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William Boshnick Greenblum & Bernstein, P.L.C.

AIA Prior art under U.S.C. §102 (a) AIA Prior art exception under U.S.C. §102(b)(1)(B) & §102(b)(2)(B ) and Practice Tips. William Boshnick Greenblum & Bernstein, P.L.C.

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William Boshnick Greenblum & Bernstein, P.L.C.

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  1. AIA Prior art under U.S.C. §102 (a)AIA Prior art exception under U.S.C. §102(b)(1)(B) & §102(b)(2)(B) and Practice Tips William Boshnick Greenblum & Bernstein, P.L.C. Special thanks to the United States Patent and Trademark Office for providing much of the subject matter of this presentation

  2. AIA Impact on pre-AIA 35 U.S.C. §102

  3. AIA Statutory Framework

  4. 35 U.S.C. 102(a)(1): Prior Public Disclosures as Prior Art • 35 U.S.C. 102(a)(1) precludes a patent if a claimed invention was, before the effective filing date of the claimed invention: • patented; • described in a printed publication; • in public use; • on sale; or • otherwise available to the public • No requirement of “by others” • USPTO’s Examination Guidelines have not defined “disclosure” apart from 35 U.S.C. § 102(a)

  5. “In Public Use” or “On Sale” • Does not include pre-AIA geographic limitation • The scope of prior art is now global • Use or sale may occur anywhere in the world • PTO’s Examination Guidelines: AIA does not include pre-AIA treatment of secret sale as prior art- sale activity must have been available to the public • In litigation, a court could take the opposite view

  6. “Otherwise Available to the Public” • The above phrase was introduced by the AIA; no corresponding language in pre-AIA 35 U.S.C. 102 • Catch-all to account for other means of making an invention publicly available. Examples from the USPTO’s Examination Guidelines include: • A printed thesis in a university library; • A poster displayed at a scientific meeting; • Material electronically posted on the internet; or • A commercial transaction that does not constitute a sale under the Uniform Commercial Code (UCC).

  7. United States Patent and Trademark Office’s Examination Guidelines • "otherwise available to the public" in AIA Section 102(a)(1) generally means that all types of 102(a)(1) prior art-including public uses and prior sales-must be available to the public in order to qualify as prior art. The USPTO indicated that this rule should simplify patent examination, because the patentability focus will be on whether the prior art was publicly available and not on what "category" the prior art falls into. The USPTO's interpretation appears to disqualify certain types of disclosure and sale activity as prior art if not reasonably available to the public. This view will likely be addressed by the courts in future litigation.

  8. Two Exceptions to 35 U.S.C. 102(a)(1)Prior Art In brief– • 102(b)(1)(A): A grace period disclosure of the inventor’s own work is not prior art to the inventor • 102(b)(1)(B): A disclosure of the inventor’s own work shields the inventor from the prior art effect of a third party’s subsequent grace period disclosure Note that the 102(b)(1) exceptions pertain to the 102(a)(1) disclosures, which may be prior art as of the date they are publicly available

  9. 35 U.S.C. 102(b)(1)(A) Exception: Grace Period Disclosure of Inventor’s Work First exception: A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) if: the disclosure was made by: • the inventor or joint inventor; or • another who obtained the subject matter directly or indirectly from the inventor or joint inventor

  10. Example 1: Exception in 102(b)(1)(A) July 1, 2013 July 1, 2014 Taylor files patent application claiming X Taylor publishes X Inventor Taylor’s Grace Period • Taylor’s publication is not available as prior art against Taylor’s application because of the exception under 102(b)(1)(A) for a grace period disclosure by an inventor.

  11. Example 2: Exception in 102(b)(1)(A) Smith publishes X July 1, 2013 July 1, 2014 Taylor files patent application claiming X Inventor Taylor’s Grace Period • Smith’s publication would be prior art to Taylor under 102(a)(1) if it does not fall within any exception in 102(b)(1). • However, if Smith obtained subject matter X from Taylor, then it falls into the 102(b)(1)(A) exception as a grace period disclosure obtained from the inventor, and is not prior art to Taylor.

  12. 35 U.S.C. 102(b)(1)(B) Exception: Grace Period Intervening Disclosure by Third Party Second exception: A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) if: the subject matter disclosed was, before such disclosure, publicly disclosed by: • the inventor or joint inventor; or • another who obtained the subject matter directly or indirectly from the inventor or joint inventor

  13. “The Subject Matter” • According to the PTO’s Examination Guidelines, for the 35 U.S.C. 102(b)(1)(B) exception to apply: • the subject matter in the prior disclosure must be the same as that which is later publicly disclosed • the mode of prior disclosure by the inventor need not be the same as the mode of later disclosure by another • verbatim disclosures are not required • Expect litigation as to what kinds of disclosure are “the same”

  14. Example 3: Exception in 102(b)(1)(B) Smith publishes X July 1, 2013 July 1, 2014 Taylor publishes X Taylor files patent application claiming X Inventor Taylor’s Grace Period • Smith’s publication is not prior art because of the exception under 102(b)(1)(B) for a grace period intervening disclosure by a third party. • Taylor’s publication is not prior art because of the exception under 102(b)(1)(A) for a grace period disclosure by the inventor. • If Taylor’s disclosure had been before the grace period, it would be prior art against his own application. However, it would still render Smith inapplicable as prior art.

