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August 2012 prosecution luncheon
 

August 2012 prosecution luncheon

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    August 2012 prosecution luncheon August 2012 prosecution luncheon Presentation Transcript

    • Prosecution Group Luncheon Patents August 2012
    • Proposed First-To-File Rules• Add definitions in AIA to Rules• Declarations for removing references based on exceptions in new 102• Notification to PTO of post-AIA claim or new matter in child application• Comment period closes October 5• 77 Fed. Reg. 43742-59 (July 26, 2012)
    • Submissions to Remove References• Recall prior art exceptions in new 102(b)/(c): reference information not applicable if – It and claimed invention commonly owned or part of activities of joint research agreement – Within 1 year of filing, it came from inventor or one who obtained from inventor (“OWO”), or it came after public disclosure of the information by inventor or OWO• Proposed Rule 104(c): common ownership – Applicant files statement in the record – Joint research agreement condition also requires giving names of parties to agreement in application
    • Submissions to Remove References• Proposed Rule 130: Declarations – (a)(1) Show that reference was by inventor, or that its info was publicly disclosed by inventor before reference date – (a)(2) Same, as to reference or disclosure by OWO• Reference is by inventor: decl’n must show he/she is in fact inventor of relied-on info• Reference by OWO: same, and show inventor communicated the relied-on info (in)directly to OWO
    • Submissions to Remove References• Inventor disclosed before reference: decl’n must – Identify/give date of disclosure – Show inventor is in fact inventor of that earlier disclosure – If reference is printed publication, provide copy – If not, describe disclosure with “detail and particularity” to show it is public disclosure of relied-on information• OWO disclosed before reference: same, and show communication of relied-on info
    • Statements of Post-AIA Claims, DisclosureIn post-AIA applications claiming pre-AIA benefit, that include(d) claim(s) with post-AIA date• Must file “statement to that effect” by later of: – Four months from application filing date – 16 months from benefit-application filing date – Date that the first post-AIA claim is presented• Need not identify particular claim(s) – “upon reasonable belief, this application contains at least one claim that has an effective filing date on or after March 16, 2013” Proposed 37 CFR 1.55, 1.78(a)
    • Statements of Post-AIA Claims, DisclosureIn post-AIA applications claiming pre-AIA benefit, with disclosure not also in benefit application• Must file “statement to that effect” by later of: – Four months from application filing date – 16 months from benefit-application filing date• Need not identify particular matter – “upon reasonable belief, this application contains subject matter not also disclosed in” the prior foreign, provisional or non-provisional application
    • Statements of Post-AIA Claims, Disclosure• If you fail to provide statement in given time period, or seek to retract statement – May result in Rule 105 request for specific identification of support in benefit-application• No statement required if: – Application discloses only subject matter also in benefit-application – Benefit only claimed to applications dated 3/16/13 or after
    • Proposed Post-AIA Examination Guidelines• Reviews new provisions and how to apply• Guidelines generally consider that procedure and theory remains the same – Anticipation, enablement standards – No “difference of approach to the question of obviousness” – Notes that geographic limitations are removed• Comment period closes October 5• 77 Fed. Reg. 43759-73 (July 26, 2012)
    • Proposed Post-AIA Examination Guidelines• “On Sale” – Comment sought on whether public availability has role• “Otherwise available prior art”: “Catch-all” provision – Focus on availability rather than on means of dissemination – May include thesis, poster display, Internet posting, transaction not amounting to UCC “sale”• Removing prior art through early disclosure – Inventor’s earlier public disclosure must be the same as the disclosure in the reference to be removed – Even if differences between reference info and inventor’s earlier disclosure “are mere insubstantial changes, or only trivial or obvious variations,” the exception does not apply
    • New Google Patents Features• European Patents – Search by number (e.g. EP1692064A1) – OCR text, links to EP site• Prior Art Finder – Identifies key phrases from patent text, makes search query – Results come from Google Patents, Google Scholar, Google Books, and web
    • Google’s Find Prior Art
    • Google’s Find Prior Art