For Effective Filing Dates and Other AIA Best Practices. Big Changes. Comparisons. First-Inventor-to-File (FITF). Mind the Gap. Effective Filing Date (EFD). AIA Team Exemption. Suggested FITF Strategies. Double Patenting. Suggested AIA Strategies.

1. 1
AIA Patent Etiquette
For Effective Filing Dates and Other AIA Best Practices
Brad Pedersen
January 23, 2014 Big Changes
Comparisons
First-Inventor-to-File (FITF)
Mind the Gap
Effective Filing Date (EFD)
AIA Team Exemption
Suggested FITF Strategies
Double Patenting
Suggested AIA Strategies

2. © 2013 Patterson Thuente Pedersen, P.A., May be distributed with attribution - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein are intended for educational and
informational purposes only and should not be construed as legal advice.
9th Annual
Advanced Patent Law Institute
Brad D. Pedersen
January 23, 2014
AIA Patent Etiquette
For Effective Filing Dates and
Other AIA Best Practices

3. The five biggest changes under the AIA:
• Loss of grace period for 3rd party art
• Definition/importance of “effective filing date”
• Loss of “swearing behind” option
• Removal of geographical limits for prior art
• Elimination of secret commercialized prior art
The Big Changes
for AIA Cases

4. 4
Comparison of New 102 with Old 102
Subsection New 102 Old 102 Notes on Changes
Non-Patent Art New 102(a)(1) Old 102(b) Changes definition based on “publicly available” approach,
see New 102(b)(1) for first-to-publish (FTP) grace period
Patent Filing Art New 102(a)(2) Old 102(e) Applies to both US and PCT filings that designate US and are
published in 1 of 10 PCT official languages
Full Year and
FTP Grace for Non-
Patent Art
New
102(b)(1)
Old 102(b) Up to 1 year - for inventor’s own work full year, but for 3rd
party only after triggered by ‘publicly disclosed’ FTP
Full Year + and
FTP Grace for
Patent Filing Art
New
102(b)(2)
Old 102(a) Up to 1 year after publication - for inventor’s own work full
year after publication, but for 3rd party only after triggered
by FTP - replaces swearing behind
Joint Development New 102(c) Old 103(c) Expands “team” exception to both New 102/New 103
Abandoned -------- Old 102(c) Changes to abandoned w/out publication, see New 102(a)(2)
Foreign patent -------- Old 102(d) Hilmer doctrine gone as non-English priority filings okayed
Not the Inventor -------- Old 102(f) Replaced by definitions of inventor under New 100(f)
Interference -------- Old 102(g) Replaced by new derivation proceedings under New 135
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5. FITF Prior Art under the AIA
Domestic
Not “PF” Prior Art:
Abandoned Applications
Applications with secrecy orders*
Unconverted Provisional
Applications*
Not “PA” Prior Art:
Offers for Sale and
“Secret” Prior Art –
Metalizing Engr. Is Gone!
Patent Filing (“PF”)
Prior Art - 102(a)(2)
Later US Patent, Published
Application, or
“Deemed Published” 122(b)
Publicly Available (“PA”)
Prior Art - 102(a)(1)
Patented Printed Publication
Public Use On Sale
Otherwise available to the public
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6. FITF Prior Art under the AIA
International
Publicly Available “PA”
Prior Art - 102(a)(1)
Patent Filing “PF”
Prior Art - 102(a)(2)
PCT Applications designating US
Now “PA” prior art:
In use or on sale
OUTSIDE the US - if publicly accessible
Not “PF” prior art:
Foreign Appls/PCT Appls
Not filed in/designating the US
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7. 7
“Mind the Gap”
Continuing Cases Claiming Pre-AIA Priority
Pre-AIA Transition
(Before 3/16/2013)
• First To Invent
• Ability to Swear Behind
• 1 Year Grace/Statutory Bar
• Early Team Exception
(at time of invention)
Post-AIA Transition
(After 3/16/2013)
• First To File w/ Grace
• No Swearing Behind
• Grace Period for pre-filing
art by/from Inventor
• Expanded Team Exception
(at time of filing)
To prevent unintentionally having a continuing case be considered as a CIP
case subject to Post AIA law, always file pre-AIA continuing applications
without new subject matter and with claims from an originally filed pre-
AIA case and then submit a preliminary amendment at least one day later.
37 C.F.R. § 1.115.
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8. 8
Actual U.S. Filing
Date of CIP
Parent Application
Actual U.S. Filing
Date of CIP (EFD)
Grace Period – 1 Year
Grace Period – 1 Year
DOMESTIC BENEFIT; CLAIM SUPPORTED
DOMESTIC BENEFIT; CLAIM NOT SUPPORTED
Parent Application (EFD)
Support in Prior Domestic Applications
Impacts the Effective Filing Date (EFD)

