Patent Prosecution in view of the Final                                            AIA Rules                    February 2...
California CLE Credit        For CLE Credit, we have your bar number if you entered it during registration.        If yo...
Prior Art under the AIA© 2013 Knobbe, Martens, Olson & Bear, rights reserved.©2012 Knobbe Martens, Olson & Bear, LLP all L...
New §102(a)(1) – Public Prior Art    Old 102(a)-102(g) replaced by new 102(a):                                           ...
New §102(a)(1) – Public Prior Art    Old 102(a)-102(g) replaced by new 102(a):                                           ...
New §102(a)(1) – Public Prior Art    Old 102(a)-102(g) replaced by new 102(a):                                           ...
New §102(a)(1) – Public Prior Art    Old 102(a)-102(g) replaced by new 102(a):                                           ...
Summary of Key “First-to-File” Changes     Public prior art is effective as prior art even if only one day      prior to ...
New § 102(a)(2) – Application Prior Art    102(a): Novelty; Prior Art- A person shall be entitled to a    patent unless-- ...
New § 102(a)(2) – Application Prior Art    102(a): Novelty; Prior Art- A person shall be entitled to a    patent unless-- ...
New § 102(a)(2) – Application Prior Art    102(a): Novelty; Prior Art- A person shall be entitled to a    patent unless-- ...
New § 102(a)(2) – Application Prior Art    102(a): Novelty; Prior Art- A person shall be entitled to a    patent unless-- ...
Summary of Key “First-to-File” Changes     Prior filed application is effective as prior art even if only one      day pr...
Exceptions to Prior Art under the AIA© 2013 Knobbe, Martens, Olson & Bear, rights reserved.©2012 Knobbe Martens, Olson & B...
Exceptions to 102(a)(1) Prior Art        102(b)(1) A disclosure made 1 year or less before the         effective filing d...
Exceptions to 102(a)(1) Prior Art        102(b)(1) A disclosure made 1 year or less before         the effective filing d...
Exceptions to 102(a)(1) Prior Art        102(b)(1) A disclosure made 1 year or less before the         effective filing d...
Exceptions to 102(a)(1) Prior Art        102(b)(1) A disclosure made 1 year or less before the         effective filing d...
Exceptions to 102(a)(1) Prior Art        102(b)(1) A disclosure made 1 year or less before the         effective filing d...
Exceptions to 102(a)(1) Prior Art                                                                         PTO Interpretati...
Examples of Inventor Prior Public Disclosures    Inventor Prior Public Disclosure                             Intervening ...
Examples of Inventor Prior Public Disclosures    Inventor Prior Public Disclosure                                Interveni...
Examples of Inventor Prior Public Disclosures    Inventor Prior Public Disclosure                                Interveni...
Examples of Inventor Prior Public Disclosures    Inventor Prior Public Disclosure                                     Inte...
Exceptions to 102(a)(2) Prior Art        102(b)(2) A disclosure shall not be prior art to a claimed         invention und...
Exceptions to 102(a)(2) Prior Art        102(b)(2) A disclosure shall not be prior art to a claimed         invention und...
Exceptions to 102(a)(2) Prior Art        102(b)(2) A disclosure shall not be prior art to a claimed         invention und...
Exceptions to 102(a)(2) Prior Art        102(b)(2) A disclosure shall not be prior art to a claimed         invention und...
Exceptions to 102(a)(2) Prior Art        102(b)(2) A disclosure shall not be prior art to a claimed         invention und...
Prior Art Exceptions - Summary      Exceptions to 102(a)(1) Prior Art                          Exceptions to 102(a)(2) Pri...
Prior Art Exceptions - Summary      Exceptions to 102(a)(1) Prior Art                          Exceptions to 102(a)(2) Pri...
Removing Grace Period Inventor Disclosure     If prior disclosure does not include additional authors, simple      argume...
Prior Art Exceptions - Summary      Exceptions to 102(a)(1) Prior Art                          Exceptions to 102(a)(2) Pri...
Removing Inventor-Originated Disclosures     Affidavit or declaration of attribution (37 CFR 1.130(a))       – Establish ...
Removing Inventor-Originated Disclosures     Derivation       – Cannot use 1.130 declaration to remove prior patents or  ...
Prior Art Exceptions - Summary      Exceptions to 102(a)(1) Prior Art                          Exceptions to 102(a)(2) Pri...
Removing Intervening Disclosures     Affidavit or declaration of prior public disclosure (37 CFR      1.130(b))       – I...
