Patent Prosecution under the AIA

Patent Prosecution under the AIA
Brad Pedersen
April 28, 2015
AIA patent scenarios.
Suggested AIA filing strategies.
U.S. Patent Litigation: a Patent Troll problem?
U.S. patents & lawsuits
Patent quality
The future of IP

© 2011-2015 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.
Patent Prosecution under the AIA
Brad Pedersen
April 28, 2015

September 4, 2014 3
AIA Patent Scenarios

ASSUMPTIONS FOR SCENARIO TIMELINES: This text box will explain the set of assumptions that apply to each
scenario in a given group of scenarios (e.g., Scenario 1A-D).
X
?
SCENARIOS: Each scenarios will include a setup of the fact pattern, as well as the assumptions
for the fact pattern on the first page. The second page will have the answer for the result of the
fact pattern under the AIA, as well as an indication in the header box of whether this result is the
same as, generally the same as, different from, or generally different from pre-AIA law.
LEGENDSFORTIMELINESCENARIOS
Inventor
Y Inventor
Scenario Question
Publication of a+b
US nonprovisional filing for
a+b
US provisional filing for a

LEGENDSFORTIMELINESCENARIOS
ANALYSIS: The analysis and answer for the result of the fact pattern under the AIA is explained
in this text box.

Practice Tip: A practice tip related to the scenario and the result is presented in this text box. Often, a quick take
away from the practice tip is presented at the end of the practice tip in bold, for example: Always file first!
Claim Issued
 Claim Not Issued
US nonprovisional patent
for a+b
US nonprovisional patent
for claims to a and a+b

SCENARIO 1A: Inventor X files a patent application for invention a+b before X publishes or
otherwise makes a publicly available disclosure of a+b.
ASSUMPTIONS FOR SCENARIO 1 TIMELINES: For all Scenario 1 examples, it is assumed that: (i) invention a+b is
patentable over any other prior art, (ii) Inventor X independently conceived invention a+b, (iii) each patent
application fully describes and enabled the claimed invention a+b, (iv) no patent application is published before the
filing of another patent application, (v) all patent applications are filed under the AIA only (i.e., no “AIA transition”
scenarios with patent applications filed on both sides of March 16, 2013).
XFILESBEFOREPUBLISHINGa+b
SCENARIO1A
X ?

ANALYSIS FOR SCENARIO 1A: Inventor X is entitled to a patent. Under the AIA, X‘s publication is
not (a)(1) prior art to X’s application because X’s publication is after the effective filing date of
X’s application.
Practice Tip 14.1A: Proactive filing of a patent application before any public disclosure by the inventor of any kind is
the best way to ensure an effective filing date under AIA Section 100(f) that preserve an inventor’s chances for
obtaining patent protection. Always file first!
SAMERESULTASPRE-AIA
ANALYSISFORSCENARIO1A
X

−−−−−− 1 Year −−−−−
XPUBLISHESBEFOREYFILES
SCENARIO1C
SCENARIO 1B: Inventor X files a patent application for invention a+b more than 1 year after X
publishes or otherwise makes a publicly available disclosure of a+b.
XFILES>1YEARAFTERPUBLISHINGa+b
SCENARIO1B
X ?

ANALYSIS FOR SCENARIO 1B: Inventor X is not entitled to a patent. Under the AIA, X‘s
publication is (a)(1) prior art to X’s application, and because X’s publication is more than 1 year
before the effective filing date of X’s application, X’s publication is does not qualify under the
sub(A) exception.
SAMERESULTASPRE-AIA
ANALYSISFORSCENARIO1B
Practice Tip 14.1B: Like pre-AIA Section 102(b), the sub(A) grace period does not exempt even the inventor’s own
work that is publicly disclosed more than 1 year before the effective filing date of a patent application: Like pre-AIA
Patent Law, Nothing in the AIA Exempts Inventor’s Works That Are Publicly Disclosed More Than 1-year Before
an Effective Filing Date.

−−−−−− 1 Year −−−−−
X

−−−−− −−− 1 Year −−−−−−
SCENARIO1C
SCENARIO 1C: Inventor X files a patent application for invention a+b less than 1 year after X
publishes or otherwise makes a publicly available disclosure of a+b.
XFILES<1YEARAFTERPUBLISHINGa+b
SCENARIO1C
X ?

ANALYSIS FOR SCENARIO 1C: Inventor X is entitled to a patent. Under the AIA, X‘s publication
is (a)(1) prior art to X’s application, but because X’s publication is less than 1 year before the
effective filing date of X’s application, X’s publication is exempted as prior art under the sub(A)
exception.
SAMERESULTASPRE-AIA
ANALYSISFORSCENARIO1C

Practice Tip 14.1C: The sub(A) grace period for public disclosures by/for/from the inventor(s) is a fixed 1-year
period, similar to the 1-year period of pre-AIA Section 102(b). The fixed nature of the sub(A) grace period and the
absence of any triggering disclosure that must be analyzed mean that: If a Grace Period Must Be Used, the Sub(A)
Exception is the Better One.
−−−−− −−− 1 Year −−−−−−
X

−−−−− −−− 1 Year −−−−−−
SCENARIO1C
SCENARIO 1D: Inventor X files a patent application for invention a+b less than 1 year after X
publishes or otherwise makes a publicly available disclosure of a+b’, where b’ is not the same as
b, but is a patentably indistinct variation of b.
XFiles<1YearAfterPublishinga+b’
SCENARIO1D
X ?

