Implications and Considerations for In-House Counsel in the Implementation of AIA First Inventor to File Provisions

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1 Implications and Considerations for In-House Counsel in the Implementation of AIA First Inventor to File Provisions I. AIA First Inventor to File System By Randi L. Karpinia, Motorola Solutions Inc. Since September 16, 2011 when the America Invents Act ( AIA ) was signed into law, much has been written and discussed regarding the legal and operational ramifications of the AIA on the patent life cycle. One particular aspect of the AIA, the provisions of a first inventor to file patent system, is expected to impact all phases of the intellectual property cycle including innovation, prosecution, entitlement and enforcement. Previous to the America Invents Act, the United States patent system had been a first to invent patent system. In a first to invent patent system, whoever is the first to invent or discover any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, and then diligently reduce it to practice, was the inventor and the party entitled to the patent. Many other countries utilize a first to file patent system, in which the right to a patent is awarded to the first person to file a patent application in the patent office for an invention. In a pure first to file patent system, a successful patentee must not only invent a new and novel concept, but also must win the race to draft and submit a patent application to the patent office that satisfies patent law requirements. The AIA merges aspects of each of a first to invent patent system and a first to file patent system, causing it to be referred to by many patent practitioners as a first inventor to file patent system. The AIA provisions implement a patent system which rewards inventors (and/or owners/assignees) who take affirmative steps in securing their patent standing, thereby establishing the innovation in the public domain. Because much has been written, taught, and discussed regarding the legal details of the first inventor to file provisions of the AIA, this paper alternatively focuses on providing practical suggestions for operational modifications which patent practitioners can consider when advising and counseling their innovators and their business clients on best practices for embracing a United States first inventor to file patent system post-march II. Invention Conception The first inventor to file provisions of the AIA most likely will impact the invention conception stage of the patent life cycle by providing incentive for inventing early due to the implied race to the patent office. This race to the United States Patent and Trademark Office increases the pressure on technical staff to produce technology innovation submissions with greater frequency. Therefore, it may be advantageous for organizations to prioritize innovation proposal submissions as soon as conceptualized, regardless of perceived value at the time of conceptualization. 1

2 A. Ideation With the race to the patent office generated by the first inventor to file system, it will be in an organization s best interest to be diligent in mining their business for inventions. Patent practitioners are therefore motivated to clearly explain the impact of these provisions of the AIA to inventors, technology managers, and other decision makers within their organization; and pro-actively assist in the re-evaluation of new invention creation and identification processes. Patent practitioners can provide timely and beneficial added value by being integrated into various client activities such as product and business meetings to ferret out inventions quickly instead of relying solely on inventors to timely submit innovation proposals. Patent practitioners may find it beneficial to be co-located with, and visible to, their clients to further enable timely invention capture. Some patent practitioners are considering, for example, encouraging their clients to prioritize the implementation of streamlined and frequent directed innovation sessions for proactive strategic patent portfolio development. Such directed innovation can be focused on strategic standards, areas of technology that are key to the business, potential solutions to known technical challenges, or filling in a gap in a technology portfolio. Directed innovation consists of structured brainstorming sessions to identify problem areas, critical innovations, and high level solutions. Directed innovation sessions can facilitate deeper discussions based on a consensus of a focused technology area. Directed innovation teams typically are comprised of cross-disciplinary members who will follow on with the research. The key steps of directed innovation include: identifying high level problems in need of solutions within a focus area, for top problems, identifying ideal attributes and characteristics, identifying constraints and/or conflicts that prevent the realization of the ideal attributes, and brainstorming on solutions within constraints and first pass enablement. B. Product Scrub Meetings Some patent practitioners are considering, as another example, encouraging their clients to prioritize the implementation of streamlined and timely product scrub meetings. A product scrub is an organized method that a project team can use to identify material that may be patentable, held during various stages of a research and development cycle. Product scrub meetings can assist in identifying new ideas to be considered for further protection, thereby strategically preserving the organization s patent rights. For a given product release, one or several product scrub meetings may be appropriate depending upon the complexity of the product and/or technology involved. During a product scrub meeting, for each innovation area under review, attendees typically discuss what has been done by the product team, what individual product team members have developed, and new techniques and procedures used for the new product. Patent counsel along with key technologists attending the meeting may help to prioritize the potential new ideas for patent consideration. C. Inventor Incentive Program Patent practitioners may further consider counseling their clients to re-evaluate inventor incentive award systems to promote impactful and desirable activities and behaviors within the 2

