Definition of prior art under the AIA & Final Rules. Disqualifying prior art under the AIA & Final Rules. Transition Cases.

1. The America Invents Act:
Final USPTO Rules for 35 U.S.C. § 102
Brad Pedersen, Robert Stoll, Timothy Bianchi
March 4, 2013
Definition of prior art under the AIA & Final Rules
Publicly Available Prior Art - §102(a)(1)
Metalizing Engineering removed
Patent Filing Prior Art - §102(a)(2)
Elimination of the Hilmer Doctrine
Disqualifying prior art under the AIA & Final Rules
Inventor’s own work - §102(b)(1/2)(A)
Public disclosure “exception” - 102(b)(1/2)(B)
Team exception - §102(b)(2)(C)
Transition Cases

2. Brad D. Pedersen – Patterson Thuente
Robert L. Stoll – Drinker Biddle
Timothy E. Bianchi – Schwegman Lundberg
March 4, 2013

3.  Definition of prior art under the AIA & Final Rules
◦ Publicly Available Prior Art - §102(a)(1)
 Metalizing Engineering removed
◦ Patent Filing Prior Art - §102(a)(2)
 Elimination of the Hilmer Doctrine
 Disqualifying prior art under the AIA & Final Rules
◦ Inventor’s own work - §102(b)(1/2)(A)
◦ Public disclosure “exception” - 102(b)(1/2)(B)
◦ Team exception - §102(b)(2)(C)
 Transition Cases
3

4. (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; . . . .
4

5.  “Otherwise available to the public”:
◦ a document electronically posted on the Internet;
◦ a commercial transaction that is not under a
confidentiality obligation;
◦ a poster display or other information
disseminated at a scientific meeting;
◦ subject matter in a laid-open application; or
◦ a granted National Institutes of Health proposal or
Small Business Innovation Research proposal.
5

6. 6
 MPEP 2128 provides guidance on what and when
the Office will consider material to be “publicly
available.”
o Citing all old case law about printed
publication, card catalogs, and date of receipt,
not mailing, of a technical journal
o Old law/rules about “oral only” disclosures not
being pre-AIA Section 102(b) art is now bad
advice under the AIA
o Office missed an opportunity to advise the
public about current Internet-based
technologies and important issues about the
relative cost of access

7. Long-held trade secrets
may be patented under
the AIA
So, Coca Cola recipes are
now eligible for patent
protection
 Final Rules interpret “otherwise available to the public” as
applying to all AIA Section 102(a)(1) bars such that the “on sale”
bar does not extend to secret processes are not AIA prior art
 Once an Examiner becomes aware of a potential public use,
applicant may be required to show how that use does not make
claimed process accessible to the public – so, look for “public
uses” on IDSs
 The key to public vs. non-public is whether there is an obligation
of confidentiality – so, expect increased usage of NDAs/CDAs
7

8. (a) NOVELTY; PRIOR ART.—A person shall be
entitled to a patent unless—
(2) the claimed invention was described in a
patent . . . or [US or WO published]
application[, which] names another inventor
and was effectively filed before the effective
filing date of the claimed invention.
8

9.  “Effectively filed” is the earliest of:
◦ The actual filing date of the prior art patent or
application; or
◦ The earliest priority date for the patent or
application that “describes the subject matter”
 See 35 U.S.C. § 102(d).
9

10. • Determined on a claim-by-claim basis.
 The EFD is the earliest of the actual filing date
or the priority date to which the patent or
application is entitled.
◦ 35 U.S.C. §100(i)(1)(A); 37 C.F.R. § 1.109.
◦ Each claim must comply with 35 U.S.C. § 112, first
paragraph. See New Railhead Mfg., L.L.C. v.
Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir.
2002).
10

11.  An application claiming priority to a foreign
national application filed under 35 U.S.C.
§119(a) is available as prior art under 35
U.S.C. §102(a)(2) as of its effective filing date.
 Effective date: Effectively Filed Dates of
foreign national stage or PCT cases
designating the US as AIA Patent Filing prior
art applies to all FITF applications where there
is at least one claim with an Effective Filing
Date after March 16, 2013.
11

