First-Inventor-to-File Duke Patent Law Institute May 14, 2013 Presented by Tom Irving Copyright Finnegan 2013
Disclaimer These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law. These materials reflect only the personal views of the joint authors and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, the author and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with the author and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. While every attempt was made to ensure that these materials are accurate, errors or omissions may be contained herein, for which any liability is disclaimed.
Under AIA, May End Up That Inventor Does Not Get Patent Even If First To File New 35 U.S.C. 102 and 103, which do not always result in the first inventor to file an application being entitled to a patent (e.g., AIA 35 U.S.C. 102(a)(1) precludes an inventor who is the first person to file an application for patent, but who published an article describing the claimed invention more than one year before the application was filed, from being entitled to a patent). See Examination Guidelines, 78 Fed. Reg. 11,070 (Feb. 14, 2013) 3
USPTO Recognizes Courts Will Ultimately Interpret the AIA The Office appreciates that the courts may ultimately address questions concerning the meaning of AIA 35 U.S.C. 102 and 103. However, as a practical matter, the Office needs to provide examination guidelines so that the public is aware of how the Office will apply AIA 35 U.S.C. 102 and 103. The Office considers its interpretation of AIA 35 U.S.C. 102 and 103 as set forth in these examination guidelines to be the correct interpretation of AIA 35 U.S.C. 102 and 103 based upon the statutory language of the AIA and its legislative history. See Examination Guidelines, 78 Fed.Reg. 11,061 (Feb. 14, 2013) 4
effective filing date is the key to navigating the road-map of AIA, pre-aia, and the Jedi Master Mixer Choice of Law Issues! 5
New Definition of Prior Art Under AIA Because the changes to 35 U.S.C. 102 and 103 in the AIA apply only to specific applications filed on or after March 16, 2013, determining the effective filing date of a claimed invention for purposes of applying AIA 35 U.S.C. 102 and 103 provisions or pre-aia 35 U.S.C. 102 and 103 provisions is critical. See Examination Guidelines, 78 Fed.Reg. 11,083 (Feb. 14, 2013) 6
Pre-AIA or AIA Definition of Prior Art is on Application-by-Application Basis under pre-aia law, the effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis. That is, the principle that different claims in the same application may be entitled to different effective filing dates vis-à-vis the prior art remains unchanged by the AIA. However, it is important to note that although prior art is applied on a claim-by-claim basis, the determination of whether pre- AIA 35 U.S.C. 102 and 103 or AIA 35 U.S.C. 102 and 103 apply is made on an application-by-application basis. See Examination Guidelines, 78 Fed.Reg. 11,073 (Feb. 14, 2013) 7
First AIA Transition Provision: EFD after 3/15/13 SEC. 3(n)(1) Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, [March 16, 2013] and shall apply to any application for patent that contains or contained at any time: A. a claim to a claimed invention that has an effective filing date as defined in section 100(i) [remember: entitled to ], that is on or after the effective date described in this paragraph [March 16, 2013]; or B. a specific reference under 120, 121, 365(c) to any patent or application that contains or contained at any time such claim. [antecedent for such claim has to be sub.para. (A)?] 8
Second Transition Provision: EFD Before 3/16/13 and After 3/15/13!! SEC. 3(n)(2): The provisions of sections 102(g), 135, and 291 of title 35, United States Code, as in effect on [March 15, 2013], shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time (A) a claim to an invention having an EFD as defined in section 100(i) of title 35, United States Code, that occurs before [March 16, 2013]; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim. 9
