The America Invents Act (AIA)
- Rules and Implications of First to File,
Prior Art, and Non-obviousness -
1
AIA Provisions** and Dates of Enactment
•
•
•
•
Elimination of “Best
Mode” Requirement
“Tax Strategies”
Unpatentable
“Human Organisms”
Unpatentable
•
•
September 16, 2011
New Procedures for
Declarations and Oaths
Statements by Patent
Owners
Pre-Issuance
submissions by 3rd
Parties
September 16, 2012
• Expansion of
“Prior Art”
• “First-to-File”
replaces “Firstto-Invent”
March 16, 2013
**Please note that these provisions are not all-inclusive
2
Statements by Patent Owner
 What: A statement of the patent owner filed by the patent owner in a
proceeding before a Federal Court or the USPTO in which the patent owner
took a position on the scope of any claim of the patent may be filed.
 Who: Can be submitted by either a 3rd party or the patent owner.
 When: The USPTO will consider such a statement after reexamination has
been ordered.
 Why: Claim construction standards for reexamination are unaffected; this
written statement will be weighed with all other relevant information in
making a determination of the proper claim scope and meaning.
3
Pre-Issuance Submissions

What: A patent, published patent application, or other printed publications of potential
relevance to the examination of a patent application.

Who: Can be submitted by anybody except the applicant or any individual who has a
duty to disclose information with respect to the application.

When: Such a submission statutorily must be made in a patent application before the
earlier of:

A) the date a notice of allowance is given or mailed, OR

B) the later of:

i) 6 months after the date on which the application is first published by the USPTO, OR

ii) The date of the first rejection of any claim by the Examiner

Why: A concise description of relevance must be presented, but not in any particular
format, to the USPTO.

