What's Your Strategy? Prior Art. Art Exceptions. FITF "Scenarios". Comparisons. Transition Gap. FITF Rules. Scope of Patent Filing. Prosecution Under First Inventor to File with Grace (FTFG). Suggested FITF Strategies.

1. 1
First-Inventor-to-File (FITF)
What’s Your Strategy?
Brad Pedersen
September 21, 2012
Prior Art
Art Exceptions
FITF “Scenarios”
Comparisons
Transition Gap
FITF Rules
Scope of Patent Filing
Prosecution Under First Inventor to File with Grace (FTFG)
Suggested FITF Strategies

2. © 2012 Patterson Thuente Christensen 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.
Brad D. Pedersen
September 21, 2012

3. 3
Prior art exists under new 102(a) if a disclosure establishes that:
(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. . .”
or
(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 . . .”
3
A disclosure of the claimed invention was
publicly available before the effective filing
date.
The claimed invention was described in a later-
published U.S./U.S. PCT patent application or patent
of another inventor, effectively filed before the
inventor’s effective filing date.
§102(a)(1)
§102(a)(2)
Public
Availability
Anywhere in
World
Non-Public
“US” Patent
Filings That
Later Become
Public
New 102(a) defines 2 kinds of Prior Art:
Publicly Available (PA) Art + Patent Filing (PF) Art

4. 4 4
Prior PA art
have two
separate
“Exceptions.”
Prior-filed,
later-publish
PF art have
three
“Exceptions.”
New 102(b) defines Exceptions to Prior Art:
Publicly Available (PA) Art and Patent Filing (PF) Art
§102(b)(1)
exceptions
deal only
with
§102(a)(1)
prior art.
§102(b)(2)
exceptions
deal only
with
§102(a)(2)
prior art.

5. A disclosure under §102(a)(1) is excepted 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”
5
Exceptions for PA art
if less than 1-year before “effective filing date”
§102(b)(1)(A)
§102(b)(1)(B)
The disclosure represents the inventor’s
own work – Full Year grace period.
A subsequent disclosure by anyone else is
not prior art with respect to subject matter
in an inventor’s earlier public disclosure –
the First to Publish (FTP) grace period

6. 6
§102(b)(2)(B)
Exceptions for PF art
If earlier than “effective filing date”
An earlier patent filing under §102(a)(2) is excepted if:
(A) “the subject matter disclosed was obtained directly or
indirectly from the inventor or a joint inventor“ or
(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.”
6
The inventor’s co-workers and
research collaborators patent filings.
The inventor’s own work – Full year +
grace period.
Earlier patent filings of others to the
extent of inventor’s public disclosures
before such filings – FTP grace period.
§102(b)(2)(A)
§102(b)(2)(C)

7. 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
“Secret” Prior Art
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
7

8. 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
8

9. 9
Scenario 1.1: invents first and files first before
Party
Party
AIA RESULT: No change from current First To Invent (FTI)
wins
9
The FITF “Scenarios” under the AIA

10. 10
Scenario 1.2: invents first, but files first
Party
Party
AIA RESULT: Change from FTI – Old 102(a)/(g)
loses can no longer swear behind or win by
interference – now must “publish ahead” to
establish a First-To-Publish (FTP) Grace Period
10

11. 11
Scenario 1.3: invents first, files first, but establishes
FTP Grace period by publishing before files
Party
Party
A’s FTP Grace
AIA RESULT: No effective change – New 102(b)(2)(B)
wins FTP Grace period exempts filing even
though it is before filing
11
1 year max FTP Grace

12. 12
Summary 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
12

13. 13
Watch Out for the Transition
“Mind the Gap”
Pre-FTFG Transition
(Before 3/16/2013)
• First To Invent
• Ability to Swear Behind
• 1 Year Grace/Statutory Bar
• Team Exception
(at time of invention)
Post-FTFG Transition
(After 3/15/2013)
• First To File w/ Grace
• First To Publish Grace Period
(for 3rd Party NPL/Patent Filing)
• Full Year+ Grace Period
(for Work by/from Inventor)
• Expanded Team Exception
(at time of filing)
Avoid unintentionally bridging between FTI and FTFG
• For provisional-to-utility conversions
• For parent-to-child CIP applications
13

14. 14
The Proposed FITF Rules
Symmetry is a Good Thing
“Available to the
Public”
•PA Art under 102(a)(1)
beyond:
•Printed publication,
•In Public Use
•On Sale
“Publicly
Disclosed”
•FTP Grace under
102(b)(1/2)(B)
•By inventor
•For inventor
•From Inventor
Intersection of
102(a)(1) and
102(b)(1/2)(B):
• Equivalent
14
Thus, the Office is treating the term “disclosure” [as
used in 35 U.S.C. 102(b)] as a generic expression
intended to encompass the documents and
activities enumerated in 35 U.S.C. 102(a).
Fed. Reg. Vol. 77, No. 144, pp. 43763-74.

