The AIA Redefines Prior Art and Sets Out Exceptions for Its Application In addition to the switch to a first inventor to file system, the AIA also overhauled the definitions of what is considered prior art for purposes of assessing the novelty and obviousness of claims during prosecution. In contrast to pre-AIA 35 U.S.C. §102, only two subsections of the AIA identify potential prior art. 2 AIA 35 U.S.C. §102(a)(1) is most directly comparable to pre-AIA 35 U.S.C. §§102(a) and (b) and is for public disclosures having a public availability date prior to the effective filing date of the claimed invention under examination. AIA 35 U.S.C. §102(a)(2) is similar to old 35 U.S.C. §102(e) and is directed to issued or published U.S. patent documents3 “by another” with an effective filing date prior to the effective filing date of the claimed invention under examination.

Arguably, no other provision of the America Invents Act (AIA) is more important than 35 U.S.C. § 102. It defines what activities preclude patentability and what documents are available as prior art. Applications having an effective filing date that is on or after March 16, 2013 are subject to the new AIA § 102. As more AIA applications are being examined, granted and involved in post-grant proceedings, it is increasingly important to understand AIA § 102 and what conditions can create an exception to its rules.AIA § 102 differs from the pre-AIA § 102 in several significant aspects, indicated below:Prior art is defined in 35 U.S.C. § 102(a)(1) and § 102(a)(2)According to § 102(a)(1), prior art includes public disclosures that are (i) available before the effective filing date of the claimed invention, and (ii) patented, described in a printed publication, in public use, on sale, or “otherwise available to the public.”

In Ingevity Corporation v. International Trade Commission,1 the Federal Circuit held that a prior invention will not anticipate under 35 U.S.C. § 102(g) unless the prior inventors appreciated the invention. Specifically, an inventor must concurrently appreciate that the embodiment worked and that it satisfied all claim elements.

Opinion by Lourie, joined by Moore and Chen.BASF appealed from the district court’s grant of summary judgment that certain claims are invalid as anticipated or obvious. The court ruled that a third-party process evidenced prior art knowledge and use of the patented invention under 35 U.S.C. § 102(a), and that the process also constituted both a public-use bar and an on-sale bar under § 102(b).On appeal, the Federal Circuit disagreed, holding that the third-party process (the Sanwet Process) did not create an on-sale bar, that the district court misinterpreted § 102(a) and the public-use bar of § 102(b), and that summary judgment is not appropriate under the proper legal standard.The Federal Circuit first determined that the district court’s interpretation of § 102(a) was erroneous, explaining: “This court has uniformly interpreted the ‘known or used’ prong of § 102(a) to mean ‘knowledge or use which is accessible to the public.’

Accordingly, the USPTO ordered ex parte reexamination of claims 1-8 of the ’647 patent. Ex Parte Reexamination Ordered Pursuance to 35 U.S.C. 257, issued 1/25/2017.Reexamination OrderedIn the subsequent reexamination, the Office issued a non-final rejection of claims 2, 5, 6, and 7 based on 35 U.S.C. § 112 and claims 1, 2, and 7 under 35 U.S.C. § 102(a)(1). 35 U.S.C. §102(a)(1) reads:§ 102.

The USPTO will consider written comments on the proposed rules and guidelines received by October 5, 2012.The Proposed First-to-File Examination Guidelines As set forth in the Federal Register notice, “[t]he proposed guidelines set out the Office’s interpretation of 35 U.S.C. 102 and 103 as amended by the AIA, and advise the public and the Patent Examining Corps on how the changes to 35 U.S.C. 102 and 103 in the AIA impact the provisions of the Manual of Patent Examining Procedure (MPEP) pertaining to 35 U.S.C. 102 and 103.” The “proposed guidelines do not constitute substantive rulemaking and do not have the force and effect of law.”

Pharmaceutical and biotech companies breathed a sigh of relief Monday when the Federal Circuit unanimously ruled in a precedential opinion that the mere sale of manufacturing services to create embodiments of a patented product is not a “commercial sale” of the invention that triggers the on-sale bar of 35U.S.C. §102(b) (pre-AIA).[1] The en banc opinion in The Medicines Company v. Hospira Inc., Case No. 14-1469 (Fed. Cir. July 11, 2016) considerably mitigates patent law’s disparate treatment of inventors who rely upon contract manufacturing organizations (CMOs) and an those who manufacture in-house.

Given the length of the two notices, we will present an overview of the final rule today and will address the examination guidelines in a subsequent post. The final rule notes that AIA § 3 amends U.S. patent law to: (1) convert the U.S. patent system from a "first to invent" system to a "first inventor to file" system; (2) treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country; (3) eliminate the requirement that a prior public use or sale be "in this country" to be a prior art activity; and (4) treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103. While the above changes take effect on March 16, 2013, the final rule points out that the changes "apply only to certain applications filed on or after March 16, 2013."

Clear and Convincing Evidence of “Made in This Country” Must Be Presented to Invalidate a Patent Under § 102(g)(2) 10-1550 August 22, 2012 Decision Last Month at the Federal Circuit - September 2012Judges: Newman, Plager, Linn (author) [Appealed from: ITC] In Amkor Technology, Inc. v. International Trade Commission, No. 10-1550 (Fed. Cir. Aug. 22, 2012), the Federal Circuit reversed the ITC’s determination that U.S. Patent No. 6,433,277 (“the ’277 patent”) is invalid based on prior invention under 35 U.S.C. § 102(g)(2). Amkor Technology, Inc. (“Amkor”) is the assignee of the ’277 patent relating to smaller and “more reliable” integrated circuit packages.

No. The changes to 35 USC §§ 115 and 118 take effect September 16, 2012, and apply only to applications filed on or after that date.On the effective date of the “first-to-file” provisions (new 35 USC § 102):If I file a U.S. application today and file a continuation application on or after March 16, 2013 to present new claims that are supported by the original application, which version of 35 USC § 102 will apply? The continuation application will remain under the current (first-to-invent) version of 35 USC § 102 as long as all claims are entitled to an effective filing date of March 15, 2013 or earlier.If I file a provisional application today, then file a PCT application one year from now, and then enter the U.S. national phase after that, will my U.S. national phase application still be under the current (first-to-invent) version of 35 USC § 102?