Prosecution Group Luncheon
Patents
August 2012
Proposed First-To-File Rules
• Add definitions in AIA to Rules
• Declarations for removing references based
on exceptions in new 102
• Notification to PTO of post-AIA claim or new
matter in child application
• Comment period closes October 5
• 77 Fed. Reg. 43742-59 (July 26, 2012)
Submissions to Remove References
• Recall prior art exceptions in new 102(b)/(c):
reference information not applicable if
– It and claimed invention commonly owned or part
of activities of joint research agreement
– Within 1 year of filing, it came from inventor or one
who obtained from inventor (“OWO”), or it came
after public disclosure of the information by
inventor or OWO
• Proposed Rule 104(c): common ownership
– Applicant files statement in the record
– Joint research agreement condition also requires
giving names of parties to agreement in application
Submissions to Remove References
• Proposed Rule 130: Declarations
– (a)(1) Show that reference was by inventor, or
that its info was publicly disclosed by inventor
before reference date
– (a)(2) Same, as to reference or disclosure by
OWO
• Reference is by inventor: decl’n must show
he/she is in fact inventor of relied-on info
• Reference by OWO: same, and show inventor
communicated the relied-on info (in)directly to
OWO
Submissions to Remove References
• Inventor disclosed before reference: decl’n
must
– Identify/give date of disclosure
– Show inventor is in fact inventor of that earlier
disclosure
– If reference is printed publication, provide copy
– If not, describe disclosure with “detail and
particularity” to show it is public disclosure of
relied-on information
• OWO disclosed before reference: same, and
show communication of relied-on info
Statements of Post-AIA Claims, Disclosure
In post-AIA applications claiming pre-AIA benefit,
that include(d) claim(s) with post-AIA date
• Must file “statement to that effect” by later of:
– Four months from application filing date
– 16 months from benefit-application filing date
– Date that the first post-AIA claim is presented
• Need not identify particular claim(s)
– “upon reasonable belief, this application contains
at least one claim that has an effective filing date
on or after March 16, 2013”
Proposed 37 CFR 1.55, 1.78(a)
Statements of Post-AIA Claims, Disclosure
In post-AIA applications claiming pre-AIA benefit,
with disclosure not also in benefit application
• Must file “statement to that effect” by later of:
– Four months from application filing date
– 16 months from benefit-application filing date
• Need not identify particular matter
– “upon reasonable belief, this application contains
subject matter not also disclosed in” the prior
foreign, provisional or non-provisional application
Statements of Post-AIA Claims, Disclosure
• If you fail to provide statement in given time
period, or seek to retract statement
– May result in Rule 105 request for specific
identification of support in benefit-application
• No statement required if:
– Application discloses only subject matter also in
benefit-application
– Benefit only claimed to applications dated
3/16/13 or after
Proposed Post-AIA Examination Guidelines
• Reviews new provisions and how to apply
• Guidelines generally consider that procedure
and theory remains the same
– Anticipation, enablement standards
– No “difference of approach to the question of
obviousness”
– Notes that geographic limitations are removed
• Comment period closes October 5
• 77 Fed. Reg. 43759-73 (July 26, 2012)
Proposed Post-AIA Examination Guidelines
• “On Sale”
– Comment sought on whether public availability has role
• “Otherwise available prior art”: “Catch-all” provision
– Focus on availability rather than on means of dissemination
– May include thesis, poster display, Internet posting,
transaction not amounting to UCC “sale”
• Removing prior art through early disclosure
– Inventor’s earlier public disclosure must be the same as the
disclosure in the reference to be removed
– Even if differences between reference info and inventor’s
earlier disclosure “are mere insubstantial changes, or only
trivial or obvious variations,” the exception does not apply
New Google Patents Features
• European Patents
– Search by number (e.g. EP1692064A1)
– OCR text, links to EP site
• Prior Art Finder
– Identifies key phrases from patent text, makes
search query
– Results come from Google Patents, Google
Scholar, Google Books, and web
Google’s Find Prior Art
Google’s Find Prior Art