3 scope of the first inventor to file provisions of the AIA. For example, consideration may be given to providing front-loaded incentives to stimulate quick submission of innovation proposals and also to incentivize inventors to work responsively and effectively with patent counsel to timely prepare subsequent patent applications. III. Public Disclosure The AIA provides a one-year grace period during which publication of the invention by the inventor or someone who has validly obtained the invention from the inventor will not negate patentability and also can provide a shield against subsequent disclosures of the same invention by others during that period of time. This grace period is what differentiates the AIA patent system as a first inventor to file patent system rather than a strict first to file patent system. The AIA also excludes from prior art patent applications (unpublished prior to the effective filing date) that were owned or subject to assignment to the same entity not later than the effective filing date of the invention. A public disclosure can be, for example, a company website posting, a trade show presentation or demonstration, or even an unauthorized internet posting by a company employee. There has been much debate over the interpretation of this grace period. As the final rules have not been issued at the time of this writing, patent practitioners are encouraged to remain cognizant to the different possible interpretations and provide counsel to their clients once finalized. Interpretations currently under discussion include the presumption that this grace period means that if the inventor simply publishes the invention during the grace period and files a patent application thereafter, they will preserve their patent rights. When determining whether to counsel an organization to adopt such an interpretation, the associated patent practitioner should take into account the potential that not only would such a publication destroy the opportunity for a patent in countries with absolute novelty patent patentability requirements, but if another party discloses something that differs from the inventor s disclosure by even a minor amount, the United States Patent and Trademark Office may find the invention unpatentable. Patent practitioners, especially those working for global companies, may consider emphasizing to not only their inventing community, but anyone who communicates with the outside world including executives, marketers, sales people, and managers, for example, the need to avoid public disclosure of company technologies prior to patent application filing. Some patent practitioners, for example, encourage their clients to adopt an organization-wide policy in which a patent application is filed prior to the publication of conference papers, journal articles, white papers, and the like. The authors of such papers would be, of course, the named inventors on the patent application. For research universities and others active in scientific communication, it may be particularly important to document and regularly review past and future publications and all other types of public disclosure by inventors as well as non-inventors (e.g., lab personnel, students, public relations officers), including discussions at scientific meetings. Note that this is no different from current best practices for inventions desired to be patented in absolute novelty countries. Careful monitoring of inventor communications including, for example, a company-wide public disclosure approval process, may be very helpful to an organization. 3

4 IV. Innovation Proposal Submissions and Review Once the first inventor to file provisions of the AIA are implemented, it may be beneficial for patent practitioners to evaluate with their clients operational modifications which allow for enhanced innovation record keeping in decreased cycle time. A. Innovation Proposal Documentation It is probable that once the first inventor to file provisions of the AIA are implemented, record keeping and diligent documentation of inventions will continue to have great importance. The current proposed rules indicate a potential increased burden for recordkeeping and documentation over the present first inventor to invent system. The first inventor to file provisions of the AIA as currently proposed retain, in practice, the necessity to establish conception date and inventorship of claims in a patent application. Specifically, the current proposed implementation would require a showing that a certain disclosure obtained from an inventor is not prior art against that inventor s patent application. Therefore, many patent practitioners will continue to emphasize to their inventing community the need to document and retain proof of conception date. For example, some organizations have implemented standardized