ANALYSIS FOR SCENARIO 1D: Inventor X is entitled to a patent. Under the AIA, X‘s publication
is (a)(1) prior art, but because X’s publication is less than 1 year before the effective filing date of
X’s application, X’s publication is exempted as prior art under the sub(A) exception. Unlike the
sub(B) exception, whether the disclosure is or is not the same as the claimed invention is
irrelevant to whether the sub(A) exception can be utilized.
SAMERESULTASPRE-AIA
ANALYSISFORSCENARIO1D

Practice Tip 14.1D: The sub(A) exception for public disclosures by/for/from the inventor(s) is not concerned with
“what” was disclosed, only with “who” originated the disclosure and “when” it occurred. If the disclosure was
by/for/from the inventor(s), then the sub(A) exception applies: If a Grace Period Must Be Used, the Sub(A)
Exception is the Better One.
−−−−− −−− 1 Year −−−−−−
X

SCENARIO 2A: Inventor X conceives and files a patent application for invention a+b before
Inventor Y independently conceives and publishes invention a+b.
patentable over any other prior art, (ii) Inventors X and Y each independently conceived invention a+b, (iii) each
patent application fully describes and enabled the claimed invention a+b, (iv) no patent application is published
before the filing of another patent application, (v) all patent applications are filed under the AIA only (i.e., no “AIA
transition” scenarios with patent applications filed on both sides of March 16, 2013).
XCONCEIVESANDFILESBEFOREYPUBLISHES
SCENARIO2A
?X
Y

ANALYSIS FOR SCENARIO 2A: Inventor X is entitled to a patent, but not Inventor Y. There is no
change from pre-AIA. Under the AIA, Y‘s publication is not (a)(1) prior art to X’s application.
Because X filed prior to conception by Y, swearing behind under pre-AIA is not relevant when
comparing AIA and pre-AIA outcomes.
Practice Tip 14.2A: Proactive filing of a patent application is also the best way to ensure an effective filing date
under AIA Section 100(f) that is before other inventors, whether the other inventors publish or file for a patent
application. Always file first!
SAMERESULTASPRE-AIA
X
Y

SCENARIO 2B: Inventor X conceives and files a patent application for invention a+b after
Inventor Y independently publishes invention a+b.
XCONCEIVESANDFILESAFTERYPUBLISHES
SCENARIO2B
X ?
Y

ANALYSIS FOR SCENARIO 2B: Inventor X is not entitled to a patent. There is no change from
pre-AIA. Under the AIA, Inventor Y‘s publication is (a)(1) prior art to X’s application. Because X
conceived after Y, swearing behind under pre-AIA is not relevant when comparing AIA and pre-
AIA outcomes as Y’s is pre-AIA Section 102(a) prior art as prior invention by another.
Practice Tip 14.2B: First-Inventor-To-File under the AIA does not mean that an earlier inventor who does not file,
but publishes instead, is not prior art. Just like the pre-AIA, an earlier inventor who publishes or files first destroys
patentably for a later inventor.
SAMERESULTASPRE-AIA
X
Y


SCENARIO 2C: Inventor X conceives first, but files a patent application for invention a+b after
Inventor Y independently conceives and then publishes invention a+b.
XISBEFOREYBUTFILESAFTERYPUBLISHES
SCENARIO2C
X ?
Y

ANALYSIS FOR SCENARIO 2C: Inventor X is not entitled to a patent. Inventor Y’s publication is
(a)(1) prior art, and X can no longer submit an affidavit under 37 CFR §1.131 to swear behind
Y’s prior filed patent application. Under pre-AIA, X may or may not swear behind depending
upon whether X can prove conception together with diligence and/or actual reduction to
practice from Y’s conception to X’s filing date.
Practice Tip 14.2C: Swearing behind under pre-AIA law is no longer an option to remove “intervening” art between
conception and filing of a patent application fully enabling and describing a claimed invention. There is no more
option to swear behind!
DIFFERENTRESULTFROMPRE-AIA
X
Y

−−−−−−−−−−−− 1 Year −−−
SCENARIO 2D: Inventor X conceives of invention a+b before Inventor Y, but Y publishes before X
publishes and both publications are not more than 1 year before X files a patent application for
a+b.
XANDYBOTHPUBLISH,BUTYPUBLISHESFIRST
SCENARIO2D
?
Y
X

