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First-to-file system: Implications of a significant change in the law

First-to-file system: Implications of a significant change in the law. Steven Wood, Esq. Licensing Associate Brookhaven National Laboratory March 27 th , 2012. Legal Disclaimer.

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First-to-file system: Implications of a significant change in the law

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  1. First-to-file system: Implications of a significant change in the law Steven Wood, Esq. Licensing Associate Brookhaven National Laboratory March 27th, 2012

  2. Legal Disclaimer Although I am technically a patent attorney, I work for Brookhaven National Laboratory in a commercialization and business development capacity, and as such am primarily interested in the potential business repercussions of the AIA Additionally, I am not authorized to speak on behalf of my employer and any and all opinions expressed in this presentation are solely my own

  3. America Invents Act § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART. – a person shall be entitled to a patent unless the claimed invention was – (1) patented, described in a printed publication, or in public use, on sale, or “otherwise available to the public” before effective filing date of claimed invention; or

  4. Current First to Invent (FI) vs. AIA First-Inventor to File (FF) FI - “on sale” and “public use” activities required by law to occur within the United States FF - “on sale” and “public use” no longer limited to the U.S. FI - law does not include the catch-all phrase “otherwise available to the public” FF - claimed invention is not novel if it was “otherwise available to the public” before effective filing date

  5. America Invents Act § 102(b) EXCEPTIONS – (1) disclosures made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under § 102(a)(1) if – (A) disclosure was made by a (joint) inventor or by another who (in)directly obtained from the (joint) inventor the subject matter disclosed (a “deriver”); or (B) subject matter disclosed was publicly disclosed by the (joint) inventor or a “deriver” before such disclosure

  6. America Invents Act § 102 (a) a person shall be entitled to a patent unless the claimed invention was – (2) described in a patent issued under section 151, or in an application for patent (deemed) published under § 122(b) which “names another inventor” and is effectively filed before effective filing date of claimed invention

  7. Current First to Invent (FI) vs. AIA First-Inventor to File (FF) FI - section 102(e) prior art “by another” FF - section 102(a)(2) prior art “names another inventor” - Broadening of the prior art?

  8. America Invents Act § 102(b) EXCEPTIONS – (2) disclosures shall not be prior art under subsection § 102(a)(2) if – the subject matter disclosed (A) was obtained (in)directly from the (joint) inventor; (B) was publicly disclosed by the (joint) inventor or a “deriver”, before such subject matter was effectively filed under subsection § 102(a)(2); or (C) “common ownership” of the subject matter disclosed and the claimed invention not later than the effective filing date of the claimed invention

  9. Current First to Invent (FI) vs. AIA First-Inventor to File (FF) FF - new § 102(c) – common ownership FF - new § 102(d) – defines date that “subject matter described” becomes “prior art” under § 102(a)(2) - § 102(b)(2) for exceptions FI - § 102(g) effectively makes the U.S. a first-to-invent patent system FF - FI §102(c), 102(d), and 102(g) are removed, and eliminating § 102(g) effectively makes the U.S. a first-to-file patent system

  10. America Invents Act § 103. Conditions for patentability; non-obvious subject matter the only substantive change in § 103 is that the prior art of new § 102 is incorporated in new § 103 and as such is now included in the determination of obviousness

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