Prior Art Exceptions - Summary      Exceptions to 102(a)(1) Prior Art                          Exceptions to 102(a)(2) Pri...
Removing Commonly Owned Patents and Applications     Clear and conspicuous statement (37 CFR 1.104(c)(4)(i))       – comm...
Removing Joint Research Agreement Patents and    Applications     Application must disclose or be amended to disclose the...
Filing Strategies in view of the AIA© 2013 Knobbe, Martens, Olson & Bear, rights reserved.©2012 Knobbe Martens, Olson & Be...
Three Possible Examination Regimes     Pure Pre-AIA       – Only pre-AIA §102(a)-(g) and §103(a)-(c)       – Advantages: ...
Three Possible Examination Regimes     The AIA applies to an application or patent issuing thereon      “that contains or...
What does “contained at any time” mean?     PTO’s position on unsupported claim amendments       – Claim amendments const...
What does “contained at any time” mean?     PTO’s position – open questions:       – Claim amendments lacking enabling su...
Identification of Transition Applications     Applications that fall under AIA and claim priority to a pre-      AIA appl...
Selecting a Mixed Examination Regime     A claim wholly supported by a pre-AIA application and a      claim not supported...
Selecting a Pre-AIA Examination Regime     All claims must be supported by a pre-AIA application     No priority applica...
Selecting a Pre-AIA Examination Regime     All claims must be supported by a pre-AIA application     No priority applica...
Selecting a Pre-AIA Examination Regime     Keep a pre-AIA line pending, with prosecution “branches” to      avoid mixed e...
Selecting a Pre-AIA Examination Regime     Or file separate pre-AIA and mixed applications to avoid      inadvertently en...
Selecting a Pure AIA Examination Regime     No claim wholly supported by a pre-AIA application       – Presence of claim ...
Selecting a Pure AIA Examination Regime     No claim wholly supported by a pre-AIA application       – Presence of claim ...
What to do before March 16, 2013     If you want pure AIA regime       – If so, patent family with no pre-AIA claims is r...
What to do before March 16, 2013     If you want pre-AIA regime       – Option #1: file non-provisional prior to March 16...
Keeping All Options Open Strategy                  March 16, 2013                                        1-Year Date      ...
California CLE Credit        For CLE Credit, we have your bar number if you entered it during registration.        If yo...
Disclaimer        This presentation and our discussion constitute an educational and informational         presentation o...
   mike.fuller@knobbe.com                                                                    kerry.taylor@knobbe.com    ...
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Life Science Patent Prosecution in View of the Final AIA Rules

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Mike Fuller, Kerry Taylor, Ryan Melnick and Brenden Gingrich, were our panel of Life Science attorneys who presented a live webinar event on Thursday, February 21, 2013. The webinar titled Life Science Patent Prosecution in View of the Final AIA Rules, covered first-inventor-to-file procedures and changes to patent term calculations.

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Life Science Patent Prosecution in View of the Final AIA Rules

  1. 1. Patent Prosecution in view of the Final AIA Rules February 21, 2013 Mike Fuller, Kerry Taylor, Ryan Melnick, and Brenden GingrichOrange County San Diego San Francisco Silicon Valley Los Angeles Riverside Seattle Washington DC knobbe.com
  2. 2. California CLE Credit  For CLE Credit, we have your bar number if you entered it during registration.  If you did not enter it you bar number, please send an email to sheenika.shah@knobbe.com.  If you watched the webinar in a group, please send your name and bar number to sheenika.shah@knobbe.com.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2
  3. 3. Prior Art under the AIA© 2013 Knobbe, Martens, Olson & Bear, rights reserved.©2012 Knobbe Martens, Olson & Bear, LLP all LLP all rights reserved. 3
  4. 4. New §102(a)(1) – Public Prior Art Old 102(a)-102(g) replaced by new 102(a): 102(a)(1) parallels old 102(a): Novelty; Prior Art- A person shall be entitled to a 102(a) and (b) 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; or© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4
  5. 5. New §102(a)(1) – Public Prior Art Old 102(a)-102(g) replaced by new 102(a): 102(a)(1) parallels old 102(a): Novelty; Prior Art- A person shall be entitled to a 102(a) and (b) patent unless-- 102(a)(1): the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise USPTO: use or sale under available to the public before the effective filing date of the NDA not prior art claimed invention; or no longer an ―in this country‖ requirement – public use/sale anywhere now counts as prior art© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 5
  6. 6. New §102(a)(1) – Public Prior Art Old 102(a)-102(g) replaced by new 102(a): USPTO: example--public 102(a): Novelty; Prior Art- A person shall be entitled to a oral presentation and slides 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; or© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 6
