Post-AIA Section 102 and Prior Art: Navigating the Expanded Scope of - - PowerPoint PPT Presentation

Post-AIA Section 102 and Prior Art: Navigating the Expanded Scope of Prior Art and AIA Exceptions

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THURS DAY, S EPTEMBER 11, 2014

Presenting a live 90-minute webinar with interactive Q&A

Thomas L. Irving, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C. John J. Cheek, S enior Corporate Counsel, Caterpillar, Peoria, Ill. John Mulcahy, Finnegan Henderson Farabow Garrett & Dunner, Reston, Va.

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These materials have been prepared solely for educational and

entertainment purposes to contribute to the understanding of U.S. and European intellectual property law. These materials reflect only the personal views of the authors and are not individualized legal

• advice. It is understood that each case is fact specific, and that the

appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, the authors, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han Foreign Legal Affairs Law Firm), and CATERPILLAR, cannot be bound either philosophically

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the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with these authors. While every attempt was made to ensure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed.

5

 USPTO recognizes: “The Office appreciates that the courts

may ultimately address questions concerning the meaning

• f AIA 35 U.S.C. 102 and 103. However, as a practical

matter, the Office needs to provide examination guidelines so that the public is aware of how the Office will apply AIA 35 U.S.C. 102 and 103. The Office considers its interpretation of AIA 35 U.S.C. 102 and 103 as set forth in these examination guidelines to be the correct interpretation of AIA 35 U.S.C. 102 and 103 based upon the statutory language of the AIA and its legislative history.”

See Examination Guidelines, 78 Fed.Reg. 11,061 (Feb. 14, 2013)

6

 New “35 U.S.C. 102 and 103, which do not

always result in the first inventor to file an application being entitled to a patent (e.g., AIA 35 U.S.C. 102(a)(1) precludes an inventor who is the first person to file an application for patent, but who published an article describing the claimed invention more than

• ne year before the application was filed,

from being entitled to a patent).”

See pp. 11070 of Examination Guidelines (2/14/13).

7

“eff ffective ve filin filing date” is the k e key ey to to na navigati ting the the roa

• adm

dmap of

• f

the the AIA IA and nd the the a appl pplicability of

• f

AI AIA A §102, pr pre-AIA A §102, or

• r

AI AIA A §102 + + pr pre-AI AIA A §102( 2(g)! )!

8

 AIA

AIA SEC. 3 3(n)(1 )(1) Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, [March 16, 2 2013] and shall apply to any application for patent …that contains or contained at at an any t y time:

A. a claim to a claimed invention that has an effective filing date as defined in section 100(i) [rem [remember er: “ent “entitled to”] to”] …, that is on or after the effective date described in this paragraph [March 16, 16, 201 2013];

• r
• r

B. a specific reference under §§ 120, 121, 365(c) to any patent or application that contains or contained at any time such claim. [a [ante tecedent for

• r “s

“suc uch claim” ha has to to be e sub ub.para. (A (A)? )?]

9



• SEC. 3(n)(2): The provisions of sections 102(g), 135,

and 291 of title 35, United States Code, as in effect on [March 15, 2013], shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time—

• (A) a claim to an invention having an EFD

FD as defined in section 100(i) of title 35, United States Code, that occurs be before re [ [Marc rch 16, 16, 2013] 2013]; or

• (B) a specific reference under section 120, 121, or 365(c) of title

35, United States Code, to any patent or application that contains

• r contained at any time such

ch a a cl clai aim.

10

 “section 3(n)(2) does indicate that the provisions of 35

U.S.C. 102(g), 135, and 291 as in effect on March 15, 2013, shall apply to “each claim” of an application for patent, and not simply the claim or claims having an EFD that occurs before March 16, 2013, if the condition specified in section 3(n)(2) occurs. Therefore, “each claim” of an application presenting a claim to a claimed invention that has an effective filing date before March 16, 2013, but also presenting claims to a claimed invention that has an effective filing date on or after March 16, 2013, is subject to AIA 35 U.S.C. 102 and 103 and is also subject to the provisions of 35 U.S.C. 102(g), 135, and 291 as in effect on March 15, 2013.”

See pp. 11069, 11072 of Examination Guidelines (2/14/13)

11

E nac tme nt: Se pt. 16, 2011

PCT F iling Pre - AIA § 102 Ge ne ra lly Applie s T

• All Cla ims

Straddl raddlin ing M March 1 15/16 16, 2 , 2013 13

PCT F iling Priority Da te

E nac tme nt: Se pt. 16, 2011 E ffe c tive Date : Mar c h 16, 2013

Priority Da te AIA § 102 Applie s T

• All Cla ims

PCT F iling

E nac tme nt: Se pt. 16, 2011

Scenario io 1: no claims entitled to priority date, AIA § 102 Applies To All Claims Scenario io 2: all claims entitled to priority date, Pre- AIA § 102 Generally Applies To All Claims Scenario io 3: mixed EFD claims March 15/16, 2013, AIA § 102 and pre-AIA § 102(g) Apply To All Claims

12

 Pre-AIA law:

• EFD of a claimed invention is determined
• n

a claim-by-claim basis, not application-by-application.