12. Not “PA” Prior Art:
Offers for Sale and
“Secret” Prior Art –
Metalizing Engr. Is Gone!
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 to the public
Not “PF” Prior Art:
Abandoned Applications
Applications with secrecy orders*
Unconverted Provisional
Applications*
12

13. 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
13

14. Subsection New 102 Old 102 Notes on Changes
Publicly Available
Art
New 102(a)(1) Old 102(b) Changes definition based on “publicly available” approach,
Metalizing Engr. is gone as PA art cannot be secret
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
FTP Grace for
Publicly Available
Art
New
102(b)(1)
Old 102(b) Up to 1 year – by/for/from inventor’s own work full year –
Subpara (A), but for 3rd party works – Subpara (B) only after
triggered by ‘publicly disclosed’ FTP of identical subject
matter to intervening non-patent art
FTP Grace for
Patent Filing
Art
New
102(b)(2)
Old 102(a) Up to 1 year after publication – by/for/from inventor’s own
work full year – Subpara (A), but for 3rd party works –
Subpara (B) - only after triggered by FTP of identical subject
matter to intervening patent prior art
Joint Development New
102(b)(2)(C)
Old 103(c) Expands “team” exception to both New 102/New 103 but
only for Patent Filing Art
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
14

15. Non-Patent Prior Art §102(b)(1)(A):
 “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… 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”
Patent Prior Art §102(b)(2)(A):
 “A disclosure shall not be prior art to a claimed
invention under subsection (a)(2) if… the subject
matter disclosed was obtained directly or indirectly
from the inventor or a joint inventor”
15

16. Party
A’s FTP Grace
AIA RESULT: No effective change from old 102 – A still receives the patent
Party A invents first and publishes before filing for
an application within one year of publishing
16

17.  Sub(A) exceptions that remove the inventor’s own works as
prior art if the works are by/for/from the inventor(s) and if
the works have been publicly available for less than 1 year
before the Effective Filing Date will be the most utilized FTP
exception
 This is because the key to using Sub(A) FTP Grace Periods is
not “what” subject matter was disclosed; rather the key is
by/for/from “whom” was the disclosure made.
 Final Rules interpret 102(b) FTP Grace
periods primarily for situations
involving works by/for/from the
inventor(s) – the AIA Section
102(b)(1/2)(A) exceptions
 These Sub(A) exceptions are what
most closely parallel grace periods in
other countries (DE, JP, SK)
17

18. Party
A’s FTP Grace
AIA RESULT: Party A still receives the patent if declaration
proves Party B’s publication was by/for/from Party A
Party A invents first and publishes within one year
before filing for an application, Party B publishes a
derived work based on Party A’s publication
Party
18

19.  Office will not assert a prior work as a basis for a prior art rejection
if it apparent from the prior work that the work:
o (1) was less than 1 year from the Effective Filing Date,
o (2) names inventor(s) as authors, and
o (3) does not name authors not named as inventors
 “If, however, the application names fewer inventors than a
publication (e.g., the application names as inventors A and B, and
the publication names as authors A, B and C), it would not be
readily apparent from the work that it is by the inventor(s) and the
work would be treated as prior art under 102(a)(1)/(2).”
 “An affidavit or declaration under 37 CFR 1.130(a) or (b) need not
demonstrate that the disclosure by the inventor, a joint inventor, or
another who obtained the subject matter disclosed directly or
indirectly from the inventor(s) was an ‘‘enabling’’ disclosure of the
subject matter within the meaning of 35 U.S.C. 112(a).”
(All quotations from Fed. Reg., Vol. 78, No. 31,Thursday, February 14, 2013, p. 11058 )
Disqualifying Prior Art:
When to Use Rule130
19

20.  Rule 130 declarations:
◦ “Declaration of attribution”: Invention was made,
then “obtained” by the 3rd party.
 37 C.F.R. §1.130(a).
◦ “Declaration of prior public disclosure”: Inventor
disclosed the subject matter in a publication.
 Provide a copy of the printed publication or describe
the disclosure with “detail and particularity.”
 37 C.F.R. §1.130(b).
◦ Katz declarations are still applicable as evidence of
whether 3rd party dislcosure was by “another.”
20