  7. 7. New §102(a)(1) – Public Prior Art Old 102(a)-102(g) replaced by new 102(a): USPTO: example--public 102(a): Novelty; Prior Art- A person shall be entitled to a oral presentation and slides 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; or ―effective filing date‖ also ―before the invention‖ and can mean a foreign priority ―more than one year prior‖ date to US filing now replaced with ―before the effective filing date of‖© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7
  8. 8. Summary of Key “First-to-File” Changes  Public prior art is effective as prior art even if only one day prior to filing the patent application  Public presentations anywhere in the world are prior art (USPTO interpretation)  Foreign activities can be prior art (public sales, public use, etc.)© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8
  9. 9. New § 102(a)(2) – Application Prior Art 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 published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 9
  10. 10. New § 102(a)(2) – Application Prior Art 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 published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. A published PCT app that designates the US counts as prior art – even if it wasn’t published in English© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 10
  11. 11. New § 102(a)(2) – Application Prior Art 102(a): Novelty; Prior Art- A person shall be entitled to a patent unless-- ―names another inventor‖ is same as ―by another‖ in 102(a)(2): the claimed invention was described in a old 102(e) – means a patent issued under section 151, or in an application for different inventive entity patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 11
  12. 12. New § 102(a)(2) – Application Prior Art 102(a): Novelty; Prior Art- A person shall be entitled to a patent unless-- ―names another inventor‖ is same as ―by another‖ in 102(a)(2): the claimed invention was described in a old 102(e) – means a patent issued under section 151, or in an application for different inventive entity patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. ―effectively filed‖ can mean a foreign priority date ―effectively filed‖ can mean a foreign priority date© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 12
  13. 13. Summary of Key “First-to-File” Changes  Prior filed application is effective as prior art even if only one day prior to filing the patent application  Foreign filing date can be effective prior art date  PCT applications need not be in English  102(c), 102(d), 102(f), and 102(g) eliminated – But USPTO will police 102(f) using 101 and 115 – 102(g) applies to some transitional applications© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 13
  14. 14. Exceptions to Prior Art under the AIA© 2013 Knobbe, Martens, Olson & Bear, rights reserved.©2012 Knobbe Martens, Olson & Bear, LLP all LLP all rights reserved. 14
  15. 15. Exceptions to 102(a)(1) Prior Art  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 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.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 15
  16. 16. Exceptions to 102(a)(1) Prior Art  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: PTO Position: – (A) the disclosure was made by the inventor or ―disclosure‖ is a generic joint inventor or by another who obtained the expression subject matter disclosed directly or indirectly from encompassing all the the inventor or a joint inventor; or documents and activities – (B) the subject matter disclosed had, before such of 102(a)(1) 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.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 16
  17. 17. Exceptions to 102(a)(1) Prior Art  102(b)(1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be 1) ―Grace Period Inventor prior art to the claimed invention under subsection (a)(1) if: Disclosure‖ – (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 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.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 17
  18. 18. Exceptions to 102(a)(1) Prior Art  102(b)(1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be 1) ―Grace Period Inventor prior art to the claimed invention under subsection (a)(1) if: Disclosure‖ – (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 2) ―Grace Period Inventor- – (B) the subject matter disclosed had, before such Originated Disclosure‖ 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.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 18
  19. 19. Exceptions to 102(a)(1) Prior Art  102(b)(1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be 1) ―Grace Period Inventor prior art to the claimed invention under subsection (a)(1) if: Disclosure‖ – (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 2) ―Grace Period Inventor- – (B) the subject matter disclosed had, before Originated Disclosure‖ 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. 3) ―Inventor or Inventor- Originated Prior Public Disclosure‖© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 19
  20. 20. Exceptions to 102(a)(1) Prior Art PTO Interpretation  102(b)(1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be Comparison is between the prior art to the claimed invention under subsection (a)(1) subject matter of the two if: disclosures—the claimed – (A) the disclosure was made by the inventor or invention is irrelevant joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or Modes of disclosure can be – (B) the subject matter disclosed had, before different such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained Disclosures do not need to be the subject matter disclosed directly or indirectly from the inventor or a joint inventor. verbatim the same Intervening disclosure can be more general than inventor disclosure© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 20
