Irving-May 14 FITF - Duke University School of Law · 2013-05-10 · and the Jedi Master Mixer...

First-Inventor-to-File

Duke Patent Law InstituteMay 14, 2013

Presented byTom Irving

©Copyright Finnegan 2013

Disclaimer

These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law. These materials reflect only the personal views of the joint authors and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, the author and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with the author and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. While every attempt was made to ensure that these materials are accurate, errors or omissions may be contained herein, for which any liability is disclaimed.

New “35 U.S.C. 102 and 103, which do not always result in the first inventor to file an application being entitled to a patent (e.g., AIA 35 U.S.C. 102(a)(1) precludes an inventor who is the first person to file an application for patent, but who published an article describing the claimed invention more than one year before the application was filed, from being entitled to a patent).”

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Under AIA, May End Up That Inventor Does Not Get Patent Even If First To File

See Examination Guidelines, 78 Fed. Reg. 11,070 (Feb. 14, 2013)

“The Office appreciates that the courts may ultimately address questions concerning the meaning of AIA 35 U.S.C. 102 and 103. However, as a practical matter, the Office needs to provide examination guidelines so that the public is aware of how the Office will apply AIA 35 U.S.C. 102 and 103. The Office considers its interpretation of AIA 35 U.S.C. 102 and 103 as set forth in these examination guidelines to be the correct interpretation of AIA 35 U.S.C. 102 and 103 based upon the statutory language of the AIA and its legislative history.”

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USPTO Recognizes Courts Will Ultimately Interpret the AIA

See Examination Guidelines, 78 Fed.Reg. 11,061 (Feb. 14, 2013)

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“effective filing date” is the key to navigating the road-map of AIA, pre-AIA, and the Jedi Master Mixer

Choice of Law Issues!

“Because the changes to 35 U.S.C. 102 and 103 in the AIA apply only to specific applications filed on or after March 16, 2013, determining the effective filing date of a claimed invention for purposes of applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 and 103 provisions is critical.”

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New Definition of Prior Art Under AIA


“under pre-AIA law, the effective filing date of a claimedinvention is determined on a claim-by-claim basis andnot an application-by-application basis. That is, theprinciple that different claims in the same applicationmay be entitled to different effective filing dates vis-à-visthe prior art remains unchanged by the AIA. However, itis important to note that although prior art is applied on aclaim-by-claim basis, the determination of whether pre-AIA 35 U.S.C. 102 and 103 or AIA 35 U.S.C. 102 and103 apply is made on an application-by-applicationbasis.”

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Pre-AIA or AIA Definition of Prior Art is on Application-by-Application Basis


SEC. 3(n)(1) Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, [March 16, 2013] and shall apply to any application for patent…that contains or contained at any time:

A. a claim to a claimed invention that has an effective filing date as defined in section 100(i) [remember: “entitled to”] …, that is on or after the effective date described in this paragraph [March 16, 2013]; or

B. a specific reference under §§ 120, 121, 365(c) to any patent or application that contains or contained at any time such claim. [antecedent for “such claim” has to be sub.para. (A)?]

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First AIA Transition Provision: EFD after 3/15/13

SEC. 3(n)(2): The provisions of sections 102(g), 135, and 291of title 35, United States Code, as in effect on [March 15,2013], shall apply to each claim of an application for patent,and any patent issued thereon, for which the amendmentsmade by this section also apply, if such application or patentcontains or contained at any time—

– (A) a claim to an invention having an EFD as defined in section100(i) of title 35, United States Code, that occurs before [March16, 2013]; or

– (B) a specific reference under section 120, 121, or 365(c) of title35, United States Code, to any patent or application that containsor contained at any time such a claim.

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Second Transition Provision: EFD Before 3/16/13 and After 3/15/13!!

“section 3(n)(2) does indicate that the provisions of 35 U.S.C.102(g), 135, and 291 as in effect on March 15, 2013, shallapply to “each claim” of an application for patent, and notsimply the claim or claims having an EFD that occurs beforeMarch 16, 2013, if the condition specified in section 3(n)(2)occurs. Therefore, “each claim” of an application presenting aclaim to a claimed invention that has an effective filing datebefore March 16, 2013, but also presenting claims to aclaimed invention that has an effective filing date on or afterMarch 16, 2013, is subject to AIA 35 U.S.C. 102 and 103 andis also subject to the provisions of 35 U.S.C. 102(g), 135,and 291 as in effect on March 15, 2013.”