ANALYSIS FOR SCENARIO 2D: Inventor X is not entitled to a patent. Although X files less than 1
year after X’s own publication and also Y’s public disclosure, the FTP grace period sub(B)
exception for non-inventor originated works only begins as of X’s own publication. So unlike
pre-AIA where Y’s publication is not pre-AIA 102(b) prior art, Y’s publication is (a)(1) prior art to
X’s filing and X cannot swear behind Y’s publication as if it were pre-AIA 102(a) art.
Practice Tip 14.2D: The FTP grace period for the sub(B) exception does not provide a fixed 1-year grace period as it
is only triggered by a publication of the claimed subject matter by/for/from the inventor(s). So, under the AIA, third
party prior art that is less than 1 year before the filing date but before the date of the triggering publication cannot
be exempted by the FTP grace period.
DIFFERENTRESULTASPRE-AIA

−−−−−−−−−−−− 1 Year −−−
Y
X
FTP Grace
Period

−−−−−−−−−−−− 1 Year −−−
SCENARIO 2E: Inventor X conceives of invention a+b before Inventor Y, but Y publishes before X
publishes and both publications are not more than 1 year before X files a patent application for
a+b.
XANDYBOTHPUBLISH,BUTXPUBLISHESFIRST
SCENARIO2E
?
Y
X

ANALYSIS FOR SCENARIO 2E: Inventor X is entitled to a patent. X files less than 1 year after X’s
own publication and the FTP grace period sub(B) exception for non-inventor originated works
begins as of X’s publication. So, Y’s publication is not (a)(1) prior art to X’s filing under the AIA
because the sub(B) exception applies. The key here is that X’s publication of a+b must be
effectively identical to Y’s publication of a+b.
Practice Tip 14.2E: Under the AIA, third party prior art that is less than 1 year before the filing date but after the
date of the triggering publication for the FTP grace period for the sub(B) exception may be exempted; however, the
Final Rules require that the subject matter disclosed (a+b) is effectively identical to the subject matter of the
intervening art of Y’s publication of a+b.
SAMERESULTASPRE-AIA
ANALYSISFORSCENARIO2E
FTP Grace Period
−−−−−−−−−−−− 1 Year −−−
Y
X 

SCENARIO 2F: Inventor X conceives and files a patent application for invention a+b before
Inventor Y conceives and files a patent application for invention a+b.
XCONCEIVESANDFILESBEFOREY
SCENARIO2F
X ?
Y ?

ANALYSIS FOR SCENARIO 2F: Inventor X is entitled to a patent, but Inventor Y is not. There is no
change from pre-AIA. Under the AIA, Y‘s patent application is not (a)(2) prior art to X’s
application, but X‘s patent application is (a)(2) prior art to Y’s application. Because X conceived
before Y, neither swearing behind nor interference under pre-AIA is relevant when comparing
AIA and pre-AIA outcomes.
Practice Tip 14.2F: Proactive filing of a patent application is also the best way to ensure an effective filing date
under AIA Section 100(f) that is before other inventors and may preserve an inventor’s chances for obtaining
patent protection. Always file first!
SAMERESULTASPRE-AIA
ANALYSISFORSCENARIO2F


X
Y

SCENARIO 2G: Inventor X conceives of invention a+b before Inventor Y independently conceives
of invention a+b. Y files a patent application for a+b before X files a patent application for a+b.
XCONCEIVESFIRSTBUTYFILESFIRST
SCENARIO2G
X ?
Y ?

ANALYSIS FOR SCENARIO 2G: Inventor Y is entitled to a patent, but Inventor X is not. Y’s patent
application is (a)(2) prior art, and X can no longer submit an affidavit under 37 CFR §1.131 to
swear behind Y’s prior filed patent application. Under pre-AIA, X may or may not swear behind
depending upon whether X can prove conception together with diligence and/or actual
reduction to practice prior to Y’s filing date. Under the AIA, X also can not win by interference as
interference is no longer available.
Practice Tip 14.2G: Swearing behind under pre-AIA law is no longer an option to remove “intervening” art between
conception and filing of a patent application fully enabling and describing a claimed invention. There is no swearing
behind under the AIA!
ANALYSISFORSCENARIO2G

X
Y

SCENARIO 2H: Inventor X conceives of invention a+b before Inventor Y independently conceives
of invention a+b. Y files a patent application for a+b on the same day that X files a patent
application for a+b.
XCONCEIVESFIRSTBUTXANDYFILE
ONSAMEDAY
SCENARIO2H
X ?
Y ?

ANALYSIS FOR SCENARIO 2H: Both Inventor X and Inventor Y are entitled to a patent. Neither
patent application is (a)(2) prior art to the other because each has the same effective filing date.
Unlike pre-AIA where X could provoke an interference or swear behind Y to be the only inventor
entitled to a patent, the AIA awards separate patents to each of A and B as long as there is no
derivation or common ownership obligation between the two.
Practice Tip 14.2H: Swearing behind and interference under pre-AIA law are no longer an option under the AIA to
break the “tie” when two inventors file on the same day. “Ties go to both inventors!”
ANALYSISFORSCENARIO2H

