William Boshnick Greenblum & Bernstein,

P.L.C.

AIA Prior art under U.S.C. §102 (a)AIA Prior art exception under U.S.C. §102(b)(1)(B) & §102(b)(2)(B) and

Practice Tips

Special thanks to the United States Patent and Trademark Office for providing much of the subject matter of this presentation

AIA Impact on pre-AIA 35 U.S.C. §102

2

AIA Statutory Framework

3

35 U.S.C. 102(a)(1): Prior Public Disclosures as Prior Art

• 35 U.S.C. 102(a)(1) precludes a patent if a claimed invention was, before the effective filing date of the claimed invention:opatented;odescribed in a printed publication;o in public use;oon sale; orootherwise available to the public

o No requirement of “by others”o USPTO’s Examination Guidelines have not

defined “disclosure” apart from 35 U.S.C. § 102(a)

4

“In Public Use” or “On Sale”Does not include pre-AIA

geographic limitationThe scope of prior art is now global

Use or sale may occur anywhere in the world

PTO’s Examination Guidelines: AIA does not include pre-AIA treatment of secret sale as prior art- sale activity must have been available to the publicIn litigation, a court could take the opposite view

5

“Otherwise Available to the Public”The above phrase was introduced by the

AIA; no corresponding language in pre-AIA 35 U.S.C. 102

Catch-all to account for other means of making an invention publicly available. Examples from the USPTO’s Examination Guidelines include:A printed thesis in a university library;A poster displayed at a scientific meeting;Material electronically posted on the internet;

orA commercial transaction that does not

constitute a sale under the Uniform Commercial Code (UCC).

6

United States Patent and Trademark Office’s Examination Guidelines"otherwise available to the public" in AIA

Section 102(a)(1) generally means that all types of 102(a)(1) prior art-including public uses and prior sales-must be available to the public in order to qualify as prior art. The USPTO indicated that this rule should simplify patent examination, because the patentability focus will be on whether the prior art was publicly available and not on what "category" the prior art falls into. The USPTO's interpretation appears to disqualify certain types of disclosure and sale activity as prior art if not reasonably available to the public. This view will likely be addressed by the courts in future litigation.

7

Two Exceptions to 35 U.S.C. 102(a)(1)Prior Art

In brief–102(b)(1)(A): A grace period disclosure of

the inventor’s own work is not prior art to the inventor

102(b)(1)(B): A disclosure of the inventor’s own work shields the inventor from the prior art effect of a third party’s subsequent grace period disclosure

Note that the 102(b)(1) exceptions pertain to the 102(a)(1) disclosures, which may be prior art as of the date they are publicly available

8

35 U.S.C. 102(b)(1)(A) Exception: Grace Period Disclosure of Inventor’s Work

First exception: A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) if:

the disclosure was made by:the inventor or joint inventor; or another who obtained the subject

matter directly or indirectly from the inventor or joint inventor

9

Example 1: Exception in 102(b)(1)(A)

Taylor publishes X Taylor files patent application claiming X

July 1, 2013 July 1, 2014

Inventor Taylor’s Grace Period

• Taylor’s publication is not available as prior art against Taylor’s application because of the exception under 102(b)(1)(A) for a grace period disclosure by an inventor.

10

Example 2: Exception in 102(b)(1)(A)

Smith publishes X

Taylor files patent application claiming X

July 1, 2013 July 1, 2014

Inventor Taylor’s Grace Period

• Smith’s publication would be prior art to Taylor under 102(a)(1) if it does not fall within any exception in 102(b)(1).