Cost: A fee of $180 for every 10 documents listed or fraction thereof, unless a fee
exemption applies where the submitter is exempt from paying a fee for a submission of
3 or fewer documents, provided it is the submitter’s first such submission and the party
files a “first and only” statement.
4
When is First-to-File effective?
 Applications filed BEFORE March 16, 2013?
o Any application filed BEFORE March 16, 2013 is governed by pre-AIA 35
U.S.C. 102 and by pre-AIA 35 U.S.C. 103
 Applications filed ON or AFTER March 16, 2013?
o The FITF provisions apply to ANY patent application that contains, or
contained at any time:
o 1) A claimed invention that has an effective filing date that is ON or
AFTER March 16, 2013; OR
o 2) A designation as a continuation, divisional, or continuation-in-part
of an application that contains, or contained at any time, a claimed
invention that has an effective filing date that is ON or AFTER March
16, 2013.
5
Comparing Europe and US Patent Systems
Europe
US
Provision
- Current Scheme
- Effective March 16, 2013
First-to-File
- None
- ONE (1) year from the
effective filing date
Grace Period
- Not required
- Failure to disclose is NOT a
basis to invalidate a patent
Best Mode
- Novel
- Involves an “inventive”
step (solves a “technical”
problem)
- Novel
- Non-obvious
Standard
6
35 U.S.C. 102(a) – Novelty; Prior Art
35 U.S.C. 102(a):
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 … or in
an application for patent published … , in which the patent or application …
names another inventor was effectively filed before the effective filing date
of the claimed invention.”
7
35 U.S.C. 102(b) – The Exceptions
35 U.S.C. 102(b):
(1) “A disclosure made 1 year or less before the effective filing date of a
claimed invention shall not be prior art to the claimed invention under
subsection (a)(1) if:
(A) the disclosure was made by the inventor or joint inventor or by
another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor; OR
(B) the subject matter disclosed had, before such disclosure, been
publicly disclosed by the inventor or a joint inventor or another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor.”
8
35 U.S.C. 102(b) – The Exceptions
35 U.S.C. 102(b) (continued):
(2) “A disclosure shall not be prior art to a claimed invention under
subsection (a)(2) if:
(A) the subject matter disclosed was obtained directly or indirectly
from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was
effectively filed under subsection (a)(2), been publicly disclosed by the
inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor; OR
(C) the subject matter disclosed and the claimed invention, not later
than the effective filing date of the claimed invention, were owned by the
same person or subject to an obligation of assignment to the same person.”
9
35 U.S.C. 103 – Conditions for patentability;
non-obvious subject matter
35 U.S.C. 103:
A patent for a claimed invention may not be obtained, notwithstanding that
the claimed invention is not identically disclosed as set forth in section 102,
if the differences between the claimed invention and the prior art are such
that the claimed invention as a whole would have been obvious before the
effective filing date of the claimed invention to a person having ordinary
skill in the art to which the claimed invention. Patentability shall not be
negated by the manner in which the invention was made.
10
35 U.S.C. 102(a) and 102(b)
Rule
Exception
35 U.S.C. 102(a)(1)
35 U.S.C. 102(b)(1)
35 U.S.C. 102(a)(2)
35 U.S.C. 102(b)(2)
11
35 U.S.C. 102(a) – Implications
(contd.)
•
Need not be in the US: Under the AIA, a prior public use, sale activity, or
other disclosure has no geographic limitation to qualify as prior art.
•
Elimination of Prior Provisions: The FITF provisions of the AIA eliminate the
provisions of pre-AIA 35 U.S.C. 102(c) (abandonment of the invention), 35
U.S.C. 102(d) (premature foreign patenting), 35 U.S.C. 102(f) (derivation**),
35 U.S.C. 102(g) (prior invention by another).
o **Note A “derivation proceeding” will now govern the situation in which an
application names a person, who is not the actual inventor, as the inventor via a
correction of inventorship.
•
WIPO Publications of PCT applications: Under the AIA, those that designate
the US are treated in the same way as US patent application publications for
prior art purposes, regardless of the international filing date or whether they
are published in English.
12
35 U.S.C. 102(a) - Implications
(contd.)
 Written Description v. Description Sufficient to Anticipate a Claim: Under
the AIA, for purposes of anticipation, a prior art document need only
describe and enable one skilled in the art to make a single species or
embodiment of the claimed invention.
 Elimination of “how to use”: Under the AIA, there is no requirement that a
prior art document meet the “how to use” requirement of the written
description in order to qualify as prior art.
 Admissions: Under the AIA, the USPTO will continue to treat admissions by
the applicant as prior art.
o
For example, a statement by the applicant in the Specification or made during
prosecution identifying the work of another as “prior art” is an admission, which can
be relied upon for both anticipation and obviousness determinations.
13
35 U.S.C. 102(a) – Implications
(contd.)
 Prior Art Expansion: The catch-all “otherwise available to the public”
category of prior art is added. Even if a document or other disclosure is not a
printed publication, or a transaction is not a sale, either may be prior art
under “otherwise available”, provided that the claimed invention was made
sufficiently available to the public.
 Inclusion of “names another inventor”: Under the AIA, if there is any
difference in inventive entity between the prior art US patent, US patent
application publication or WIPO published application and the application
under examination or patent under reexamination, then this prior art
satisfies the “names another inventor” provision of 35 U.S.C. 102(a)(2),
unless a 35 U.S.C. 102(b)(2) exception applies.
 Elimination of “by others”: Under the AIA, it is no longer necessary that the
prior art relied upon was “known or used ‘by others’ in this country.”
However, note the 35 U.S.C. 102(b)(1) exception to 35 U.S.C. 102(a)(1).
14
35 U.S.C. 102(b) - Implications
 1 Year Grace Period: 102(b)(1) provides a 1 year grace period**
after a first disclosure of an invention within which to file a patent
application.
o **Note This grace period is measured from the earliest U.S. or foreign
patent application to which the patent or application is entitled to
benefit or priority as to such invention (whereas before, the grace period
in pre-AIA 35 U.S.C. 102(b) was measured from only the earliest
application filed in the US).
 Irrelevancy of “Date of Invention”: The date of invention is not relevant
under 35 U.S.C. 102. A prior art disclosure can not be disqualified or
antedated by showing that the inventor invented the claimed invention prior
to the effective date of the prior art disclosure of the subject matter.
15
35 U.S.C. 103 – Implications
 General Rule: Under the AIA, pre-AIA notions of “obviousness” will continue
to apply.
 Effective Filing Date: Under the AIA, 35 U.S.C. 103 determines
“obviousness” as of the effective filing date of the claimed invention.
o Whereas before, under pre-AIA 35 U.S.C. 103, such a determination was as of the
time that the claimed invention was made.
 Negligible Terminology: Under the AIA, 35 U.S.C. 103 requires consideration
of “the differences between the claimed invention and the prior art”.
o
Whereas before, pre-AIA 35 U.S.C. 103 refers to “the differences between the subject matter
sought to be patented and the prior art.”
o
This difference in terminology does not indicate the need for any difference in approach to the
question of “obviousness.”
16