X
Y


−−−−−−−−−−−− 1 Year −−−
SCENARIO 2I: Inventor X conceives of invention a+b. Shortly thereafter, Inventor Y conceives of
the same invention and files a patent application for a+b. X makes a public disclosure of a+b
after Y’s filing. Both X’s public disclosure and Y’s patent application filing are within 1 year of the
date X files a patent application for a+b.
YFilesBeforeXPublishes,ButBothareLess
than1yearofX’sFiling
SCENARIO2I
?
Y ?
X

FTP Grace
Period
ANALYSIS FOR SCENARIO 2I: Inventor X is not entitled to a patent, but Inventor Y is entitled to a
patent. X’s publication of a+b is not (a)(1) prior art to Y under the sub(A) exception, because it is
after Y’s filing. X’s publication of a+b also does not trigger the FTP grace period of the sub(B)
exception to exempt Inventor Y’s filing, which is (a)(2) prior art to X. Under pre-AIA, either X or Y
might be able swear behind, or prevail in an interference, depending on proof of reduction to
practice and diligence.
Practice Tip 14.2I: The duration for on any First-To-Publish (FTP) grace period is not a fixed 1-year period and does
not extend backward before the date of the FTP triggering publication – “There is no Fixed Grace Period for 3rd
Party Intervening Art under the AIA”
MOSTLYDIFFERENTRESULTFROMPRE-AIA
ANALYSISFORSCENARIO2I


−−−−−−−−−−−− 1 Year −−−
Y
X

−−−−−−−−−−−− 1 Year −−−
SCENARIO 2J: Inventor X conceives of invention a+b, but is not sure if it will be marketable so X
publicly discloses a+b to see if it attracts any interest. Shortly thereafter, Inventor Y conceives of
the same invention and files a patent application for a+b. X has a positive response to the
disclosure, so within 1 year of the disclosure X files a patent application for a+b.
XPUBLISHESFIRSTBUTYFILESFIRST
SCENARIO2J
?
Y ?
X

FTP Grace Period
ANALYSIS FOR SCENARIO 2J: Inventor X is entitled to a patent, but Inventor Y is not. X’s
publication of a+b is exempt as prior art to X under the sub(A) exception. X’s publication of a+b
is (a)(1) prior art to Y; and it also triggers the FTP grace period to exempt Y’s patent filing as (a)(2)
prior art under the sub(B) exception. Under pre-AIA, either X or Y might be able swear behind,
or prevail in an interference, depending on proof of reduction to practice and diligence.
Practice Tip 14.2J: File a fully enabled and described patent application as quickly as practical after a publication
by/for/from the inventor (if the publication is not already more than 1 year old). Try to make the duration for
relying on any First-To-Publish grace period as short as possible (if the application was not filed first) – “The Shorter
the Grace Period, the Better!”
MOSTLYSAMERESULTASPRE-AIA
ANALYSISFORSCENARIO2J


−−−−−−−−−−−− 1 Year −−−
Y
X

−−−−−−−−−−−− 1 Year −
−−−−−−−−−−−− 1 Year −
SCENARIO 2K: Inventor X conceives of invention a+b before Inventor Y. X publishes a+b before Y
publishes and X files a patent application for a+b before Y files. Both patent applications are filed
less than 1 year after the earliest publication of a+b.
XANDYBOTHPUBLISH,BUTXPUBLISHESFIRST
SCENARIO2K
?
?Y
X

ANALYSIS FOR SCENARIO 2K: Inventor X is entitled to a patent, but Inventor Y is not. X’s
publication of a+b is exempt as prior art to X under the sub(A) exception, but is (a)(1) prior art to
Y. X’s publication also triggers the FTP grace period to exempt Y’s publication as (a)(1) prior art.
Under pre-AIA, either X or Y might be able swear behind, or prevail in an interference, depending
on proof of reduction to practice and diligence.
Practice Tip 14.2K: In dueling publishing and filings situations like this scenario, there actually are four separate
grace periods that need to be evaluated, two for each prior publication – the sub(A) exception for the inventor(s)
own patent filings, and the FTP grace period for the sub(B) exception as applied to the publications and filings by
the other inventor(s).
ANALYSISFORSCENARIO2K
−−−−−−−−−−−− 1 Year −
FTP Grace Period


−−−−−−−−−−−− 1 Year −
Y
X
FTP Grace Period

−−−−−−−−−−−−−−− 1 Year
−−−−−−−−−−−− 1 Year −
SCENARIO 2L: Inventor X conceives of invention a+b before Inventor Y. X publishes a+b before Y
publishes. But X files a patent application for a+b after Y files a patent application for a+b. Both
patent applications are filed less than 1 year after the earliest publication of a+b.
XANDYPUBLISH/FILE,BUTXPUBLISHESFIRST
SCENARIO2L
?
?Y
X

ANALYSIS FOR SCENARIO 2L: Inventor X is entitled to a patent, but Inventor Y is not. X’s
publication of a+b is exempt as prior art to X under the sub(A) exception, but is (a)(1) prior art to
Y. X’s publication also triggers the FTP grace period to exempt both Y’s publication as (a)(1) prior
art and Y’s patent filing as (a)(2) prior art under the sub(B) exceptions. Under pre-AIA, either X
or Y might be able swear behind, or prevail in an interference, depending on proof of reduction
to practice and diligence.
Practice Tip 14.2L: Waiting as long as shown in this scenario between publication and filing by Inventor X increases
the risks of needing to deal with potential intervening art. Here, Inventor X prevailed because the invention A+B
was essentially identical between X and Y, but in reality this scenario will be the exception, not the rule. – “The
Shorter the Grace Period, the Better!”
ANALYSISFORSCENARIO2L