organization-wide innovation proposal submission procedures and forms for retaining dated and signed invention documents within inventor lab notebooks or computer files. Furthermore, under the first inventor to file provisions of the AIA, documentation of public disclosures by the inventors of their inventions, as well as communications by the inventors of their inventions to other parties appears necessary. For example, under the current proposed rules, to invoke the grace period non-inventor disclosure exception during patent prosecution to overcome an office action rejection by removing a prior art reference, applicants will have to show not only that the inventors are the inventors of the disclosed subject matter of the prior art reference, but also that they communicated the invention to another who disclosed it (i.e. in the cited prior art reference) potentially without the inventor s permission. Thus, in order to be able to invoke this exception, applicants will need to maintain good records not only of inventive activity, but also of public and non-public inventor disclosures, such as the content of any inventor public or non-public disclosures and the audience or recipient(s) of the disclosed information. B. Innovation Proposal Review Processes The first inventor to file provisions of the AIA as currently proposed may increase the pressure for organizations to analyze potential patentable inventions in a timely, expeditious manner. To the extent that an organization keeps an invention confidential while contemplating whether or not to file for patent protection, it is exposed to the possibility of losing the right to obtain a patent if a competitor files or discloses first. Some patent practitioners, therefore, are counseling their clients to re-evaluate and streamline processes for innovation proposal submission and review in light of the first inventor to file provisions of the AIA. Possible changes include increased frequency for innovation proposal analysis. For example, it may be beneficial for traditional innovation proposal committee reviews to take place frequently and be efficiently organized. 4

5 One mechanism for increasing the frequency and reducing cycle time of innovation proposal reviews is the implementation of a virtual review committee. Unlike traditional innovation proposal committees, virtual committees may not hold committee meetings in traditional conference rooms or conduct conference calls wherein remote members can call in. Rather, reviewers on virtual review committees may do their work primarily via electronic innovation proposal submission systems, document sharing, and/or , thus enabling the utilization of a worldwide population of experts to participate in an efficient manner through parallel analysis over multiple time zones. This model significantly increases efficiency in that committee members in the virtual review can address innovation proposals corresponding to their technical expertise quickly without relying on scheduling review meetings based on committee members calendar availability. Operation of a virtual innovation proposal review committee, for example, may begin with an innovator entering an innovation proposal and documentation into an online formatted system. Thereafter, the innovation proposal review is assigned to appropriate technical reviewers, business reviewers, and legal reviewers either in parallel or in sequence. As analyses are completed, they are entered into the online system. A final determination of whether to file a patent application or not is thereafter readily concluded. Operating in such a fashion, a virtual innovation proposal review committee provides an organization the capability for increased frequency and reduced cycle time of innovation analysis and decision-making. Lastly, whether utilizing a virtual or a traditional review committee, many organizations are considering optimizing the cycle time for attorney assignment, both inside and outside, after committee decision to further reduce overall cycle time towards the race to the patent office. C. Novelty Searching Pre-filing novelty searches may require a broader view of potential prior art under the first inventor to file provisions of the AIA. Under the proposed AIA rules, prior art is defined as information available to the public prior to the effective filing date of the relevant patent application, a later point in time than applied under the current first to invent system. Also, prior art now includes prior use and prior offers for sale of the invention anywhere in the world, not just in the United States. Therefore, many patent practitioners are counseling their clients to expand the scope of pre-filing novelty searches to include prior art with evidence of the invention being in public use anywhere in the world, on sale anywhere in the world, patented or published before the effective filing date, or otherwise available to the public before the effective filing date. V. Invention Theft Intellectual property theft is a significant and a growing concern. Confidential invention information can be stolen, for example, by an unauthorized user accessing an organization s computer systems, by an organization insider stealing confidential information, or by an employee inadvertently disclosing confidential information. Under the first inventor to file provisions of AIA, many in the community believe that they should encourage their clients to act quickly to protect new inventions since their vulnerability to invention theft appears to increase. Protecting inventions quickly minimizes the 5