9. 9
Earliest U.S. Filing
Date (EFD)
Earliest U.S. Filing
Date
Foreign Priority Date
(112(a) support)
Foreign Priority Date (EFD)
(112(a) support)
Grace Period – 1 Year
Grace Period – 1 Year
FOREIGN PRIORITY CLAIM PERFECTED
FOREIGN PRIORITY CLAIM NOT PERFECTED
Support and Perfecting Priority Both
Impact the Effective Filing Date (EFD)

10. 10
Scenario 1: files a provisional claiming A+B before conceiving of
A+B+C, then files a utility claiming A+B and A+B+C after 3/16/13
Party
AIA applies to both claims
Under Sec. 3(n)(1)(A), the AIA applies to any patent that
contains “a claim to a claimed invention that has an effective
date…” [after March 16, 2013]
RESULT:
PROV
March 16, 2013
Post 3/16/13 effective date
Addition of C is non-obvious
Pre 3/16/13
effective date

11. 11
Scenario 2A: files a provisional claiming A+B before conceiving of
A+B+C, then files a utility claiming A+B and A+B+C (after 3/16/13)
Party
is entitled to the patent for A+B, not A+B+C
Under the AIA, cannot swear behind publication of
A+B+C despite being the first inventor
RESULT:
PROV
Party

12. 12
Scenario 2B: files a provisional claiming A+B before conceiving of
A+B+C, then files a utility claiming A+B and A+B+C (after 3/16/13)
Party
is entitled to the patent for A+B and A+B+C
Under the AIA, publication removes publication of
A+B+C under 102(b)(1)(B)
RESULT:
PROV
Party

13. 13
Scenario 3A: files a provisional claiming A+B before conceiving of
A+B+C, then files a utility claiming A+B and A+B+C (after 3/16/13)
Party
is entitled to the patent for A+B, not A+B+C
Under the narrow construction of 102(b)(1)(B), publication
of A+B+C’ remains prior art despite publication of A+B+C
RESULT:
PROV
Party
C’ is an obvious
variation of C

14. 14
Scenario 3B: files a provisional claiming A+B before conceiving of
A+B+C, then files a utility claiming A+B and A+B+C (after 3/16/13).
files a utility for A+B+C before files its utility
Party
is entitled to the patent for A+B, not A+B+C
Under the AIA, cannot swear behind filing date, nor is
application prior art to
RESULT:
PROV
Party

15. 15
Scenario 3C: files a provisional claiming A+B before conceiving of
A+B+C, then files a utility claiming A+B and A+B+C (after 3/16/13).
files a utility for A+B+C before files its utility
Party
is entitled to the patent for A+B and for A+B+C
Under both a narrow or broad construction of 102(b)(2)(B),
publication removes filing as prior art to application
RESULT:
PROV
Party

16. 16
Scenario 4A: files a provisional claiming A+B before conceiving of
A+B+C, then files a utility claiming A+B and A+B+C after 3/16/13.
files a utility for A+B+C before files its utility
Party
AIA does not apply to either patent
Under Sec. 3(n)(2)(A), the existing law applies to any patent
that refers to “a claim to a claimed invention that has an
effective date…” [before March 16, 2013]
RESULT:
PROV
March 16, 2013
Party
Pre 3/16/13
effective date
Interference
via 102(g)

17. 17
Scenario 4B: files a provisional claiming A+B before conceiving of
A+B+C, then files a utility claiming only A+B+C after 3/16/13.
files a utility for A+B+C before files its utility
Party
AIA does not apply to either patent
Under Sec. 3(n)(2)(A), the existing law applies to any patent
that refers to “a claim to a claimed invention that has an
effective date…” [before March 16, 2013]
RESULT:
PROV
March 16, 2013
Party
Pre 3/16/13
effective date
No Interference via
102(g) – no claim
that triggers pre-AIA

18. 18
EFD of Bob's claimed invention;
application names parties to JRA
Bob signs contract
obligating assignment of
any invention to Acme
EFD of Bob's
claimed invention
EFD of Bob's claimed invention;
Bob assigns to Acme Corp.
Di's published U.S.
patent application filed; Di assigns
to Acme Corp.
Di's published U.S.
patent application filed
Di's published U.S.
patent application filed; Di assigns
to Acme Corp.
Bob & Di enter JRA (activities
encompass Bob’s invention)
AIA Team Exception – 102(b)(2)(C)
Examples of Team Exception Applying

19. 19
Di's published U.S.
patent application
filed
EFD of Bob's claimed
invention XYZ;
application does NOT
name parties to JRA
Bob assigns
claimed
invention to
Acme Corp.
EFD of Bob's
claimed
invention XYZ
Di's published U.S. patent
application filed; Di
assigns to Acme Corp.
Di's published U.S.
patent application
filed
Bob & Di enter JRA
(activities encompass
invention XYZ)
Bob & Di enter JRA
(activities encompass
only ABC)
EFD of Bob's
claimed
invention
AIA Team Exception – 102(b)(2)(C)
Examples of Team Exception Not Applying