−−−−−−−−−−−− 1 Year −
FTP Grace Period
−−−−−−−−−−−− 1 Year −
Y
X
FTP Grace
Period

−−−−−−−−−−−− 1 Year −
−−−−−−−−−−−− 1 Year −
SCENARIO 2M: Inventor X conceives of invention a+b and a+b’ but only publishes a+b’ before
Inventor Y conceives and publishes invention a+b. X files a patent application for a+b, which is
after Y’s publication but before Y files a patent application for a+b. Both patent applications are
filed less than 1 year after the earliest publication of a+b’ or a+b.
XPublishesa+b’andYPublishesa+b,
BothFilefora+b
SCENARIO2M
?
?Y
X

FTP Grace Period
ANALYSIS FOR SCENARIO 2M: Inventor X nor Inventor Y is entitled to a patent. X’s publication
of a+b’ is exempt as prior art to X under the sub(A) exception, but does not trigger the FTP grace
period under the sub(B) exception to exempt Y’s publication as (a)(1) prior art. So, X’s
publication is (a)(1) prior art to Y’s filing and vice versa. Under pre-AIA, either X or Y might be
able swear behind, or prevail in an interference, depending on proof of reduction to practice and
diligence.
Practice Tip 14.2M: While an inventor-originated publication that is different than a+b can be exempted under the
sub(A) exception, it may not provide an effective FTP Grace Period for third party publications or patent filings.
Here, X does not have a FTP Grace Period for a+b, and Y’s FTP Grace Period doesn’t cover X’s prior publication.
Don’t Rely on the Sub(B) Exception!
ANALYSISFORSCENARIO2M


Y
X

−−−−−−−−−−−− 1 Year −----
−−−−−−−−−−−− 1 Year −----
SCENARIO 2N: Inventor X conceives of invention a+b’ where b’ is a patentably indistinct version
of b. X publishes a+b’ before Inventor Y publishes invention a+b. X files a patent application for
a+b’ after Y’s publication but before Y files a patent application for a+b. Both patent applications
are filed less than 1 year after the earliest publication of a+b’ or a+b.
XPublishesandFilesa+b’,
YPublishesandFilesa+b
SCENARIO2N
?
?Y
X

ANALYSIS FOR SCENARIO 2N: Neither Inventor X nor Inventor Y is entitled to a patent. X’s
publication of a+b’ is exempt as prior art to X under the sub(A) exception, but does not trigger
the FTP grace period under the sub(B) exception to exempt Y’s publication as (a)(1) prior art. So,
X’s publication is (a)(1) prior art to Y’s filing, and Y’s publication is (a)(1) prior art to X’s filing.
Under pre-AIA, either X or Y might be able swear behind, or prevail in an interference.
Practice Tip 14.2N: The narrow scope of the FTP Grace Period for the sub(B) exception means that a triggering
publication may not provide an effective FTP Grace Period for the independent publications or patent filings of
others. Here, there are no relevant FTP Grace Periods that apply to the activity of the other inventor. Don’t Rely on
the Sub(B) Exception!
ANALYSISFORSCENARIO2N

−−−−−−−−−−−− 1 Year −
−−−−−−−−−−−− 1 Year −
Y
X


SCENARIO 2O: Inventor X conceives and files a patent application for invention a+b after
Inventor Y conceives and then file a patent application for invention a+b. Y decides to abandon
that application before it is published or patented (either by express abandonment or by failure
to respond. Abandonment could be even more than 18 months after the filing date in a
situation where a request for non-publication has been made).
YFILESFIRSTBUTTHENABANDONS
SCENARIO2O
X ?
Y

ANALYSIS FOR SCENARIO 2O: Inventor X is entitled to a patent. Inventor Y’s patent filing is not
(a)(2) prior art as it was never published or patented as required by the language of the statute.
This is one scenario where the inventor awarded the patent is neither the first to invent nor the
first to file.
Practice Tip 14.2O: U.S. patent application are effective (a)(2) prior art as of their priority date, only so long as the
application(s) are eventually published and/or patented. The subject matter of patent applications abandoned
before publication does not qualify as (a)(2) prior art.
SAMERESULTASPRE-AIA
ANALYSISFORSCENARIO2O
X
Y


AIA First Inventor to File + Grace (FTFG) Is Different
Comparison of One Filer Scenarios
Scenarios where only 1 party is seeking a patent
(based on hypothetical evaluation of weighted likelihood of 200 typical
fact patterns from “The Matrix” article at Cybaris IP Law Review)
See, http://web.wmitchell.edu/cybaris/wp-
content/uploads/2010/05/01.Pedersen.05-12-10-
vFINAL.WITHAPPENDIX.pdf
44

