Topics covered in this month’s Patent Prosecution Group Luncheon include a discussion of the USPTO proposed rules for implementing the America Invents Act (AIA) with respect o the new first-to-file standard for applications, submissions to remove references based on common ownership or origination from inventor, and proposed post-AIA examination guidelines. The group also discussed newly available functionality in Google Patents, including a new “prior art finder” tool for automatically locating prior art references.

1. Prosecution Group Luncheon
Patents
August 2012

2. 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)

3. 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

4. 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

5. 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

6. Statements of Post-AIA Claims, Disclosure
In 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)

7. Statements of Post-AIA Claims, Disclosure
In 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

8. 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

9. 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)

10. 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

11. 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

12. Google’s Find Prior Art

13. Google’s Find Prior Art