Presentation Transcript

1. AIA First Inventor to File (FITF) HIGHLIGHTS FROM COMPREHENSIVE TRAINING FOR EXAMINERS
2. Potential Prior Art Is Identified in35 U.S.C. 102(a)(1) and 102(a)(2) Only two subsections of the AIA identify potential prior art: 102(a)(1) is for public disclosures that have a public availability date before the effective filing date of the claimed invention under examination. 102(a)(2) is for issued or published U.S. patent documents that are by anotherand that have an effectively filed date that is before the effective filing date of the claimed invention under examination.
3. Effective Filing Date under the AIA The availability of a disclosure as prior art under 102(a)(1) or 102(a)(2) depends upon the effective filing date of the claimed invention. Unlike pre-AIA law, the AIA provides that a foreign priority date can be the effective filing date of a claimed invention. The foreign priority date is the effective filing date of the claimed invention IF the foreign application supports the claimed invention under 112(a), AND the applicant has perfected the right of priority by providing: a certified copy of the priority application, and a translation of the priority application (if not in English).
4. Determining the Effective Filing Date (EFD) Requires a Claim-by-Claim Analysis Just as under pre-AIA law, determining the effective filing date of the claimed invention is a claim-by-claim analysis. Different claims in the same application may have different effective filing dates. Different claims in the same application may NOT be examined under AIA and pre-AIA law.
5. AIA Statutory Framework
6. AIA Statutory Framework
7. 35 U.S.C. 102(a)(1): Public Disclosure with Public Availability before the EFD of the Claimed Invention Prior Art 102(a)(1) date (the public availability date of the disclosure) effective filing date (EFD) of claimed invention 102(a)(1) potential prior art includes public disclosures that have a public availability date before the effective filing date of the claimed invention and are: patented; described in a printed publication; in public use; on sale; or otherwise available to the public.
8. AIA Statutory Framework
9. 102(b)(1)(A) Exceptionto Potential Prior Art under 35 U.S.C. 102(a)(1) For the 102(b)(1)(A) exception to apply to a public disclosure under 102(a)(1), the public disclosure must be: within the grace period and an "inventor-originated disclosure" (i.e., the subject matter in the public disclosure must be attributable to the inventor, one or more co-inventors, or another who obtained the subject matter directly or indirectly from the inventor or a co-inventor).
10. 102(b)(1)(A) Exception Applies to Inventor-Originated Disclosures Within the Grace Period Exception applies! May 1, 2015 EFD of claimed invention by Al, Bob, & Cy Al & Bob disclose subject matter in a journal article May 1, 2014 Exception applies! Bob discloses subject matter by offering it for sale to the public May 1, 2015 EFD of claimed invention by Al, Bob, & Cy May 1, 2014 Exception applies! Di discloses subject matter at a trade show after obtaining from Cy May 1, 2015 EFD of claimed invention by Al, Bob, & Cy May 1, 2014
11. 102(b)(1)(A) Exception DOES NOT Apply Exception DOEs NOT apply Al & Jo publish subject matter; no evidence explaining Jo's involvement May 1, 2015 EFD of claimed invention by Al, Bob, & Cy May 1, 2014 Exception DOEs NOT apply May 1, 2014 Di posts subject matter on public Web site and did not obtain it from Al, Bob, and/or Cy May 1, 2015 EFD of claimed invention by Al, Bob, & Cy Exception DOEs NOT apply Al, Bob, & Cy publish subject matter in journal article May 1, 2014 May 1, 2015 EFD of claimed invention by Al, Bob, & Cy
12. 102(b)(1)(B) Exceptionto Potential Prior Art under 35 U.S.C. 102(a)(1) For the 102(b)(1)(B) exception to apply to a third party's disclosure under 102(a)(1): the third party's disclosure must have been made during the grace period of the claimed invention, an inventor-originated disclosure (i.e. shielding disclosure) must have been made prior to the third party's disclosure, and both the third party's disclosure and the inventor-originated disclosure must have disclosed the same subject matter.
