AIA Impact on Section 102 and Prior Art - Impact on Section 102 and Prior Art Navigating the Expanded Scope of Prior Art and the AIA Exceptions Today’s faculty features: 1pm Eastern | 12pm Central ...

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  • AIA Impact on Section 102 and Prior Art Navigating the Expanded Scope of Prior Art and the AIA Exceptions

    Todays faculty features:

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    THURSDAY, AUGUST 29, 2013

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

    Thomas L. Irving, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

    Erika H. Arner, Partner, Finnegan Henderson Farabow Garrett & Dunner, Reston, Va.

    John J. Cheek, Senior Corporate Counsel, Caterpillar, Peoria, Ill.

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  • by

    John Cheek Erika Arner Tom Irving

    Copyright Finnegan, 2013

    http://www.caterpillar.com/

  • These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding

    of U.S. 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, and CATERPILLAR cannot be bound either

    philosophically or as representatives of their various present and future

    clients to the comments expressed in these materials. The presentation of

    these materials does not establish any form of attorney-client relationship

    with the authors, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or

    CATERPILLAR. 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.

    6

  • USPTO recognizes: The Office appreciates that the courts may ultimately address questions concerning the meaning of 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)

    7

  • 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 one year before the application was filed, from being entitled to a patent).

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

    8

  • effective filing date is the key to navigating the roadmap of

    the AIA and the applicability of AIA 102,

    pre-AIA 102, or AIA 102 + pre-AIA 102(g)!

    9

  • AIA SEC. 3(n)(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, 2013] and shall apply to any

    application for patent that contains or contained at any time:

    A. a claim to a claimed invention that has an effective filing date as

    defined in section 100(i) [remember: entitled to] , that is on or

    after the effective date described in this paragraph [March 16, 2013];

    or

    B. a specific reference under 120, 121, 365(c) to any patent or

    application that contains or contained at any time such claim.

    [antecedent for such claim has to be sub.para. (A)?]

    10

  • 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 as defined in section

    100(i) of title 35, United States Code, that occurs before [March 16, 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 or contained at any time such a claim.

    11

  • 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)

    12

  • Enactment:

    Sept. 16, 2011

    PCT Filing

    Pre-AIA 102 Generally Applies To All Claims

    Straddling March 15/16, 2013

    PCT Filing

    Priority

    Date

    Enactment:

    Sept. 16, 2011 Effective Date:

    March 16, 2013

    Priority

    Date AIA 102 Applies To All Claims

    PCT

    Filing

    Enactment:

    Sept. 16, 2011

    Scenario 1: no claims entitled to priority date, AIA 102 Applies To All Claims

    Scenario 2: all claims entitled to priority date, Pre- AIA 102 Generally Applies To All Claims

    Scenario 3: mixed EFD claims March 15/16, 2013, AIA 102 and pre-AIA 102(g) Apply To All Claims

    13

  • Pre-AIA law: EFD of a claimed invention is determined

    on 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)

    14

  • Prior art is applied on a claim-

    by-claim basis

    BUT whether pre-AIA 102 or

    AIA 102 apply is on an

    application-by-application basis.

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

    15

  • 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)

    16

  • Pre-AIA 102(a)-(g) seven subsections

    102(a): known or used by others; 102 (b): statutory barsale, 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

    of 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 Nomiyatype 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 one 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 ownership 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 may be VERY difficult for the applicant to find out about prior to discovery in litigation.

    Congress could have easily said publicly on sale if it intended to make the law clear that no secret sale is prior art? But does public accessibility trump all? USPTO says 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 AIAs 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

    obligation of confidentiality to the inventor.

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

    23

  • The Offices 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

  • 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

    of pre-AIA case law.

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

    25

  • 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

    26

  • 102 Conditions for patentability (a) NOVELTY; PRIOR ART

    A person shall be entitled to a patent unless

    (2)

    35 U.S.C. 102(a)(2): Effectively Filed

    The claimed Invention

    OR AND

    in which the patent or

    application

    27

  • 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.