 AIA law:

• Retains the principle that different claims

in the same application may be entitled to different EFDs.

See Examination Guidelines, 78 Fed.Reg. 11,073 (Feb. 14, 2013)

13

 Prior art is applied on a claim-

by-claim basis

 BUT whether pre-AIA §102 or

AIA §102 apply is

• n

an application-by-application basis.

See Examination Guidelines, 78 Fed.Reg. 11,073 (Feb. 14, 2013)

14

 “Because the changes to 35 U.S.C. 102 and

103 in the AIA apply only to specific applications filed on or after March 16, 2013, determining the effective filing date of a claimed invention for purposes of applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 and 103 provisions is critical.”

See pp. 11083 of Examination Guidelines (2/14/13)

15

16

 Pre-AIA §102(a)-(g)

• seven subsections

 §102(a): known or used by others; §102 (b): statutory bar―sale, offer for sale, patented, published by anyone; §102 (c): abandoned; §102 (d): first patented elsewhere; §102(e): prior patents & published applications of others; §102(f): derivation; §102(g): first to invent;

• combination of both the “novelty” requirement and a set of “loss
• f right” to patent provisions; no clear delineation between the

two, or so it is argued by some.

 Pre-AIA §103

• three subsections

 (a) non-obviousness requirement from 1952 Patent Act;  (b) amendments in light of Biotechnology Process Patent Act of 1995; and  (c) provisions relating to commonly assigned patents and patents developed pursuant to Joint Research Agreements.

Could apply to certain patents until at least through March 15, 2034!

17

(a)(1): A public disclosure ANYWHERE in the world before the EFD of the claimed invention; OR (a)(2): Patent filing disclosures (in the U.S. or PCT designating the U.S.) that later become public, that name another inventor, and were effectively filed before the EFD of the claimed invention. b) Exceptions from prior art c) Expands exceptions subject to CREATE Act (joint research agreements/mergers); and d) new definition of “effectively filed” for 102(a)(2) (sort of like old 102(e))

18

 New definitions remove geographic and language

restrictions on prior art.

 An overarching premise of “public accessibility.”  What is prior art under the new law, absent a

Nomiya‐type admission, must either form

• a § 102(a)(1) public disclosure – something made “available to the

public” in the new words found in AIA §102(a)(1); or

• an “effectively filed” AIA § 102(a)(2) patent filing disclosure.

Effectively filed AIA § 102(a)(2) art requires that ultimately at least

• ne of the following three documents publish (“special

publications”):  a U.S. patent;  a U.S. patent application, or  a U.S.‐designating PCT application.

Note: “Office does not view the AIA as changing the status quo with respect to the use of admissions as prior art.” Examination Guidelines pp. 11064 and 11075.

19



Some may seek out SEC.3(n)(2), owing to advantages of AIA.

• Elimination of Metallizing Engineering

forfeiture (according to USPTO);

• liberalization of the CREATE ACT and common
• wnership in 102(c);
• possible elimination of pre-AIA statutory bars

that are not AIA prior art!!!



Lab notebooks maybe even more important than before!

20



USPTO: “With respect to comments that Metallizing Engineering and other forfeiture doctrines should be preserved because they serve important public policies, the Office notes that the choice of which public policies to pursue through the definition of prior art is made by Congress, not by the Office. Also, some of the purposes ascribed to these doctrines in case law appear to be ill-suited to or inconsistent with the AIA. The problem of delayed filing of applications is unique to pre-AIA 35 U.S.C. 102, under which an applicant can rely on a secret invention date in order to establish a priority date.”

See p. 11062 of Examination Guidelines (2/14/13)

21



Enacters: Congress intended to eliminate “secret prior art” of any kind, ANYWHERE.

• Cong. Rec., Sept. 8, 2011, S5431: “Once an invention has entered the public domain,

by any means, it can no longer be withdrawn by anyone.”



Evidence of a public use or offer to sell anywhere in the world may meet the test of accessibility to the public, but ut may y be e VERY difficult for

• r the

the applicant t to to find nd out

• ut about
• ut pri

rior

• r to

to discov

• very in

n liti tigation.



Congress could have easily said “publicly on sale” if it intended to make the law clear that no “secret sale” is prior art? But ut does

• es pub

ublic ac accessibility trump al all? US USPTO say says s YE YES!



Pre-AIA case law established that something is “publicly accessible” when “one skilled in the art exercising reasonable diligence” could find it.

• See also, Examination Guidelines, pp. 11063-11064 (Feb. 14, 2013): USPTO will look

to pre-AIA caselaw on “publicly available” to evaluate “otherwise publicly available”

22

 “the Office views the ‘or otherwise available to the

public’ residual clause of the AIA’s 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art. These examination guidelines also indicate that an activity (such as a sale, offer for sale, or other commercial activity) is secret (non-public) if, for example, it is among individuals having an

• bligation of confidentiality to the inventor.”

See pp. 11062-11063, 11075 of Examination Guidelines (2/14/13)

23

 “The Office’s interpretation of AIA 35 U.S.C.

