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:
- Public uses, sales, offers for sale, etc., no longer have geographic limitations; instead, these activities occurring anywhere in the world may constitute prior art.
- For prior art purposes, U.S. patents and patent application publications, as well as PCT publications designating the United States (in any language), are available as prior art as of their effective filing date, which can include a foreign priority date if appropriate support and other requirements are satisfied.
- A limited one-year grace period remains, but it is personal to the inventor and does not cover third-party disclosures, notwithstanding some limited exceptions.
- Under certain circumstances, common ownership or joint research agreements can overcome anticipation as well as obviousness rejections, whereas pre-AIA, only obviousness rejections could be overcome.
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.
Time Period for Submitting a Certified Copy of the Foreign Priority Application
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:
- the priority application was filed in a participating foreign intellectual property office, or if a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the USPTO to obtain such a copy, and the USPTO either receives a copy of the foreign application from the participating foreign intellectual property office or a certified copy of the foreign application within the pendency of the application and before the patent is granted; or
- the applicant provides an interim copy of the original foreign application within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application, and files a certified copy of the foreign application within the pendency of the application and before the patent is granted.
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.
Statements Required for Nonprovisional Applications Claiming Priority to or the Benefit of an Application Filed Prior to March 16, 2013
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.
Affidavits or Declarations Showing a Prior Disclosure by an Inventor or Another Who Obtained the Subject Matter from an Inventor
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.
Identical "Subject Matter" Requirement for Intervening Prior Art Disclosure
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.
Secret "Sale" or "Use" Is Not Prior Art
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.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.