AIA First Inventor to File + Grace (FTFG) Is Different
Comparison of Two Filer Scenarios
Scenarios where both parties are seeking a patent
(based on hypothetical evaluation of weighted likelihood of 200 typical
fact patterns from “The Matrix” article at Cybaris IP Law Review)
See, http://web.wmitchell.edu/cybaris/wp-
content/uploads/2010/05/01.Pedersen.05-12-10-
vFINAL.WITHAPPENDIX.pdf
45

SCENARIO 3A: Inventor X conceives and files a provisional application for invention a before
conceiving of invention a+b. Inventor X files a nonprovisional application within 1 year that
asserts priority to the provisional filing and claims both a and a+b. Inventor Y conceives a+b after
X, but Y filed a nonprovisional application for a+b before X. (a and a+b are patentable over each
other).
ASSUMPTIONS FOR SCENARIO 3 TIMELINES: For all Scenario 3 examples, it is assumed that: (i) the claimed
inventions are patentable over any other prior art, (ii) Inventors X and Y each independently conceived each claimed
invention, (iii) each patent application fully describes and enabled only the claimed invention, (iv) no patent
application is published before the filing of another patent application, and (v) all patent applications are filed under
the AIA only (i.e., no “AIA transition” scenarios).
YFilesAfterX’sProvisionalFora+b,
ButBeforeX’snonprovisional
Applicationfora+b
SCENARIO3A
X ?
Y ?
1 year – prov.

ANALYSIS FOR SCENARIO 3A: Inventor X is entitled to a patent for a, but not a+b and Inventor Y
is entitled to a patent for a+b. Y’s patent filing is (a)(2) prior art to X’s claim for a+b, but not for a
because the “effective filing date” of a+b is the date of X’s nonprovisional filing, whereas the
effective filing date of a is the date of X’s provisional filing. Under pre-AIA, X might swear behind,
or prevail in an interference, depending on proof of reduction to practice and diligence.
Practice Tip 14.3A: Provisional patent applications that either do not describe or enable subject matter later
claimed in nonprovisional patent application do not establish an “effective filing date” that may be used to defeat
intervening art of a third party. Provisional Applications Are Not a Substitute for Swearing Behind If a Claimed
Invention Is Not Enabled or Described!


X
Y
1 year – prov.

SCENARIO 3B: Inventor X conceives and files a provisional application for invention a before
Inventor Y conceives inventions a and a+c. Inventor X then conceives of a+b and files a
nonprovisional application within 1 year that asserts priority to the provisional filing and claims
both a and a+b after Y filed a nonprovisional application for both a and a+c. (a, a+b and a+c are
patentable over each other).
YFilesForaanda+cAfterX’sProvisional
Fora,ButBeforeX’snonprovisionalfora+b
SCENARIO3B
?
?
X
Y
1 year – prov.

ANALYSIS FOR SCENARIO 3B: Inventor X is entitled to a patent for a and a+b and Inventor Y is
entitled to a patent for a+c. Y’s patent filing for a+c is (a)(2) prior art to X’s claim for a+b, but not
for a because the “effective filing date” of a+b is the date of X’s nonprovisional filing, whereas
the effective filing date for a is the date of X’s provisional filing.
Practice Tip 14.3B: Provisional patent applications that do not describe or enable subject matter that is later
claimed in nonprovisional patent application do not establish an “effective filing date” that may be used to defeat
intervening art of a third party. Provisional Applications Under the AIA Are Best Viewed As Only a Shield for Your
Own Work, Not a Sword Against Works of Others!
SAMERESULTASPRE-AIA


X
Y
1 year – prov.

SCENARIO 3D: Inventor X conceives and files a provisional application for invention a before
Inventor Y conceives invention a+b. X publishes a and then conceives of a+b. X files a
nonprovisional application within 1 year that claims that claim priority to the provisional filing. Y
files a nonprovisional application for a+b before X. (a and a+b are patentably indistinct from each
other).
YFilesAfterX’sProvisionalForaand
Publicationofa,ButBeforeX’s
nonprovisionalApplicationfora+b
SCENARIO3D
X ?
Y ?
1 year – prov.

ANALYSIS FOR SCENARIO 3D: Inventor X is entitled to a patent for a, but Inventor Y is entitled to
a patent for a+b. Y’s patent filing is (a)(2) prior art to X’s claim for a+b, but not for a because the
“effective filing date” for a+b is the date of X’s nonprovisional filing, but for a is the date of X’s
provisional filing. X’s publication of a does not create a sub(B) exception that impacts the prior
art status of Y’s filing of a+b.
Practice Tip 14.3D: Subsequent publication of a provisional, does not expand the scope of any grace periods
applicable to what is disclosed in the provisional. Publication of a Provisional Application By Itself Does Not Create
a Grace Period Having Any Broader Scope Than What Is Created by the Filing Date of the Provisional Application.
X
Y


1 year – prov.

