The e Am America erica In Inve vents nts Ac Act The e Nex ext R t Roun und: : Im Implement ementatio tion n of Fi First st In Inve ventor tor to to Fi File e Rul ules es Webinar of April 24, 2013 Ken Nigon & Chris Lewis 1
Ov Over ervie view Definition of “FITF Prior Art” “Publicly Available” Prior Art - §102(a)(1) • “Patent Filing” Prior Art - §102(a)(2) • Exceptions … and Exceptional Challenges • Which Law Applies – First to Invent (FTI) - or - • First Inventor to File (FITF)? Transition Case Statements • Declaration Practice Miscellaneous Practice Tips 2
FI FITF F – Ne New La w Law The New Class of Prior Art - Section 102(a): A person shall be entitled to a patent unless: 102(a)(1) - the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. “Publicly Available Prior Art” 102(a)(2) - the claimed invention was described in a patent … or in an application for patent published … which … names another inventor and was effectively filed before the effective filing date of the claimed invention. “Patent Filing Prior Art” 3
FI FITF F – Ne New La w Law What is the “trigger”? FTI: §§ 102(a) & 102(e) - “before the invention” • § 102(b) – “more than one year prior to the date of the • application for patent in the United States” FITF: §§ 102(a)(1) & 102(a)(2) – • “before the effective filing date (EFD) of the claimed invention” EFD defined in § 102(i) as either: • - Actual filing date if no priority is claimed or - The filing date of the earliest application for which the application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date Prior filing must provide full § 112, first paragraph support • Still assessed on a claim-by-claim basis • 4
Pu Publ blicly cly Av Available lable Pr Prior r Ar Art Section 102(a)(1): “Patented,” No change from FTI • Generally, when right is conferred • Technically refers to claimed invention of a patent • “Described in a printed publication,” “Described” is no change from FTI • For Anticipation: • - Each and every element must be disclosed - Requires “how to make” enablement - Note “entire scope” distinction with EFD For Obviousness – Need not be enabling • “or in public use, on sale, or otherwise available to the public” PTO: “otherwise available to the public” modifies “in public • use” and “on sale”! 5
Publ Pu blicly cly Av Available lable Pr Prior r Ar Art Section 102(a)(1): Public Use No geographic limitation • Same effect regardless if done by inventor or third party • Now limited to those uses available to the public • Submit in IDS and Examiner may inquire about it • On Sale No geographic limitation • Same effect regardless if done by inventor or third party • Now limited to those sales available to the public • Submit in IDS and Examiner may inquire about it • Two requirements: • - Commercial offer for sale and - Ready for patenting. Otherwise available to the public 6
Pu Publ blicly cly Av Available lable Pr Prior r Ar Art The New Statutory Class Otherwise available to the public A “catch - all” provision • Focus on whether the invention was available to the public, not the • means by which it got there Some Examples cited in Guidelines • - Student thesis in a university library - Poster display or other information disseminated at a meeting - Oral presentation at a meeting - Document electronically posted on the internet - Commercial transaction not constituting an offer Other points No “by others” requirement, but exceptions… • Admissions • Open Questions What is the meaning of this class? • Does it indeed modify “in public use” and “on sale”? • Needless to say … the courts will decide these issues. • 7
Patent Pa ent Fi Fili ling ng Pr Prior r Ar Art Prior Art under §102(a)(2) Published U.S. applications as of their earliest priority date (both U.S. and foreign) Almost all PCT applications whether or not they were filed in the U.S. PTO PCT applications that do not designate the U.S. and are prior art only back to their publication date (under §102(a)(1)) Foreign applications with no corresponding U.S. application are prior art only back to their publication date (under §102(a)(1)) 8
Fo Fore reign ign La Langu nguage Pri ge Priority rity Prior Art under §102(a)(2) If priority document is not in English, PTO must provide a translation “If the document is in a language other than English and the examiner seeks to rely on that document, a translation must be obtained so that the record is clear as to the precise facts the examiner is relying upon in support of the rejection” MPEP §706.02(section II) Can be a machine translation 9
Pa Patent ent Fi Fili ling ng Pr Prior r Ar Art Machine Translations through espacenet The EPO and Google have been working together to bring you a translation service optimized for patent documents. Patent Translate now covers translations between English and fourteen other languages, namely Chinese, Danish, Dutch, German, Finnish, French, Greek, Hungarian, Italian, Norwegian, Polish, Portuguese, Spanish and Swedish . More languages will be added in the coming years. 10
Pa Patent ent Fi Fili ling ng Pr Prior r Ar Art 11
Ex Exce ceptions tions to Pr Prior r Ar Art Section 102(b)(1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if — (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed [by another] 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. 12
Exceptions to “PA” Prior Art Section 102(b)(1)(A) - “Grace Period” Exceptions Disclosure made by the inventor or joint inventor “Disclosure” is generic to all five classes of 102(a)(1) • No rejection will be made if apparent (i.e., publication is by • same inventor or less than all inventors named in application) Rule 77(b)(6) Statement – Mention in specification of grace • period inventor disclosure Rule 130(a) Declaration • Disclosure made by another who obtained the subject matter from the inventor or a joint inventor Must be made in a Rule 130(a) Declaration • More reason to keep lab notebooks • 13
Exceptions to “PA” Prior Art Section 102(b)(1)(B) – Preclusive Prior Disclosure by Inventor The subject matter disclosed [by another] 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. Prior public disclosure must itself be within 1-year Rule 130(b) declaration Need not be same “mode” Need not be identical Examples Specific – more general: Exception applies • Genus – species: Exception does not apply • Species A – species B: Exception does not apply • If exception does not apply, intervening reference is prior art • 14
Exceptions to “PF” Pr Prior ior Ar Art Section 102(b)(2) Disclosure in an application or patent shall not be prior art if- the subject matter was obtained directly or indirectly from the inventor the subject matter had been previously disclosed by the inventor or by another who obtained the subject matter from the inventor the patent or application was owned by the same person as of the EFD of the claimed invention 15
Ex Exce ceptions tions to PF PF Pri Prior r Ar Art Section 102(b)(2)(A) Disclosures in the application Overlapping claims in two applications must be resolved by • a Derivation proceeding Rule 130 Declaration used to prove that subject matter was • derived 16
Ex Exce ceptions tions to PF PF Pri Prior r Ar Art Section 102(b)(2)(B) Very limited Preclusive Effect by Inventor’s Prior Disclosure Prior disclosure must be of the same “subject matter” May be a different mode – On sale by inventor vs. Patent filing by another No requirement that it be “verbatim or ipsissimis verbis” (‘in the identical words’ as opposed to in substantially the same words) Earlier specific statement can defeat a later general statement but not vice versa Rule 130(b) declaration used to remove intermediate disclosure. 17
Exce Ex ceptions tions to PF PF Pri Prior r Ar Art Section 102(b)(2)(B) Example A discloses elements I, J and K B files application disclosing I, J, K and L Within one year of original disclosure, A files application for I, J, K and L B’s published application can only be used for element L under §102(a)(2) 18
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