IP Innovations Class Pitfalls for Patent Practitioners December 9, 2010 Presented by: Kris Doyle KDoyle@KilpatrickStockton.com 1
PRESERVING FOREIGN PATENT RIGHTS 2
1st Takeaway Absolute novelty is not required by many countries. If prior disclosure, do not assume foreign patent protection is lost. 3
Example Disclose invention January 1, 2000. File U.S. priority application (prov. or non-prov.) on January 1, 2001. File foreign applications claiming priority to U.S. priority application on January 1, 2002. Are foreign patents valid? 4
2nd Takeaway If you wait to file foreign patent applications until a year from the U.S. priority date, you may have jeopardized your client s ability to obtain valid patents in many foreign countries. 5
Paris Convention Article 4 (A)(1) Any person who has duly filed an application for a patent... shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed [12 months for patents]. 6
Paris Convention Article 4 (B) Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention... and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of the first application that serves as the basis for the right of priority are reserved in accordance with the domestic legislation of each country of the Union. 7
3 rd Takeaway If disclosure occurs prior to filing a U.S. priority application, you may have to file a PCT or National application in countries of interest before expiration of the grace period in those countries of interest. Many countries will not let you rely on filing of the U.S. priority application within the specified grace period to preserve your patent rights. 8
Canadian Patent Act Section 28.2 (1) The subject-matter defined by a claim in an application for a patent in Canada must not have been disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere.... To satisfy this provision, a Canadian or PCT application must be filed within the one year grace period. If you do not file within a year of disclosure, you cannot claim priority to a U.S. priority application to save you. 9
Example Disclose invention January 1, 2000. File U.S. priority application (prov. or non-prov.) on January 1, 2001. Must file a Canadian or PCT application by January 1, 2001 (within the one year grace period). Same applies for Australia and Japan (only affords a 6 month grace period). 10
Mexican Patent Law Article 18 The disclosure of an invention shall not adversely affect its status as new if within twelve months prior to the filing date of the patent application or of the recognized priority, as the case may be, the inventor or his beneficiary made the invention known by any media, by either putting the invention to use or showing it at a Mexican or international exposition.... 11
Example Disclose invention January 1, 2000. File U.S. priority application (prov. or non-prov.) on January 1, 2001. Can file a Mexican or PCT application by January 1, 2002 and claim priority to the U.S. priority application to bring you within the 12 month grace period. Same applies for Brazil. 12
What to do now? Immediately determine client interest in foreign rights upon receipt of a new invention disclosure where there has been a prior disclosure and determine whether foreign rights are still available by contacting applicable foreign associates. 13
What to do now? Provide detailed circumstances of disclosure to foreign associates. Disclosure means different things in different countries. Geographical restrictions on where disclosure occurs may differ. Never assume you know the answer leave it to the experts! 14
CIPs A FALSE SENSE OF SECURITY? 15
Common CIP Scenario Parent Application Discloses A + B CIP Application Discloses A + B + C Thus, while the Parent Application sufficiently discloses A and B, the CIP Application contains new matter C, which is not sufficiently disclosed or inherent in the Parent Application hence the filing of a CIP instead of a straight continuation. 16
Common CIP Scenario Assume parent application publishes more than one year before CIP application filed (i.e., is 102(b) art). CIP application claims A+B+C. Examiner rejects CIP claim as obvious over parent (which discloses A+B) in view of a third party patent (which discloses C) Is the Examiner allowed to do this? 17
Priority Date of CIP Claims Priority date of CIP application is determined on a claim by claim, not element by element, basis. Different claims can have different priority dates. e.g., if CIP claim recites A + B, priority date of that claim will be the priority date of the parent application (112 support exists in the parent application). e.g., if claim recites A +B + C, priority date of that claim will be the filing date of the CIP (unless C is inherent in parent application). 18
Priority Date of CIP Claims In our example, the claim in the CIP application is not entitled to priority back to the parent application because all of its recited elements (A+B+C) do not have 112 support in the parent application. Thus, the parent application is prior art properly citable against the claim of the CIP. 19
MPEP Support Section 2233.01 Indexed as Continuation-in-part: Rejection over published priority document Suggests parent application may be cited against child. Section 2233.01 is entitled Rejections of Continuation-In-Part (CIP) Applications When applicant files a continuation-in-part whose claims are not supported by the parent application, the effective filing date is the filing date of the child CIP. Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the child will bar the issuance of a patent under 35 U.S.C. 102(b). Citing Paperless Accounting, Inc. v. Bay Area Rapid Transit Sys., 804 F.2d 659, 665 (Fed. Cir. 1986). 20
Case Law Support Paperless Accounting, Inc. v. Bay Area Rapid Transit Sys., 804 F.2d 659 (Fed. Cir. 1986) Parent application filed and abandoned. CIP application filed more than one year after French, British, and Canadian counterparts of the parent application issued (i.e., foreign patents prior art under 102(b)). 21