SCENARIO 4A: Inventors X and Y each conceive of invention a+b. Y files a national application
outside the U.S. for a+b before X files a U.S. application for a+b. Within the 1 year period under
the Paris Convention, Y files a PCT application in English that designates the U.S. and claims
priority to the national application. Prior to the 30 month PCT deadline, Y files a PCT national
stage application in the U.S.
before the filing of another patent application, (v) no new matter is introduced by translation into an official
language, and (vi) all patent applications are filed under the AIA only (i.e., no “AIA transition” scenarios).
XFilesAfterY’sForeignPriority
(PCTinEnglish)
SCENARIO4A
?
?Y
X
In
English
1 year – Paris
Conv
18 months – PCT Chpt II

ANALYSIS FOR SCENARIO 4A: Inventor Y is entitled to a patent but Inventor X is not. Y’s national
application is (a)(2) prior art to X’s filing because of Y’s PCT filing designating the U.S. X’s U.S.
application is not (a)(2) prior art to Y’s U.S. application which is accorded an effective filing date
as of the date of Y’s national application, just as if would be under pre-AIA.
Practice Tip 14.4A: PCT applications provide the advantage to international applicants of backdating the effective
filing date to the national stage filing date to which priority is claimed, but only so long as the PCT Application
designates the United States. Always designate the United States in any PCT filing.
SAMERESULTASPRE-AIA

Y
X
In
English
1 year – Paris
Conv

SCENARIO 4C: Inventors X and Y each conceive of invention a+b. Y files a national application for
a+b before X files a U.S. application for a+b. Within the 1 year period under the Paris
Convention, Y files a PCT application that designates the U.S. and claims priority to the national
application, but the PCT is published in a PCT language other than English. Prior to the PCT
Chapter II deadline, Y files a PCT national stage application in the U.S. (which must be in English).
(PCTNotinEnglish)
SCENARIO4C
?
?Y
X
Not In
English
1 year – Paris
Conv

ANALYSIS FOR SCENARIO 4C: Inventor Y is entitled to a patent but not Inventor X. Y’s national
application is (a)(2) prior art to X’s filing because of Y’s PCT filing designating the U.S., even
though it is not published in English. This is different that the requirement under pre-AIA Section
102(e) that a PCT filing had to be in English. X’s US application is not (a)(2) prior art to Y’s U.S.
application because Y is accorded the effective filing date of Y’s national application.
Practice Tip 14.4C: PCT applications provide the advantage to international applicants of backdating the effective
filing date to the national stage filing date to which priority is claimed, but only so long as the PCT Application
designates the United States. Always designate the United States in any PCT filing, regardless of the language for
the PCT application.

Y
X
Not In
English
1 year – Paris
Conv

SCENARIO 4E: Inventors X and Y each conceive of invention a+b. Y files a national application in
a language other than English for a+b before X files a U.S. application for a+b. Within the 1 year
period under the Paris Convention, Y files a U.S. application for a+b that asserts priority to the
national application. Y’s national application is published at 18 months from the national
application priority date, but not in English.
(YFilesDirectinU.S.)
SCENARIO4E
?
?Y
X
Not In
English
Not In
English
1 year – Paris
Conv

ANALYSIS FOR SCENARIO 4E: Inventor Y is entitled to a U.S. patent, but not Inventor X. Y’s
national application for a+b is (a)(2) prior art to X’s filing because of Y’s national application is
ultimately published (regardless of whether in English or not). X’s patent application is not (a)(2)
prior art to Y’s U.S. application which is accorded an effective filing date as of Y’s national
application.
Practice Tip 14.4E: Foreign national applications are effective (a)(2) prior art as of their foreign priority date, so long
as the application is eventually published and/or patented. The Hillmer Doctrine is No Longer Viable under the
AIA.
ANALYSISFORSCENARIO4E

Y
X
Not In
English
Not In
English
1 year – Paris
Conv

SCENARIO 5A: Inventor X conceives and files a patent application for invention a+b before
Inventor Y conceives and files a patent application for invention a+c. Claim element a is
independently patentable by itself, and in combination with each of claim elements b and c.
XCONCEIVESANDFILESFORa+b
BEFOREYCONCEIVESANDFILESFORa+c
SCENARIO5A
?
?
X
Y

ANALYSIS FOR SCENARIO 5A: Inventor X is entitled to a patent for both a and a+b, and Inventor
Y is only entitled to a patent for a+c. There is no change from pre-AIA. Under the AIA, Y‘s
patent application is not (a)(2) prior art to X’s application, but X‘s application is (a)(2) prior art
to Y’s application. Because X conceived before Y, neither swearing behind nor interference is
relevant when comparing AIA and pre-AIA outcomes.
Practice Tip 14.5A: Proactive filing of a patent application is also the best way to ensure an effective filing date
under AIA Section 100(f) that is before other inventors and may preserve an inventor’s chances for obtaining
patent protection for different combinations of claim elements. Always file first!
SAMERESULTASPRE-AIA