15. 15
The Proposed FITF Rules
Disclosure Requirements for Priority and Exceptions
15
• Applicant proactive approach of identifying:
– Earliest Priority and which law applies, AIA or
pre-AIA, to which claims
– Any FTP Grace Periods or Exceptions
– Evidentiary presumption advantages if this is
done within 4 months of filing
– Proposed Rules 1.55, 1.77, 1.78
• Presumptions/penalties on proving entitlement
are the right incentives to encourage early
identification and assertion of these issues

16. 16
The Proposed FITF Rules
Narrow vs. Broad Construction for 3rd Party FTP Grace
“Publicly
Disclosed”
Enabled
Meets
Section 112
Standards
Inherency
Express and
Implied
Disclosure
Obviousness
What POSITA
would know
Anticipation
Only Express
Disclosures
16
Even if the only differences
between the subject
matter in the prior art
disclosure that is relied
upon under 35 U.S.C.
102(a) and the subject
matter publicly disclosed
by the inventor before such
prior art disclosure are
mere insubstantial
changes, or only trivial or
obvious variations, the
exception under 35 U.S.C.
102(b)(1)(B) does not
apply.
Fed. Reg. Vol. 77, No. 144,
pp. 43767

17. 17
A’s FTP sub(B) Grace Period
Scenario 10.1: publishes A+B+C first, but files for A+B+C’ after
publicly discloses A+B+C’ where C’ is obvious/trivial variation
Party
Party
Under narrow construction, FTP sub (B) grace will
not remove disclosure with respect to C’
Different Result?:
“broad” FTP sub(B) grace
sub(B) doesn’t apply
“narrow” FTP sub(B) grace

18. 18 18
• Inventor’s Own disclosures under sub(A) treated
differently than 3rd party disclosures under sub(B)
• Guidelines create an entirely new standard
– “insubstantial change” or “trivial variation”
• Is sub(B) standard applied to disqualify all or only
a portion of the intervening art?
– Just the differences in intervening art “that is relied
upon” can disqualify the exception
• Can intervening art be used in obviousness
rejection as the motivation to combine?
The Proposed FITF Rules
Problems with Asymmetric “Narrow” Construction

19. 19 19
§ 102. Conditions for patentability; novelty.
(a) NOVELTY; PRIOR ART. – A person shall be entitled to a patent unless–
(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
(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.
(b) EXCEPTIONS. –
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION. – A [grace period public] 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 [grace period public] 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 [grace period public] disclosure, been publicly disclosed by the inventor or joint inventor or another who
obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS. – A [grace period patent filing] 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; or
(B) the subject matter disclosed had, before such [grace period patent filing] subject matter was effectively filed under subsection (a)(2) [as determined
pursuant to section (d)], been publicly disclosed by the inventor or 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.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS. – Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to
an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if
(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that
was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART. – For purposes of determining whether a patent or application is prior art to a claimed invention under subsection
(a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application –
(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing
date under section 120, 121 or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest of such application that describes the subject
matter.
Leahy-Smith America Invents Act, Pub. L. No. 112-29, §102(a)-(d), 125 Stat. 284, 285-86 (2011) (to be codified at 35 U.S.C. § 102(a)-(d)).
The Proposed FITF Rules
Interpreting “subject matter” and “disclosed”

20. Continuums of Invention
20
The Proposed FITF Rules
Interpreting “subject matter disclosed”
“Narrow” sub(B) FTP Grace “Broad” sub(B) FTP Grace

21. 21 21
• Broad standard of “obvious variations” better
matches general public expectation of ‘grace”
• Same standard for both FTP sub(A) and sub(B)
exceptions encourages early publication
• Examiners already know how to apply the
standard of “patentably distinct” to determine
whether exception applies
• Eliminates need for Applicants to police
derivation/variation issues in their publications
• Preserves Office resources by avoiding a deluge of
derivation declarations and petitions
The Proposed FITF Rules
Better Approach is a Symmetric Broad Construction

