February 14, 2013
Under the America Invents Act (AIA), one of the most historic changes is the conversion of the U.S. patent system from a “first-to-invent” to a “first-inventor-to-file” system. On February 14, 2013, the U.S. Patent and Trademark Office (USPTO) issued final rules governing the “first-inventor-to-file” (FITF) provisions enacted by Section 3 of the AIA. Concurrently, the USPTO published Examination Guidelines for Implementing the First Inventor to File Provisions of AIA (Examination Guidelines). The FITF final rules become effective on March 16, 2013.
Some of the patent law changes under Section 3 of the AIA include, for instance:
The FITF final rules revise the rules of practice to make them consistent with the AIA and address examination issues resulting from those patent law changes. The final rules and Examination Guidelines also respond to public comments submitted in response to proposed rules published in July 2012. Key changes to the proposed rules and the USPTO’s interpretation of select provisions of the final rules are explained below.
When a U.S. patent or a U.S. patent application has a prior art effect as of the filing date of a foreign priority application, a certified copy of the foreign application or an interim copy of the foreign application must be filed within the latter of: four months from the actual filing date of the application filed under 35 U.S.C. § 111(a) or sixteen months from the filing date of the prior foreign application. The final rule includes two exceptions. Specifically, a certified copy of the foreign application is not required if:
Current participating foreign intellectual property offices are the European Patent Office, the Japanese Patent Office, the Korean Intellectual Property Office, and the World Intellectual Property Office.
The final rule also includes a “good cause” exception for the belated filing of a certified copy of the foreign application.
A “transition” application is an application filed on or after March 16, 2013, that claims priority to or the benefit of the filing date of an earlier filed application (i.e., foreign, provisional, nonprovisional application, or international application designating the United States) that was prior to March 16, 2013. Under the final rule, if a transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, a statement is required to that effect. But no statement is required if a transition application discloses new subject matter having an effective filing date on or after March 16, 2013, so long as the transition application does not contain a claim directed to the new subject matter.
The USPTO explains that a statement does not have to indicate which particular claim or claims have a post March 16, 2013, effective filing date, or the effective filing date of each claim. Further, the USPTO views the statement as comparable to a determination and statement required under pre-existing rules of practice regarding the absence of new matter.
The final rule also provides that an applicant is not required to provide such a statement if the applicant reasonably believes that the transition 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. This “reasonable belief” is based on information already known to the individuals designated as having a duty of disclosure with respect to the application.
According to the USPTO, the final rule adopts “a more flexible approach” to submission of an affidavit or declaration with evidence of a prior public disclosure. The final rule provides for (1) when an affidavit or declaration of attribution or prior public disclosure may be used to disqualify a disclosure as prior art, and (2) the procedural requirements for submitting such an affidavit or declaration. Under the final rule, there is no requirement that a petition for a derivation proceeding must be filed in certain circumstances. Instead, the final rule provides that a petition for a derivation proceeding may be filed, if the patent or pending application naming another inventor claims an invention that is the same or substantially the same as the applicant’s or patent owner’s claimed invention.
An intervening disclosure published after an inventor’s public disclosure and before the effective filing date of the inventor’s application can be removed as prior art under the exceptions provided in AIA 35 U.S.C. §§ 102(b)(1)(B) and 102(b)(2)(B) if the “subject matter” of the disclosures is the same. The Examination Guidelines reiterate that these exceptions do not apply if the only differences between subject matter of the disclosures contain “mere insubstantial changes, or only trivial or obvious variations.” Further, there is no requirement that the mode (e.g., publication, public use, sale activity) of the disclosures be the same, or that the disclosures be verbatim or ipsissimis verbis disclosures. The Examination Guidelines also clarify that the Section 102(b)(1)(B) exception applies if subject matter of the intervening disclosure is simply a more general description of the subject matter previously disclosed by the inventor.
The Examination Guidelines clarify that the USPTO views the “or otherwise available to the public” residual clause of the AIA’s 35 U.S.C. § 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art. According to the Examination Guidelines, an activity (such as a sale, offer for sale, or other commercial activity) is secret (non-public) if, for example, it is among individuals having an obligation of confidentiality to the inventor.
The USPTO, however, acknowledges that the courts may ultimately address questions concerning the meaning of AIA 35 U.S.C. §§ 102 and 103. The Examination Guidelines provide, as a practical matter, the USPTO’s interpretation of AIA 35 U.S.C. §§ 102 and 103 based upon the statutory language of the AIA and its legislative history.
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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