13. 102(b)(1)(B) Exception Applies to aThird Party Disclosure When a Prior Inventor-Originated Disclosure is Shown Exception applies! May 1, 2014 Bob discloses subject matter X Third party Ty discloses subject matter X May 1, 2015 EFD of claimed invention by Al, Bob, & Cy Exception applies! May 1, 2014 Di who obtained from Bob discloses subject matter X Third party Ty discloses subject matter X May 1, 2015 EFD of claimed invention by Al, Bob, & Cy Exception applies! Third party Ty discloses subject matter X May 1, 2015 EFD of claimed invention by Al, Bob, & Cy Bob discloses subject matter X May 1, 2014
14. AIA Statutory Framework
15. 35 U.S.C. 102(a)(2): U.S. Patent Documents with Effectively Filed Date before EFD of the Claimed Invention Prior Art effective filing date (EFD) of claimed invention 102(a)(2) date (the effectively filed date of U.S. patent document) 102(a)(2) potential prior art includes issued or publishedU.S. patent documentsthat name another inventor and have an effectively filed date before the effective filing date of the claimed invention: U.S. Patent; U.S. Patent Application Publication; or WIPO published PCT (international) application that designates the United States
16. AIA Statutory Framework
17. 102(b)(2)(A) Exceptionto Potential Prior Art under 35 U.S.C. 102(a)(2) For the 102(b)(2)(A) exception to apply to a potential prior art U.S. patent document, the U.S. patent document must: disclose subject matter that was obtained from one or more members of the inventive entity, either directly or indirectly.
18. 102(b)(2)(A) Exception Applies Exception applies! EFD of claimed invention by Al, Bob, & Cy Al files U.S. application* disclosing subject matter Exception applies! Di files U.S. application* disclosing subject matter after hearing about it from Al, Bob, & Cy EFD of claimed invention by Al, Bob, & Cy Exception applies! Ed files U.S. application* disclosing subject matter after hearing about it from Fe, who heard about it from Bob EFD of claimed invention by Al, Bob, & Cy *The U.S. application has been published.
19. 102(b)(2)(B) Exceptionto Potential Prior Art under 35 U.S.C. 102(a)(2) For the 102(b)(2)(B) exception to apply to a third party's potential prior art U.S. patent document: third party’s U.S. patent document must have been effectively filed before the EFD of the claimed invention, an inventor-originated disclosure (i.e. shielding disclosure) must have been made prior to the effectively filed date of the third party's U.S. patent document, and both the third party's U.S patent document and the inventor-originated disclosure must have disclosed the same subject matter.
20. Applying the 102(b)(2)(B) Exception Exception applies! Even though the application of Ty meets the requirements of 102(a)(2), it is not prior art to the claimed invention because the 102(b)(2)(B) exception applies. The public disclosure of Al, Bob, and Cy may or may not be prior art; the 102(b)(1)(A) exception would apply to that disclosure if it were made within the grace period. Third party Ty files a U.S. patent application (that is later published) disclosing subject matter X Al, Bob, & Cy publicly disclose subject matter X Effective filing date of claimed invention by Al, Bob, & Cy
21. 102(b)(2)(C) Exceptionto Potential Prior Art under 35 U.S.C. 102(a)(2) For the 102(b)(2)(C) exception to apply, the subject matter of the U.S. patent document and the claimed invention in the application under examination must have been: owned by the same person, or subject to an obligation of assignment to the same person, or deemed to have been owned by or subject to an obligation of assignment to the same person, not later than the effective filing date of the claimed invention.
22. 102(b)(2)(C) Exceptionto Potential Prior Art under 35 U.S.C. 102(a)(2) (con’t) The reach of the 102(b)(2)(C) exception has been broadened by 102(c). AIA section 102(c) provides that subject matter disclosed in a U.S. patent document and a claimed invention that are both under a joint research agreement (JRA) are deemed to have been commonly owned under certain conditions.