22. 22
Scope of Patent Filing Prior Art:
What Is “Described In” for 102(d) Prior Art Filing Date?
“Described
In”
Enabled
Meets
Section 112
Standards
Inherency
Express and
Implied
Disclosure
Obviousness
What POSITA
would know
Anticipation
Only Express
Disclosures
22

23. 23
Prosecution under FTFG:
23

24. 24
Prosecution under FTFG:
24

25. 25
Prosecution under FTFG:
25

26. 26
Scenario 1: and both file, but neither publishes
Scenario 2: publishes and files, but only publishes
Scenario 3: and both publish and file
Scenario 4: claims priority to OUS filings
Scenario 5: has non-published patent filing
Scenario 6: and have cases with varying disclosures
Scenario 7: derives from
Scenario 8: and are working together/sharing info
Scenario 9: and are bridging “the Gap”
Scenario 10:
Scenario 11:
Party Party
First Inventor to File w/ Grace (FTFG) -
Scenarios of How New 102 works under FITF

27. 27
Scenario 6.1a: invents X + Y and invents X +Z -
Y and Z are patentably distinct from X alone
Party
Party
AIA RESULT: No change from FTI
and
both win

28. 28
Scenario 6.1b: Same as 6.1a, except invents X + Z before
invents X + Y
Party
Party
AIA RESULT: Change from FTI – Old 102(a)/(g)
and But wins patent to X instead of , who wins
both win under FTI by swearing behind or interference

29. 29
Scenario 6.1c: Same as 6.1b, except Y’ Z’ are patentably
indistinct when added with X
Party
Party
Change from FTI for X – Old 102(a)/(g)
wins patent to X instead of , and filing
is now patent filing prior art to for X + Z’
AIA RESULT:
Only wins

30. 30
Scenario 6.1d: Same as 6.1b, but Y” Z” are distinct when
added with X, but indistinct from each other
Party
Party
Change from FTI – Old 102(a)/(g)
wins patent to X instead of , and cannot
swear behind filing for X + Y” for X + Z”
AIA RESULT:
Only wins

31. 31
Scenario 6.2a: files provisional with X and then utility with
X Y, files utility with X Z before utility
Party
Party
1 year conversion deadline
No change from FTI
If X + Y and X + Z patentable over X and each
other, prov. only defeats claim to X
and filing, while prior, does not defeat
AIA RESULT:
and
both win

32. 32
Scenario 6.2b: Same as 6.2a, except invents X + Y before
invents X + Z
Party
Party
1 year conversion deadline
No change from FTI
Same as 4.1a, invention date does not
change this example where Y and Z are
patentably distinct when added to X
AIA RESULT:
and
both win

33. 33
Scenario 6.3a: Same as 6.2a, but Y” Z” are distinct when
added with X, but indistinct from each other
Party
Party
1 year conversion deadline
No effective change
filing for X + Z” now defeats claim to
X + Y” instead of being unable to swear
behind earlier invention of X + Z”
AIA RESULT:
and
both win

34. 34
Scenario 6.3b: Same as 6.3a, except invents X + Y” before
invents X + Z”
Party
Party
1 year conversion deadline
Change from FTI – Old 102(a)/(g)
filing for X + Z” now defeats claim to
X + Y” instead of being unable to swear
behind earlier invention of X + Z”
AIA RESULT:
and
both win

35. 35 35
Scenario 6.4a: Same as 6.2a and 6.2b, except that
publishes X Y before files with X Z
AIA RESULT: No change from FTI
and Same result as 4.2a and 4.2b – FTP grace
both win period doesn’t change results
Party
Party
A’s FTP
1 year conversion deadline

36. 36
Scenario 6.4b: Same as 6.4a, except that publishes X, Y
and Z before files with X and Z
Party
Party 1 year conversion deadline
A’s FTP
Change from FTI – New 102(b)(1)(B)
wins patent to X+Z and X+Y instead of
because uses FTP grace period to trump
AIA RESULT:
Only wins

37. 37
Scenario 6.4c: Similar to 6.3a and 6.3b, except publishes
X Y” before files and files for X Y” Z”
Party
Party
A’s FTP
1 year conversion deadline
Change from FTI – New 102(b)(1)(B)
wins patent to X+Z” instead of
because uses FTP grace period to trump
AIA RESULT:
Only wins

