Transcript Process Claims With Algorithmic Limitations (a.k.a

A Quick Survey of the America Invents Act
Patent Law
October 12, 2011
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 1
Passage
• Product of six years of Congressional activity
• Enacted September 16
• Effective dates vary
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 2
Changes to the Patent Act
Today:
• First Inventor to File (or Publicly Disclose)
• Prior User Rights
• Best Mode
Not covered:
• USPTO Processes and Fees
• Judicial Procedures (venue, etc.)
• Other Minor Modifications
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 3
First to File
• First filer wins [102(a)], unless [102(b)]:
• (i) the second filer was first to “publicly disclose” the
invention
• (ii) the first filer obtained the invention directly or
indirectly from the second filer
• (iii) the first filer abandoned the application prior to
publication or issuance
• Effective date: Applies to all applications filed on or
after March 16, 2013
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 4
Old Doctrines in New Statutes
• Major changes:
• No geographic restrictions on prior art
• 102(a): Prior art = prior to effective filing date
• 102(b): Defined exceptions; one-year grace period
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 5
Six Categories of Prior Art
§ 102(a) NOVELTY; PRIOR ART.—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 [to another] … or in [another’s] application for
patent published … [that] was effectively filed before the
effective filing date of the claimed invention.
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 6
“Otherwise Available to the Public”
• Seems similar to “known or used by others”
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 7
“Public Use”/“On Sale” Caselaw
• Are Metallizing, etc. still good law? Probably:
• Statutory reenactment
• No clear legislative history to the contrary
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 8
102(b) Grace Period
102(b) May file within one year after:
(1)(A) Any disclosure “directly or indirectly” from the
applicant
(1)(B) Disclosures by others that occurred after
“public” disclosure by the applicant
(2)(A) First filer derived invention from second filer
(2)(B) First filer filed after “public” disclosure by
applicant/second filer
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 9
(A) Grace Period Events Hypos
• Jacob files on 10/1/2013. What if:
• Jacob publishes article disclosing invention on
5/1/2013?
• Marc steals Jacob’s notes and places an embodiment
of the invention on sale on 2/1/2013?
• Marc steals Jacob’s notes and uses them to file a U.S.
patent application on 4/1/2013?
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 10
(B) Grace Period Events Hypos
• Elliott publishes an article disclosing invention on
1/1/2014 and files application claiming invention on
12/1/2014. What if:
• Aaron independently publishes an article disclosing
the same invention on 2/1/2014?
• Aaron files a patent application claiming the same
invention based on his own independent research on
4/1/2014?
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 11
For discussion
Is the new grace period more or less favorable to inventors?
In other words:
Does “disclosure” in new 102(b)(1)(A) and (2)(A) include
every activity by the applicant that would generate prior
art under 102(a)(1)?
Does “disclosure” in new 102(b)(1)(B) and (2)(B) include
every activity by a third party that would generate prior
art under 102(a)(1)?
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 12
More 102 Hypos
• Thomas conceives and reduces to practice on 8/1/2012
• Thomas files 6/1/2013
• On 5/1/2013, Andrew had published a journal article
disclosing the material later claimed by Thomas.
• Can Thomas get the patent?
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 13
More 102 Hypos
• Aaron enters into a confidential agreement with Matt’s
company to sell units of Aaron’s invention on 6/1/2013
• How long does Aaron have to file?
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 14
More 102 Hypos
• Aaron enters into a confidential agreement with Matt’s
company to sell products produced using Aaron’s secret
process invention on 6/1/2013
• Alex independently discovers the same process and
publishes an article disclosing it on 8/1/2013
• Aaron files a patent application on 9/1/2013
• Can Aaron get the patent?
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 15
More 102 Hypos
• Aaron enters into a confidential agreement with Matt’s
company to sell products produced using Aaron’s secret
process invention on 6/1/2013
• Alex independently discovers the same process and
publishes an article disclosing it on 8/1/2013
• Aaron files a patent application on 9/1/2013
• Alex files a patent application on 7/1/2014
• Who gets the patent?
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 16
More 102 Hypos
• Aaron enters into a confidential agreement with Matt’s
company to sell products produced using Aaron’s secret
process invention on 6/1/2013
• Alex independently discovers the same process and
publishes an article disclosing it on 8/1/2013
• Aaron files a patent application on 9/1/2013
• Alex files a patent application on 7/1/2014
• Aaron can prove a public disclosure on 7/15/2013
• Who gets the patent?
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 17
Prior User Rights
• Effective date: Applies to all litigation filed on or after
September 16, 2011
• Prior user right is a personal defense to infringement
liability; it does not invalidate a patent
• Cannot be asserted against universities or their ancillary
technology transfer organizations
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 18
Prior User Rights
• Elements
• Prior commercial use
• More than one year before filing
• Clear and convincing evidence
• No subject matter limitation
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 19
Best Mode
• Failure to state best mode:
• Can be basis for PTO rejection
• PTO can enforce through litigation
• Cannot be pleaded as invalidity or unenforceability
defense
Andrew Chin
[email protected]
AndrewChin.com
16-07-2015
Side 20