102(a)(1) also ensures that the AIA grace period can extend to all of the documents and activities enumerated in AIA 35 U.S.C. 102(a)(1) that would otherwise defeat patentability.”

See pp. 11062 of Examination Guidelines (2/14/13)

24

 “The phrase ‘‘on sale’’ in AIA 35 U.S.C.

102(a)(1) is treated as having the same meaning as ‘‘on sale’’ in pre-AIA 35 U.S.C. 102(b), except that the sale must make the invention available to the public.” (emphasis added).

25

See pp. 11075 of Examination Guidelines (2/14/13)

 Does a public use or sale have to be enabling to

constitute prior art under AIA 35 U.S.C. 102(a)(1)?

 No.

• “The case law provides that the enablement inquiry is

applicable to the question of whether a claimed invention is described in a patent, published patent application, or printed publication, but is not applicable to the question of whether a claimed invention is “in public use” or “on sale.” The Office does not view the AIA as changing this principle

• f pre-AIA case law.”

See pp. 11063 of Examination Guidelines (2/14/13)

26

§102 Conditions for patentability (a) NOVELTY; PRIOR ART (with teaching edits). A person shall be entitled to a patent unless— … (2) the claimed invention was described in a [US] patent issued under section 151 [US patent], or in an application for [US or PCT application designating the US (§374)] patent published or deemed published under section 122(b) [US application or PCT application designating the US], in which the [US] patent or [US or PCT designating the US] application, as the case may be, names another inventor and was effectively filed before the EFD of the claimed invention.



See AIA §102(d) : “effectively filed” can be earliest foreign priority document.



§ 102(a)(2) somewhat like old §102(e); effectively filed before effective filing date but not disclosed before effective filing date, otherwise would be under §102(a)(1).

35 U.S.C. § 102(a)(2): “Effectively Filed” Incentivize EFD after March 15

27

§102 C Conditions for pat atentability ( (a) a) NOVE VELTY; P PRIO IOR AR ART

A pe pers rson

• n shall

ll be be e entitl titled to a to a pa pate tent unl unless… (2)

35 U U.S .S.C .C. . § 102(a (a)(2 )(2): ): “Effect ectivel ely Filed”

Th The cla claim imed Invention…

OR AND …in which the patent or application

28

 The published PCT designating the US is deemed published under

§122(b) and hence triggers the application of §102(a)(2) as of the date the PCT was effectively filed

• "effectively filed" is defined in §102(d)

 That date can be a foreign priority or domestic benefit date as long

as the PCT is entitled to claim the right of priority/benefit, which some are interpreting as whether or not the PCT is actually entitled to benefit.

 Enableme

ment: nt: But enacters argue that there need be no enablement as

• f the priority/benefit date of the subject matter described for the

date of the priority/benefit application to be the date “effectively filed.”

• USPTO a

agree eed: see next s slides; incentivizing EFD after March 15, 2013??

29

 “The AIA draws a distinction between actually being entitled

to priority to, or the benefit of, a prior-filed application in the definition of effective filing date of a claimed invention in AIA 35 U.S.C. 100(i)(1)(B), and merely being entitled to claim priority to, or the benefit of, a prior-filed application in the definition of effectively filed in AIA 35 U.S.C. 102(d).” See pp. 11078 of Examination Guidelines (2/14/13). Entitled to priority/benefit

• f prior-filed app

Merely entitled to claim priority/benefit

• f prior-filed app

v. v.

Definition of effective f filing d date e (EFD) Definition of effectively f filed

30

 “As a result of this distinction, the question of whether a

patent or published application is actually entitled to priority

• r benefit with respect to any of its claims is not at issue in

determining the date the patent or published application was “effectively filed” for prior art purposes. Thus, as was the case even prior to the AIA, there is no need to evaluate whether any claim of a U.S. patent, U.S. patent application publication,

• r WIPO published application is actually entitled to priority or

benefit under 35 U.S.C. 119, 120, 121, or 365 when applying such a document as prior art.” See pp. 11078 of Examination Guidelines (2/14/13).

31

 §102(d)

d) P PATENTS A S AND P PUBLI BLISH SHED A APPLI LICATIONS E S EFFECTIVE A AS S PRIOR A ART.

• For purposes of determining whether a patent or application for

patent is prior art to a claimed invention under subsection (a (a)(2 )(2), such patent or application shall be considered to have been ef effec ectivel ely f filed ed, with respect to any subject matter de describe bed in the [U [US] ] patent or [US or

• r PCT des

esigna nating the the US] application-

 “(2) if the patent or application for patent is entit itle led to cla laim im a right of priority under section 119, 365(a), or 365(b), or [ent [entitled] to cla laim im the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes bes the subject matter.” [“ent ntitlem ement ent” t trumps ps “ “describes bes”- theref efore e enabl blem ement ent i is required? ed?]  “(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent”

32

 §102

102(d) d) PA PATENT ENTS AND PU PUBL BLISHED ED APPL APPLICATIONS NS EF EFFEC FECTIVE E AS S PRIO RIOR ART RT.

