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AIA Impact on Section 102 and Prior Art Navigating the Expanded Scope of Prior Art and the AIA Exceptions
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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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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 bar―sale, 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 Nomiya‐type 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 AIA’s 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 Office’s 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 invention…the disclosure may be cited for all that it would reasonably have made known to a person of ordinary skill…the 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 AIA’s 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).
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“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)!!!!!!
Can’t 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 can’t 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!
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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!
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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.)
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<1 Year
Conception
Filed!
Public Use (Inside U.S.)
Old: Tom could antedate Barbara’s public use within one year.
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.
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Grace Period!
Disclosure “by or … from”
an inventor
<1 Year
Disclosure “by or … from” an inventor and since
after effective filing date, not prior art under 102(a)(1)
<1 Year
Filed! Filed!
(Effective FD)
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public use or on sale in U.S.
<1 Year
Assume U.S. filing is pre-AIA; file CIP on or after 3/16/13 after US filing but before publication. Present one AIA claim and
one pre-AIA claim. Under 3(n)(2), possible statutory use bar for pre-AIA
claim vanishes!!!
<1 Year
Filed! Filed!
(Effective FD)
3/16/13
file CIP
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Grace Period!
Disclosure “by or … from” an inventor;
related subject matter?
Disclosure by ANYONE
<1 Year
Filed!
(Effective Filing Date)
67 67
Filed!
Filed!
1 Year
Tom’s U.S. App. Publishes
Public Disclosure
Barbara’s public disclosure (related subject matter?)… … is not prior art against her. §102(b)(1)(A). … shields her from Tom’s publication. §102(b)(2)(A). … and is prior art against Tom. §102(a)(1).
FITF loses to
FIT-Disclose
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• § 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 Y’s 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).
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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.
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◦ “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.
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•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 Int’l, Inc., 678 F.3d 1357 (Fed. Cir. 2012), reh’g 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
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•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(con’t)
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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). .
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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).
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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).
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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).
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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.
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Thank you.
Thomas L. Irving Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 202.408.4082 [email protected]
Erika Arner Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Two Freedom Square 11955 Freedom Drive Reston, VA 20190-5675 571.203.2754 [email protected]
John Cheek Senior Corporate Counsel Caterpillar Inc. 100 North East Adams Street Peoria, Illinois USA 61629 [email protected]
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