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FITF Examination Guidelines:SEC. 3(n)(2)

See Examination Guidelines, 78 Fed. Reg. 11069, 11072 (Feb. 14, 2013)

Some may seek out SEC.3(n)(2), owing to advantages of AIA.

– Elimination of Metallizing Engineering forfeiture (according to USPTO);

– liberalization of the CREATE ACT and common ownership in §102(c);

– possible elimination of pre-AIA statutory bars that are not AIA prior art, such as the secret sale!!!

Jedi Master Mixer!

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SEC. 3(n)(2): the Mixer!

USPTO: “With respect to comments that MetallizingEngineering and other forfeiture doctrines should bepreserved because they serve important public policies,the Office notes that the choice of which public policies topursue through the definition of prior art is made byCongress, not by the Office. Also, some of the purposesascribed to these doctrines in case law appear to be ill-suited to or inconsistent with the AIA. The problem ofdelayed filing of applications is unique to pre-AIA 35U.S.C. 102, under which an applicant can rely on a secretinvention date in order to establish a priority date.”

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USPTO Says No Forfeiture in AIA


Hilmer Doctrine evidenced bias of U.S. law against inventions originating outside the U.S.

– Based on two U.S. decisions (Hilmer I and II) that heldthat the foreign right of priority of a U.S. patent does notprovide a prior art effect under § 102(e) as of thatforeign priority date, nor does inventive work outsidethe U.S. have a prior art effect under § 102(g). Rather,one needed a U.S. filing date to have a prior art effect.

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Hilmer Doctrine Abolished by §102(d):

U.S. Prov.Appl.

CN

U.S. Appl.Non-Prov.

PCT(des. U.S.)

Chinese USPAT

USPAT

FR PCT(des. U.S.)

USPAT

Pub.Appl.

Pub.PCT

Appl.

Pub.PCT

Appl.

French

English

• NO geographical or language distinction•Entitlement to claim priority/benefit of US Prov App., CN app., and FR app.•Important date is when “effectively filed” not when published.•Hilmer doctrine abolished.

Impact of § 102(d)(2) – Prior Art Date

Prior art date

Prior art date

Prior art date

Following publication, disclosure has retroactive availability as prior art as of the date effectively filed for novelty and obviousness purposes.

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The guidelines evidence the Office’sintent to treat the phrase “on sale” inAIA 35 U.S.C. § 102(a)(1) “as havingthe same meaning as ‘on sale’ in pre-AIA 35 U.S.C. 102(b), except that thesale must make the invention availableto the public.” (emphasis added).

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AIA Changes the Secret Sale


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The Jedi Master Mixer:you want AIA or pre-AIA or both?

Private on sale in U.S.

<1 Year

Assume U.S. filing is pre-AIA; file CIP on or after 3/16/13 after US filing but before publication. Present at least one AIA claim

and at least one pre-AIA claim. Under 3(n)(2), possible statutory use bar for pre-

AIA claim vanishes!!!

<1 Year

Filed! Filed!(Effective

FD)

3/16/13

file CIP

Enactment: Sept. 16, 2011

PCT Filing

First to Invent System Applies

Straddling the Effective Date

“First To Invent” System or “FITF” System? (see SEC. 3(n)(1)(A) and (n)(2))(Even if one claim not supported at priority date is eventually canceled,

still in FITF.)PCT Filing

Priority Date

Enactment: Sept. 16, 2011 Effective Date:

March 16, 2013

Priority Date

“FITF” System AppliesPCT Filing

Enactment: Sept. 16, 2011

Scenario 1: no claims entitled to priority date: FITFScenario 2: all claims entitled to priority date: first-to-inventScenario:3: at least 1 claim not entitled to priority date: mixed

Assumes “priority date” is ex-US

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Need an application 1 filed before March 16, 2013 and still pending.