• Earlier-Filed but Later-Published US patents and US/PCT-

designating US applications.

• Following publication, disclosure has retroactive availability as

prior art as of the date effectively filed for novelty and

• bviousness purposes.
• Somewhat like old §102(e) but c

cannot b be a antedat ated b by e y ear arlier invent ntion. n.

• Available as prior art for novelty and obviousness purposes.

33

 Generally, the “EFD” is the actual patent application

filing date in the case of a still-pending application, unless the claimed invention is entitled to priority/benefit of an earlier patent filing.

 EFD has nothing to do with §102(a)(2) but rather with

assessing the validity/patentability of a claimed invention in view of §§ 102(a)(1) and (2).

• Ef

Effec ectivel ely f filed ed has everything to do with §102(a)(2) as prior art.

34

 This entitlement to priority/benefit exists where  Bes

Best M Mode: : Note that the best mode requirement still exists at least for all US nonprovisional patent filings because it remains in 35 U.S.C. 112(a).

(1) 1) a cla claim im f for r prio riorit rity/benefit is is made, and and

(2) the earlier patent filing contains written description and enablement support of the claimed invention, as the AIA expressly removed the requirement of disclosing the best mode in an earlier application for the purposes of showing entitlement to priority/benefit.

35

 “To provide support for a

claim under 35 U.S.C. 112(a), it is necessary that the specification desc scribe and nd e ena nable the he e ent ntire s scope

• f the c

cla laimed in invention. [...continued...]



…However, in order for a prior art document to describe a claimed invention under AIA 35 U.S.C. 102(a)(1)

• r (a)(2), the prior art document need

eed

• nly

ly descri ribe an and enab able le one skille illed in in the art art t to m mak ake a a sin ingle le specie ies or r embodi bodiment of

• f the claimed

d inventio ion…the disclosure may be cited for all that it would reasonably have made known to a person of ordinary skill…the description requirement of AIA 35 U.S.C. 102(a)(1) and (a)(2) does not preclude an examiner from applying a disclosure in an obviousness rejection under AIA 35 U.S.C. 103 simply because the disclosure is not adequate to anticipate the claimed invention under AIA 35 U.S.C. 102(a)(1) or (a)(2).”

See pp. 11074 of Examination Guidelines (2/14/13)

Emphasis added

36

See pp. 11078 of Examination Guidelines (2/14/13) “AIA 35 U.S.C. 102(d) requires that a prior-filed application to which a priority or benefit claim is made must st d desc scribe t the su subject m mat atter from the U.S. patent, U.S. patent application publication, or WIPO published application relied upon in a rejection.

…AIA 35 35 U.S.C. C. 102(d) d) doe does n not

• t

re requ quire th that t th this is descripti ription

• n m

meet th the re requ quir irements

• f 35

35 U.S.C. C. 112( 112(a) a).”

Howev ever er, Emphasis added

37

 Hilmer Doctrine evidenced bias of U.S. law

against inventions originating outside the U.S.

• Based on two U.S. litigations (Hilmer I and II)

that held that the foreign right of priority of a U.S. patent does not provide a prior art effect under § 102(e) as of that foreign priority date, nor does inventive work

• utside the U.S. have a prior art effect under

§ 102(g). Rather, one needed a U.S. filing date to have a prior art effect.

38

 Now, under AIA a foreign priority date can be used offensively as

prior art under AIA’s 35 U.S.C. §102(a)(2) against the patent claims of others, as long as the subject matter in one of the three special publications was at least described in a foreign priority document which was “effectively filed” relative to the relevant subject matter. (See 35 U.S.C. §102(a)(2) and §102(d)).

 “AIA 35 U.S.C. 102(d) eliminates the Hilmer doctrine. The “Hilmer

doctrine” as discussed in MPEP § 2136.03 remains applicable to pre-AIA applications because AIA 35 U.S.C. 102(d) does not apply to pre-AIA applications.” See pp. 11064 of Examination Guidelines (2/14/13).

39

’002 Issue

10-1-2002 10-17-2000

’002 US appln filed 1-18-2000 ’002 foreign priority appln filed 11-1-1999 ’001 foreign priority appln filed 10-19-2000 ’001 US appln filed 6-11-2002 ’001 issue

• Pre-AIA, the ’001 US application because of Hilmer, was not

§102(e)/103 prior art against the claims of the ’002 patent because ’001 priority was irrelevant.

40

’002 Issue

10-1-2002 10-17-2000

’002 US appln filed

1-18-2000

’002 foreign priority appln filed

11-1-1999

’001 foreign priority appln filed

10-19-2000

’001 US appln filed

6-11-2002

’001 issue

• If the ’001 patent was “effectively filed” (relevant disclosure of ’001 patent at least

described in the ’001 foreign application) on 11-1-1999, then the ’001 patent is §102(a)(2) prior art as of 11-1-1999 against the claims of the ’002 patent, whether the effective filing date of the relevant claims of the ’002 patent is 1-18-2000 or 10-17-2000.