• However, if Smith obtained subject matter X from Taylor, then it falls into the 102(b)(1)(A) exception as a grace period disclosure obtained from the inventor, and is not prior art to Taylor. 11

35 U.S.C. 102(b)(1)(B) Exception: Grace Period Intervening Disclosure by Third Party

Second exception: A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) if:

the subject matter disclosed was, before such disclosure, publicly disclosed by:the inventor or joint inventor; or another who obtained the subject matter

directly or indirectly from the inventor or joint inventor

12

“The Subject Matter”

According to the PTO’s Examination Guidelines, for the 35 U.S.C. 102(b)(1)(B) exception to apply:

the subject matter in the prior disclosure

must be the same as that which is later publicly disclosed

the mode of prior disclosure by the inventor need not be the same as the mode of later disclosure by another

verbatim disclosures are not requiredExpect litigation as to what kinds of

disclosure are “the same”

13

Example 3: Exception in 102(b)(1)(B)

Taylor publishes X

Taylor files patent application claiming X

July 1, 2013 July 1, 2014

Inventor Taylor’s Grace Period

• Smith’s publication is not prior art because of the exception under 102(b)(1)(B) for a grace period intervening disclosure by a third party.

• Taylor’s publication is not prior art because of the exception under 102(b)(1)(A) for a grace period disclosure by the inventor.

• If Taylor’s disclosure had been before the grace period, it would be prior art against his own application. However, it would still render Smith inapplicable as prior art.

Smith publishes X

14

Example 3’: Exception in 102(b)(1)(B)

Taylor publishes X

Taylor files patent application claiming X

July 1, 2013 July 1, 2014

Inventor Taylor’s Grace Period

• Assuming X’ is a species of X, Smith’s publication of X’ may be prior art (under 102(a)(1)) to Taylor’s application because it is not “the subject matter” within the meaning of the exception under 102(b)(1)(B), according to the USPTO’s Examination Guidelines .

• The USPTO’s Examination Guidelines clarified that if 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

Smith publishes X’

15

Example 4: Another Exception in 102(b)(1)(B)

• Pre-AIA: Smith’s US application would be barred under 35 U.S.C. § 102(b) in view of publication more than one year prior to the US application date.

• Under AIA: Smith’s US application would not be barred because it would fall under the exception under 102(b)(1)(B): “effective filing date” is defined under 35 USC 100 to cover foreign priority.

Smith files EPpatent application

disclosing X

April 1, 2014

Smith files US applicationclaiming X and priority to EP

application

March 31, 2015March 1, 2014

16

Smith publishes article disclosing X

Smith’s Grace Period

AIA Statutory Framework

Prior Art 35 U.S.C. 102(a)(Basis for Rejection)

Exceptions35 U.S.C. 102(b)

(Not Basis for Rejection)

102(a)(1)Disclosure with Prior

Public Availability Date

102(b)(1)

(A)Grace Period Disclosure by Inventor or Obtained from

Inventor

(B)Grace Period Intervening Disclosure by Third Party

102(a)(2)U.S. Patent,U.S. Patent

Application, and PCT Application with Prior Filing Date

102(b)(2)

(A)Disclosure Obtained from

Inventor

(B)Intervening Disclosure by Third

Party

(C)Commonly Owned Disclosure

17

35 U.S.C. 102(a)(2): U.S. and PCT Patent Documents Are Prior Art as of the Date They Are “Effectively Filed”

35 U.S.C. 102(a)(2) precludes a patent if a claimed invention was described in a:

oU.S. Patent;oU.S. Patent Application Publication; oroPCT Application Publication designating

the U.S. that names another inventor and was effectively filed before the effective filing date of the claimed invention

18

35 U.S.C. 102(d): Determining the Date that a U.S. or PCT Patent Document Is “Effectively Filed”Date that a U.S. or PCT patent document being applied as a

reference is effectively filed is the earlier of:

the actual filing date of the U.S. patent or published application; or

the filing date of the earliest application to which the U.S. patent or published application is entitled to claim a right of foreign priority or domestic benefit which describes the subject matter (regardless of whether filed in a foreign language)

In re Hilmer rule (which held that a U.S. application is not citable as of its foreign priority date) eliminated.