FITF Examination Guidelines: SEC. 3(n)(2) section 3(n)(2) does indicate that the provisions of 35 U.S.C. 102(g), 135, and 291 as in effect on March 15, 2013, shall apply to each claim of an application for patent, and not simply the claim or claims having an EFD that occurs before March 16, 2013, if the condition specified in section 3(n)(2) occurs. Therefore, each claim of an application presenting a claim to a claimed invention that has an effective filing date before March 16, 2013, but also presenting claims to a claimed invention that has an effective filing date on or after March 16, 2013, is subject to AIA 35 U.S.C. 102 and 103 and is also subject to the provisions of 35 U.S.C. 102(g), 135, and 291 as in effect on March 15, 2013. See Examination Guidelines, 78 Fed. Reg. 11069, 11072 (Feb. 14, 2013) 10
SEC. 3(n)(2): the Mixer! Some may seek out SEC.3(n)(2), owing to advantages of AIA. Elimination of Metallizing Engineering forfeiture (according to USPTO); liberalization of the CREATE ACT and common ownership in 102(c); possible elimination of pre-aia statutory bars that are not AIA prior art, such as the secret sale!!! Jedi Master Mixer! 11
USPTO Says No Forfeiture in AIA USPTO: With respect to comments that Metallizing Engineering and other forfeiture doctrines should be preserved because they serve important public policies, the Office notes that the choice of which public policies to pursue through the definition of prior art is made by Congress, not by the Office. Also, some of the purposes ascribed to these doctrines in case law appear to be illsuited to or inconsistent with the AIA. The problem of delayed filing of applications is unique to pre-aia 35 U.S.C. 102, under which an applicant can rely on a secret invention date in order to establish a priority date. See Examination Guidelines, 78 Fed.Reg. 11,062 (Feb. 14, 2013) 12
Hilmer Doctrine Abolished by 102(d): Hilmer Doctrine evidenced bias of U.S. law against inventions originating outside the U.S. Based on two U.S. decisions (Hilmer I and II) that held that the foreign right of priority of a U.S. patent does not provide a prior art effect under 102(e) as of that foreign priority date, nor does inventive work outside the U.S. have a prior art effect under 102(g). Rather, one needed a U.S. filing date to have a prior art effect. 13
Impact of 102(d)(2) Prior Art Date Following publication, disclosure has retroactive availability as prior art as of the date effectively filed for novelty and obviousness purposes. Prior art date Pub. Appl. U.S. Prov. Appl. U.S. Appl. Non-Prov. English USPAT Prior art date Pub. PCT Appl. CN Prior art date PCT (des. U.S.) Chinese Pub. PCT Appl. USPAT FR PCT French (des. U.S.) NO geographical or language distinction Entitlement to claim priority/benefit of US Prov App., CN app., and FR app. Important date is when effectively filed not when published. Hilmer doctrine abolished. USPAT 14
AIA Changes the Secret Sale The guidelines evidence the Office s intent to treat the phrase on sale in AIA 35 U.S.C. 102(a)(1) as having the same meaning as on sale in pre- AIA 35 U.S.C. 102(b), except that the sale must make the invention available to the public. (emphasis added). See Examination Guidelines, 78 Fed.Reg. 11,075 (Feb. 14, 2013) 15
The Jedi Master Mixer: you want AIA or pre-aia or both? (Effective FD) Filed! Filed! file CIP <1 Year Private on sale in U.S. <1 Year 3/16 /13 Assume U.S. filing is pre-aia; file CIP on or after 3/16/13 after US filing but before publication. Present at least one AIA claim and at least one pre-aia claim. Under 3(n)(2), possible statutory use bar for pre- AIA claim vanishes!!! 16
Straddling the Effective Date PCT Filing First to Invent System Applies Enactment: Sept. 16, 2011 Priority Date First To Invent System or FITF System? (see SEC. 3(n)(1)(A) and (n)(2)) (Even if one claim not supported at priority date is eventually canceled, still in FITF.) PCT Filing Enactment: Sept. 16, 2011 Scenario 1: no claims entitled to priority date: FITF Scenario 2: all claims entitled to priority date: first-to-invent Scenario:3: at least 1 claim not entitled to priority date: mixed Priority Date PCT Filing FITF System Applies Enactment: Sept. 16, 2011 Effective Date: March 16, 2013 Assumes priority date is ex-us 17
Intentionally Creating the Jedi Master Mixer Need an application 1 filed before March 16, 2013 and still pending. Need an application 2 filed after March 15, 2013 claiming priority/benefit of application 1 and also containing at least one claim with an EFD before March 16, 2013, and at least one claim with an EFD after March 15, 2013. 18
Intentionally Creating the Jedi Master Mixer Application 2 could be a CIP. Application 2 could be a continuation filed along with a preliminary amendment presenting at least one claim with an EFD after March 15, 2013. If JMM not intended, may be prudent to file the preliminary amendment at least one day after the continuation. 19