41

’002 Issue

10-1-2002 10-17-2000

’002 US appln filed

1-18-2000

’002 foreign priority appln filed

11-1-1999

’001 foreign priority appln filed

10-19-2000

’001 US appln filed

6-11-2002

’001 issue

Is there a §102(b)(2) exception to remove the ’001 §102(a)(2) prior art against the ‘002 patent claims? Whatever the effective filing date of the ’002 claim, §102(b)(2) could apply to remove the §102(a)(2) prior art if the requirements of either §102(b)(2)(A) or §102(b)(2)(B) can be met.

42

U.S. Pr

• v.

Appl.

CN

U.S. Appl. Non- Pr

• v.

PCT (de s. U.S.)

Chine se

USPAT USPAT F R PCT (de s. U.S.) USPAT

Pub. Appl. Pub. PCT Appl. Pub. PCT Appl.

F r e nc h E nglish

• NO ge o gr

aphic al o r language distinc tio n

• E

ntitle me nt to c laim pr io r ity/ be ne fit o f US Pr

• v App., CN app., and F

R app.

• Impo r

tant date is whe n “e ffe c tive ly file d” no t whe n publishe d.

• Hilme r

doc tr ine abolishe d.

Impact act o

• f § 102(

102(d)(2) 2) – Prior rior A Art rt Da Date te

Prior a rt da te Prior a rt da te Prior a rt da te

Following publication, disclosure has retroactive availability as prior art as of the date effectively filed for novelty and

• bviousness purposes.

43

 Prior art disclosures are removed from

consideration IF the exception applies.

 2 exceptions apply to §102(a)(1) global

prior public disclosures (§102(b)(1)(A) and (B))

 3 exceptions apply to §102(a)(2) patent-

filing disclosures (§102(b)(2)(A) to (C))

Prior Art

Exception

44

 §102 (

(b)(1) EXCEPTIONS. (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the dis disclo losure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter [independently?] dis disclo losed had, before such disclosure, been pu public blicly ly disclosed by the inventor or a joint inventor

• r another who obtained the subject matter disclosed directly or

indirectly from the inventor or a joint inventor.

ANY NY- WHERE E IN TH N THE WORL RLD

“grace period”

45

 “When the Office can readily ascertain

by examination of inventorship and authorship that a certain disclosure falls under AIA 35 U.S.C. 102(b)(1)(A), the Office will not apply such a document in a prior art rejection.”

See pp. 11064 of Examination Guidelines (2/14/13). See slides on Rule 130 declarations, infra.

46

 “Alternatively, when there are additional named

individuals on a prior art publication as compared to the inventors named on a patent application, it is incumbent upon the applicant to provide a satisfactory showing that the additional named authors did not contribute to the claimed subject matter.”

 “Names another inventor” in § 102 (a)(2)?

See pp. 11064 of Examination Guidelines (2/14/13). See slides on Rule 130 declarations, infra.

47

 §102

102 (b)(2) 2) EX EXCEP CEPTI TIONS – …

(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who

• btained the subject matter disclosed directly or indirectly from

the inventor or a joint inventor; or (C) the subject matter disclosed and the claimed invention, not not late ter tha than the n the e effecti tive f filing ng d date te of

• f the

the c claime med i inv nventi tion

• n, were
• wned by the same person or subject to an obligation of

assignment to the same person.

No “grace period”

48

§102(b)(1) Exception ONLY for the same subject matter earlier disclosed; “related” subject matter could still be used against the patentee under AIA §103 and MIGHT even preclude the claimed invention from being patentable at all because of §103 !!! What if inventor discloses X and the disclosee discloses X and Y?

See USPTO Examination Guidelines 78 Fed.Reg. 11,061 (Feb. 14, 2013) The same argument regarding disclosed vs. related subject matter is also made regarding §102(b)(2), which is the exception to §102(a)(2).

49

 “AIA 35 U.S

.S.C .C. . 102(b) b)(2)(C) pro provide ides t that c cert rtain prio prior r pa patents a and d pu publis blished pa d patent a applic pplicatio ions o

• f co-workers

rs a and d colla llabo bora rators rs a are re not not prior

• r art

t eith ther f for

• r pur

urpos

• ses of
• f dete

termi mining nov novelty ty ( (35 U U.S.C. 102 102) o

• r nonobviousness (35

(35 U.S. S.C.

• C. 103)

103). This exception, however, applies only to prior art under AIA 35 U.S.C. 102(a)(2), namely, U.S. patents, U.S. patent application publications, or WIPO published applications effectively filed, but not published, before the effective filing date of the claimed invention. This exception does not apply to prior art that is available under 35 U.S.C. 102(a)(1)…. A prior disclosure, as defined in AIA 35 U.S.C. 102(a)(1), by a co-worker or collaborator is prior art under AIA 35 U.S.C. 102(a)(1) unless it falls within an exception under AIA 35 U.S.C. 102(b)(1), regardless of whether the subject matter of the prior disclosure and the claimed invention was commonly owned not later than the effective filing date of the claimed invention.”

See pp. 11072 of Examination Guidelines (2/14/13).

