Leahy-Smith Leahy- -Smith Smith Leahy AMERICA INVENTS ACT AMERICA INVENTS ACT AMERICA INVENTS ACT Prepared by: Stephen G. Kunin, Partner For DC Bar Conference November 9, 2011 1
Presentation Topics Presentation Topics First Inventor to File First Inventor to File Prior Art Prior Art Derivation Proceedings Derivation Proceedings 2
First Inventor to File First Inventor to File Towards Global Harmony? First-to-Invent First-to-File (US) (Rest of the World) Global Harmony 3
First Inventor to File Not Real Global Harmony First-Inventor First-to-Invent to-File (US) First-to-File (US) (Patents with (Rest of the World) effective filing date (Patents with prior to March 2013) effective filing date after to March 2013) The Leahy Smith America Invents Act presents a unique “first to file” system 4
First Inventor To File: Effective Date First Inventor To File: Effective Date 18 month Effective Date Obama signed of FITF: AIA U.S. application filed and March 16, JP/PCT Sept 16, 2011 claiming priority 2013 application to JP app - U.S. filed National Stage: FITF does not apply 5
First Inventor To File: Effective Date First Inventor To File: Effective Date 18 month Effective Date Obama signed of FITF: AIA Cont/Div claiming priority March 16, Parent U.S. Sept 16, 2011 to parent 2013 application application: filed FITF does not apply 6
First Inventor To File: Effective Date First Inventor To File: Effective Date 18 month Effective Date Obama signed of FITF: AIA CIP or by-pass : PCT or March 16, Sept 16, 2011 FITF applies if parent U.S. 2013 application includes application a claim that covers filed the new matter added in CIP or by- pass Practice Note: USPTO expected to apply a strict rule: FITF applies to all CIP applications filed after March 16, 2013 7
Prior Art Prior Art § 102. Conditions for patentability; novelty § 102. Conditions for patentability; novelty 02. Conditions for patentability; novelty 02. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— to a patent unless— (1) the claimed invention was patented, described in (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or a printed publication, or in public use, on sale, or otherwise available to the public before the otherwise available to the public before the before the before the effective filing date of the claimed invention; or effective filing date effective filing date of the claimed invention; or effective filing date 8
Prior Art Prior Art § 102. Conditions for patentability; novelty § 102. Conditions for patentability; novelty 02. Conditions for patentability; novelty 02. Conditions for patentability; novelty Practice Notes: Includes foreign priority date and (a) NOVELTY; PRIOR ART.—A person shall be entitled (a) NOVELTY; PRIOR ART.—A person shall be entitled provisional application filing date. to a patent unless— to a patent unless— May require English translation of priority document. 131 Declarations to show an earlier (1) the claimed invention was patented, described in (1) the claimed invention was patented, described in date of invention will no longer be available a printed publication, or in public use, on sale, or a printed publication, or in public use, on sale, or otherwise available to the public before the otherwise available to the public before the before the before the effective filing date of the claimed invention; or effective filing date effective filing date effective filing date of the claimed invention; or 9
Prior Art Prior Art § 102. Conditions for patentability; novelty § 102. Conditions for patentability; novelty 02. Conditions for patentability; novelty 02. Conditions for patentability; novelty Practice Note: The publication does not need to (a) NOVELTY; PRIOR ART.—A person shall be entitled (a) NOVELTY; PRIOR ART.—A person shall be entitled be actually “printed”. The publication can be published on to a patent unless— to a patent unless— any medium, such as electronic (1) the claimed invention was patented, described in (1) the claimed invention was patented, described in a printed publication a printed publication printed publication, or in public use, on sale, or printed publication, or in public use, on sale, or otherwise available to the public before the otherwise available to the public before the effective filing date of the claimed invention; or effective filing date of the claimed invention; or Practice Notes : 1) Anywhere in the World! 2) By anyone (not limited to “others”) 10
Prior Art Prior Art Open questions: 1) Does “public use” include a secret commercial use of the claimed invention by the inventor – i.e., is Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. , 153 F.2d 516 (2d Cir. 1946) and the jurisprudence relying on § 102. Conditions for patentability; novelty § 102. Conditions for patentability; novelty 02. Conditions for patentability; novelty 02. Conditions for patentability; novelty that case overruled)? 2) Does “on sale” include non-public offers for sales (private, confidential) by applicant? (a) NOVELTY; PRIOR ART.—A person shall be entitled (a) NOVELTY; PRIOR ART.—A person shall be entitled 3) Practice note : It may be safer to assume that the answer to a patent unless— to a patent unless— is “yes” until CAFC address these issues (1) the claimed invention was patented, described in (1) the claimed invention was patented, described in a printed publication, or in public use, on sale a printed publication, or in public use, on sale in public use, on sale, or in public use, on sale, or otherwise available to the public before the otherwise available to the public before the effective filing date of the claimed invention; or effective filing date of the claimed invention; or 11
Prior Art Prior Art § 102. Conditions for patentability; novelty § 102. Conditions for patentability; novelty 02. Conditions for patentability; novelty 02. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— to a patent unless— (1) the claimed invention was patented, described in (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or a printed publication, or in public use, on sale, or otherwise available to the public before the otherwise available to the public otherwise available to the public otherwise available to the public before the effective filing date of the claimed invention; or effective filing date of the claimed invention; or Practice Note: Probably includes oral presentations at conferences by anyone 12
Prior Art Prior Art § 102. Conditions for patentability; novelty § 102. Conditions for patentability; novelty 102. Conditions for patentability; novelty 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— patent unless— (2) the claimed invention was described in a patent issued (2) the claimed invention was described in a patent issued under section 151, or in an application for patent under section 151, or in an application for patent published or deemed published under section 122(b), in published or deemed published under section 122(b), in which the patent or application, as the case may be, which the patent or application, as the case may be, names another inventor names another inventor and was effectively filed before names another inventor names another inventor and was effectively filed before before before the effective filing date of the claimed invention. the effective filing date the effective filing date the effective filing date of the claimed invention. Practice Note: This provision only applies to U.S. patents U.S. published applications, and published PCT applications that designate the U.S. 13
Prior Art Prior Art § 102. Conditions for patentability; novelty § 102. Conditions for patentability; novelty 102. Conditions for patentability; novelty 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— patent unless— (2) the claimed invention was described in a patent issued (2) the claimed invention was described in a patent issued under section 151, or in an application for patent under section 151, or in an application for patent published or deemed published under section 122(b) published or deemed published under section 122(b) deemed published under section 122(b), in deemed published under section 122(b), in which the patent or application, as the case may be, which the patent or application, as the case may be, names another inventor and was effectively filed before names another inventor and was effectively filed before the effective filing date of the claimed invention. the effective filing date of the claimed invention. Practice Notes: This provision applies to published PCT applications that designate the U.S. (see 35 USC 374). No more language requirement : can file PCT in language other than English and create prior art under 102(a)(2) 14
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