Need an application 2 filed after March 15, 2013 claiming priority/benefit of application 1 and also containing at least one claim with an EFD before March 16, 2013, and at least one claim with an EFD after March 15, 2013.

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Intentionally Creating the Jedi Master Mixer

Application 2 could be a CIP.

Application 2 could be a continuation filed along with a preliminary amendment presenting at least one claim with an EFDafter March 15, 2013.

If JMM not intended, may be prudent to file the preliminary amendment at least one day after the continuation.

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Intentionally Creating the Jedi Master Mixer

Simply need an Application 1having at least one claim with an EFD before March 16, 2013.

Application 2 could be a continuation or CIP claiming benefit of Application 1.

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JMM Can be Filed Years After 3/15/13

Could file a potential JMM Application 2after March 15, claiming benefit of Application 1 but not yet claiming the “post-March 15” EFD subject matter.

Claim that “post-March 15” EFD subject matter later, basically as long as Application 1 is still pending.

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The Latent JMM

Published Feb. 14, 2013, Prepublished Feb. 13, 2013, effective March 16, 2013.

Relate to AIA SEC. 3 (changes to 35 U.S.C. §§ 102 and 103), which are effective March 16, 2013, “but apply only to certain applications filed on or after March 16, 2013.”

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FITF USPTO FINAL RULES

Response to Comment 15: “Sections 1.55 and 1.78 as adopted in this final rule do not require an applicant to … make a prima facie case of entitlement to a patent. Rather, the requirement for a statement for certain transition applications … simply requires the applicant to provide information that will be used by the Office as an aid in determining whether to examine the application under AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and 103.”

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FITF USPTO FINAL RULES: Statement Required for JMM Applications

Commentary:Statement is so PTO Can Make Proper Choice of Law

78 Fed. Reg. 11,040 (Feb. 14, 2013)

ADS: Application data sheet revised to include check box.

PAIR: The idea is that J.Q. Public can see in PAIR whether an application being examined as a pre-AIA application or AIA application.

But can J.Q. figure out the delayed Jedi Master Mixer?

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FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary:

Practical Implementation

78 Fed. Reg. 11,040 (Feb. 14, 2013)

Claims added after March 15, 2013, fully supported by pre-AIA priority application, do not automatically trigger requirement for statement or application of AIA 35 U.S.C. §102 and 103.

Amendments on or after March 16, 2013: Same is true for an amendment to an application filed on or after March 16, 2013, entitled to benefit of pre-AIA priority application, seeking to add a claim to a claimed invention that is not supported in pre-AIA priority application.

– Proper approach is for examiner to reject claim as new matter and the applicant could dispute that but it would not automatically move the whole application into AIA.

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FITF USPTO FINAL RULES: Statement Required for Mixed Applications

Rules Commentary: The §112 Defective Claim After 3/15/13 Does not an AIA Application Make?

78 Fed. Reg. 11,040 (Feb. 14, 2013)

“The addition of a claim in a transition application that is directed to subject matter fully supported in a pre-AIA benefit or priority application would not itself trigger the statement requirement under §1.55 or §1.78 and would not make the application subject to AIA 35 U.S.C. 102 and 103.”

See next slide.

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PTO Views that Presentation After 3/15/13 of a Claim with an EFD Before 3/16/13 Does Not Move the Application into AIA

78 Fed. Reg. 11,040 (Feb. 14, 2013)

For an application filed on or after March 16, 2013,

– that discloses and claims only subject matter also disclosed in a previously filed pre-AIA application

– to which the application filed on or after March 16, 2013, is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365,

– an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim to a claimed invention that is directed to new matter

– would not convert the application into an AIA application.

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The PTO Tackles the Improper §112 Claim Issue

78 Fed. Reg. 11,040 (Feb. 14, 2013)

35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure and thus an application may not actually “contain” a claim to a claimed invention that is directed to new matter.

…the new matter is required to be cancelled from the written description and the claims directed to the new matter are rejected under 35 U.S.C. 112(a)(MPEP § 608.04).

– This process for treating amendments containing new matter is purely an administrative process for … resolving disputes between the applicant and an examiner as to whether a new drawing or amendment to the written description or claims would actually introduce new matter.”