23. "Deemed" Common Ownershipunder 102(c) There are three conditions for the 102(b)(2)(C) common ownership exception in view of a joint research agreement (JRA) under 102(c): the JRA was in effect not later than the effective filing date of the claimed invention and additionally, one or more parties to the JRA developed the subject matter disclosed in a potential prior art U.S. patent document and one or more parties to the JRA made the claimed invention, the claimed invention was made as a result of activities within the scope of the JRA, and the application that includes the claimed invention must name, or be amended to name, the parties to the JRA.
24. 102(b)(2)(C) Exception Applies Exception applies! Di's published U.S. patent application filed; Di assigns to Acme Corp. EFD of Bob's claimed invention; Bob assigns to Acme Corp. Exception applies! Bob signs contract obligating assignment of any invention to Acme Corp. Di's published U.S. patent application filed; Di assigns to Acme Corp. EFD of Bob's claimed invention Exception applies! Di's published U.S. patent application filed Bob & Di enter JRA (activities encompass Bob’s invention) EFD of Bob's claimed invention; application names parties to JRA
25. 102(b)(2)(C) Exception DOES NOT Apply Exception DOEs NOT apply Di's published U.S. patent application filed; Di assigns to Acme Corp. Bob assigns claimed invention to Acme Corp. EFD of Bob's claimed invention Exception DOEs NOT apply Di's published U.S. patent application filed EFD of Bob's claimed invention XYZ; application does NOT name parties to JRA Bob & Di enter JRA (activities encompass invention XYZ) Exception DOEs NOT apply Di's published U.S. patent application filed Bob & Di enter JRA (activities encompass only ABC) EFD of Bob's claimed invention XYZ
26. AIA Statutory Framework
27. No Exceptions for 102(a)(1) Public Disclosures Made Before the Grace Period May 1, 2015 effective filing date (EFD) of claimed invention May 1, 2014 Grace Period – 1 Year NO EXCEPTIONS for disclosures made before May 1, 2014 (best prior art dates) POSSIBLE EXCEPTIONS under 102(b)(1)(A) & 102(b)(1)(B) for disclosures made on or after May 1, 2014 but before May 1, 2015
28. How Examiners Can Recognize a 102(b)(1)(A) or 102(b)(1)(B) Exception to Potential 102(a)(1) Prior Art It can be clear that one of the 102(b)(1) exceptions applies when: the authorship of the potential reference disclosure only includes one or more joint inventor(s) or the entire inventive entity of the application under examination, or there is an appropriate affidavit or declaration under 37 CFR 1.130(a) (attribution) or 1.130(b) (prior public disclosure), or the specification of the application under examination identifies the potential prior art disclosure as having been made by or having originated from one or more members of the inventive entity, in accordance with 37 CFR 1.77(b)(6).
29. AIA Statutory Framework
30. How Examiners Can Recognize a 102(b)(2)(A) or 102(b)(2)(B) Exception to Potential 102(a)(2) Prior Art It is clear that the 102(b)(2)(A) or 102(b)(2)(B) exception applies when: the inventive entity of the disclosure only includes one or more joint inventor(s), but not the entire inventive entity, of the application under examination, or there is an appropriate affidavit or declaration under 37 CFR 1.130(a) (attribution) or 1.130(b) (prior public disclosure), or the specification of the application under examination identifies the potential prior art disclosure as having been made by or having originated from one or more members of the inventive entity, in accordance with 37 CFR 1.77(b)(6).
31. How Examiners Can Recognize a 102(b)(2)(C) Exception to Potential 102(a)(2) Prior Art A statement by applicant or an attorney or agent of record that either common ownership in accordance with 102(b)(2)(C) or a joint research agreement in accordance with 102(c) were in place is sufficient. A declaration or affidavit is not necessary.
32. Declarations under 37 CFR 1.130 An applicant may overcome or avoid a rejection under 102(a)(1) or 102(a)(2) by filing a declaration under 37 CFR 1.130 Declarations under 37 CFR 1.130 are used to invoke an exception.
33. AIA-FITF TC Points of Contact
34. Thank you for your attention! KATHLEEN BRAGDON Quality Assurance Specialist TC 1600 AIA-FITF TC POC (571) 272-0931 kathleen.bragdon@uspto.gov QUESTIONS?