6 window on both competitors who independently arrive at the same idea and unethical competitors who apply for a patent based on stolen innovation information. Under the first inventor to file provisions of the AIA, it is theoretically possible that when an innovation is stolen from its rightful owner and the thief files a patent application first, based on the dates alone, the United States Patent and Trademark Office would assume that the fraudulent first filer has the rights to the patent since it filed first. To enable the rightful owner to rectify the obvious injustice of this result, the AIA introduces a new derivation proceeding designed in part to provide a mechanism to recover stolen innovations. In the derivation proceeding, the rightful innovator can file a petition with the United States Patent and Trademark Office explaining the basis for the belief that the first filer stole the invention. In practice, it will often be difficult or impossible for the rightful innovator to meet the requirement of filing a petition that must be supported by substantial evidence that the idea was stolen. An additional complication is that there is a relatively short window during which the petition can be filed. The applicant of the later-filed application must file a petition within one year of the first publication of a relevant claim in the earlier application, even if that claim has not yet undergone examination and may not be patentable. A second remedy path may be through litigation in federal court, which provides its own challenges in establishing the theft. Therefore, in response to the first inventor to file provisions of the AIA, some patent practitioners are counseling their clients to increase monitoring of published patent applications to search for possible theft, especially from known competitors. Some patent practitioners further are assisting their clients to develop an enhanced process for third party submissions when potential detrimental patent applications are identified through the monitoring process. Under AIA, third-parties will be able to submit prior art documents for consideration and inclusion in the record of any patent application. Submissions must be made in writing before the earlier of: (1) issuance of a notice of allowance; or (2) the later of: (a) 6 months after publication of the application; or (b) the date of a first rejection of any claim. Submission must include a concise description of the asserted relevance of each reference, and may only include patents, published patent applications, or other printed publications. This proactive process can thus provide an additional avenue for protection. Further, patent practitioners may encourage their client organizations to consider enhancing their anti-patent theft policies and actions including, for example, further employee education, ensuring all intellectual property security procedures are up-to-date and relevant especially with regards to server environments, tightening and refining procedures for intellectual property confidentiality among employees currently employed and those that exit the organization. Such actions, coupled with expeditious filing of patent applications may provide safeguards against unethical innovation theft. VI. Trade Secrets The AIA as currently proposed for implementation, potentially will provide stronger protection for trade secrets. Under the AIA, prior art scope includes an otherwise available to the public element. Previously, courts have long held that sale of products manufactured by a non-disclosed process constituted a public use of that process even if the invention cannot be observed by the public. 6

7 Legislative history suggests the AIA was intended to overrule the previous court approach. For example, in the congressional record Senator Leahy noted the intent to do away with precedent under current law that private offers for sale or private uses or secret processes practiced in the United States that result in a product or service that is then made public may be deemed patent-defeating prior art. In other words, a company can keep a process to make a product trade secret for a period of time even though the product resulting from the process is publicly available (patented or otherwise sold), then later on the process can be patented. Patent practitioners therefore may counsel their clients to the benefits of patenting a secret process for making a product years after the product itself was patented. VII. Patent Application Preparation and Filing As mentioned previously, the first inventor to file provisions of the AIA emphasize the need for inventors to file as early as possible in order to establish the earliest possible effective filing date. Filing early mitigates the risk of a competitor with substantially the same invention establishing an earlier effective filing date. However, it is not in the best interest of any organization or individual inventor to sacrifice the quality of a resultant patent application in order to expedite patent preparation and filing. A. Minimizing Patent Application Preparation Cycle Time Under the first inventor to file provisions of the AIA, the filing of patent applications as early as possible will provide numerous advantages to an organization. Under the first inventor to file provisions of the AIA, subject matter of priority applications filed in any country, in any language, may be available as prior art for novelty and obviousness purposes as of the original effective filing date. It therefore beneficial to file patent applications soon after the invention is created. Some patent