Changes in Examination Under the America Invents Act

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Knobbe attorneys presented "Changes in Examination Under the America Invents Act" at a recent seminar held in Japan.

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Changes in Examination Under the America Invents Act

  1. 1. Changes in Examination Under the America Invents Act Eric Nelson October 19, 2012 TokyoThe recipient may only view this work. No other right or license is granted. knobbe.com
  2. 2. AIA Guidelines: Changes in Examination • First to file and prior art standards© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2
  3. 3. First-to-File: Implemented via New §§ 102/103 • New 102/103 establish a “first-to-file” framework – But “first-to-disclose” may be more accurate • Under old 102/103, you can overcome almost any prior art if: – The prior art hasn’t been public for more than 12 months, AND – You can establish that you invented the claimed subject matter on or before the prior art’s effective date • Under new 102/103, you can overcome almost any prior art if: – The prior art hasn’t been public for more than 12 months, AND – You can establish that you disclosed the claimed subject matter on or before the prior art’s effective date, i.e.: • “Disclosed” including disclosure by inventor, or disclosure by someone who derived the information from inventor • Purpose: if the prior art was your disclosure or originated from your disclosure, then it’s not prior art© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3
  4. 4. New § 102(a)(1) • Old 102(a)-102(g) replaced by new 102(a): 102(a): Novelty; Prior Art- 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, deletes “in this country” – on sale, or otherwise available to the public before public use/sale anywhere the effective filing date of the claimed invention; or now counts as prior art “before the invention of” is now “before the effective filing date of”© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4
  5. 5. “In Public Use,” “On Sale,” or “Otherwise Available Prior Art” • “in public use” – AIA 35 U.S.C. 102(a)(1) has no geographic limitation on the location where a prior public use or public availability may occur • “on sale” – AIA 35 U.S.C. 102(a)(1) has no geographic limitation on the location where the sale may occur – No explicit requirement of “public” sale and no official position has been taken • “otherwise available prior art” – A catch-all provision defining a new category of prior art – Permits decision makers to focus on whether the disclosure was “available to the public” rather than on the means by which the claimed invention became available • Examples include a thesis in a library, poster displays at a meeting, electronic posting on the internet, certain types of sales, etc.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 5
  6. 6. New § 102(a)(2) 102(a): Novelty; Prior Art- A person shall be entitled to a patent unless-- 102(a)(2) parallels old 102(e) 102(a)(2): the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed A published PCT app that published under section 122(b), in which the designates the U.S. counts patent or application, as the case may be, names as prior art – even if it another inventor and was effectively filed before wasn’t published in English the effective filing date of the claimed invention. “names another inventor” is same as “by another” in old 102(e) – means a different inventive entity (any difference suffices) “effectively filed” can mean a foreign priority date© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 6
  7. 7. “Effectively Filed” • A U.S. patent, U.S. patent application publication, or WIPO published application is prior art under 102(a)(2) as of either: – its actual filing date; or – the filing date of a prior application to which there is a priority or benefit claim • Entitlement to priority or benefit with respect to any of its claims is not at issue in determining the date prior art was “effectively filed” for prior art purposes – Subject matter must be described, but not to the level required by 35 U.S.C. 112(a) • Prior art is effective as of the earliest filing date, regardless of where it was filed© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7
  8. 8. BUT – Narrow Exceptions Are in 102(b) • 102(b)(1): A disclosure made 1 year or less before the effective filing date of a claimed 102(b)(1) is a way of invention shall not be prior art to the claimed overcoming disclosures not invention under subsection (a)(1) if: more than a year old – (A) the disclosure was made by the inventor or joint inventor or by another who obtained i.e., you (or someone who got the subject matter disclosed directly or the info from you) made the indirectly from the inventor or a joint “disclosure” inventor; or – (B) the subject matter disclosed had, before such disclosure, been publicly disclosed i.e., you (or someone who by the inventor or a joint inventor or another got the info from you) made who obtained the subject matter disclosed an earlier public disclosure directly or indirectly from the inventor or a joint inventor.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8
  9. 9. The Meaning of “Disclosure” • “Disclosure” is not defined in the AIA – Treating the term as “a generic expression intended to encompass the documents and activities enumerated in 35 U.S.C. 102(a)” – Examples are “being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application” • Exception in 102(b)(1)(B) requires that the subject matter in the prior art disclosure be the “same” subject matter as the inventor’s public disclosure – Exception does not apply if there are insubstantial changes, trivial, or obvious variations© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 9
  10. 10. The Scope of 102(b) Exceptions Is Unclear • 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 PTO view is the “subject inventor; or matter” must be the “same” – – (B) the subject matter disclosed had, the exception does not apply if before such disclosure, been publicly there are “mere insubstantial disclosed by the inventor or a joint inventor changes, or only trivial or or another who obtained the subject matter obvious variations” disclosed directly or indirectly from the inventor or a joint inventor. making “public disclosures” yourself is an unpredictable defense strategy© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 10