21.  3rd party disclosure from the inventor:
◦ Hard to prove for Publicly Available Prior Art:
 “What is required, within one year prior to the [EFD], is
communication of the subject matter by the inventor
or a joint inventor prior to its disclosure by a non-
inventor.” Guidelines, at *43 (emphasis added).
◦ Requires Derivation for Patent Filing Prior Art:
 Standard for proving what is communicated for
derivation is not complete disclosure like current
derivation law in interferences under Gambro Lundia,
but is rather New England Braiding type derivation.
21

22. Publicly Available Prior Art §102(b)(1)(B):
 “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… 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”
Patent Filing Prior Art §102(b)(2)(B):
 “A disclosure shall not be prior art to a claimed invention under
subsection (a)(2) if… 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”
22

23. Party
A’s FTP Grace
AIA RESULT: Party A wins… maybe… but probably not…
Party A invents first and publishes within one year
before filing for an application, Party B independently
invents then files after Party A’s publication
Party
23

24. 24
Proposed
Rules
FTP
Narrow
Final Rules
FTP
Broad
not ipsissimis verbis
same, but not identical
no trivial
difference
“obvious”
variations

25.  These Sub(B) exceptions for intervening works of 3rd parties are
triggered under the Narrow Interpretation only when the subject
matter disclosed by/for/from the inventor(s) is “the same” as the
subject matter of the intervening work
 But under the Final Rules “the same” does not mean “the same”
where the subject matter disclosed may be (1) in a different form, (2)
not verbatim, or (3) more general than the subject matter disclosed
that was used to trigger the Sub(B) FTP exception
Disqualifying Prior Art:
Inconceivable for 3rd Party Works
 Final Rules confirm the Narrow Interpretation
of FTP Grace Period set out in the Proposed
Rules for situations involving independently
developed intervening works of 3rd parties
 These are the Section 102(b)(1/2)(B) FTP
exceptions that were the subject of
significant comments supporting a Broad
Interpretation
25

26.  “These examination guidelines maintain the identical subject matter
interpretation of [Sub(B) as set forth in the Proposed Rules]. However,
there is no requirement for [Sub(B)] that the mode of disclosure by the
inventor or a joint inventor (e.g., patenting, publication, public use, sale
activity) be the same as the mode of disclosure of the intervening grace
period disclosure.”
 “There is also no requirement that the disclosure by the inventor or a
joint inventor be a verbatim or ipsissimis verbis disclosure of the
intervening grace period disclosure.”
 “What is required for subject matter in an intervening grace period
disclosure to be excepted under [Sub(B)] is that the subject matter of
the disclosure to be disqualified as prior art must have been previously
publicly disclosed by the inventor or a joint inventor.”
(All quotations from Fed. Reg., Vol. 78, No. 31,Thursday, February 14, 2013, p. 11061 )
 The problem it that most of the examples given for supporting the
Narrow Interpretation are Sub(A) examples, not Sub(B) fact patterns.
Disqualifying Prior Art:
Inconceivable for Works of 3rd Parties
26

27.  “If subject matter of an intervening grace period disclosure is simply a
more general description of the subject matter previously publicly
disclosed by the inventor(s), [Sub(B)] applies.”
 “If the inventor(s) had publicly disclosed a species, and a subsequent
intervening grace period disclosure discloses a genus (i.e., provides a
more generic disclosure of the species), the intervening grace period
disclosure of the genus is not available as prior art under 102(a)(1).”
 “Conversely, if the inventor(s) had publicly disclosed a genus, and a
subsequent intervening grace period disclosure discloses a species, the
intervening grace period disclosure of the species would be available as
prior art under 102(a)(1).”
 “Likewise, if the inventor(s) had publicly disclosed a species, and a
subsequent intervening grace period disclosure discloses an alternative
species not also disclosed by the inventor(s), the intervening grace
period disclosure of the alternative species would be available as prior
art under 102(a)(1).”
(All quotations from Fed. Reg., Vol. 78, No. 31,Thursday, February 14, 2013, p. 11077)
Disqualifying Prior Art:
Examples of FTP Grace for 3rd Party Works
27

