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.”
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."
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?
Like many legal questions, the answer is “it depends.”When making a prior art rejection in the US, a patent examiner distinguishes between prior art that is available under 35 U.S.C. § 102 (a)(1) and 35 U.S.C. § 102 (a)(2). Section 102 (a) provides as follows: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; or(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.For each of these provisions there are exceptions based on common inventorship or common ownership.
As pre-AIA patents and patent applications will continue to exist at least until March 15, 2034, not counting patent term extensions or adjustments, practitioners must continue to grapple with both pre-AIA as well as AIA rules, particularly with respect to AIA patent applications claiming priority to pre-AIA applications. Currently, there are no court decisions interpreting AIA 35 U.S.C. § 102. In this article, we will discuss how the AIA expanded the definition of prior art, describe the AIA § 102 prior art exceptions, and suggest strategies that practitioners can consider in dealing with prior art and transitional applications.
As of September 2014, based on information provided by the U.S. Patent and Trademark Office (USPTO), approximately 34% of currently pending applications filed on or after March 16, 2013 are subject to the requirements of the new law.1 Before describing the use of evidentiary declarations in a post-AIA world, it is important to first understand what qualifies as prior art under the statute.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.
[author: Courtenay C. Brinckerhoff]This is the third article in my First-to-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012.
[author: Courtenay C. Brinckerhoff]This is the first article in my First-to-File Friday series. On each Friday in August, I will publish an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012.
Patent at Issue: U.S. Patent No. 7,332,289 ("Method of purifying protein," issued February 19, 2008) claims a method for removing contaminant DNA in an antibody-containing sample. Petitioner Pfizer, Inc. is challenging the '289 patent on two grounds as being anticipated under 35 U.S.C. § 102(b) (ground 1) or as obvious under 35 U.S.C. § 103(a) (ground 2). View the petition here.
Patent at Issue: U.S. Patent No. 7,682,612 ("Treatment of hematologic malignancies associated with circulating tumor cells using chimeric anti-CD20 antibody," issued March 23, 2010) claims a method of treating chronic lymphocytic leukemia in a human patient, comprising administering an anti-CD20 antibody to the patient in an amount effective to treat the chronic lymphocytic leukemia, wherein the method does not include treatment with a radiolabeled anti-CD20 antibody. Petitioners Celltrion, Inc., Celltrion Healthcare Co. Ltd., and Teva Pharmaceuticals International GmbH are challenging the '612 patent on five grounds as being anticipated under 35 U.S.C. § 102(b) (ground 3) and as obvious under 35 U.S.C. § 103(a) (grounds 1, 2, 4, and 5). View the petition here.