  11. 11. More Exceptions in 102(b) • 102(b)(2): A disclosure shall not be prior art to a 102(b)(2) lists ways of claimed invention under subsection (a)(2) if : removing applications and – (A) the subject matter disclosed was patents as prior art obtained directly or indirectly from the inventor or a joint inventor; derivation – you’re – (B) the subject matter disclosed had, before the only real inventor such subject matter was effectively filed i.e., your invention was under subsection (a)(2), been publicly publicly disclosed before the disclosed by the inventor or a joint inventor prior application was filed or another who obtained the subject matter disclosed directly or indirectly from the i.e., the prior application inventor or a joint inventor; or and your application – (C) the subject matter disclosed and the were commonly owned claimed invention, not later than the effective (similar to old 103(c)(1)) filing date of the claimed invention, were under new 102(c), a “joint owned by the same person or subject to an research agreement” counts as obligation of assignment to the same common ownership (same as person. old 103(c)(2))© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 11
  12. 12. More Exceptions in 102(b) • 102(b)(2): 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, Same issue as in before such subject matter was effectively 102(b)(1)(B): PTO view filed under subsection (a)(2), been publicly is the “subject matter” disclosed by the inventor or a joint inventor must be the “same” – or another who obtained the subject matter the exception does not disclosed directly or indirectly from the apply if there are inventor or a joint inventor; or “mere insubstantial – (C) the subject matter disclosed and the changes, or only trivial claimed invention, not later than the effective or obvious variations” filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 12
  13. 13. New 103 • 103: A patent for a claimed invention may not be obtained, notwithstanding that the not clear: ambiguity in term claimed invention is not identically “disclosure” in 102(b) may affect disclosed as set forth in section 102, if the scope of “disclosed” in 103 differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been even “secret prior art” (i.e., obvious before the effective filing date of filed patent applications) the claimed invention to a person having under 102(a)(2) can be used ordinary skill in the art to which the claimed for obviousness rejections invention pertains. Patentability shall not be negated by the manner in which the invention was made. in other countries, “secret prior art” can only be used for novelty rejections© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 13
  14. 14. Differences in New and Existing LawsExisting 102/103 New 102/103Remove prior art: show earlier Remove prior art: show inventorinvention disclosure or derivationInterferences: show conception and Derivation: Show derived from inventordiligencePublic use / on sale: prior art if in U.S. Public use / on sale: prior art if in any countryInt. Pub.--publish in English and Int. Pub.– designate U.S.designate U.S.Foreign filing date irrelevant for prior Foreign filing date is effective date forart prior art© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 14
  15. 15. Differences in New and Existing LawsExisting 102/103 New 102/103Earlier invention prior art (102(g)(2)) Earlier filing prior artAnticipation of earlier-filed application Co-owned earlier-filed application not(102(e)); removed under 103(c) if same prior art under 102 or 103assigneeNon-public use / knowledge: prior art Only public use / “other” is prior artif in US (102(a))Earlier filed, earlier issued foreign Earlier foreign patent only prior art aspatent (102(d)) of patent date© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15
  16. 16. Which Applications Are Subject to New 102/103? • Any application “that contains or contained at any time… a claim with an effective filing date after 3/16/2013” – i.e., any application with a claim directed to subject matter that was added after 3/16/2013: • A new application filed after 3/16/2013 • A nonprovisional filed after 3/16/2013, even if it claims priority to an earlier provisional, if it includes a claim directed to subject matter that was added after 3/16/2013 • A CIP filed after 3/16/2013, even if it claims priority to a parent filed earlier, if it includes a claim directed to subject matter that was added after 3/16/2013 • New rules will NOT apply to a CON or DIV filed after 3/16/2013, if it claims priority to a parent filed before that date, so long as no claims directed to new subject matter are ever added. • If priority claimed before and after 3/16/2013, new 102/103 and old interference apply.© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 16
  17. 17. Practice Tips re: “First-to-File” • Consider filing new applications before March 16, 2013 – Later non-provs, PCTs, CONs and DIVs may not be affected, if you are careful not to add claims directed to new subject matter • Parallel lines if new matter is added • File application as copy, shortly thereafter file preliminary amendment – But be careful: A claim which doesn’t have priority taints the entire line permanently, even if canceled later • After March 16, 2013, file promptly, serially • Be cautious of relying on prior art exceptions under 102(b) • Establish formal joint research agreements and obligations to assign early© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 17
  18. 18. The 22-Year Patent Term • 1/1/2013: File Provisional Application 1 • 1/2/2013: Publish Provisional Application 1 • 1/1/2014: File PCT Application • 1/2/2014: File Provisional Application 2 (identical to Provisional Application 1) • 1/2/2015: File U.S. Non-Provisional Application claiming priority to Provisional Application 2 • 7/1/2015: National Phase applications from PCT Application in all non- U.S. countries • Publication blocks competitors worldwide, but there is still 1-year grace period in the U.S. • Important Assumption: Publication identical to Provisional Application 2© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 18
  19. 19. 12790 El Camino Real Eric Nelson San Diego, California 92130 Eric.Nelson@knobbe.comOrange County San Diego San Francisco Silicon Valley Los Angeles Riverside Seattle Washington DC knobbe.com

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