August 22, 2013
One of the biggest AIA changes to affect patent examiners (and applicants) is the transition from a first-to-invent to a first-inventor-to-file system. To assist with this transition, the USPTO has been rolling out a series of examiner training materials along with a training timeline that outlines training programs that extend into FY 2014. The latest training materials provide in-depth explanations and examples for an examiner to analyze the novelty of a claimed invention.
Of particular note, the training materials include a “FITF Comprehensive Training Definition Sheet” that defines key AIA terms. Among those terms is the “effective filing date.” The first step in the novelty analysis is determining the effective filing date of the claimed invention, which is determined on a claim-by-claim basis. The materials define effective filing date for AIA applications (other than reissue applications) as the earlier of the actual filing date of the application or (2) the filing date of the earliest application for which the application is entitled to a right of foreign priority or the domestic benefit of the earlier filing.
The training materials also include a presentation addressing prior art under the AIA. The presentation outlines the statutory framework and shows how the availability of a disclosure as prior art depends on the effective filing date of the claimed invention. 35 U.S.C. §§ 102(a)(1) and 102(a)(2) identify the two types of prior art, and § 102(b) provides exceptions to each category. While most practitioners and examiners are generally familiar with §§ 102(a) and 102(b), the training materials provide concrete examples that illustrate the specifics of applying these rules.
The training materials provide a useful guide to examiners and practitioners alike in navigating the complexities of prior art rejections under the AIA, particularly as the first few Office actions for applications filed under the first-inventor-to-file system are issued and addressed in the coming months.
Copyright © 2013 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. Additional disclaimer information.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Webinar
Obviousness of Biologics Inventions: Strategies for Biologics Claims in the U.S., Europe, and China
May 28,2024
Webinar
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.