Transcript THE ABC’S OF PATENT LAW Steven E. Warner July 24, 2007

Implementing
First-Inventor-to-File
Provisions of the AIA
By: Scott D. Malpede, Seth Boeshore and Chitra
Kalyanaraman
USPTO Rules Effective March 16, 2013
Claim for Foreign Priority
 Domestic nonprovisional applications—
– Must be filed within 12 months of foreign filing
– Priority claim, including submission of certified copy of
foreign application, must be made by later of:
1. four months of domestic filing date, or
2. sixteen months from foreign filing date
 PCT applications—current rules do not change
– PCT regulations require priority claim and certified copy of
foreign application in international application within 16
months of foreign filing
37 C.F.R. § 1.55(b)
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Delayed Claim for Foreign Priority
 May be accepted if Applicant files petition that includes:
 application data sheet containing priority claim
 certified copy of foreign application
 petition fee
 statement that entire delay was unintentional
 Priority claims that do not comply will be waived
37 C.F.R. § 1.55(e)
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Late Filing of Certified Foreign Application
 May be accepted if Applicant files petition that
includes:
– certified copy
– showing of good and sufficient cause for delay
– petition fee
37 C.F.R. § 1.55(f)
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Claim for Foreign Priority
 Issue date is absolute deadline for perfecting claim to
foreign priority
 Patent will not be printed with priority claim if perfected after
payment of issue fee
– Certificate of correction available
37 C.F.R. § 1.55(g)(1)
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Claim for Foreign Priority—Early Deadlines
 Applicant may be required to perfect foreign priority claim
earlier than normal deadline if:
– application is in interference or derivation proceeding,
– priority date needed to overcome art rejection, or
– specifically requested by Examiner
 English translation may be required
37 C.F.R. § 1.55(g)(2)-(3)
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Claim for Foreign Priority—Document Exchange
 PTO will obtain certified copy of foreign patent application
from foreign patent office if:
– foreign patent office participates in document exchange
agreement
– priority claim includes information necessary for PTO to
access foreign application
 If foreign application initially filed in non-participating
country but subsequently filed in participating country,
Applicant may file request that PTO obtain certified copy from
participating country’s patent office
 Absolute deadline for certified copy still applies—PTO
must receive certified copy from foreign patent office during
pendency of application
37 C.F.R. § 1.55(h)
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Claim for Foreign Priority—Interim Copy
 PTO will accept uncertified copy of foreign
application during application pendency if:
– copy marked “Interim Copy” is timely filed,
including statement that copy is a true copy
– certified copy is filed prior to date of issuance
37 C.F.R. § 1.55(i)
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Claim for Foreign Priority—Statement in Transitional
Application
 When nonprovisional application:
– is filed on or after March 16, 2013, and
– has foreign priority date before March 16, 2013, but
– includes claim with effective filing date on or after March 16,
2013,
Applicant must file statement notifying PTO of these facts
 Statement due by later of:
– four months of domestic filing date,
– sixteen months from foreign filing date, or
– presentation of claim (if newly added)
37 C.F.R. § 1.55(j)
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Claiming Benefit of Earlier Filing Date
 Nonprovisional application can claim benefit of:
– earlier provisional application, if nonprovisional filed
within one year of provisional
– earlier nonprovisional or international application, if
filed during pendency of earlier application
37 C.F.R. § 1.78(a), (c)
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Claiming Benefit of Earlier Filing Date
 Benefit claim requires that application:
– name at least one inventor of earlier application
– contain reference to earlier application
 Reference in nonprovisional must be in ADS
 If reference not included in filed application, it must be added
during application’s pendency and by later of:
– four months of filing date, or
– sixteen months from earlier application’s filing date
37 C.F.R. § 1.78 (a), (c)
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Claiming Benefit of Earlier Filing Date—Delayed
Reference
 Delayed benefit claim may be accepted if Applicant files
petition that includes:
– amendment containing reference to earlier application
– petition fee, and
– statement that entire delay after due date was
unintentional
 Late benefit claims that do not comply will be waived
37 C.F.R. § 1.78(b), (d)
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Claiming Benefit of Earlier Filing Date—Statement in
Transitional Application
 When nonprovisional application:
– is filed on or after March 16, 2013, and
– claims benefit of application filed prior to March 16, 2013, but
– has claim with effective filing date on or after March 16, 2013
Applicant must file statement notifying PTO of these facts
 Statement must be filed by later of:
– four months from filing date,
– sixteen months from filing date of earlier application, or
– presentation of claim (if newly added)
37 C.F.R. § 1.78(a)(6), (c)(6)
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Nature of Examination—Common Ownership of
Claimed Subject Matter and Asserted Prior Art
 AIA-examined applications—earlier-filed U.S. patent or
application can be removed from prior art (under 35 U.S.C.