practitioners therefore are counseling their client organizations to file priority patent applications as early as possible to facilitate the earliest potential filing date. One approach, for example, is to file a series of priority documents for both defensive purposes and to protect strategic technologies. Another approach is to file multiple priority applications throughout a priority year, as technologists refine their inventions, to provide the earliest effective filing date and earliest effective prior art date for the application as well as any subsequent applications claiming benefit of the priority application. In some instances, it may not be strategically practical to spend several months debating whether the invention is worth the economic benefit of a patent application filing as such delay may result in an intervening prior art event by a competitor. A patent practitioner may wish to discuss with each inventor, at the very onset, a time frame for filing patent applications. Application preparation processes can be streamlined by evaluating past delays and their causes. 1. Co-writing Patent Applications As with other portions of the patent life cycle previously discussed, the first inventor to file provisions of the AIA challenge organizations to be creative in patent application 7

8 preparation processes. One non-traditional procedure to consider is the co-writing of patent applications. This process, also referred to as a divide and conquer (DAC process) not only may improve cycle time and quality, but may have the added benefit of providing a vehicle for learning from peers without negatively impacting productivity. When implemented, the typical scenario for a DAC process is a team of two patent practitioners working together on each suitable application. One practitioner writes the claims and the other writes the specification. The practitioner writing the specification reviews the claims for consistency with the specification and drawings. For highly strategic applications, the practitioner writing the claims additionally reviews the specification. Ideally, the two patent practitioners meet with the inventors for an entire day. First, they all work together as a group to understand the key aspects of the invention, develop the application figures, and agree on terminology. This first step is imperative to insure that all claim language is supported by the specification and to reduce the potential for clarity issues within the claims. Thereafter, at least one inventor works with one patent practitioner to write the specification based on the figures, and at least one inventor works with the other patent practitioner to write the claims based also on the figures. Since both pairs are working ideally in the same room, they can clarify aspects and terminology and modify the specification, claims, and drawings real-time as needed. Typically, the patent practitioner who writes the specification would be responsible for completing the patent application by merging the figures, specification, and claims including assuring all patent law requirements are met. The specification writer independently can add some claims as well to provide a different viewpoint of the claim set. By utilizing the DAC process, a quality patent application can be ready for filing within days instead of the traditional weeks. 2. Provisional Patent Applications Under the first inventor to file provisions of the AIA, it is likely that the use of provisional patent application filings and strategies will increase. Because some of the formalities required for patents are relaxed for provisional applications, the time required to prepare a provisional application typically is less than would otherwise be required to prepare a full patent application. Among the patent practitioner community, there is discussion of counseling client organizations to replace procedures such as conducting a patent search or determining how the invention affects their bottom line prior to patent application preparation, with routinely filing provisional patent applications, even if these applications consist of little more than the initial innovation proposal submissions. Patent practitioners and organizations should keep in mind that a provisional patent application is only effective to establish an invention priority date if the application complies with patent law provisions concerning the technical sufficiency of the disclosure. As discussed previously herein, a strong relationship between the patent practitioner and the inventors can be extremely beneficial. Many patent practitioners have found benefits in engaging with their inventors early in the process and remaining involved in all aspects pre-preparation to ensure a strong, quality, provisional patent application document. Some patent practitioners are counseling their client organizations to utilize serial filing of provisional applications to secure earliest filing dates for particularly strategic technologies. After filing an initial provisional application describing a particular innovation, subsequent provisional applications can be filed which build up scope and strength of the 8