  15. Example 3’: Exception in 102(b)(1)(B) Smith publishes X’ July 1, 2013 July 1, 2014 Taylor publishes X Taylor files patent application claiming X Inventor Taylor’s Grace Period • Assuming X’ is a species of X, Smith’s publication of X’ may beprior art (under 102(a)(1)) to Taylor’s application because it is not “the subject matter” within the meaning of the exception under 102(b)(1)(B), according to the USPTO’s Examination Guidelines . • The USPTO’s Examination Guidelines clarified that if subject matter of the intervening disclosure is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, the exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening disclosure

  16. Example 4: Another Exception in 102(b)(1)(B) Smith publishes article disclosing X Smith files EPpatent application disclosing X Smith files US applicationclaiming X and priority to EP application April 1, 2014 March 31, 2015 March 1, 2014 Smith’s Grace Period • Pre-AIA: Smith’s US application would be barred under 35 U.S.C. § 102(b) in view of publication more than one year prior to the US application date. • Under AIA: Smith’s US application would not be barred because it would fall under the exception under 102(b)(1)(B): “effective filing date” is defined under 35 USC 100 to cover foreign priority.

  17. AIA Statutory Framework

  18. 35 U.S.C. 102(a)(2): U.S. and PCT Patent Documents Are Prior Art as of the Date They Are “Effectively Filed” 35 U.S.C. 102(a)(2) precludes a patent if a claimed invention was described in a: • U.S. Patent; • U.S. Patent Application Publication; or • PCT Application Publication designating the U.S. that names another inventorand was effectively filed before the effective filing date of the claimed invention

  19. 35 U.S.C. 102(d): Determining the Date that a U.S. or PCT Patent Document Is “Effectively Filed” • Date that a U.S. or PCT patent document being applied as a reference is effectively filed is the earlier of: • the actual filing date of the U.S. patent or published application; or • the filing date of the earliest application to which the U.S. patent or published application is entitled to claim a right of foreign priority or domestic benefit which describes the subject matter (regardless of whether filed in a foreign language) • In re Hilmer rule (which held that a U.S. application is not citable as of its foreign priority date) eliminated. • The date of a patent document used as a reference may be different depending on whether the application under examination is subject to AIA or pre-AIA law

  20. Three Exceptions to 35 U.S.C. 102(a)(2)Prior Art In brief– • 102(b)(2)(A): A disclosure of the inventor’s work in a U.S. patent document or PCT publication by another is not prior art to the inventor • 102(b)(2)(B): A disclosure of the inventor’s work shields the inventor from the prior art effect of a subsequent disclosure in a U.S. patent document or PCT publication • 102(b)(2)(C): A disclosure is not prior art to the inventor if it was commonly owned with the claimed invention not later than the inventor’s effective filing date Note that the 102(b)(2) exceptions pertain to the 102(a)(2) patent documents, which may be prior art as of the date that they are effectively filed. Grace period is not relevant.

  21. 35 U.S.C. 102(b)(2)(A) Exception: Disclosure Obtained from Inventor First exception:A disclosure in an application or patent shall not be prior art under 35 U.S.C. 102(a)(2) if: the disclosure was madeby another who obtained the subject matter directly or indirectly from the inventor or joint inventor

  22. Example 5: Exception in 102(b)(2)(A) Smith’s application publishes Smith files patent application disclosing X October 1, 2015 April 1, 2014 July 1, 2014 Taylor files patent application claiming X • Smith’s patent application publication is not prior art to Taylor if Smith obtained X from Inventor Taylor because of the exception under 102(b)(2)(A) for a disclosure obtained from the inventor

  23. 35 U.S.C. 102(b)(2)(B) Exception: Intervening Disclosure by Third Party Second exception:A disclosure in an application or patent shall not be prior art under 35 U.S.C. 102(a)(2) if: the subject matter disclosed was, before such subject matter was effectively filed, publicly disclosed by: • the inventor or joint inventor; or • another who obtained the subject matter directly or indirectly from the inventor or joint inventor

  24. Example 6: Exception in 102(b)(2)(B) Smith files patent application disclosing X Smith’s application publishes April 1, 2014 October 1, 2015 March 1, 2014 July 1, 2014 Taylor publishes subject matter X Taylor files patent application claiming X • Smith’s patent application publication is not prior art against Taylor’s application because of the exception under 102(b)(2)(B) for prior disclosure by an inventor.