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The PTO Tackles the Improper §112 Claim Issue

78 Fed. Reg. 11,040 (Feb. 14, 2013)

Once in AIA, cannot go back to pre-AIA.

If application is mixed (“transition application”) with at least one claim with an EFD before March 16, 2013, and at least one claim after March 15, 2013, even if the post-March 15, 2013, claims are canceled, application will be examined under AIA and also under §102(g) because it is a JMM or transition application.– File continuation or divisional of pre-AIA parent containing only

claims with EFD before March 16, 2013, and that will be examined under pre-AIA only.

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Rules Commentary Summary: Transition Application:

Thy Name is the Jedi Master Mixer (JMM)

the application will be examined under AIA even if the latter claims are cancelled.

However, if a pre-AIA parent application is pending and

the applicant could file a continuation or divisional application from the pre-AIA parent application without any claim to the benefit of the AIA application and without any claim to a claimed invention having an effective filing date on or after March 16, 2013.

In this situation, the continuation or divisional application would be examined as a pre-AIA application under pre-AIA 35 U.S.C. 102 and 103.”

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Rules Commentary: lost vision of JMM?

“If an application on filing contains at least one claim having an effective filing date before March 16, 2013,

…at least one claim having an effective filing date on or after March 16, 2013,

and

an applicant inadvertently files a continuing application with claims having an effective filing date on or after March 16, 2013,

78 Fed. Reg. 11,043 (Feb. 14, 2013)

FITF Exam Guidelines state that each examining group will have staff to help the PTO determine whether the application is a pre-AIA application or an AIA application.

“If a disagreement between the applicant and an examiner cannot be resolved informally and results in a rejection that would otherwise be inapplicable, the applicant may respond to the merits of the rejectionwith an explanation of why the Office’s treatment of the application as a pre-AIA application or an AIA application is improper.”

Appeal: If cannot be resolved, applicant would have to appeal.

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What If Applicant and PTO Do Not Agree? Exelixis I/Novartis B Delay for PTA?


But, pre-AIA §102(g) prior art can be antedated for all claims So, for all claims in a JMMapplication, a prior date of invention can be proved to overcome any §102(g) prior art that comes up, or in any interference or interfering patent litigation that arises under §§ 135 and 291, (also apply to all claims under AIA SEC. 3(n)(2)).

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“JMM” Can Bring Back Antedationfor All Claims

P.S. Remember same invention double patenting: pre-AIA or AIA.

Have a pre-AIA patent filing (slow motion and prioritized exam?) Best if claims are patentably distinct (Exelixis I)

Jedi Master Mixer: File a second, independent AIA patent application that is a duplicate or near-duplicate of the pre-AIA patent filing, but avoids identical claims and has at least one claim with effective filing date after March 15, 2013 (and prioritized examination?) Best if patentably distinct

Have a third AIA application with AIA claims only (and prioritized examination?) Best if all six are patentably distinct

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Filing Strategy: Jedi Master Mixer/AIA/pre-AIA Multiple Filings*

*Note: there may be Dayco and McKessonimplications. Each case depends on its own facts but consider and take any action that is appropriate.

Secure whatever benefits might exist in both the first-to-invent, the FITF, and the mixed (n)(1) and (n)(2) FITF and first-inventor to file worlds, subject to liabilities.

May have to disclaim the extra term provided by the AIA second patent and may not be able to enforce the patents separately. Try to avoid obviousness type double patenting.

Patents with identical claims will still be barred, and the multiple patent filings will need to stand alone.

Line up the ducks:

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Filing Strategy: JMM Multiple Filings: Quack, quack, quack

From Now On

Focus on EFD for each claim and ensure that EFD of any and every claim is deliberately before March 16, 2013, after March 15, 2013, or mixed.– Choice of law issues!

Understand which law applies to each US patent and application under review.

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Thank you.

Tom IrvingFinnegan, Henderson, Farabow, Garrett & Dunner, LLP901 New York Avenue, NWWashington, DC [email protected]

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Irving-May 14 FITF - Duke University School of Law · 2013-05-10 · and the Jedi Master Mixer...

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