38. 38
Scenario 7.1: invents first and files not more than 1 year
after , but derived invention X from
Party
18 mo publication 1 year grace
A’s Full Year+ Grace
No effective change – New 102(b)(2)(A)
“Anticipation-type” derivation will definitely
be protected under the AIA
AIA RESULT:
wins
Party

39. 39
Scenario 7.2: invents first and files not more than 1 year
after , but derived invention X from
Party
Party
18 mo publication 1 year grace
A’s Full Year+ Grace
Change – New 102(b)(2)(A)
“Obviousness-type” derivation will also
be protected under the AIA (based on Final Rules)
AIA RESULT:
wins

40. 40
Scenario 8.1: invents first and files after , but and
work for same company
Party
Party
Same Company
Change from FTI – New 102(b)(3)
filing for X + Y” is not prior art to claim both win
to X if and are at same company as of
filing date; compared to invention date for FTI
AIA RESULT:
and

41. 41
Scenario 8.2: invents first and files after , but and
are parties for CREATE Act joint development
Party Create Act JDA
AIA RESULT: Change from FTI – New 102(c)
and filing for X + Y” is not prior art to claim
both win to X if and are under JDA as of
filing date; compared to invention date for FTI
Party

42. 42
Scenario 8.3a: invents first and shares information
informally with before filing, does sharing
constitute “PA” prior art under 102(a)(1)?
Party
AIA RESULT: No Effective Change
should disclosure of X to in an “informal” context is not
still get patent prior art to because it falls under 102(b)(1)(A) exception
as inventor’s own work
Party

43. 43
Scenario 8.3b: invents X first and shares X informally
with before filing, but publishes X before
files within 1 year of publishing?
Party
AIA RESULT: No Effective Change
should disclosure of X to in an “informal” context is not
still get patent prior art to because it still falls under 102(b)(1)(A) exception
as indirectly attributable to inventor’s own work
Party

44. 44
Scenario 8.3c: invents first and shares X informally with B
before filing, but now conceives of Y and
publishes X and Y before files?
Party
AIA RESULT: Change – B’s publication of X and Y is PA art under 102(a)(1)
should get disclosure of X to in an “informal” context is not
X but not prior art and still falls under 102(b)(1)(A), but publication
X and Y of Y will be PA prior art under 102(a)(1)
Party

45. 45
Scenario 8.3d: Same as 8.3c, but and execute CREATE
JDA before files?
Party
AIA RESULT: Change – A’s publication of X and Y is not exempt
should get disclosure of X is not PA prior art under 102(b)(1)(A),
X but not but publication of Y will be PA prior art under 102(a)(1)
X and Y as the “team” exception of the JDA only applies to PF art
Party
Create Act JDA

46. 46
Party
Scenario 9.1: New Matter Added From Provisional to Utility
March 16, 2013
FTI
FTFG
+102(g)
AIA RESULT: Changeover from FTI to FTFG
can claims for X + Y are evaluated under FTI unless
Patent Both also includes claims to X + Y + Z, then both claims
are evaluated under FTFG + 102(g) - AIA Sec 3(n)

47. 47
Party
Scenario 9.2: New Matter Added After 3/16/13 but not claimed
March 16, 2013
Party
47
No Change because FTI applies
wins patent to X+Y governed by FTI and
can swear behind
AIA RESULT:
wins

48. 48
Scenario 10.1: 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 does 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

49. 49
Scenario 10.2: 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
March 16, 2013
Party

50. 50
Scenario 10.3: 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
March 16, 2013
Party

51. 51
Scenario 10.4: 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
March 16, 2013
Party
C’ is an obvious
variation of C

52. 52
Scenario 11.1: 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.
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
March 16, 2013
Party

53. 53
Scenario 11.2: 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
March 16, 2013
Party

54. 54
Scenario 11.3: 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)

55. 55
Scenario 11.4: 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

56. 56 56
• Always File First!!!
• Whether to Publish or Not to Publish
• Proactively using FTP Grace
• String Provisional Patent Filings
• How to improve your odds of getting
an “effective filing date”
• Bridging the Gap
• Whether and how to intentionally
cross-over the Ides of March cutover
Suggested FITF Strategies
Key Issues for Consideration

