop by the MBHB booth to meet us (#1335 – Hall A).  We will be posting a schedule shortly to let you know when your favorite Patent Docs author or contributor will be at the booth.

As Patent Docs readers know, one of the biggest stories from the past year for U.S. patent practice was the passage of the Leahy-Smith America Invents Act ("the AIA").  Of course, Patent Docs has been covering the AIA for years, and is continuing to follow the U.S. Patent Office's implementation of various provisions of the new law.  There has been no shortage of opportunities to learn about and discuss the AIA, but the BIO International Convention provides some unique opportunities that are not necessarily found elsewhere.  Specifically, the U.S. can look to how patent systems throughout the world have been dealing with provisions that are analogous to sections of the AIA.  Because of the strong international presence at the conference, U.S. patent practitioners can learn from their international colleagues.  And, hopefully, it will also give the non-U.S. patent practitioners a chance to learn about how the new U.S. law will affect them and their companies or clients.

As a perfect example, the Biotech Patenting and Tech Transfer Track will be presenting "Patenting under the America Invents Act in Comparison with European Patent Practice" on Wednesday, June 20, between 10:00-11:30 am.  This session will include speakers from the European Patent Office and the U.S. Patent and Trademark Office, as well as patent practitioners from these two jurisdictions, who will be able to provide insight on the America Invents Act and how it compares to European practice.  The session promises to review the changes in patentability in the U.S., such as the first-to-file system, the grace period, prior art, and post grant review, and assess patentability in Europe, including its first-to-file system, prior art, and opposition practice.  These two systems will be compared and contrasted for perspectives on global strategies.  For example, the differences in the grace periods related to the two first-to-file systems will be examined, including how they might impact prosecution strategies.  The speakers of this session include Wenfang Chen, Patent Counsel for Danisco U.S. Inc./Dupont; Sally Mannion, Head, Pharma & Nutrition Team at Avidity IP; Enrique Molina Galán, Director, European Patent Office; and Mary Till, Legal Advisor with the U.S. Patent and Trademark Office.  This session will be moderated by Thomas Kowalski, Shareholder at Vedder Price.

Another example of a session that will look to other jurisdictions, this time for a specific topic, is "The New World: Post-Grant Review in the United States -- What Can We Learn from Experiences in Europe, Japan, India and Australia," which is being presented on Monday, June 18, between 2:00-3:30 pm.  The AIA made significant changes to the U.S. post-grant review system, allowing parties the opportunity to challenge the validity of patents on prior art and disclosure grounds within nine months of grant.  There will be a newly titled "Patent Trial and Appeal Board" that will hear these challenges, and the Federal Circuit will only be able to review decisions under the substantial evidence standard.  The speakers for this session are a panel of international experts who will be able to explain their countries' histories with post-grant review, including the growing pains they experienced developing their respective systems.  They promise to assess the pros and cons of post-grant review and coordinated global approaches to the subject.  The session includes Pravin Anand, Managing Partner at Anand and Anand; Katrina Howard, Member, Selborne Chambers; Hans-Rainer Jaenichen, Partner at Vossius & Partner; and Shusaku Yamamoto, Founder of Shusaku Yamamoto Patent Attorneys.  The session will be moderated by James F. Haley, Partner at Ropes & Gray LLP.

The final session that we are highlighting will explore the consequences, whether intentional or unintentional, of one of the provisions of the AIA -- the Prior User Rights.  This session is entitled "Prior User Rights and Trade Secrets: A New IP Option Replacing Patents to Secure Freedom-To-Operate for Internally Used Innovations in Biotechnology," and will be presented on Tuesday, June 19, and 2:00-3:30 pm.  This section of the AIA allows a company to maintain a new technology as a trade secret, while providing a defense against future infringement of a later patent.  As such, the Prior User Rights could change the patent landscape for externally marketed products and internally used technologies used to produce them.  This session promises to assess the merits and risks of the choice between patents and prior user rights to secure freedom-to-operate for these internally used technologies.  It will also explore how a prior user paradigm might best benefit you or your clients company.  The speakers for this session include Brian Barrett, Associate General Patent Counsel for Eli Lilly & Company; Mary Ann Dillahunty, Vice President, Intellectual Property for Oncolytics Biotech, Inc.; Jason Duncan, Associate General Counsel of EMD Serono, Inc.; and Andrew Torrance, Visiting Professor at MIT Sloan School of Management.  The moderators will be Thomas Kelley, Consulting Patent Counsel of Monsanto Company and R. Mark Halligan, Partner at Nixon Peabody LLP.