    Enablement: But enacters argue that there need be no enablement as

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

    date of the priority/benefit application to be the date effectively

    filed.

    USPTO agreed: see next slides; incentivizing EFD after March 15, 2013??

    28

  • 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

    of prior-filed app

    Merely entitled to claim

    priority/benefit of prior-filed app

    v.

    Definition of effective filing date (EFD) Definition of effectively filed

    29

  • As a result of this distinction, the question of whether a

    patent or published application is actually entitled to priority

    or 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,

    or 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).

    30

  • 102(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS

    PRIOR ART.

    For purposes of determining whether a patent or application for

    patent is prior art to a claimed invention under subsection (a)(2),

    such patent or application shall be considered to have been

    effectively filed, with respect to any subject matter described in

    the [US] patent or [US or PCT designating the US] application-

    (2) if the patent or application for patent is entitled to claim a right of priority

    under section 119, 365(a), or 365(b), or [entitled] to claim 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 the subject matter. [entitlement trumps describes- therefore

    enablement is required?]

    (1) if paragraph (2) does not apply, as of the actual filing date of the patent or

    the application for patent

    31

  • 102(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE

    AS PRIOR ART.

    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

    obviousness purposes.

    Somewhat like old 102(e) but cannot be antedated by earlier

    invention.

    Available as prior art for novelty and obviousness purposes.

    32

  • 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).

    Effectively filed has everything to do with 102(a)(2) as prior art.

    33

  • This entitlement to priority/benefit exists where

    Best 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) a claim for priority/benefit is made,

    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.

    34

  • To provide support for a claim under 35 U.S.C. 112(a), it is necessary that the specification describe and enable the entire scope of the claimed invention. [...continued...]

    However, in order for a prior art document to describe a claimed invention under AIA 35 U.S.C. 102(a)(1) or (a)(2), the prior art document need only describe and enable one skilled in the art to make a single species or embodiment of the claimed inventionthe disclosure may be cited for all that it would reasonably have made known to a person of ordinary skillthe 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

    35

  • 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 describe the subject matter from the U.S. patent, U.S. patent application publication, or WIPO published application relied upon in a rejection.

    AIA 35 U.S.C. 102(d) does not require that this description meet the requirements of 35 U.S.C. 112(a).

    However,

    Emphasis added

    36

  • 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 outside 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.

    37

  • Now, under AIA a foreign priority date can be used offensively as prior art under AIAs 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).

    38

  • 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.

    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

    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.

    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

    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.

    41

  • U.S. Prov.

    Appl.

    CN

    U.S. Appl.

    Non-Prov.

    PCT

    (des.

    U.S.)

    Chinese USPAT

    USPAT

    FR PCT (des. U.S.)

    USPAT

    Pub.

    Appl.

    Pub.

    PCT

    Appl.

    Pub.

    PCT Appl.

    French

    English

    NO geographical or language distinction

    Entitlement to claim priority/benefit of US Prov App., CN app., and FR

    app.

    Important date is when effectively filed not when published. Hilmer doctrine abolished.

    Impact of 102(d)(2) Prior Art Date

    Prior art date

    Prior art date

    Prior art date

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

    42

  • 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

    43

  • 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 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 [independently?] 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.

    ANY-WHERE IN THE WORLD

    grace period

    44

  • 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.

    45

  • 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.

    46

  • 102 (b)(2) EXCEPTIONS (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 obtained 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 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.

    No grace period

    47

  • 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).

    48

  • 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). 49

  • 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.

    50

  • 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).

    51

  • 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).

    52

  • 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).

    53

  • 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)!!!!!!

    Cant 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

    54

  • 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).

    55

  • 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.

    56

  • 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

    or enablement.

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

    57

  • 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 of 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).