57. 57

58. 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 Christensen Pedersen, P.A., an intellectual property law firm in Minneapolis, Minnesota. Brad
concentrates his practice in the areas of high-technology, computer, software and medical device patent
prosecution strategy, licensing and litigation.
Brad is one of the more knowledgeable IP attorneys in the U.S. when it comes to the patent reform. 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.
A special thanks to Robert Armitage, Matt Rainey, Steve Kunin, Justin Woo, Christen Hansen, Tracy Dann,
and Michelle Arcand for their invaluable help on these materials.
Brad can be reached at pedersen@ptslaw.com or (612) 349.5774
About Patterson Thuente IP
Patterson Thuente Christensen 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.
58

59. 59
Scenario 2.1: invents first and files first before is
publicly available
Party
Party
No change from FTI
AIA RESULT:
wins

60. 60
Party
Scenario 2.2a: invents first, but files after has itself
been publicly available for more than 1 year
A’s Full Year Grace
No effective change – New 102(b)(1)(A)
public actions are outside Full Year Grace
period for actions by/for or derived from inventor
AIA RESULT:
wins

61. 61
Party
Scenario 2.2b: invents first, but files after has itself
been publicly available for less than 1 year
A’s Full Year Grace
No effective change – New 102(b)(1)(A)
public actions are inside Full Year Grace
period for actions by/for or derived from inventor
AIA RESULT:
wins

62. 62
Scenario 2.3: invents first, but files after has been
publicly available for more than 1 year
Party
Party 1 year
AIA RESULT: No change from FTI
loses

63. 63
Scenario 2.4a: invents first, but files after has been
publicly available for less than 1 year
Party
Party
1 year
AIA RESULT: Change from FTI - New 102(b)(1)(B)
loses 3rd party First To Publish (FTP) Grace period
only if makes invention publicly available

64. 64
Scenario 2.4b: invents first and publishes first, but files after
has been publicly available for less than 1 year
Party
Party
A’s FTP Grace
1 year
Change from FTI - New 102(b)(1)(B)
If is publicly available for less than 1 year and
before is publicly available – inside FTP Grace period
AIA RESULT:
wins

65. 65
Scenario 2.4c: invents first, but publishes and files after has
been publicly available for less than 1 year
Party
Party
1 year
A’s FTP
AIA RESULT: Change from FTI - New 102(b)(1)(B)
loses If is publicly available for less than 1 year but
after was publicly available – outside FTP grace period

66. 66
A’s FTP Grace
B’s FTP Grace
Scenario 3: invents first, publishes first and files before
files or is publicly available for less than 1 year
Party
Party
1 year
AIA RESULT: No effective change – New 102(b)(1)(B)
wins FTP Grace period (exempting public
activity) is before FTP Grace period

67. 67
Scenario 4.1a: files US application after claimed
priority in PCT/US case published in English
1 year Paris
Party
Party
18 mo nat’l stage
Filed as nat’l case
in any language
Filed as PCT/US
in English
No effective change – New 102(a)(2)
PCT filing designating the US is given the earlier effective
filing date (even if B doesn’t enter national stage in the US)
AIA RESULT:
wins

68. 68
Scenario 4.1b: files US application after priority in
PCT/US case published in any PCT language
1 year Paris
Party
Party
18 mo nat’l stage
Filed as PCT/US in
any PCT language
Filed as nat’l case
in any language
AIA RESULT: Change from FTI – New 102(a)(2)
loses PCT filing no longer has to be in English
(Current - Arabic, Chinese, English, French, German,
Japanese, Korean, Portuguese, Russian, and Spanish)

69. 69
Scenario 4.2a: files US application after priority date
but before is published as national case
Party
Party
18 mo publication
Published as
nat’l case
Filed as nat’l case
in any language
No effective change – New 102(a)(2)
patent publication alone other than by US
or PCT is not prior art to as of priority date
Doesn’t
matter if
patent
issues or
not
AIA RESULT:
wins

70. 70
Scenario 4.2b: Same as 4.2a, except invented first and
case is patented
Party
Party
18 mo publication
Published in
any language
Filed in any language Patented in
any language
No effective change – New 102(a)(1)
patent outside of US or PCT/US case is only prior
by US art to as of issue date – In re Ekenstam.
MPEP 2126.
AIA RESULT:
wins

71. 71
Scenario 5: invents first and files first, but case is
never published or issued
Party
Party
Request for non-publication or
non-converted provisional Abandoned
No effective change – New 102(a)(2)
patent application is not prior art because
it never publishes and is equivalent to
abandoned aspect of Old 102(g)
AIA RESULT:
wins