The e Am America erica In Inve vents nts Ac Act The e Nex - - PowerPoint PPT Presentation

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The e Am America erica In Inve vents nts Ac Act

The e Nex ext R t Roun und: : Im Implement ementatio tion n of Fi First st In Inve ventor tor to to Fi File e Rul ules es

Webinar of April 24, 2013 Ken Nigon & Chris Lewis

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Ov Over ervie view

• Definition of “FITF Prior Art”
• “Publicly Available” Prior Art - §102(a)(1)
• “Patent Filing” Prior Art - §102(a)(2)
• Exceptions … and Exceptional Challenges
• Which Law Applies – First to Invent (FTI) - or -

First Inventor to File (FITF)?

• Transition Case Statements
• Declaration Practice
• Miscellaneous
• Practice Tips

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FI FITF F – Ne New La w Law

The New Class of Prior Art - Section 102(a):

A person shall be entitled to a patent unless:

• 102(a)(1) - 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. “Publicly Available Prior Art”

• 102(a)(2) - the claimed invention was described in a

patent … or in an application for patent published … which … names another inventor and was effectively filed before the effective filing date of the claimed invention. “Patent Filing Prior Art”

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FI FITF F – Ne New La w Law

What is the “trigger”?

• FTI:
• §§ 102(a) & 102(e) - “before the invention”
• § 102(b) – “more than one year prior to the date of the

application for patent in the United States”

• FITF:
• §§ 102(a)(1) & 102(a)(2) –

“before the effective filing date (EFD) of the claimed invention”

• EFD defined in § 102(i) as either:
• Actual filing date if no priority is claimed or
• The filing date of the earliest application for which the

application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date

• Prior filing must provide full § 112, first paragraph support
• Still assessed on a claim-by-claim basis

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Pu Publ blicly cly Av Available lable Pr Prior r Ar Art

Section 102(a)(1):

• “Patented,”
• No change from FTI
• Generally, when right is conferred
• Technically refers to claimed invention of a patent
• “Described in a printed publication,”
• “Described” is no change from FTI
• For Anticipation:
• Each and every element must be disclosed
• Requires “how to make” enablement
• Note “entire scope” distinction with EFD
• For Obviousness – Need not be enabling
• “or in public use, on sale, or otherwise available to

the public”

• PTO: “otherwise available to the public” modifies “in public

use” and “on sale”!

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Pu Publ blicly cly Av Available lable Pr Prior r Ar Art

Section 102(a)(1):

• Public Use
• No geographic limitation
• Same effect regardless if done by inventor or third party
• Now limited to those uses available to the public
• Submit in IDS and Examiner may inquire about it
• On Sale
• No geographic limitation
• Same effect regardless if done by inventor or third party
• Now limited to those sales available to the public
• Submit in IDS and Examiner may inquire about it
• Two requirements:
• Commercial offer for sale and
• Ready for patenting.
• Otherwise available to the public

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Pu Publ blicly cly Av Available lable Pr Prior r Ar Art

The New Statutory Class

• Otherwise available to the public
• A “catch-all” provision
• Focus on whether the invention was available to the public, not the

means by which it got there

• Some Examples cited in Guidelines
• Student thesis in a university library
• Poster display or other information disseminated at a meeting
• Oral presentation at a meeting
• Document electronically posted on the internet
• Commercial transaction not constituting an offer
• Other points
• No “by others” requirement, but exceptions…
• Admissions
• Open Questions
• What is the meaning of this class?
• Does it indeed modify “in public use” and “on sale”?
• Needless to say … the courts will decide these issues.

Pa Patent ent Fi Fili ling ng Pr Prior r Ar Art

Prior Art under §102(a)(2)

• Published U.S. applications as of their earliest priority

date (both U.S. and foreign)

• Almost all PCT applications whether or not they were

filed in the U.S. PTO

• PCT applications that do not designate the U.S. and are

prior art only back to their publication date (under §102(a)(1))

• Foreign applications with no corresponding U.S.

application are prior art only back to their publication date (under §102(a)(1))

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Fo Fore reign ign La Langu nguage Pri ge Priority rity

Prior Art under §102(a)(2)

• If priority document is not in English, PTO must provide

a translation

• “If the document is in a language other than English and

the examiner seeks to rely on that document, a translation must be obtained so that the record is clear as to the precise facts the examiner is relying upon in support of the rejection”

MPEP §706.02(section II)

• Can be a machine translation

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Pa Patent ent Fi Fili ling ng Pr Prior r Ar Art

Machine Translations through espacenet

• The EPO and Google have been working together to

bring you a translation service optimized for patent documents.

• Patent Translate now covers translations between

English and fourteen other languages, namely Chinese, Danish, Dutch, German, Finnish, French, Greek, Hungarian, Italian, Norwegian, Polish, Portuguese, Spanish and Swedish.

• More languages will be added in the coming years.

