changes in examination under the america invents act

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Changes in Examination Under the

America Invents Act

October 19, 2012

Eric Nelson

Tokyo

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

AIA Guidelines: Changes in Examination

• First to file and prior art standards


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,

on sale, or otherwise available to the public before

the effective filing date of the claimed invention; or

deletes “in this country” –

public use/sale anywhere

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): the claimed invention was described in

a patent issued under section 151, or in an

application for patent published or deemed

published under section 122(b), in which the

patent or application, as the case may be, names

another inventor and was effectively filed before

the effective filing date of the claimed

invention.

102(a)(2) parallels

old 102(e)

A published PCT app that

designates the U.S. counts

as prior art – even if it

wasn’t published in English

“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

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

inventor; or

– (B) the subject matter disclosed 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.

i.e., you (or someone who got

the info from you) made the

“disclosure”

i.e., you (or someone who

got the info from you) made

an earlier public disclosure

102(b)(1) is a way of

overcoming disclosures not

more than a year old


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

inventor; or

– (B) the subject matter disclosed 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.

PTO view is the “subject

matter” must be the “same” –

the exception does not apply if

there are “mere insubstantial

changes, or only trivial or

obvious variations”

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

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




inventor or a joint inventor; or

– (C) the subject matter disclosed and the

claimed invention, not later than the effective

filing date of the claimed invention, were

owned by the same person or subject to an

obligation of assignment to the same

person.

derivation – you’re

the only real inventor

i.e., your invention was

publicly disclosed before the

prior application was filed

i.e., the prior application

and your application

were commonly owned

(similar to old 103(c)(1))

under new 102(c), a “joint

research agreement” counts as

common ownership (same as

old 103(c)(2))

102(b)(2) lists ways of

removing applications and

patents as prior art


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,

before such subject matter was effectively

filed under subsection (a)(2), been publicly




inventor or a joint inventor; or

– (C) the subject matter disclosed and the

claimed invention, not later than the effective

filing date of the claimed invention, were

owned by the same person or subject to an

obligation of assignment to the same

person.

Same issue as in

102(b)(1)(B): PTO view

is the “subject matter”

must be the “same” –

the exception does not

apply if there are

“mere insubstantial

changes, or only trivial

or obvious variations”


New 103

• 103: A patent for a claimed invention may not

be obtained, notwithstanding that the

claimed invention is not identically

disclosed as set forth in section 102, if the

differences between the claimed invention

and the prior art are such that the claimed

invention as a whole would have been

obvious before the effective filing date of

the claimed invention to a person having

ordinary skill in the art to which the claimed

invention pertains. Patentability shall not be

negated by the manner in which the

invention was made.

not clear: ambiguity in term

“disclosure” in 102(b) may affect

scope of “disclosed” in 103

even “secret prior art” (i.e.,

filed patent applications)

under 102(a)(2) can be used

for obviousness rejections

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 invention

Remove prior art: show inventor disclosure or derivation

Interferences: show conception and diligence

Derivation: Show derived from inventor

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 designate U.S.

Int. Pub.– designate U.S.

Foreign filing date irrelevant for prior art

Foreign filing date is effective date for

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 (102(e)); removed under 103(c) if same assignee

Co-owned earlier-filed application not prior art under 102 or 103

Non-public use / knowledge: prior art if in US (102(a))

Only public use / “other” is prior art

Earlier filed, earlier issued foreign patent (102(d))

Earlier foreign patent only prior art as

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

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