50

 “if the inventor or a joint inventor had publicly disclosed

elements A, B, and C, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses elements A, B, C, and D, then only element D of the intervening U.S. patent, U.S. patent application publication, or WIPO published application is available as prior art under AIA 35 U.S.C. 102(a)(2).”

 Must mean all requirements met for a § 102(b)(2)

exception.

See pp.11077 of Examination Guidelines (2/14/13). See slides on Rule 130 declarations, infra.

51

 “The Office also indicated in the proposed

examination guidelines that the subject matter in the prior disclosure being relied upon under AIA 35 U.S.C. 102(a) must be the same ‘subject matter’ as the subject matter previously publicly disclosed by the inventor for the exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) to apply… . These examination guidelines maintain the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B).”

See pp. 11061 of Examination Guidelines (2/14/13).

52

• No requirement that the mode of disclosure be the same;
• No requirement that the disclosure be a verbatim or

ipsissimis verbis disclosure of the intervening disclosure.

• “[I]f subject matter of the intervening disclosure is simply a

more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, the exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening disclosure.” See pp. 11061 of Examination Guidelines (2/14/13).

53

 “Therefore, the single instance of the phrase “the subject matter”

in subparagraph (B) of each of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) cannot reasonably be interpreted as including variations within its ambit.”

 “The absence of the “substantially” modifier or similar

terminology in subparagraph (B) of each of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) further supports the conclusion that this provision does not contemplate variation in subject matter.”

 “The more expansive alternative interpretations of the

subparagraph (B) provision, however, are not supported by the language of the subparagraph (B) provision.”

See pp. 11066 of Examination Guidelines (2/14/13).

54

 §102 (

(b)(2) EXCEPTIONS – … Common ownership under 102(b)(2)(C) applies only as an exception to 102(a)(2). For policy reasons, it is not an exception to 102(a)(1)!!!!!! Can’t remove from the public by common ownership what is already in the public domain. PTO agrees: next slide. Note: §102(f)/103?

No “grace period”

55

 “AIA 35 U.S.C. 102(b)(2)(C) provides that certain prior patents and

published patent applications of co-workers and collaborators are not prior art either for purposes of determining novelty (35 U.S.C. 102) or nonobviousness (35 U.S.C. 103). This exception, however, applies only to prior art under AIA 35 U.S.C. 102(a)(2), namely, U.S. patents, U.S. patent application publications, or WIPO published applications effectively filed, but not published, before the effective filing date of the claimed invention. This exception does not apply to prior art that is available under 35 U.S.C. 102(a)(1)…. A prior disclosure, as defined in AIA 35 U.S.C. 102(a)(1), by a co-worker or collaborator is prior art under AIA 35 U.S.C. 102(a)(1) unless it falls within an exception under AIA 35 U.S.C. 102(b)(1), regardless of whether the subject matter of the prior disclosure and the claimed invention was commonly owned not later than the effective filing date of the claimed invention.”

See pp. 11072 of Examination Guidelines (2/14/13).

56

 To show common ownership or JRA to come under

the §102(b)(2)(C) exception to §102(a)(2) prior art, the patent owner/applicant files a statement to that effect.

• New Rule 104 and Examination Guidelines, pp. 11080 (Feb.

14, 2013).

 Duty of disclosure and use of Rule 105 by the

USPTO to obtain more information if necessary may provide sufficient safeguards.

 Take care regarding factual representations.

57

 §102(b)(2)(C) exception does not remove a

§102(a)(1) prior art, OR a double-patenting rejection, or a lack of enablement rejection - a “document need not qualify as prior art to be applied in the context of double patenting

• r enablement.”

See pp. 11080 of Examination Guidelines (2/14/13).

58

 “Offer to license” under pre-AIA 35 U.S.C. §102(b)

applicable under AIA 35 U.S.C. § 102(a)(1); “AIA did not amend 35 U.S.C. 102 to change the treatment

• f the prior art effect of an offer for license.”

 BUT, if offer to license makes invention available to

the public, may have AIA 35 U.S.C. §102(a)(1) prior art.

See pp. 11062 of Examination Guidelines (2/14/13).

59

 “The case law distinguishing between offers for sale and offers

for license under pre-AIA 35 U.S.C. 102(b) is equally applicable under AIA 35 U.S.C. 102(a)(1) as the AIA did not amend 35 U.S.C. 102 to change the treatment of the prior art effect of an

• ffer for license. … If a transaction or offer with respect to an

invention constitutes licensing within the meaning of these cases, the offer or transaction does not implicate the on sale

• bar. However, if the licensing of an invention makes the

invention available to the public, patentability would be independently barred by the residual clause of AIA 35 U.S.C. 102, which precludes patenting of a claimed invention that was ‘available to the public’ more than one year before the effective filing date of the claimed invention.” See pp. 11062 of Examination Guidelines (2/14/13).

60

A B

X

D C

March 16, 2013

abandoned

add claim only entitled to C filing date

Date Z

at at Dat ate Z, D can an’t dis isclaim laim prio riority y claim laim t to C C an and r replac lace it it wit ith a a prio iorit rity y claim laim to X X to get ba back t k to pr

• pre-AIA

IA

X

61



Old ld: Tom could antedate Barbara by showing prior conception/diligence or RTP.