  25. 35 U.S.C. 102(b)(2)(C) Exception: Commonly Owned Disclosure Third exception:A disclosure made in an application or patent shall not be prior art under 35 U.S.C. 102(a)(2) if: the subject matter and the claimed invention were commonly owned or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention Resembles pre-AIA 35 U.S.C. 103(c), but applies to both novelty and obviousness, whereas pre-AIA disqualified art only for obviousness

  26. Commonly Owned or Subject to Obligation of Assignment • Applicant can establish common ownership or obligation of assignment by making a clear and conspicuous statement • Corroborating evidence is not required

  27. Example 7: Exception in 102(b)(2)(C) Smith files patent application disclosing X Smith invents X and assigns to Company Z March 1, 2014 April 1, 2014 July 1, 2014 February 1, 2014 Taylor invents X and assigns to Company Z Taylor files patent application claiming X • Smith’s patent application publication is not prior art against Taylor because of the exception under 102(b)(2)(C) for a commonly owned disclosure. • There is no requirement that Smith’s and Taylor’s subject matter be the same in order for the common ownership exception to apply.

  28. Rule 1.130 Affidavits or Declarations • Revised rule 1.130 provides a mechanism for an applicant or patent owner to provide information relevant to certain prior art exceptions: • affidavit or declaration of attributionunder 1.130(a), to invoke the 102(b)(1)(A) or 102(b)(2)(A) exception • affidavit or declaration of prior public disclosure under 1.130(b), to invoke the 102(b)(1)(B) or 102(b)(2)(B) exception

  29. Rule 1.130(c): Affidavit or Declaration Not Available • An affidavit or declaration is not available to overcome a rejection if: • the rejection is based on a disclosure made more than one year before effective filing date of claimed invention • An affidavit or declaration under rule 1.130 may not available to overcome a rejection if: • the affidavit or declaration contends that the inventor named in prior art U.S. patent or U.S. patent application publication derived the claimed invention

  30. AIA Indicator in PAIR

  31. Practice Tip for Transitional Applications To avoid confusion and streamline the U.S. patent application process, prior to filing, please be sure to indicate to your U.S. practitioner whether the pre-AIA “old law” or the “new law” applies, as an example: • _____ [OLD LAW APPLIES] The present nonprovisional application will be filed on or after March 16, 2013 and claims priority to one or more applications filed on or before March 15, 2013. Applicant reasonably believes (on the basis of information already known to individuals identified in 37 C.F.R. § 1.56(c), i.e., the IDS-duty individuals) that the present application (and any earlier application to which this application claims priority) does not, and did not at any time, contain a claim having an effective filing date on or after March 16, 2013. • _____ [NEW LAW APPLIES] The present nonprovisional application will be filed on or after March 16, 2013 and claims priority to one or more applications filed on or before March 15, 2013. Nonetheless, Applicant believes the application (or an earlier U.S. application in the chain of priority) contains, or did contain at one time, a claim having an effective filing date on or after March 16, 2013.

  32. Practice Tip for Transitional Applications • FTF statement required when the nonprovisional application contains at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect. • Timing: 4 months from the date of entry into the national stage in an international application or 4 months from actual filing date, 16 months from the filing date of the prior-filed application, or the date that a 1st claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the application. • FTF statement NOT required when the nonprovisional application (1) discloses only subject matter also disclosed in the application filed prior to March 16, 2013; (2) claims only the benefit of the filing date of a foreign application filed on or after March 16, 2013; or (3) claims the benefit of a nonprovisional application in which such statement has already been made. • An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in §1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.

  33. Practice Tip for Transitional Applications • Filing a transitional foreign priority, divisional, continuation or C-I-P application containing a claim having an effective filing date on or after March 16, 2013 will result in the FTF “new law” being applied. • Filing a transitional foreign priority, divisional, continuation or C-I-P application with original claims, concurrently with a preliminary amendment containing a claim having an effective filing date on or after March 16, 2013 may also result in the FTF “new law” being applied.

  34. Practice Tip for Transitional Applications • In order to avoid inadvertent application of the FTF “new law” and if you must file claims which may contain new subject matter, consider filing a preliminary amendment containing such new matter after the filing date of the transitional application. • If you want the best of both systems, file two transitional applications: • A straight continuation with no new subject matter • A continuation with new subject matter and a claim to new subject matter.

  35. Practice Tip for Transitional Applications • Once a U.S. application is examined under the FTF “new law,” any application claiming priority to that application will also be subject to the FTF “new law.” • Once a claim to “new” subject matter is presented, applicant cannot cancel a claim to avoid FTF.

  36. Practice Tips going forward • Keep using Inventor Notebooks, which can be useful to evidence derivation, joint agreements, prior commercial use, inventorship. • File the patent application as soon as possible: • Reduce the amount of time that it takes to internally review invention disclosures to determine which to proceed with patenting. • Work with your U.S. attorney to establish firm dates to prepare and file patent applications. • File provisional patent applications if warranted to avoid first-filing by competitors.

  37. Practice Tips going forward • Regularly monitor the published applications, issued patents and other disclosures of competitors for their impact, e.g., for possible derivation proceedings for post-March 16, 2013 (in Court- must file within one year of first patent issued to derived claim; in PTO- within one year of earliest publication of derived claim, or interference proceedings for pre-March 16 cases (must file within 1 year of publication of claim).

  38. Thank You! Any questions? William S. Boshnick Greenblum & Bernstein, P.L.C. wboshnick@gbpatent.com http://www.gbpatent.com

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