§ 102(b)(2)(C)) if, as of effective filing date, subject matter
disclosed in reference and subject matter claimed were:
– owned by same person (or obliged to be assigned to
same person), or
– developed under joint research agreement, so long as
parties to agreement are named in application
 Pre-AIA-examined applications—§ 102(e)-(g) prior art can be
removed, for purposes of § 103(c), by making either above
showing, but with reference to date of claimed invention
37 C.F.R. § 1.104(c)
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Effective Filing Date of Claimed Invention Under AIA
 Effective filing date is earlier of:
– actual filing date of application containing claim, and
– filing date of earliest priority application that discloses
subject matter of claim
 Effective filing date in a reissue patent or application is
determined by deeming the claim to the invention to have
been contained in the patent for which reissue is sought
37 C.F.R. § 1.109
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Inventorship and Ownership of Subject Matter of
Individual Claims
 When joint inventors are named in application, PTO can
require Applicant to identify inventorship and ownership of
each claim in application, as of effective filing date
 PTO can further require Applicant to identify invention dates
of each claim
37 C.F.R. § 1.110
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Affidavit of Attribution or Prior Public Disclosure
Under AIA
 Applications examined under first-inventor-to-file rules are
provided grace period of one year preceding effective filing
date
– Certain disclosures that occur during grace period can be
disqualified as prior art
 Disclosures made more than one year before effective filing
date are not eligible for disqualification
37 C.F.R. § 1.130
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Affidavit of Attribution
 Grace period disclosure can be disqualified as prior art if it is
attributed to inventor
 Affidavit of attribution must establish that grace period
disclosure was made by:
– inventor/joint inventor, or
– someone who obtained subject matter of grace period
disclosure from inventor/joint inventor
37 C.F.R. § 1.130(a)
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Affidavit of Prior Public Disclosure
 Grace period disclosure can be disqualified if it occurred after
earlier public disclosure attributable to inventor
 Affidavit of public disclosure must establish that:
– public disclosure was made prior to date of grace period
disclosure
– earlier public disclosure contained same subject matter
as grace period disclosure
– earlier public disclosure was made by
 inventor/joint inventor, or
 someone who obtained subject matter disclosed
from inventor/joint inventor
37 C.F.R. § 1.130(b)
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Other Changes
 Rule 9 (definitions)—revised to incorporate terms used by AIA
 Rule 117 (fees)—revised to add new fees
 Rule 131 (disqualification of prior art by prior invention)—
revised to include old Rule 130 (disqualification of prior art by
common ownership) for pre-AIA-examined applications
 Rules 293-297 (statutory invention registration)—removed to
comply with AIA’s elimination of invention registrations
 Rule 321 (filing of terminal disclaimers)—revised to be
consistent with changes to §§ 102 and 103 with respect to
joint research activities
37 C.F.R. §§ 9, 17, 131, 293-297, 321
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1290 Avenue of the Americas
New York, NY 10104-3800
212.218.2100
WASHINGTON
975 F Street, NW
Washington, DC 20004-1405
202.530.1010
CALIFORNIA
650 Town Center Drive, Suite 1600
Costa Mesa, CA 92626-7130
714.540.8700
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