9 invention after the initial provisional/non-provisional filing. This type of serial provisional application filing strategy can be valuable to cover sequential improvements of a basic technology and to establish early filing dates for these improvements at relatively low cost. This same strategy can be used to build upon the initial filing, including filling in any gaps that were left by the need to make that initial filing in an expeditious manner, and to possibly change or correct the scope of the invention defined in that initial filing. B. Statements in Patent Applications The first inventor to file provisions of the AIA as currently proposed provide for a number of new statements to be included in new patent application documents: some required and some purely desirable. Each patent practitioner will need to review the final required statements and modify processes and documents accordingly once the United States Patent and Trademark finalizes the first inventor to file provisions. For example, the current proposal for implementation of the first inventor to file provisions of the AIA requires that if a nonprovisional application filed on or after March 16, 2013 claims the benefit of the filing date of a foreign, provisional, or non-provisional application filed before March 16, 2013 and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, then the applicant must provide a statement to that effect within a specified time period. According to the guidelines, examination costs will significantly increase if the United States Patent and Trademark Office must determine on its own the effective filing date of every claim ever presented in an application filed on or after March 16, 2013, that claims priority to an application filed prior to that date. Also, the United States Patent and Trademark Office proposes that if a nonprovisional application filed on or after March 16, 2013 claims the benefit of the filing date of a foreign, provisional, or nonprovisional application filed before March 16, 2013 and does not contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013, but discloses subject matter not also disclosed in the prior-filed application, then the applicant must provide a statement to that effect within a similar specified time period. The following statement would satisfy this requirement: Upon reasonable belief, this application contains subject matter not also disclosed in the foreign, provisional or nonprovisional application. The proposed rules do not require that these statements specify which claims have an effective filing date on or after March 16, 2013 or what subject matter was not disclosed in the prior application. The United States Patent and Trademark Office indicates that the following statement would satisfy this requirement: Upon reasonable belief, this application contains at least one claim that has an effective filing date on or after March 16, The effect of such a statement is that the United States Patent and Trademark Office would apply the new laws to all claims of the application and not merely to the claim with the later effective filing date. Accordingly, applicants should take caution to avoid the inclusion of material not supported by the original priority application unless it is critical to the invention being claimed. The United States Patent and Trademark Office also notes in the proposed rulemaking that if an applicant files an untimely statement, or retracts a previously made statement, then the United States Patent and Trademark may issue a requirement for information pointing out 9

10 support for the claims having an effective filing date prior to March 16, 2013 in the prior application(s) filed before March 16, Also, to simplify identification of grace-period disclosures, the proposed implementation rules suggest inclusion of a statement identifying such grace-period inventor disclosures into the specification. Whether explicitly required or not in the final rules, patent counsel should consider including a statement identifying grace-period disclosures in the specifications of all applications filed on or after March 16, Such a statement should identify any public disclosures an inventor made regarding the claimed invention a year or less before the effective filing date of the claimed invention in order to expedite prosecution and to avoid a rejection based on the disclosure. Such identified disclosures would not be treated as prior art during examination, provided there is no evidence to the contrary. C. Timing Requirements and Transition If a provisional or foreign application is pending and the patent practitioner needs to add subject matter when filing a corresponding nonprovisional application, the patent practitioner may consider filing the nonprovisional application before March 16, 2013 so that the nonprovisional application is not subject to the first inventor to file system and the requirements of the proposed rulemaking. Similarly, patent practitioners, where feasible, may consider filing any continuation in part (CIP) applications before March 16, To prevent United States patent applications with a first priority date on or after March 16, 2013 from inadvertently becoming subject to the first inventor to file law, patent practitioners may consider filing any United States for Patent Cooperation Treaty patent application containing added subject matter before March 16, If filing the United States or Patent Cooperation Treaty patent application prior to March 16, 2013 would unacceptably shorten the potential United States patent term, then a patent practitioner may consider filing a second priority application directed to the additional subject matter just prior to March 16, 2013 to secure an early priority date for as much subject matter as possible. In a situation in which there is clear support for a narrow but commercially significant invention in a priority application filed on or after March 16, 2013 and subject matter will be added to a Patent Cooperation Treaty patent application filed on or after