The date of a patent document used as a reference may be different depending on whether the application under examination is subject to AIA or pre-AIA law

19

Three Exceptions to 35 U.S.C. 102(a)(2)Prior ArtIn brief– 102(b)(2)(A): A disclosure of the inventor’s work in a U.S.

patent document or PCT publication by another is not prior art to the inventor

102(b)(2)(B): A disclosure of the inventor’s work shields the inventor from the prior art effect of a subsequent disclosure in a U.S. patent document or PCT publication

102(b)(2)(C): A disclosure is not prior art to the inventor if it was commonly owned with the claimed invention not later than the inventor’s effective filing date

Note that the 102(b)(2) exceptions pertain to the 102(a)(2) patent documents, which may be prior art as of the date that they are effectively filed. Grace period is not relevant. 20

35 U.S.C. 102(b)(2)(A) Exception: Disclosure Obtained from Inventor

First exception: A disclosure in an application or patent shall not be prior art under 35 U.S.C. 102(a)(2) if:

the disclosure was made by another who obtained the subject matter directly or indirectly from the inventor or joint inventor

21

Example 5: Exception in 102(b)(2)(A)Smith files

patent application disclosing X

Taylor files patent application

claiming X

July 1, 2014

• Smith’s patent application publication is not prior art to Taylor if Smith obtained X from Inventor Taylor because of the exception under 102(b)(2)(A) for a disclosure obtained from the inventor

April 1, 2014

Smith’s application publishes

October 1, 2015

22

35 U.S.C. 102(b)(2)(B) Exception: Intervening Disclosure by Third Party

Second exception: A disclosure in an application or patent shall not be prior art under 35 U.S.C. 102(a)(2) if:

the subject matter disclosed was, before such subject matter was effectively filed, publicly disclosed by:the inventor or joint inventor; or another who obtained the subject matter directly or indirectly from the inventor or joint inventor

23

Example 6: Exception in 102(b)(2)(B)

• Smith’s patent application publication is not prior art against Taylor’s application because of the exception under 102(b)(2)(B) for prior disclosure by an inventor.

Smith files patent application

disclosing X

Taylor files patent application

claiming X

July 1, 2014

April 1, 2014

Smith’s application publishes

October 1, 2015

Taylor publishes subject matter X

March 1, 2014

24

35 U.S.C. 102(b)(2)(C) Exception: Commonly Owned Disclosure

Third exception: A disclosure made in an application or patent shall not be prior art under 35 U.S.C. 102(a)(2) if:

the subject matter and the claimed invention were commonly owned or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention

Resembles pre-AIA 35 U.S.C. 103(c), but applies to both novelty and obviousness, whereas pre-AIA disqualified art only for obviousness

25

Commonly Owned or Subject to Obligation of Assignment

Applicant can establish common ownership or obligation of assignment by making a clear and conspicuous statement

Corroborating evidence is not required 26

Example 7: Exception in 102(b)(2)(C)Smith invents X and assigns to Company Z

Taylor files patentapplication claiming X

July 1, 2014

• Smith’s patent application publication is not prior art against Taylor because of the exception under 102(b)(2)(C) for a commonly owned disclosure.

• There is no requirement that Smith’s and Taylor’s subject matter be the same in order for the common ownership exception to apply.

March 1, 2014

Taylor invents X and assigns to Company Z

February 1, 2014

Smith files patent application

disclosing X

April 1, 2014

27

Rule 1.130 Affidavits or Declarations

Revised rule 1.130 provides a mechanism for an applicant or patent owner to provide information relevant to certain prior art exceptions:

affidavit or declaration of attribution under 1.130(a), to invoke the 102(b)(1)(A) or 102(b)(2)(A) exception

affidavit or declaration of prior public disclosure under 1.130(b), to invoke the 102(b)(1)(B) or 102(b)(2)(B) exception

28

Rule 1.130(c): Affidavit or Declaration Not Available

An affidavit or declaration is not available to overcome a rejection if:

the rejection is based on a disclosure made more than one year before effective filing date of claimed invention

