Changes in Examination Under the America Invents Act

Changes in Examination Under the
America Invents Act Eric Nelson

October 19, 2012 Tokyo

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AIA Guidelines: Changes in Examination

• First to file and prior art standards

© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2

First-to-File: Implemented via New §§ 102/103

• New 102/103 establish a “first-to-file” framework
– But “first-to-disclose” may be more accurate
• Under old 102/103, you can overcome almost any prior art if:
– The prior art hasn’t been public for more than 12 months, AND
– You can establish that you invented the claimed subject matter on or
before the prior art’s effective date
• Under new 102/103, you can overcome almost any prior art if:
– The prior art hasn’t been public for more than 12 months, AND
– You can establish that you disclosed the claimed subject matter on or
before the prior art’s effective date, i.e.:
• “Disclosed” including disclosure by inventor, or disclosure by someone
who derived the information from inventor
• Purpose: if the prior art was your disclosure or originated from your
disclosure, then it’s not prior art


New § 102(a)(1)
• Old 102(a)-102(g) replaced by new 102(a):

102(a): Novelty; Prior Art- 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, deletes “in this country” –
on sale, or otherwise available to the public before public use/sale anywhere
the effective filing date of the claimed invention; or now counts as prior art

“before the invention of”
is now “before the
effective filing date of”


“In Public Use,” “On Sale,” or “Otherwise
Available Prior Art”
• “in public use”
– AIA 35 U.S.C. 102(a)(1) has no geographic limitation on the location where a
prior public use or public availability may occur
• “on sale”
– AIA 35 U.S.C. 102(a)(1) has no geographic limitation on the location where the
sale may occur
– No explicit requirement of “public” sale and no official position has been
taken
• “otherwise available prior art”
– A catch-all provision defining a new category of prior art
– Permits decision makers to focus on whether the disclosure was “available to
the public” rather than on the means by which the claimed invention became
available
• Examples include a thesis in a library, poster displays at a meeting,
electronic posting on the internet, certain types of sales, etc.


New § 102(a)(2)

102(a): Novelty; Prior Art- A person shall be
entitled to a patent unless-- 102(a)(2) parallels
old 102(e)
102(a)(2): the claimed invention was described in
a patent issued under section 151, or in an
application for patent published or deemed A published PCT app that
published under section 122(b), in which the designates the U.S. counts
patent or application, as the case may be, names as prior art – even if it
another inventor and was effectively filed before wasn’t published in English
the effective filing date of the claimed
invention.
“names another inventor” is same
as “by another” in old 102(e) –
means a different inventive entity
(any difference suffices)

“effectively filed” can mean
a foreign priority date


“Effectively Filed”
• A U.S. patent, U.S. patent application publication, or WIPO
published application is prior art under 102(a)(2) as of either:
– its actual filing date; or
– the filing date of a prior application to which there is a priority
or benefit claim
• Entitlement to priority or benefit with respect to any of its claims
is not at issue in determining the date prior art was “effectively
filed” for prior art purposes
– Subject matter must be described, but not to the level
required by 35 U.S.C. 112(a)
• Prior art is effective as of the earliest filing date, regardless of
where it was filed


BUT – Narrow Exceptions Are in 102(b)
• 102(b)(1): A disclosure made 1 year or less
before the effective filing date of a claimed 102(b)(1) is a way of
invention shall not be prior art to the claimed overcoming disclosures not
invention under subsection (a)(1) if: more than a year old
– (A) the disclosure was made by the inventor
or joint inventor or by another who obtained
i.e., you (or someone who got
the subject matter disclosed directly or
the info from you) made the
indirectly from the inventor or a joint
“disclosure”
inventor; or
– (B) the subject matter disclosed had, before
such disclosure, been publicly disclosed
i.e., you (or someone who
by the inventor or a joint inventor or another
got the info from you) made
who obtained the subject matter disclosed
an earlier public disclosure
directly or indirectly from the inventor or a
joint inventor.


The Meaning of “Disclosure”
• “Disclosure” is not defined in the AIA
– Treating the term as “a generic expression intended to encompass
the documents and activities enumerated in 35 U.S.C. 102(a)”
– Examples are “being patented, described in a printed publication, in
public use, on sale, or otherwise available to the public, or being
described in a U.S. patent, U.S. patent application publication, or
WIPO published application”
• Exception in 102(b)(1)(B) requires that the subject matter in the prior art
disclosure be the “same” subject matter as the inventor’s public
disclosure
– Exception does not apply if there are insubstantial changes, trivial, or
obvious variations


The Scope of 102(b) Exceptions Is Unclear
• 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 or by another who obtained
the subject matter disclosed directly or
indirectly from the inventor or a joint PTO view is the “subject
inventor; or matter” must be the “same” –
– (B) the subject matter disclosed had, the exception does not apply if
before such disclosure, been publicly there are “mere insubstantial
disclosed by the inventor or a joint inventor changes, or only trivial or
or another who obtained the subject matter obvious variations”
disclosed directly or indirectly from the
inventor or a joint inventor. making “public
disclosures” yourself
is an unpredictable
defense strategy