28. A’s FTP Grace
Party
Party
“Broad” Sub(B)
“Narrow” Sub(B)
Disqualifying Prior Art:
FTP Grace for 3rd Party Works
28

29. A’s FTP Grace
Party
Party
“Broad” Sub(B)
“Narrow” Sub(B)
29
Disqualifying Prior Art:
FTP Grace for 3rd Party Works

30. A’s FTP Grace
Party
Party
“Broad” Sub(B)
“Narrow” Sub(B)
30
Disqualifying Prior Art:
FTP Grace for 3rd Party Works

31. A’s FTP Grace
Party
Party
“Broad” Sub(B)
“Narrow” Sub(B)
31
Disqualifying Prior Art:
FTP Grace for 3rd Party Works

32. A’s FTP Grace
Party
Party
“Broad” Sub(B)
“Narrow” Sub(B)
32
Disqualifying Prior Art:
FTP Grace for 3rd Party Works

33.  The Narrow Interpretation of Sub(B) will also be applied to produce
“partial prior art.”
 “For example, the inventor or a joint inventor had publicly
disclosed elements A, B, and C, and a subsequent intervening
grace period disclosure discloses elements A, B, C, and D, then
only element D of the intervening grace period disclosure is
available as prior art under 102(a)(1).”
(Fed. Reg., Vol. 78, No. 31,Thursday, February 14, 2013, p. 11077)
 This kind of “partial prior art” is certain to lead to chaos in its
application as there is no guidance on whether just D itself, or the
idea of combining D with one or more of A, B, C, can be used from
this partially disabled intervening art reference.
Disqualifying Prior Art:
Partial Prior Art under §102(b)(1/2)(B)
33

34. Patent Filing Prior Art §102(B)(2)(C):
 “A disclosure shall not be prior art to a claimed
invention under subsection (a)(2) if… 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.”
 “Not later than the EFD”: As opposed to “on or before
the date the claimed invention was made.”
 Now can be used to disqualify anticipatory art.
◦ See 37 C.F.R. §§1.78(f); 1.104(c)(4).
34

35.  Effective Filing Date vs. the need to be first to file
should push provisional filings to be:
o A complete filing with full claim sets that have been
searched that is being filed to defer fees, especially in
situations with large numbers of claim sets,
o An “emergency recovery” filing of a document that has
already been publicly disclosed before any patent filing in
an attempt to protect as much possible rights against
intervening art of 3rd parties by trying to secure as early an
effective filing date as possible based solely on the
document that was publicly disclosed, or
o An evolving string provisional filings to cover experimental
results/improvements of alternative species (again to get as
early an effective filing date as possible against potential
intervening 3rd party prior art).
Suggested FITF Strategies
Effective Filing Date and Provisionals under the AIA
35

36. Pre-AIA
(Before 3/16/2013)
 First To Invent
 Ability to Swear Behind
 1 Year Grace/Statutory
Bar
 Limited Team Exception
(at time of invention)
AIA
(After 3/15/2013)
 First Inventor To File
 First To Publish (FTP)
Grace Periods for
Inventor Works
 Expanded Team
Exception (at time of
filing)
Avoid unintentionally bridging between
pre-AIA and AIA
 For provisional-to-utility conversions
 For parent-to-child CIP applications
36

37. > Determined on an application-by-application basis.
 35 U.S.C. 102 applies to any application and
to any patent issuing thereon that contains or
contained at any time—
◦ (A) a claim that has an EFD after March 16th,
◦ (B) claims priority to any patent or application that
contains or contained at any time such a claim.
 See 35 U.S.C. §102.
37

38. Proposed Rules Final Rules – 1.55 and 1.78
Statements for Cases Claiming
Priority Before March 16, 2013
o Required for any cases
where there was a change in
subject matter disclosed in
the application
o Had to be done on a claim-
by-claim basis
o Incentives for providing
statement within later of
4/16 months from
filing/priority
Statements for Cases Claiming Priority
Before March 16, 2013
o Only required if there are claims to new
subject matter and then only as to the
application, not claim-by-claim
o Statement not required if reasonably
believed that there is no claim to a
claimed invention having an effective
filing date after March 16, 2013.
o If so, then no investigation or analysis is
required, otherwise there will be a
checkbox on the ADS
o Continuing cases do not “contain a
claim” added by amendment if the claim
is rejected under Section 112 – i.e. Can’t
stumble into AIA applying to a pre-AIA
priority claim case
38