New ew: : Since Barbara filed first, Barbara is prior art to Tom for r §§ 102 102 and 103 103 purposes.



§102(a)(1) and §102(b)(1) do not apply.



§102(a)(2) applies unless §102(b)(2) exception applies.

Barbara Publishes in U.S Fil iled ed! Fi Filed!

62

 Old: Foreign sale is not prior art

to Tom.

 New: Foreign sale is prior art

under §102(a)(1).

 Does §102(b)(1) exception apply?  Separate patentability?

INVENTION SOLD IN EUROPE (Confidential???)

Fi Filed!

63



Old ld: Public use outside U.S. was not prior art.



New: Prior public use is prior art wherever it occurred (§102(a)(1)) unless exception applies (§102(b)(1)) or unless can patentably distinguish.



§102(a)(2) does not apply (and thus §102(b)(2) exceptions cannot apply) because no patent or patent application.

>1 Y 1 Year ear

Conception Fi Filed!

Public Use (Outside U.S.)

64

<1 Year

Conception Fi Filed!

Public Use (Inside U.S.)



Old ld: Tom could antedate Barbara’s public use within one year.



New: Prior public use is prior art wherever it occurred (§102(a)(1)) unless exception applies (§102(b)(1)) or unless can patentably distinguish.



§102(a)(2) does not apply (and thus §102(b)(2) exceptions cannot apply) because no patent or patent application.

65

Grace Period!

Disclosure “by or … from” an inventor

<1 Year

Disclosure “by or … from” an inventor and since after effective filing date, not prior art under 102(a)(1)

<1 Year

Filed! d! Filed! d! (Effective FD)

66

public use or on sale in U.S.

<1 Year

Assume U.S. filing is pre-AIA; file CIP on

• r after 3/16/13 after US filing but before
• publication. Present one AIA claim and
• ne pre-AIA claim. Under 3(n)(2),

possible statutory use bar for pre-AIA claim vanishes!!!

<1 Year

Filed! d! Filed! d! (Effective FD) 3/16/13

file CIP

67

Grace Period!

Disclosure “by or … from” an inventor; related subject matter?

Disclosure by ANYONE

<1 Year

Filed! d!

(Effective Filing Date)

68

68

File led!

Filed iled!

1 Year

Tom’s U.S. App. Publishes

Public Disclosure

 Barb

rbara ra’s p publi lic d dis isclosure (re (rela lated s subject m matter? r?)… … … is no not prior art against her. §102(b)(1)(A). … shields her from Tom’s publication. §102(b)(2)(A). … and is prior art against Tom. §102(a)(1).

FITF loses to FIT-Disclose

69

• § 102(c) COMMON OWNERSHIP UNDER JOINT RESEARCH

AGREEMENTS.—

• Subject matter disclosed and a claimed invention shall be deemed to have

been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—

1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before re t the e effective fili iling d date o

• f the cla

laimed inve vention

• n;

2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and 3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

CREATE Act t Now

• w In

In §102(c) (c)

70

• §102(c) COMMON OWNERSHIP UNDER JOINT

RESEARCH AGREEMENTS.

• May allow inventor to proactively take care of

potential §102(a)(2) or §§ 102(a)(2) /103 problem with JRA.

• Does not allow use of JRA to overcome

§§102(a)(1)/103 problem.

CREATE Act t Now

• w In

In §102(c ) (c )

71

71

• University X has sought a narrow patent filing on new

compounds A and B.

• Company Y is about to file a broad patent on a genus of

compounds on which it has been working for which compounds A and B fall within the genus.

• If, before Company Y files for a patent it concludes a JRA

that has within its scope the discovery, synthesis, and testing

• f compounds within the broad genus, then the JRA applies to

Company Y’s su subse sequent patent filing and the anticipatory patent filing of University X is removed as prior art.

Examp ample: G Game ame Chang hanger

72

• Under the pre-AIA CREATE Act, this type of

protection for University X and Company Y would have been unavailable because the he pr pre- AIA ve version di did no d not pr protect ag agai ains nst the he l loss of no nove velty, o

• nl

nly y obvi bviousness, and wo and woul uld d no not have have appl applied s sinc nce the he gene neric i inve nvent ntion had had al already ady be been made made as as o

• f t

the he dat date of t the he J JRA. Examp ample: G Game ame Chang hanger

73

73

 § 102(c) says it shall be deemed to be

• wned by the same person or subject

to an obligation of assignment if the subject matter claimed was developed under a JRA before the effective filing date of the claimed invention. . See a ee als lso §102(b)(2)(c) (common ownership exception to §102(a)(2)) and § 102(c) allows folding JRA into §102(b)(2)(C)

74

74

 Big change!! Old law was

“at the time the invention was made”

 Buying prior art works only

as exception to §102(a)(2) not as any exception to §102(a)(1). See ee §102(b)(2)(C).