More Exceptions in 102(b)
• 102(b)(2): A disclosure shall not be prior art to a 102(b)(2) lists ways of
claimed invention under subsection (a)(2) if : removing applications and
– (A) the subject matter disclosed was patents as prior art
obtained directly or indirectly from the
inventor or a joint inventor; derivation – you’re
– (B) the subject matter disclosed had, before the only real inventor
such subject matter was effectively filed i.e., your invention was
under subsection (a)(2), been publicly publicly disclosed before the
disclosed by the inventor or a joint inventor prior application was filed
or another who obtained the subject matter
disclosed directly or indirectly from the i.e., the prior application
inventor or a joint inventor; or and your application
– (C) the subject matter disclosed and the were commonly owned
claimed invention, not later than the effective (similar to old 103(c)(1))
filing date of the claimed invention, were
under new 102(c), a “joint
owned by the same person or subject to an
research agreement” counts as
obligation of assignment to the same
common ownership (same as
person.
old 103(c)(2))

More Exceptions in 102(b)
• 102(b)(2): 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, Same issue as in
before such subject matter was effectively 102(b)(1)(B): PTO view
filed under subsection (a)(2), been publicly is the “subject matter”
disclosed by the inventor or a joint inventor must be the “same” –
or another who obtained the subject matter the exception does not
disclosed directly or indirectly from the apply if there are
inventor or a joint inventor; or “mere insubstantial
– (C) the subject matter disclosed and the changes, or only trivial
claimed invention, not later than the effective or obvious variations”
filing date of the claimed invention, were
owned by the same person or subject to an
obligation of assignment to the same
person.

New 103
• 103: A patent for a claimed invention may not
be obtained, notwithstanding that the not clear: ambiguity in term
claimed invention is not identically “disclosure” in 102(b) may affect
disclosed as set forth in section 102, if the scope of “disclosed” in 103
differences between the claimed invention
and the prior art are such that the claimed
invention as a whole would have been
even “secret prior art” (i.e.,
obvious before the effective filing date of
filed patent applications)
the claimed invention to a person having
under 102(a)(2) can be used
ordinary skill in the art to which the claimed
for obviousness rejections
invention pertains. Patentability shall not be
negated by the manner in which the
invention was made. in other countries, “secret
prior art” can only be used
for novelty rejections


Differences in New and Existing Laws

Existing 102/103 New 102/103

Remove prior art: show earlier Remove prior art: show inventor
invention disclosure or derivation
Interferences: show conception and Derivation: Show derived from inventor
diligence

Public use / on sale: prior art if in U.S. Public use / on sale: prior art if in any
country

Int. Pub.--publish in English and Int. Pub.– designate U.S.
designate U.S.

Foreign filing date irrelevant for prior Foreign filing date is effective date for
art prior art


Differences in New and Existing Laws

Existing 102/103 New 102/103

Earlier invention prior art (102(g)(2)) Earlier filing prior art

Anticipation of earlier-filed application Co-owned earlier-filed application not
(102(e)); removed under 103(c) if same prior art under 102 or 103
assignee
Non-public use / knowledge: prior art Only public use / “other” is prior art
if in US (102(a))

Earlier filed, earlier issued foreign Earlier foreign patent only prior art as
patent (102(d)) of patent date


Which Applications Are Subject to New 102/103?

• Any application “that contains or contained at any time… a claim with an
effective filing date after 3/16/2013”
– i.e., any application with a claim directed to subject matter that was
added after 3/16/2013:
• A new application filed after 3/16/2013
• A nonprovisional filed after 3/16/2013, even if it claims priority to
an earlier provisional, if it includes a claim directed to subject
matter that was added after 3/16/2013
• A CIP filed after 3/16/2013, even if it claims priority to a parent
filed earlier, if it includes a claim directed to subject matter that was
added after 3/16/2013
• New rules will NOT apply to a CON or DIV filed after 3/16/2013, if it claims
priority to a parent filed before that date, so long as no claims directed to
new subject matter are ever added.
• If priority claimed before and after 3/16/2013, new 102/103 and old
interference apply.


Practice Tips re: “First-to-File”
• Consider filing new applications before March 16, 2013
– Later non-provs, PCTs, CONs and DIVs may not be affected, if you
are careful not to add claims directed to new subject matter
• Parallel lines if new matter is added
• File application as copy, shortly thereafter file preliminary
amendment
– But be careful: A claim which doesn’t have priority taints the entire
line permanently, even if canceled later
• After March 16, 2013, file promptly, serially
• Be cautious of relying on prior art exceptions under 102(b)
• Establish formal joint research agreements and obligations to
assign early


The 22-Year Patent Term
• 1/1/2013: File Provisional Application 1
• 1/2/2013: Publish Provisional Application 1
• 1/1/2014: File PCT Application
• 1/2/2014: File Provisional Application 2 (identical to Provisional
Application 1)
• 1/2/2015: File U.S. Non-Provisional Application claiming priority to
Provisional Application 2
• 7/1/2015: National Phase applications from PCT Application in all non-
U.S. countries

• Publication blocks competitors worldwide, but there is still 1-year grace
period in the U.S.
• Important Assumption: Publication identical to Provisional Application 2


12790 El Camino Real
Eric Nelson San Diego, California 92130
Eric.Nelson@knobbe.com

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