March 16, 2013, patent practitioners may consider filing a United States nonprovisional patent application at the end of the priority year directed only to the subject matter of the priority application. Filing of such a parallel United States patent application can avoid the negative consequences of presenting claims in the Patent Cooperation Treaty patent application which are later determined to have an effective filing date on or after March 16, D. First Filed Foreign Patent Applications Under the first inventor to file provisions of the AIA, there is no difference between the effect of a first filed foreign patent application and a first filed United States patent application as long as the United States patent application is filed within one year of the foreign application. In the proposed rulemaking, the United States Patent and Trademark Office proposes a requirement that a certified copy of foreign patent applications to which a United States patent application claims priority be provided in a specific time period. In particular, the United States Patent and Trademark Office proposes to specify that in an original patent application which 10

11 claims priority to a foreign patent application, the claim for priority, as well as the certified copy of the foreign patent application, must both be filed within the later of four months from the actual filing date of the patent application or sixteen months from the filing date of the prior foreign patent application. Applicants can use the priority document exchange program with the European Patent Office, the Japan Patent Office, the Korean Intellectual Property Office, and the World Intellectual Property Organization in fulfilling the requirement for certified copies of foreign priority documents. The requirement will be considered satisfied if the applicant files a request, in a separate document, that the United States Patent and Trademark Office obtain a copy of the foreign patent application from a foreign intellectual property office participating in the priority document exchange program; the foreign patent application is identified in an application data sheet; and the copy of the foreign patent application is received by the United States Patent and Trademark Office within the required time period or by such later time as may be set by the United States Patent and Trademark Office. E. Docketing Considerations Patent practitioners are encouraged to re-evaluate their current docketing procedures in view of the first inventor to file provisions of the AIA including considering the inclusion within their docketing system of reminders for (1) filing a certified copy of foreign priority documents within the required time period and (2) making any necessary statements for applications filed on or after March 16, 2013 claiming priority to, or the benefit of, an application filed before March 16, F. Employee Assignment Obligations Under the AIA, prior disclosures appearing in earlier-filed, later-published United States patents and applications are not included as prior art if the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person, not later than the effective filing date of the claimed invention. Many organizations have employees in multiple countries, employed by different legal entities, or assign patent ownership to different legal entities in different countries. Patent practitioners may discuss with their client organizations steps to ensure that there is at least an obligation to assign a later filed priority patent application, no later than the priority filing date, to the same legal entity that owns an earlier filed United States patent or patent application. For example, a European parent company and a United States subsidiary may not be considered the "same person" for such purposes. Patent practitioners may suggest that their client organizations review their employee assignment obligations carefully therefore and adjust accordingly. VIII. Prosecution Practices A. Effective Dates and Impact of Claim Amendments The implementation of AIA creates a new challenge in that a determination of which patent system to apply during the prosecution of a patent application will now be necessary. After March 16, 2013 there will be three types of applications or patents: 1. patent applications in which all claims have an effective date after March 16, 2013 and thus are solely prosecuted under the new AIA first inventor to file rules; 11

12 2. patent applications in which all claims have an effective date before March 16, 2013 and thus are solely prosecuted under the old (pre-aia) rules; and 3. patent applications in which at least one claim has an effective filing date before March 16, 2013, and at least one claim has an effective filing date on or after March 16, 2013) and thus are prosecuted under a hybrid set of rules. The prosecution of patent applications thus will call for constant thought by each patent practitioner into which patent system rules will become applicable dependent upon treatment of the claims. The impact to patent prosecution when a patent application ends up falling into the hybrid category may be detrimental to patentability. For example, even if a claim with an effective date prior to March 16, 2013 is canceled leaving only March 16, 2013 or later claims, the entire patent or patent application and any continuation, divisional, or continuation in part patent application is subject to the first to invent and the AIA prior art rules. Therefore, some patent practitioners are planning to avoid the mixing of pre-aia and post-aia claims in one patent