  21. 21. Examples of Inventor Prior Public Disclosures Inventor Prior Public Disclosure Intervening Disclosure 1 2 2 1 Genus A 3 3 PTO: NOT PRIOR ART© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 21
  22. 22. Examples of Inventor Prior Public Disclosures Inventor Prior Public Disclosure Intervening Disclosure 4 1 2 2 1 Genus A 3 3 PTO: SPECIES 4 IS PRIOR ART© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 22
  23. 23. Examples of Inventor Prior Public Disclosures Inventor Prior Public Disclosure Intervening Disclosure 1 2 Genus A 3 PTO: SPECIES ARE PRIOR ART© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 23
  24. 24. Examples of Inventor Prior Public Disclosures Inventor Prior Public Disclosure Intervening Disclosure A+B +C A+B +C + D PTO: ONLY ELEMENT D IS PRIOR ART© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 24
  25. 25. Exceptions to 102(a)(2) Prior Art  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, before such subject matter was effectively filed under subsection (a)(2), 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; or – (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 25
  26. 26. Exceptions to 102(a)(2) Prior Art  102(b)(2) A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if : 1) ―Inventor-Originated – (A) the subject matter disclosed was obtained Disclosure‖ directly or indirectly from the inventor or a joint inventor; – (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; or – (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 26
  27. 27. Exceptions to 102(a)(2) Prior Art  102(b)(2) A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if : 1) ―Inventor-Originated – (A) the subject matter disclosed was obtained Disclosure‖ directly or indirectly from the inventor or a joint inventor; – (B) the subject matter disclosed had, before such subject matter was effectively filed under 2) ―Inventor or Inventor- subsection (a)(2), been publicly disclosed by the Originated Prior Public inventor or a joint inventor or another who Disclosure‖ obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or – (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 27
  28. 28. Exceptions to 102(a)(2) Prior Art  102(b)(2) A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if : 1) ―Inventor-Originated – (A) the subject matter disclosed was obtained Disclosure‖ directly or indirectly from the inventor or a joint inventor; – (B) the subject matter disclosed had, before such subject matter was effectively filed under 2) ―Inventor or Inventor- subsection (a)(2), been publicly disclosed by the Originated Prior Public inventor or a joint inventor or another who Disclosure‖ obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or – (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned 3) ―Common Ownership or by the same person or subject to an obligation Obligation of Assignment‖ of assignment to the same person.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 28
  29. 29. Exceptions to 102(a)(2) Prior Art  102(b)(2) A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if : Similar in scope to old 103(c), but removes both – (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint anticipatory and inventor; obviousness references – (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the 102(c) considers ―joint inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly research agreement‖ as from the inventor or a joint inventor; or common ownership – (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to Joint research agreement the same person. must be in effect before the effective filing date© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 29
  30. 30. Prior Art Exceptions - Summary Exceptions to 102(a)(1) Prior Art Exceptions to 102(a)(2) Prior Art Grace Period Inventor Disclosure Grace Period Inventor-Originated Inventor-Originated Disclosure Disclosure Inventor or Inventor-Originated Prior Inventor or Inventor-Originated Prior Public Disclosure Public Disclosure Common Ownership or Obligation of Assignment© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 30
  31. 31. Prior Art Exceptions - Summary Exceptions to 102(a)(1) Prior Art Exceptions to 102(a)(2) Prior Art Grace Period Inventor Disclosure Grace Period Inventor-Originated Inventor-Originated Disclosure Disclosure Inventor or Inventor-Originated Prior Inventor or Inventor-Originated Prior Public Disclosure Public Disclosure Common Ownership or Obligation of Assignment© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 31
  32. 32. Removing Grace Period Inventor Disclosure  If prior disclosure does not include additional authors, simple argument should remove the reference  e.g., disclosure = authors A and B inventors = A, B, and C  Can include statement regarding prior disclosures in specification (37 CFR 1.77(b)(6))  Affidavit or declaration of attribution (37 CFR 1.130(a)) – “Unequivocal statement” that the inventor invented the subject matter – Reasonable explanation of the presence of additional authors on prior disclosure – Additional evidence may be required© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 32