75

75

 File a CIP, PCT, U.S. national

application, or non-provisional, presenting at least one claim that has an effective filing date post- March 15, 2013, but maintain limited first-inventor-to-file rules by presenting at least one claim that has an effective filing date pre-March 16, 2013.

76

• “Old” subject matter keeps its effective pre-AIA

filing date but is pulled into the AIA and cannot escape § 102(g) prior art under 3(n)(2). But in assessing effect of § 102(g) art for all claims in the mixed AIA/pre AIA application, date te of

• f

in invention, a and thus anted edating, , is is relev relevant giv iven en the languag age e of §102 102(g)!

• And a

all ll cla laim ims in in t the a e applic lication rec recei eive ben enef efits

• f

f AI AIA, A, su such a as s fi first st-inv nventor-to to-file, f , forf rfeit eiture, , the e ex expansive Crea reate Act and commo mmon

• wner

ership, and f few ewer er § 102 al alph phabe bet s soup p require irements.

77

78

79

• Accord Healthcare, Inc. v. Helsinn Healthcare S.A. and Roche Palo Alto

LLC, PGR2014-00010, filed Sept. 2, 2014.

• One day before 9-month-from-issuance filing deadline!
• Claims 1-5 and 8 of U.S. Patent No. 8,598,219.
• 5 related district court litigations listed in petition.
• CIP application filed May 23, 2013, issued Dec. 3, 2013.
• Grounds
• lack of written description of the claimed subject matter being stable at 18 or 24

months when stored at room temperature.

• specification does not enable the broadly claimed subject matter outside a pH

range of 4 to 6.

• claims do not particularly point out and distinctly claim the subject matter which

the inventors regard as the invention.

• lack of written description of the claimed subject matter which omits a pH range
• f 4 to 6.

 Accord v. Helsinn (con’t)

• Claim 1. A pharmaceutical single-use, unit-dose formulation for

intravenous administration to a human to reduce the likelihood of cancer chemotherapy-induced nausea and vomiting, comprising a 5 mL sterile aqueous isotonic solution, said solution comprising:

 palonosetron hydrochloride in an amount of 0.25 mg based on the weight of its free base;  from 0.005 mg/mL to 1.0 mg/mL EDTA; and  from 10 mg/mL to 80 mg/mL mannitol,  wherein said formulation is stable at 24 months when stored at room temperature.

• Claim 8: same but recites “stable at 18 months when stored at

room temperature.”

80

81

82

83

 Inventor uses an affidavit/declaration to show prior

public disclosure and disqualify prior art.

 If assert derivation in the affidavit/declaration,

inventor may file petition for derivation proceeding, but does not have to (as was in the proposed rules).

 Statement may be sufficient.

See pp. 11027 of Rules (2/14/13). See pp. 11063, 11067 of Examination Guidelines (2/14/13). .

84

 Rule 130 applicable to AIA applications.

• disqualifying prior art by establishing that the disclosure was by the

inventor/joint inventor or was a prior public disclosure of the subject matter.

• “Section 1.130(a) pertains to the provisions of subparagraph (A) of AIA 35

U.S.C. 102(b)(1) and (b)(2)…Section 1.130(b) pertains to the provisions of subparagraph (B) of AIA 35 U.S.C. 102(b)(1) and (b)(2).”

 Rule 131 applicable to pre-AIA applications (and JMM applications if

pre-AIA §102(g) implicated).

• prior invention.

 For mixed applications, “the provisions of § 1.131 are applicable

• nly with respect to a rejection under 35 U.S.C. 102(g) as in effect
• n March 15, 2013. Because of AIA SEC 3(n)(2).

See pp. 11030, 11036 of Rules (2/14/13).

85

 No Rule 130 affidavit when rejection is based upon a public

disclosure [102(a)(1)] made more than one year before the effective filing date of the claimed invention.

 “Note that the provisions of § 1.130 are available to establish that a

rejection under AIA 35 U.S.C. 102(a)(2) is based on an application or patent that was effectively filed more than one year before the effective filing date of the claimed invention under examination, but not publicly disclosed more than one year before such effective filing date, where the subject matter disclosed was obtained directly

• r indirectly from the inventor or a joint inventor.”

See pp. 11036 of Rules (2/14/13).

86

 No Rule 130 affidavit when two applications

to same subject matter, one is applied as 102(a)(2) art, and the inventor of the other alleges that the 102(a)(2) art derived a relevant invention disclosed therein from the inventor.

See pp. 11036 of Rules (2/14/13).

87

 Determine which law/prior art should have been

applied by USPTO by analyzing EFD of all claims.

• AIA
• Pre-AIA
• Transitional (JMM): AIA plus part of pre-AIA

 Determine whether the correct law was applied

by USPTO.

 Determine the outcome under the application of

the correct law.

88

Tha hank nk y you. u.

Tom Irving Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 202.408.4082 tom.irving@finnegan.com https://twitter.com/JediMasterMixer John Mulcahy Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190-5675 571.203.2751 john.mulcahy@finnegan.com John Cheek Deputy IP Counsel Caterpillar Inc. 100 North East Adams Street Peoria, Illinois USA 61629 Cheek_John_J@cat.com

89