Paperless Accounting (cont.) Analysis of priority date is on a claim by claim basis: Whether the intervening foreign patent references are [102] bars against any or all of the claims of the [CIP] patent depends on the content and dates of the foreign references and the priority dates to which each of the [CIP] patent claims is entitled... If a claim of the [CIP] patent is adequately supported by the disclosure in the [] parent, the intervening references are of no effect. Foreign counterparts are citable against the CIP: If there are claims in the [CIP] patent which are not entitled to the [parent] filing date because they depend for patentability on new matter appearing for the first time in the [CIP], [] those claims [] must meet the requirements of patentability as if [the] foreign patents were any adverse reference. Foreign counterparts are only citable as 103 references: Thus if any claim of the [CIP] patent is determined to be limited to the filing date of the [CIP] on the basis that the disclosure of the [] parent is insufficient to support such claim, a corresponding foreign publication that is substantially the same [as the parent] is also insufficient to anticipate such a claim under 102(b). The correct role of the foreign publication in such cases is a reference under 103. 22
Case Law Support Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir. 1998) Parent application filed June 1, 1984. CIP filed March 24, 1987. British counterpart of parent published December 4, 1985 (i.e., more than one year before the CIP was filed). 23
Tronzo (cont.) Majority Opinion For a claim in a later-filed application to be entitled to the filing date of an earlier application [], the earlier application must comply with the written description requirement of 35 U.S.C. 112.... To meet this requirement, the disclosure of the earlier application, the parent, must reasonably convey to one of skill in the art that the inventor possessed the later-claimed subject matter at the time the parent application was filed. Intervening prior art included published British application. Holding: [B]ecause the specification of the [parent] fails to meet the written description necessary to support [the claims of the CIP] these claims are not entitled to the filing date of the parent application and are invalid as anticipated by the intervening prior art [which included the British counterpart]. 24
Tronzo (cont.) Judge Newman s Concurrence Concurred in finding of invalidity but the panel majority has erred in its treatment, as anticipating prior art under section 102(b), of Dr. Tronzo s own British counterpart of his United States parent application. A [CIP] application relates back to its parent s filing date for the common subject matter. Since the intervening publication of the common subject is antedated by the United States parent application, the British counterpart is [not] a statutory bar against the [CIP] application. The publication of the British counterpart of Dr. Tronzo s parent application does not deprive him of the benefit of the filing date of the parent application for the subject matter of the parent application. The contrary holding of the panel majority will have a dramatic adverse effect on continuation-in-part practice. The ruling that the disclosure in an inventor s parent application becomes prior art against a [CIP] application, when it is published before the filing of the [CIP] application, is a new and pernicious burden on inventor s who seek early entry into the patent system while continuing to investigate the subject of their invention. 25
Tronzo (cont.) Newman s Concurrence The issue is whether a patentee can rely on the filing of subject matter in a parent application in order to predate the later publication of that subject matter. According to the court s ruling today, the patentee loses the entire benefit of that earlier filing whenever a [CIP] is filed with additional data and broadened claims based in part on that data. That is, the patentee s own prior disclosure now becomes prior art against him. That is new, and incorrect, law. The purpose of the [CIP] is to permit an applicant to add new information and data, while retaining the benefit of the original filing date for what was originally filed.... With the court s holding today, such foreign patents are a statutory bar if the [CIP] is filed more than one year after the publication of the foreign counterpart. Thus the patentee is deprived of the benefit of the earlier filing date in the United States, whenever new matter and broader claims are added by [the CIP]. This destruction of the [CIP] practice is contrary to law and to the public interest. Appears to advocate priority determination of CIP claims on an element by element (versus claim by claim basis). 26
What Does Chisum Have To Say? Chisum 13.03 Claims that are dependent upon new matter added by a CIP application are entitled to the filing date of the CIP, not that of the parent application. See, e.g., In re Scheiber, 587 F.2d 59, (CCPA 1978) ; Lockwood v. American Airlines Inc., 877 F. Supp. 500, 507 (S.D. Calif. 1994) (Fed. Cir. 1997) ("if even a single feature of a claimed invention was first disclosed in the claimed new materials added to the CIP, and if it is not inherent in the parent application, then the claim is not entitled to the filing date of the parent application and the filing date is the date the CIP was filed."). A [CIP] application can be entitled to different priority dates for different claims. Claims containing any matter introduced in the [CIP] are accorded the filing date of the [CIP] application. However, matter disclosed in the parent application is entitled to the benefit of the filing date of the parent application. Waldemar Link, GmbH & Co. v. Osteonics Corp., (Fed. Cir. 1994). 27
So What Do We Do? General Practice Tips for CIP Applications Typically only arises if your parent qualifies as prior art under 102(b). If it qualifies only under 102(e), use 103(c) to disqualify the parent (assuming the requirements of 103(c) are met). If parent or foreign counterpart qualifies as 102(b), consider not filing as a CIP. You may be forfeiting term unnecessarily. Try to file the CIP before the parent application or any foreign counterparts publish or within one year of such publication. If parent application is still alive, consider whether you can introduce claims in the parent that might arguably cover the subject matter you want to cover in the CIP. Consider inherency. Try to draft CIP claims that have arguable 112 support in the parent application. Consider inherency. [T]he mere filing of a [CIP] with additional matter or revised claims is not of itself an admission that the matter is new or that the original application was legally insufficient to support the claims [in the CIP]. Paperless Accounting. So mine the parent for arguable support. 28
Questions? Send to Larry Roberts at LRoberts@KilpatrickStockton.com 29