  33. 33. Prior Art Exceptions - Summary Exceptions to 102(a)(1) Prior Art Exceptions to 102(a)(2) Prior Art Grace Period Inventor Disclosure Grace Period Inventor-Originated Inventor-Originated Disclosure Disclosure Inventor or Inventor-Originated Prior Inventor or Inventor-Originated Prior Public Disclosure Public Disclosure Common Ownership or Obligation of Assignment© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 33
  34. 34. Removing Inventor-Originated Disclosures  Affidavit or declaration of attribution (37 CFR 1.130(a)) – Establish that the subject matter originated with the inventor – Establish that the subject matter was communicated by the inventor, directly or indirectly – Include documentation evidencing the communication© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 34
  35. 35. Removing Inventor-Originated Disclosures  Derivation – Cannot use 1.130 declaration to remove prior patents or applications as inventor-originated if the patent or application claims the same or substantially same invention (37 CFR 1.130(c)) – Can file petition for derivation proceeding© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 35
  36. 36. Prior Art Exceptions - Summary Exceptions to 102(a)(1) Prior Art Exceptions to 102(a)(2) Prior Art Grace Period Inventor Disclosure Grace Period Inventor-Originated Inventor-Originated Disclosure Disclosure Inventor or Inventor-Originated Prior Inventor or Inventor-Originated Prior Public Disclosure Public Disclosure Common Ownership or Obligation of Assignment© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 36
  37. 37. Removing Intervening Disclosures  Affidavit or declaration of prior public disclosure (37 CFR 1.130(b)) – Identify subject matter publically disclosed by inventor  If printed publication, include copy  If not printed publication, describe with sufficient detail – Identify date of disclosure – If based on inventor-originated disclosure, need to also make showings of origination and communication© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 37
  38. 38. Prior Art Exceptions - Summary Exceptions to 102(a)(1) Prior Art Exceptions to 102(a)(2) Prior Art Grace Period Inventor Disclosure Grace Period Inventor-Originated Inventor-Originated Disclosure Disclosure Inventor or Inventor-Originated Prior Inventor or Inventor-Originated Prior Public Disclosure Public Disclosure Common Ownership or Obligation of Assignment© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 38
  39. 39. Removing Commonly Owned Patents and Applications  Clear and conspicuous statement (37 CFR 1.104(c)(4)(i)) – common ownership or obligation of assignment to common owner – as of effective filing date of claimed invention  Can be submitted by representative of record© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 39
  40. 40. Removing Joint Research Agreement Patents and Applications  Application must disclose or be amended to disclose the names of the parties to the agreement  Submission of statement (37 CFR 1.104(c)(4)(ii)) – Prior disclosure and claimed invention made on behalf of one or more parties to a joint research agreement – Agreement was in effect prior to the effective filing date – Claimed invention was made as a result of the activities undertaken within the scope of the agreement  Can be submitted by representative of record© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 40
  41. 41. Filing Strategies in view of the AIA© 2013 Knobbe, Martens, Olson & Bear, rights reserved.©2012 Knobbe Martens, Olson & Bear, LLP all LLP all rights reserved. 41
  42. 42. Three Possible Examination Regimes  Pure Pre-AIA – Only pre-AIA §102(a)-(g) and §103(a)-(c) – Advantages: swearing behind §102(a)/(e) art  Pure AIA – Only AIA§102 and §103 apply – No pre-AIA §102(a)-(g) – Advantages: common ownership removes §102(a)(2) art for §102 and §103  Mixed Pre-AIA and AIA – AIA§102 and §103 apply, and – Pre-AIA§102(g) applies© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 42
  43. 43. Three Possible Examination Regimes  The AIA applies to an application or patent issuing thereon “that contains or contained at any time” – A claim that is not supported by a pre-AIA application, or – A priority claim to an application that “contains or contained at any time such a claim”  Examination regimes are applied to all claims in an application, not on a claim-by-claim basis© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 43
  44. 44. What does “contained at any time” mean?  PTO’s position on unsupported claim amendments – Claim amendments constituting “new matter” are not permitted under 35 U.S.C. §132(a) – Claim amendments entered and rejected as “new matter” for examination purposes are not “contained” in the application – Therefore, claim amendments containing “new matter” do not trigger the AIA, and can be canceled  PTO may be wrong – If so, cannot fix by canceling or amending claim to overcome rejection© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 44
  45. 45. What does “contained at any time” mean?  PTO’s position – open questions: – Claim amendments lacking enabling support?  No “new matter” lack of enablement rejection  Presumably converts application to AIA – Original claims / filing date preliminary amendment lacking written description or enablement?  “Contained” in the application  Presumably converts application to AIA – Cannot fix by canceling or amending claim© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 45