    58

  • 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

    offer 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). 59

  • 60

    A

    B X

    D

    C

    March 16, 2013

    abandoned

    add claim only entitled to C filing date

    Date Z at Date Z, D cant disclaim priority claim to C and replace it with a priority claim to X to get back to pre-AIA

    X

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

    New: Since Barbara filed first, Barbara is prior art to Tom for 102 and 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 Filed!

    Filed!

    61

  • 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???)

    Filed!

    62

  • Old: 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 Year

    Conception

    Filed!

    Public Use (Outside U.S.)

    63

  • Grace Period!

    Disclosure by or from

    an inventor

  • public use or on sale in U.S.

  • Grace Period!

    Disclosure by or from an inventor;

    related subject matter?

    Disclosure by ANYONE

  • Filed!

    Filed!

    1 Year

    Toms U.S. App. Publishes

    Public Disclosure

    Barbaras public disclosure (related subject matter?) is not prior art against her. 102(b)(1)(A). shields her from Toms publication. 102(b)(2)(A). and is prior art against Tom. 102(a)(1).

    FITF loses to

    FIT-Disclose

    68

  • 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 the effective filing date of the claimed invention;

    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 Now In 102(c)

    69 69

  • 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 Now In 102(c )

    70 70 70

  • 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 of compounds within the broad genus, then the JRA applies to Company Ys subsequent patent filing and the anticipatory patent filing of University X is removed as prior art.

    Example: Game Changer

    71 71 71

  • Under the pre-AIA CREATE Act, this type of protection for University X and Company Y would have been unavailable because the pre-AIA version did not protect against the loss of novelty, only obviousness, and would not have applied since the generic invention had already been made as of the date of the JRA.

    Example: Game Changer

    72 72 72

  • 102(c) says it shall be deemed to be

    owned 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 also

    102(b)(2)(c) (common ownership

    exception to 102(a)(2)) and 102(c)

    allows folding JRA into 102(b)(2)(C)

    73 73

  • 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 102(b)(2)(C).

    74

    74

  • 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.

    75

  • 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 of invention, and thus antedating, is relevant given the language of 102(g)!

    And all claims in the application receive benefits of AIA, such as first-inventor-to-file, forfeiture, the expansive Create Act and common ownership, and fewer 102 alphabet soup requirements.

    76

  • Claim construction determined by the judge in litigation may be narrower than that accorded the claims in the USPTO.

    a patent upheld in litigation as valid may be later found invalid by the USPTO. See In re Baxter Intl, Inc., 678 F.3d 1357 (Fed. Cir. 2012), rehg denied en banc (Oct. 26, 2012).

    Alleged infringer lost a DJ in federal district court requesting a declaration of invalidity.

    failed to prove invalidity by clear and convincing evidence in the face of the presumption of validity enjoyed by the patent.

    While the litigation ongoing, alleged infringer filed reexamination request and the claims were canceled

    no presumption of validity, lower evidentiary standard of preponderance of the evidence, and in view of the standard of the

    broadest reasonable claim construction.

    102 in Court Compared to 102 in USPTO

    77

  • FC in Baxter: Congress has provided for a reexamination system that permits challenges to patents by third parties, even those who have lost in prior judicial proceedings. FC expressed the hope that the court and USPTO would come to the same conclusion on same patent with same evidence and same arguments, but different burdens of proof, presumption/no presumption of validity, and different claim-construction standards _> may arrive at different conclusions.

    102 in Court Compared to 102 in USPTO(cont)

    78

  • 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). .

    79

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

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

    80

  • 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

    or indirectly from the inventor or a joint inventor.

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

    81

  • 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).

    82

  • 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.

    83

  • Thank you.

    Thomas L. Irving Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 202.408.4082 tom.irving@finnegan.com

    Erika Arner Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190-5675 571.203.2754 erika.arner@finnegan.com

    John Cheek Senior Corporate Counsel Caterpillar Inc. 100 North East Adams Street Peoria, Illinois USA 61629 Cheek_John_J@cat.com

    84

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