39.  There is no need to identify which or how
many claims have an effective filing date on
or after March 16, 2013.
 The statement must be made within 4
months of filing the utility application or 16
months from filing the prior foreign
application.
◦ 37 C.F.R. §§1.55(j); 1.78(a)(6).
 The statement must be in a separate paper
from the ADS.
◦ Communication at BCP Customer Partnership
meeting.
39

40.  Tip 1 – As a partial solution, some (e.g., Mary
Till, OPLA) have recommended not filing CIPs.
New claims supported by new subject matter
might best be filed in a stand-alone
application, if filed after March 16, 2013.
 Tip 2 – Understand the leading written
description cases, know which evidence can
be used to comply with the standard, and
work with the inventors to understand the
predictability in the art and to disclose as
much evidence for possession as possible.
40

41.  Interferences in a transition application―
when both laws apply:
◦ If a transition application contains a claim with an
EFD before March 16th, the old 35 U.S.C. 102(g),
135, and 291 still apply.
◦ Speculation on how this might work: In the priority
phase of an interference, determine whether at
least one claim has an EFD after March 16, 2013. If
so, apply §102 (AIA) in the patentability phase to
determine eligible prior art and disqualifi-cations.
Otherwise apply the old §102.
??? 41

42. Proposed Rules Final Rules – Rule 1.55 and 1.77
Certified Copy of Priority Case
o Must be filed in all foreign
priority cases by the later of
4 months from US filing or
16 months from foreign
priority date
o All foreign applications
having the same subject
matter must be identified in
the ADS
Certified Copy of Priority Case must
be filed later of 4/16 months unless
o Foreign case is originated from a
reciprocating patent office where
certified copy is accessible, or an
interim copy is filed that delays
filing until issue fee is paid
o Provision also made for belated
filing if there is a showing of good
and sufficient cause for the delay
o Foreign applications that are only
“related applications” should be
identified in specification, not ADS
o English translation required for (1)
derivation, (2) overcoming date of
reference, or (3) Examiner
requests
42

43. “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
Office is treating the term “disclosure” [as used in AIA Section 102(b)]
as a generic expression intended to encompass the documents and
activities enumerated in AIA Section 102(a).
Other Changes in the Rules:
Symmetry Between 102(a)(1) and 102(b)
43

44.  “Neither the AIA nor its legislative history expressly addresses whether
the experimental use exception applies to a public use under AIA
Section 102(a)(1), or to a use that makes the invention available to the
public under the residual clause of AIA Section 102(a)(1). Because this
doctrine arises infrequently before the Office, and is case-specific when
it does arise, the Office will approach this issue when it arises on the
facts presented.”
(Fed. Reg., Vol. 78, No. 31,Thursday, February 14, 2013, p. 11063)
44

45.  Always File First!!!
o Treat the AIA as a First to File System
 Avoid the FTP Grace of Sub(B)
o Use Emergency Recovery Provisional filings to preserve the best
rights for early publications
 Evolving String Provisional Filings
o One way to improve your odds of getting an “Effective Filing
Date”
 Bridging the Gap (March 16th 2013)
o Avoid unintentional additions of claimed subject matter in
provisional-utility and CIP cases across the gap
 Filing Before the Cutover
o File utility applications by March 15th, 2013 for any situations
where there are old 102(b) events that happened before cutover
Suggested FITF Strategies
Key Issues for Consideration
45

46. Sept 2011
AIA Enacted
Sept 2012
New Post
Issuance
Proceedings
March 2013
FITF Starts
March 2014
1st FITF
patents start
issuing
Sept 2015
Earliest
Possible
PTAB ruling
on a PGR
case
Sept 2016
1st District
Court Cases
Completed*
and
1st CAFC
Appeal on
PTAB-PGR
Sept 2017
1st Federal
Circuit
Rulings on
Litigated
Cases
46