  46. 46. Identification of Transition Applications  Applications that fall under AIA and claim priority to a pre- AIA application must be identified as such  Revised ADS will include check box – No need to identify which claims are at issue  Must file within the later of – 4 months from filing / national stage entry – 16 months from filing date of the pre-AIA application – The date a claim with an effective filing date on or after March 16, 2013 is added to the application© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 46
  47. 47. Selecting a Mixed Examination Regime  A claim wholly supported by a pre-AIA application and a claim not supported by pre-AIA application  “At any time” in priority chain rule applies – Easy to get into mixed regime, can never leave while maintaining priority claim March 16, 2013 Claim A Claim A Claim A Claim A Disclose B Claim B Disclose B© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 47
  48. 48. Selecting a Pre-AIA Examination Regime  All claims must be supported by a pre-AIA application  No priority application can be under AIA regime – This includes a parent application that “flips” to AIA after child application is filed March 16, 2013 Claim A Claim A Claim A Disclose A Disclose B Disclose B Disclose B© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 48
  49. 49. Selecting a Pre-AIA Examination Regime  All claims must be supported by a pre-AIA application  No priority application can be under AIA regime – This includes a parent application that “flips” to AIA after child application is filed March 16, 2013 Claim A Claim A Claim A Disclose A Claim B Disclose B Disclose B© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 49
  50. 50. Selecting a Pre-AIA Examination Regime  Keep a pre-AIA line pending, with prosecution “branches” to avoid mixed examination regime March 16, 2013 Claim A Claim A Claim A Disclose A Disclose B Disclose B Disclose B Disclose A Claim A Claim B Claim B© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 50
  51. 51. Selecting a Pre-AIA Examination Regime  Or file separate pre-AIA and mixed applications to avoid inadvertently entering mixed regime March 16, 2013 Disclose A Claim A Claim A Claim A’ Claim A Disclose A Claim B Claim B© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 51
  52. 52. Selecting a Pure AIA Examination Regime  No claim wholly supported by a pre-AIA application – Presence of claim wholly supported by pre-AIA application results in mixed examination regime – “At any time” rule applies, will “flip” family March 16, 2013 Disclose A Disclose A Claim A Disclose A Claim B Claim B Disclose B© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 52
  53. 53. Selecting a Pure AIA Examination Regime  No claim wholly supported by a pre-AIA application – Presence of claim wholly supported by pre-AIA application results in mixed examination regime – “At any time” rule applies, will “flip” family March 16, 2013 Claim A Disclose A Claim A Disclose A Claim B Claim B Disclose B© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 53
  54. 54. What to do before March 16, 2013  If you want pure AIA regime – If so, patent family with no pre-AIA claims is required – Can let March 16 date pass  If you want mixed AIA regime – Application with pre- and post-AIA claims gets mixed – Can let March 16 date pass© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 54
  55. 55. What to do before March 16, 2013  If you want pre-AIA regime – Option #1: file non-provisional prior to March 16  Avoid §112 rejection “flip” of original claim – Option #2: file provisional prior to March 16  #2(a): file non-provisional carbon copy at 1-year – Protects against claiming post-March 16 matter  #2(b): file non-provisional with post-March 16 matter at 1-year – Allows for pre-AIA and mixed family lines© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 55
  56. 56. Keeping All Options Open Strategy March 16, 2013 1-Year Date App. #1 App. #2 Claim A AND / OR Claim A Claim A App. #3 Disclose A Disclose A Disclose A Disclose A Disclose B Claim B Claim B Claim A Disclose A Disclose B Claim B© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 56
  57. 57. California CLE Credit  For CLE Credit, we have your bar number if you entered it during registration.  If you did not enter it you bar number, please send an email to sheenika.shah@knobbe.com.  If you watched the webinar in a group, please send your name and bar number to sheenika.shah@knobbe.com.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 57
  58. 58. Disclaimer  This presentation and our discussion constitute an educational and informational presentation of the AIA and should not be construed as individualized legal advice or representation.  The presentation of these materials does not establish an attorney-client relationship. Representation can be initiated only upon completion of our standard new client/new matter process, including completion of a conflicts check, execution of an engagement agreement and payment of any applicable retainer.  Any discussions are based solely upon non-confidential information you may provide. It is our understanding that you will not provide us with any confidential information and will not do so until representation is initiated.© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 58
  59. 59.  mike.fuller@knobbe.com  kerry.taylor@knobbe.com Thank You!  ryan.melnick@knobbe.com  brenden.gingrich@knobbe.com© 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 59

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