application. In the situation where it is desirable to keep both types of claims, two separate patent applications can be filed (one with pre-aia claims and a separate with post-aia claims). The patent applications, for example, can be duplicates with the differing claim set. B. Documentation of Inventor Disclosures As mentioned previously, under the first inventor to file provisions of the AIA, it may be important to monitor and document the communications pertaining to the invention since activities falling into the new category otherwise available to the public should be disclosed to the United States Patent and Trademark Office in information disclosure statements to fulfill the duty of the disclosure requirement, which will remain in force after the AIA takes effect. Further, during prosecution, AIA as currently proposed allows for the submission of Affidavits or Declarations for establish that a disclosure is not prior art due to an exception for inventor disclosures. There are three categories of disclosures that can be overcome by establishing the disclosure is not prior due to such an exception. The first category includes rejections based on disclosures made by an inventor. In such an instance, the affidavit or declaration must provide a satisfactory showing that the inventor is in fact the inventor of the subject matter of the disclosure. The United States Patent and Trademark Office notes that if the disclosure includes additional authors, not named as an inventor on the application, a reasonable explanation for the presence of the non-inventor author should be included. The second category includes rejection based on disclosures made by a non-inventor who obtained the subject matter disclosed directly or indirectly from an inventor. In such instances, the affidavit or declaration must provide a satisfactory showing that an inventor is the inventor of the subject matter of the disclosure (this is the same showing needed for the first category of disclosures discussed above) as well as provide a showing that an inventor directly or indirectly communicated the subject matter of the disclosure to the non-inventor. The USPTO indicates that the direct or indirect communication of the subject matter of the disclosure to the party must be sufficient to enable one of ordinary skill in the art to make the subject matter of the claimed invention. 12

13 The third category includes rejections based on disclosures by another made after a public disclosure of the subject matter by an inventor or a non-inventor who obtained the subject matter publicly disclosed from an inventor. In such instances, the affidavit or declaration must identify and provide the date of the earlier disclosure of the publicly disclosed subject matter. If the earlier disclosure was a printed publication, then a copy of the printed publication must accompany the affidavit or declaration. If the earlier disclosure was not a printed publication, then the affidavit or declaration must describe the earlier disclosure with sufficient detail and particularity to determine that the earlier disclosure is a public disclosure of the subject matter. In addition, if an inventor made the earlier public disclosure of the subject matter, then the showing required for the first category of disclosures discussed above must also be provided in the affidavit or declaration. Also, if a non-inventor made the earlier public disclosure of the subject matter after obtaining the subject matter directly or indirectly from an inventor, then the showings required for the second category of disclosures discussed above must also be provided in the affidavit or declaration IX. Post Grant Practices Under AIA, third-parties may submit prior art documents and patent owner statements for inclusion in the record of any issued patent. Submissions may be made at any time, and may include prior art consisting of relevant patents or printed publications and patent owner statements regarding claim scope filed in a proceeding before the United States Patent and Trademark Office or federal court. To be included in the official file of the patent, submissions must include a written explanation of the pertinence and manner that the submission can be applied to at least one claim of the patent. The identity of the third party submitter can be made confidential upon written request. Therefore, patent practitioners are encouraged to be cautious when making statements regarding claim scope in United States Patent and Trademark Office and court proceedings. Those statements and additional related documents may be submitted by a third party and used by the United States Patent and Trademark Office for claim construction if the patent is later subjected to reexamination, inter partes review, or post-grant review. Some patent practitioners are counseling their client organizations of the benefits of monitoring competitors issued patents to submit prior art as an offensive strategy, especially if it is foreseeable that those patents may be asserted against one in the future. Confidential submissions are permitted for issued patents. X. Conclusion It is expected that the first inventor to file provisions of the AIA will dramatically change the way inventions are protected in the United States. Although much of its implementation is currently still open for interpretation, it is in the best interests of the prudent patent practitioner to begin planning now. Begin discussing potential operational implications and suggested modifications with business clients now to ensure a clear understanding and efficient transition in March