X
Y

SCENARIO 5C: Inventor X conceives and files an application for invention a+b after Inventor Y
conceives and files an application for invention a+b’. (b’ is an obvious variation of b). Claim
element a is independently patentable by itself, and in combination with each of either claim
elements b or b’.
XConceivesa+bAfterYConceivesa+b’,
ButXFilesFirst
SCENARIO5C
?
?
X
Y

ANALYSIS FOR SCENARIO 5C: Inventor X is entitled to a patent for both a and a+b, and Inventor
Y is not entitled to a patent. X’s filing is (a)(2) prior art, and Y can no longer submit an affidavit
under 37 CFR §1.131 to swear behind X’s prior filed application. Under pre-AIA, Y may or may
not swear behind or successfully provoke an interference depending upon whether Y can prove
conception together with diligence and/or actual reduction to practice from X’s conception to Y’s
filing date.
Practice Tip 14.5C: Swearing behind or provoking an interference under pre-AIA law is no longer an option to
remove “intervening” art between conception and filing of a patent application fully enabling and describing a
claimed invention. Always file first!


X
Y

SCENARIO 5D: Inventor X conceives and files a patent application for inventions a+b and a+b1
after Inventor Y conceives and before Y files an application for inventions a+b and a+b2. (b1 and
b2 are species of the genus b). Claim element a is not independently patentable by itself, but is
only patentable in combinations with b, b1 or b2.
XCONCEIVESa+b1AFTERYCONCEIVESa+b2BUT
XFILESFIRST
SCENARIO5D
X ?
Y ?

ANALYSIS FOR SCENARIO 5D: Inventor X is entitled to a patent for a+b1, and Inventor Y may or
may not be entitled to a patent for a+b2. Likewise, a+b may or may not be awarded to X. The
results depend upon whether the disclosure of a single species is sufficient to support a claim to
a genus, or defeat a claim to a different species, and how the USPTO uses the “describes”
requirement in Section 102(d)(2) to apply X’s filing as (a)(2) prior art.
Practice Tip 14.5D: Swearing behind and interferences under pre-AIA law are no longer options to remove
“intervening” art, and for (a)(2) prior art, these patent filings do not have to be enabling, but are prior art under
Section 102(d)(2) for what the earliest application “that describes the subject matter.”

?
X
Y
?

Suggested AIA Filing Strategies
• Always File First!
– Treat the AIA as a First-To-File
patent system
• Avoid Using the FTP Grace
Period if at all possible
– Avoid publishing before patent
applications are filed
– Use quickly filed provisional
applications to limit exposure for
publication before filing
• Choose Quality over
Quantity
– AIA applications needs to be
well-researched and well-written
June 22, 2018 64

The Future of IP?
June 22, 2018
65

September 4, 2014 66
U.S. Patent Litigation: A Patent Troll Problem?

U.S. Patents and Lawsuits
September 4, 2014
67

U.S. Patents and Lawsuits: A Function of GDP

Exponential Technology/Information Growth

Patent Quality:
My Favorite Patent
70
“Dead Ringer” 1882 Patent:
 Insured you were not buried
alive
 Rope on chest that can be
pulled if you discover you
were buried alive!
 Note the Inventor –
Fearnaught

Patent Quality:
Not a New Problem
June 22, 201871
 “Dead Ringer” 1868 Patent:
 14 years earlier
 Not cited in prosecution of
1882 patent

Patent Quality:
Not a New Problem
June 22, 201872
Patent Quality:
 AIA Changes will increase patent quality
 PTO Pillars are a step in the right direction
 But PTO is still more focused on measuring
efficiency, rather than measuring quality
 Bottom Line:
 In the past, patents were our best approach for
encouraging dissemination of new ideas and insuring
that old ideas are not repeated
 In the future, the Expontential Increase of
Information/Technology will be the environmental
stressor that cause our current Patent System to
evolve

Do We Need IP in the Future?
• Why IP?
– English and Venetian royalty wanted to raise
taxes/bust trade unions
– US Constitution Article I, Section 8:
“To promote the Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the exclusive Right to
their respective Writings and Discoveries”
• Do we need IP to innovate?
– IP Does Not encourage innovation – humans are
already predisposed to innovate
– IP Does encourage investment in commercializing
innovation – “Adding the fuel of fire to the genius of
our innovation” Abraham Lincoln
– Until the Internet, IP also served to codify human
knowledge
September 4, 2014
73

Predictions for IP and Patents
• 3-5 Years – Computers will Improve the Patent System
– Current trend is toward harmonization – Global Dossier
– Common patent application forms – XML-based filings
– Automated search/translation of “prior art”
• 10-20+ Years – AI may Obsolete our current Patent System
– “Person of Ordinary Skill in the Art” (POSITA) will become an AI
– There won’t be anymore “unpredictable” arts
• You will be part of the Evolution of our Patent System

Thank You!
About Brad Pedersen
Brad Pedersen is a patent attorney with more than 30 years of experience in patent law, engineering, business
and entrepreneurship. He is a partner with Patterson Thuente Pedersen, P.A. and chair of the firm's patent
practice group. He concentrates his practice on post-grant review proceedings and patent prosecution
strategy, licensing and litigation.
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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