An affidavit or declaration under rule 1.130 may not available to overcome a rejection if:

the affidavit or declaration contends that the inventor named in prior art U.S. patent or U.S. patent application publication derived the claimed invention

29

AIA Indicator in PAIR

30

Practice Tip for Transitional ApplicationsTo avoid confusion and streamline the U.S. patent application process, prior to filing, please be sure to indicate to your U.S. practitioner whether the pre-AIA “old law” or the “new law” applies, as an example: _____ [OLD LAW APPLIES] The present nonprovisional

application will be filed on or after March 16, 2013 and claims priority to one or more applications filed on or before March 15, 2013. Applicant reasonably believes (on the basis of information already known to individuals identified in 37 C.F.R. § 1.56(c), i.e., the IDS-duty individuals) that the present application (and any earlier application to which this application claims priority) does not, and did not at any time, contain a claim having an effective filing date on or after March 16, 2013. 

_____ [NEW LAW APPLIES] The present nonprovisional application will be filed on or after March 16, 2013 and claims priority to one or more applications filed on or before March 15, 2013. Nonetheless, Applicant believes the application (or an earlier U.S. application in the chain of priority) contains, or did contain at one time, a claim having an effective filing date on or after March 16, 2013.

31

Practice Tip for Transitional Applications FTF statement required when the nonprovisional application

contains at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect.Timing: 4 months from the date of entry into the national

stage in an international application or 4 months from actual filing date, 16 months from the filing date of the prior-filed application, or the date that a 1st claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the application.

FTF statement NOT required when the nonprovisional application (1) discloses only subject matter also disclosed in the application filed prior to March 16, 2013; (2) claims only the benefit of the filing date of a foreign application filed on or after March 16, 2013; or (3) claims the benefit of a nonprovisional application in which such statement has already been made.An applicant is not required to provide such a statement if

the applicant reasonably believes on the basis of information already known to the individuals designated in §1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.

32

Practice Tip for Transitional Applications

Filing a transitional foreign priority, divisional, continuation or C-I-P application containing a claim having an effective filing date on or after March 16, 2013 will result in the FTF “new law” being applied.

Filing a transitional foreign priority, divisional, continuation or C-I-P application with original claims, concurrently with a preliminary amendment containing a claim having an effective filing date on or after March 16, 2013 may also result in the FTF “new law” being applied.

33

Practice Tip for Transitional ApplicationsIn order to avoid inadvertent application of

the FTF “new law” and if you must file claims which may contain new subject matter, consider filing a preliminary amendment containing such new matter after the filing date of the transitional application.

If you want the best of both systems, file two transitional applications:A straight continuation with no new

subject matterA continuation with new subject

matter and a claim to new subject matter.

34

Practice Tip for Transitional Applications

Once a U.S. application is examined under the FTF “new law,” any application claiming priority to that application will also be subject to the FTF “new law.”

Once a claim to “new” subject matter is presented, applicant cannot cancel a claim to avoid FTF.

35

Practice Tips going forwardKeep using Inventor Notebooks, which can

be useful to evidence derivation, joint agreements, prior commercial use, inventorship.

File the patent application as soon as possible: Reduce the amount of time that it takes to

internally review invention disclosures to determine which to proceed with patenting.

Work with your U.S. attorney to establish firm dates to prepare and file patent applications.

File provisional patent applications if warranted to avoid first-filing by competitors.

36

Practice Tips going forwardRegularly monitor the published

applications, issued patents and other disclosures of competitors for their impact, e.g., for possible derivation proceedings for post-March 16, 2013 (in Court- must file within one year of first patent issued to derived claim; in PTO- within one year of earliest publication of derived claim, or interference proceedings for pre-March 16 cases (must file within 1 year of publication of claim).

37

Thank You!

Any questions?

William S. BoshnickGreenblum & Bernstein, P.L.C.

wboshnick@gbpatent.comhttp://www.gbpatent.com

38