JMM Can be Filed Years After 3/15/13 Simply need an Application 1 having at least one claim with an EFD before March 16, 2013. Application 2 could be a continuation or CIP claiming benefit of Application 1. 20
The Latent JMM Could file a potential JMM Application 2 after March 15, claiming benefit of Application 1 but not yet claiming the post- March 15 EFD subject matter. Claim that post-march 15 EFD subject matter later, basically as long as Application 1 is still pending. 21
FITF USPTO FINAL RULES Published Feb. 14, 2013, Prepublished Feb. 13, 2013, effective March 16, 2013. Relate to AIA SEC. 3 (changes to 35 U.S.C. 102 and 103), which are effective March 16, 2013, but apply only to certain applications filed on or after March 16, 2013. 22
FITF USPTO FINAL RULES: Statement Required for JMM Applications Commentary: Statement is so PTO Can Make Proper Choice of Law Response to Comment 15: Sections 1.55 and 1.78 as adopted in this final rule do not require an applicant to make a prima facie case of entitlement to a patent. Rather, the requirement for a statement for certain transition applications simply requires the applicant to provide information that will be used by the Office as an aid in determining whether to examine the application under AIA 35 U.S.C. 102 and 103 or pre-aia 35 U.S.C. 102 and 103. 78 Fed. Reg. 11,040 (Feb. 14, 2013) 23
FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary: Practical Implementation ADS: Application data sheet revised to include check box. PAIR: The idea is that J.Q. Public can see in PAIR whether an application being examined as a pre-aia application or AIA application. But can J.Q. figure out the delayed Jedi Master Mixer? 78 Fed. Reg. 11,040 (Feb. 14, 2013) 24
FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary: The 112 Defective Claim After 3/15/13 Does not an AIA Application Make? Claims added after March 15, 2013, fully supported by pre-aia priority application, do not automatically trigger requirement for statement or application of AIA 35 U.S.C. 102 and 103. Amendments on or after March 16, 2013: Same is true for an amendment to an application filed on or after March 16, 2013, entitled to benefit of pre-aia priority application, seeking to add a claim to a claimed invention that is not supported in pre-aia priority application. Proper approach is for examiner to reject claim as new matter and the applicant could dispute that but it would not automatically move the whole application into AIA. 78 Fed. Reg. 11,040 (Feb. 14, 2013) 25
FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary: PTO Views that Presentation After 3/15/13 of a Claim with an EFD Before 3/16/13 Does Not Move the Application into AIA The addition of a claim in a transition application that is directed to subject matter fully supported in a pre-aia benefit or priority application would not itself trigger the statement requirement under 1.55 or 1.78 and would not make the application subject to AIA 35 U.S.C. 102 and 103. See next slide. 78 Fed. Reg. 11,040 (Feb. 14, 2013) 26
FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary: The PTO Tackles the Improper 112 Claim Issue For an application filed on or after March 16, 2013, that discloses and claims only subject matter also disclosed in a previously filed pre-aia application to which the application filed on or after March 16, 2013, is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim to a claimed invention that is directed to new matter would not convert the application into an AIA application. 78 Fed. Reg. 11,040 (Feb. 14, 2013) 27
FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary: The PTO Tackles the Improper 112 Claim Issue 35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure and thus an application may not actually contain a claim to a claimed invention that is directed to new matter. the new matter is required to be cancelled from the written description and the claims directed to the new matter are rejected under 35 U.S.C. 112(a)(MPEP 608.04). This process for treating amendments containing new matter is purely an administrative process for resolving disputes between the applicant and an examiner as to whether a new drawing or amendment to the written description or claims would actually introduce new matter. 78 Fed. Reg. 11,040 (Feb. 14, 2013) 28
FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary Summary: Transition Application: Thy Name is the Jedi Master Mixer (JMM) Once in AIA, cannot go back to pre-aia. If application is mixed ( transition application ) with at least one claim with an EFD before March 16, 2013, and at least one claim after March 15, 2013, even if the post- March 15, 2013, claims are canceled, application will be examined under AIA and also under 102(g) because it is a JMM or transition application. File continuation or divisional of pre-aia parent containing only claims with EFD before March 16, 2013, and that will be examined under pre-aia only. 29
FITF USPTO FINAL RULES: Statement Required for Mixed Applications Rules Commentary: lost vision of JMM? If an application on filing contains at least one claim having an effective filing date before March 16, 2013, and at least one claim having an effective filing date on or after March 16, 2013, the application will be examined under AIA even if the latter claims are cancelled. However, if a pre-aia parent application is pending and an applicant inadvertently files a continuing application with claims having an effective filing date on or after March 16, 2013, the applicant could file a continuation or divisional application from the pre-aia parent application without any claim to the benefit of the AIA application and without any claim to a claimed invention having an effective filing date on or after March 16, 2013. In this situation, the continuation or divisional application would be examined as a pre-aia application under pre-aia 35 U.S.C. 102 and 103. 78 Fed. Reg. 11,043 (Feb. 14, 2013) 30
What If Applicant and PTO Do Not Agree? Exelixis I/Novartis B Delay for PTA? FITF Exam Guidelines state that each examining group will have staff to help the PTO determine whether the application is a pre-aia application or an AIA application. If a disagreement between the applicant and an examiner cannot be resolved informally and results in a rejection that would otherwise be inapplicable, the applicant may respond to the merits of the rejection with an explanation of why the Office s treatment of the application as a pre-aia application or an AIA application is improper. Appeal: If cannot be resolved, applicant would have to appeal. See Examination Guidelines, 78 Fed.Reg. 11,061 (Feb. 14, 2013) 31
JMM Can Bring Back Antedation for All Claims But, pre-aia 102(g) prior art can be antedated for all claims So, for all claims in a JMM application, a prior date of invention can be proved to overcome any 102(g) prior art that comes up, or in any interference or interfering patent litigation that arises under 135 and 291, (also apply to all claims under AIA SEC. 3(n)(2)). P.S. Remember same invention double patenting: pre-aia or AIA. 32
Filing Strategy: Jedi Master Mixer/AIA/pre-AIA Multiple Filings* Have a pre-aia patent filing (slow motion and prioritized exam?) Best if claims are patentably distinct (Exelixis I) *Note: there may be Dayco and McKesson implications. Each case depends on its own facts but consider and take any action that is appropriate. Jedi Master Mixer: File a second, independent AIA patent application that is a duplicate or near-duplicate of the pre-aia patent filing, but avoids identical claims and has at least one claim with effective filing date after March 15, 2013 (and prioritized examination?) Best if patentably distinct Have a third AIA application with AIA claims only (and prioritized examination?) Best if all six are patentably distinct 33
Filing Strategy: JMM Multiple Filings: Quack, quack, quack Secure whatever benefits might exist in both the first-to-invent, the FITF, and the mixed (n)(1) and (n)(2) FITF and first-inventor to file worlds, subject to liabilities. May have to disclaim the extra term provided by the AIA second patent and may not be able to enforce the patents separately. Try to avoid obviousness type double patenting. Patents with identical claims will still be barred, and the multiple patent filings will need to stand alone. Line up the ducks: 34
From Now On Focus on EFD for each claim and ensure that EFD of any and every claim is deliberately before March 16, 2013, after March 15, 2013, or mixed. Choice of law issues! Understand which law applies to each US patent and application under review. 35
Thank you. Tom Irving Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 202.408.4082 tom.irving@finnegan.com 36