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Pa Patent ent Fi Fili ling ng Pr Prior r Ar Art

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Ex Exce ceptions tions to Pr Prior r Ar Art

Section 102(b)(1)

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 disclosure was made by the inventor or joint inventor
• r by another who obtained the subject matter disclosed

directly or indirectly from the inventor or a joint inventor; or

• (B) the subject matter disclosed [by another] had, before such

disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

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Exceptions to “PA” Prior Art

Section 102(b)(1)(A) - “Grace Period” Exceptions

• Disclosure made by the inventor or joint inventor
• “Disclosure” is generic to all five classes of 102(a)(1)
• No rejection will be made if apparent (i.e., publication is by

same inventor or less than all inventors named in application)

• Rule 77(b)(6) Statement – Mention in specification of grace

period inventor disclosure

• Rule 130(a) Declaration
• Disclosure made by another who obtained the

subject matter from the inventor or a joint inventor

• Must be made in a Rule 130(a) Declaration
• More reason to keep lab notebooks

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Exceptions to “PA” Prior Art

Section 102(b)(1)(B) – Preclusive Prior Disclosure by Inventor

The subject matter disclosed [by another] had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

• Prior public disclosure must itself be within 1-year
• Rule 130(b) declaration
• Need not be same “mode”
• Need not be identical
• Examples
• Specific – more general: Exception applies
• Genus – species: Exception does not apply
• Species A – species B: Exception does not apply
• If exception does not apply, intervening reference is prior art

Exceptions to “PF” Pr Prior ior Ar Art

Section 102(b)(2)

Disclosure in an application or patent shall not be prior art if-

• the subject matter was obtained directly or indirectly from the

inventor

• the subject matter had been previously disclosed by the

inventor or by another who obtained the subject matter from the inventor

• the patent or application was owned by the same person as of

the EFD of the claimed invention

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Ex Exce ceptions tions to PF PF Pri Prior r Ar Art

Section 102(b)(2)(A)

• Disclosures in the application
• Overlapping claims in two applications must be resolved by

a Derivation proceeding

• Rule 130 Declaration used to prove that subject matter was

derived

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Ex Exce ceptions tions to PF PF Pri Prior r Ar Art

Section 102(b)(2)(B)

Very limited Preclusive Effect by Inventor’s Prior Disclosure

• Prior disclosure must be of the same “subject matter”
• May be a different mode – On sale by inventor vs.

Patent filing by another

• No requirement that it be “verbatim or ipsissimis verbis”

(‘in the identical words’ as opposed to in substantially the same words)

• Earlier specific statement can defeat a later general

statement but not vice versa

• Rule 130(b) declaration used to remove intermediate

disclosure.

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Ex Exce ceptions tions to PF PF Pri Prior r Ar Art

Section 102(b)(2)(B) Example

• A discloses elements I, J and K
• B files application disclosing I, J, K and L
• Within one year of original disclosure, A files application

for I, J, K and L

• B’s published application can only be used for element L

under §102(a)(2)

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Ex Exce ceptions tions to PF PF Pri Prior r Ar Art

Section 102(b)(2)(C) Common ownership or obligation of assignment

The application or patent containing the disclosed subject matter and the application “were owned by the same person or subject to an obligation of assignment to the same person” no later than the EFD of the claimed invention.

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Ex Exce ceptions tions to PF PF Pri Prior r Ar Art

Section 102(b)(2)(C)

• Similar to current 103(c)(1) except:
• Can be used for anticipation as well as obviousness
• Common ownership date is EFD of claim not date of

invention

• Allows patent owner to file for improvements on

purchased but unpublished applications

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Jo Joint nt Res esea earch rch Ag Agre reem emen ent

Section 102(c)

Same as current 103(c)(2) and (3) except:

• Applies to anticipation as well as obviousness
• Key date is EFD of claim
• Definition of Joint Research Agreement moved to § 100

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Whi hich ch La Law Ap w Applies lies?

Transition from FTI to FITF!

• All applications that ever contained or were amended

to contain a claim having an EFD on or after 3/16/13

• Any claim to subject matter not supported by a pre-

March 16 disclosure

• If claim with FITF EFD is canceled, application is still

FITF

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We’re NOT finished with FTI!

• Addition of new matter (not supported in specification

and rejected as new matter by the Examiner) does not put application under FITF unless it’s in a preliminary amendment filed with application

• The “Third Bucket”
• For FITF applications, §102(g) still applies to all claims if the

application has or ever had a claim with an EFD before 3/16/13

• §102(g) also applies to all claims of any continuing application of

any such application

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Whi hich ch Law Ap w Appli lies? es?