20. 20 20
• Effective Filing Date – AIA 100(i)(1) – and the need
to be first to file will push provisional filings to be:
• A complete filing with full claim sets that have been searched that
is being filed to defer fees, especially in situations with large
numbers of claim sets,
• An “emergency recovery” filing of a document that has already
been publicly disclosed before any patent filing in an attempt to
protect as much possible rights against intervening art of 3rd parties
by trying to secure as early an effective filing date as possible based
solely on the document that was publicly disclosed, or
• An evolving string provisional filings to cover experimental
results/improvements of alternative species (again to get as early
an effective filing date as possible against potential intervening 3rd
party prior art).
Suggested FITF Strategies
Effective Filing Date and Provisionals

21. 21 21
• What is the Effective Filing Date (EFD) for this case:
• Full Provisional Filed 1/1/14 with claims to ABC where C is
means+function and structures C1 and C2 are disclosed in spec
• Utility Application is filed 12/31/14 with identical claims, but spec
adds structures C3 and C4
• 3rd Party Intervening art was published on 6/1/14 disclosing AB+C3
• Applicant published AB+(C1-C4) on 7/1/14
EFD and Means + Function
Under the AIA

22. 22 22
• New Section 106 has been added:
• Complicated and difficult to parse
• A potentially better solution:
35 USC 156(b)(2)(B) DISCLAIMED TERM.- No patent the term of which has been disclaimed
beyond a specified date may be adjusted under this section beyond the expiration date of the
patents specified in the disclaimer. No patent claiming benefit of priority to any earlier
application under section 120 may be adjusted under this section beyond the expiration date of
any patents issued from such earlier applications for which the benefit of priority is claimed
under section 120.
35 USC 120. Any application entitled to benefit under this section other than a divisional
application properly filed under section 121 shall include a disclaimer filed during the pendency
of the application as required by the Director preventing the application from being assigned or
transferred separate from any of the applications for which the benefit of priority is claimed
under this section.
New Section 106
Double Patenting

23. 23
The New 102 Under the AIA
Theory vs. Practice
Idealized
Patent Filing
Fully Complete
Disclosure with
no Additional
Development
Always Filed
Before Any
Public Availability
First-to-Publish
(FTP) Grace
Period Not Used
Reality for
Most Corps.
Initial Invention
Disclosure with
Subsequent
Development
Filed After
Approval By
Patent Review
Committee
Limited Use of
Provisional/FTP
Grace Based on
Product Release
Reality for
Startups
Initial Concepts
with Subsequent
Development
Patent Filings
Efforts
Competing with
Fund Raising
Typical Use of
Provisional
Filings to
Minimize Cost
Reality for
Universities
Research
Concepts Instead
of Product
Concepts
Patent Filings
Contend with
Demands of
Publish or Perish
Will Make Most
Use of
Provisional/FTP
Grace
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24. 24
What Happens to AIA Patent
Applications?
Less Complicated:
< 50 claims
< 3 priority claims
1 inventive entity
More Complicated:
> 49 claims
> 2 priority claims
> 1 inventive entity
• Less Complicated Cases will be Easier
• More Complicated Cases will have More Options and Expense
• So, expect a relative increase in Less Complicated Filings

25. How Long Will It Take For the Courts
To Get Up to Speed on the AIA?
Sept 2011
AIA Enacted
March 2013
AIA Starts
March 2014
1st AIA
patents
start issuing
Sept 2015
Earliest
Possible
PTAB ruling
on a PGR
case
Sept 2016
1st District
Court Cases
Completed*
and
1st CAFC
Appeal on
PTAB-PGR
Sept 2017
1st Federal
Circuit
Rulings on
Litigated
Cases
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• Always File First!!!
• Treat the AIA as a First to File System
• Avoid the FTP Grace of Sub(B)
• Use Emergency Recovery Provisional filings to
preserve the best rights for early publications
• String Provisional Filings?
• One possible way to improve your odds of getting
an earlier “Effective Filing Date”
• Mind the Gap
• Avoid unintentional additions of claimed subject
matter from pre-AIA cases by using preliminary
amendment approach
Suggested AIA Strategies
Key Issues for Consideration

27. Thank You!
About Brad Pedersen
Brad Pedersen is a patent attorney with more than 25 years of experience in patent law, engineering,
business and entrepreneurship. He is a partner and the chair of the Patent Practice group at Patterson
Thuente Pedersen, P.A., an intellectual property law firm in Minneapolis, Minnesota.
Brad is one of the more knowledgeable IP attorneys in the U.S. when it comes to the patent reform and
the AIA. Since it was first introduced in 2005, he has actively followed the developments and debate
surrounding patent reform at the agency, legislative and judicial levels. He educates clients and colleagues
by writing and presenting on the imminent changes and strategies for dealing with the reforms.
Brad can be reached at pedersen@ptslaw.com or (612) 349.5774
About Patterson Thuente IP
Patterson Thuente Pedersen, P.A. helps creative and inventive clients worldwide protect, and profit from,
their ideas. Practicing in the areas of patents, trademark, copyright, trade secrets, IP litigation,
international IP protection, licensing and post-grant proceedings, the firm’s attorneys excel at finding
strategic solutions to complex intellectual property matters.
Visit us online at www.ptslaw.com.
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