Tra rans nsition ition Case ses

Required Statement

• Any application filed on or after 3/16/13 with a priority

claim to an application filed before 3/16/13 and that includes, or is amended to include, a claim with an EFD after 3/16/13 must include a statement to that effect

• Must be made later of 16 months from priority date, 4

months from the actual filing date or on the date that any amendment including FITF subject matter is presented

• No required format for statement – Recommend

separate document

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Tra rans nsition ition Case ses

Required Statement (continued)

• No statement needed if application contains only FTI

claims

• Enforced under rule 56 duty of candor and good faith

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De Decl claratio ration n Pr Practi ctice ce

Rule 130(a) Declaration

• Used to remove a reference that has been derived

from an inventor

• Used to prove cited portion of reference was work of
• ne or more of the inventors under 102(b)(1)(A)
• No need to prove enablement
• Must be signed by applicant or patent owner
• Covers disclosures only within one year of EFD

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De Decl claratio ration n Pr Practi ctice ce

Rule 130(b) Declaration

Declaration must show:

• Earlier disclosure:
• was made by an inventor or
• that the subject matter was obtained from an inventor
• The subject matter:
• was publicly disclosed by an inventor or
• was publicly disclosed by another who obtained the subject

matter from an inventor

• Must Provide
• Copy of earlier disclosure if a publication or
• Description of disclosed subject matter if not a publication

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De Decl claratio ration n Pr Practi ctice ce

Rule 130(a) and (b) Declarations

• Derived Subject Matter:

For 102(b)(1)(A) and 102(b)(2)(A), the declaration must show “communication” of the subject matter to the third party discloser Any documentation showing communication must be submitted with Declaration Can’t be used:

• To remove an application with the same claims
• To remove an application with claims derived from an

inventor Must use Derivation Proceeding

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Pe Perf rfec ecting ting Pr Priority

• rity Cla

laim im

Priority Claim and Certified Copy:

• Both - within 4 months of filing or 16 months of priority

filing; Ensure certified copies are submitted early!

• Filing of certified copy deemed satisfied if (Rule 55(h)):
• Foreign application filed in a participating office
• Priority claim made in ADS and access is granted
• Certified copy received by PTO before grant
• Interim Copy Procedure also satisfies req’t (Rule 55(i))
• “Interim Copy” filed with “true and correct” certification

within 4/16 time requirement

• Actual certified copy filed before patent issuance
• Priority claim must also be made in Application Data

Sheet (along with reference in application)

• Still able to make a late priority claim, but expensive

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FI FITF F – Ob Obvi viousne usness ss

Section 103: Some Changes, but No Big Impact

• Obviousness as of EFD (not date of invention)
• “differences between the claimed invention and the prior

art” (not “subject matter sought to be patented”)

• Old 103(b) gone – Biotechnological processes using or

resulting in a patentable composition of matter; case law has rendered this section unnecessary

• Section 102(a) defines what is prior art for both

anticipation and obviousness

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FI FITF F – Fe Fees es

New Fee Schedule Effective 3/19/13!

• Application Filing: $1,600
• Extra Claims: $420/$80
• Issue Fee: $1,780
• Maintenance Fees: $1,600/$3,600/$7,400
• RCE’s: First - $1,200; Second or subsequent: $1,700
• Prioritized Examination: $4,000
• Appeals
• Notice - $800
• Brief - $0
• Forwarding Appeal to the Board: $2,000
• Requesting Oral Hearing: $1,300

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FI FITF F – Fe Fees es

New Fee Schedule, continues Effective 3/19/13!

• Extension Fees
• First Month - $200
• Second Month - $600
• Third Month - $1,400
• Fourth Month - $2,200
• Fifth Month - $3,000
• Post-Grant Proceedings
• Ex Parte - $12,000
• Supplemental Examination - $16,500 ($12,100)
• Inter Partes Review - $23,000 ($14,000)
• Post Grant Review - $30,000 ($18,000)

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Ex Exper erim imental ental us use Exc e Excep eptio tion

The PTO’s View: We don’t have one!

• Official view – case-by-case basis
• But in Comments – p. 11075, “not primarily for

experimental purposes”

• No apparent reason for it not to survive

Pr Practi ctice ce Tips

• Don’t file “transitional CIPs”
• File parallel applications for new and old subject matter
• Be careful amending claims to old subject matter
• A dose of reality
• Watch out for oral disclosures and social media
• Loose tweets sink ships – any nonconfidential disclosure

can and will be used against you in a court of law

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Pr Practi ctice ce Tips

• Need to monitor competitor’s applications and

publications more closely

• PTO will consider a smaller percentage of prior art
• Examiners typically don’t search for NPL
• Also don’t search PCT applications
• This prior art may only be found in post-grant proceedings
• r litigation

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Pr Practi ctice ce Tips

• Laboratory notebooks are not dead
• Helpful for Prior User Defense
• Need to capture who knew what and when
• Avoid First-to-Publish Trap and file “Broadening

Provisional” shortly after discovery of inadvertent 102(a)(1) event

• No longer a need for parallel filings of U.S.

provisionals for early offensive date

• Watch out for adding additional examples upon

entering national stage or converting provisionals

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Qu Ques estion ions? s?