AIA Strategies
First-To-File
• Changes take effect March 16, 2013
• Apply to any application having a priority
claim falling on or after March 16, 2013
• Significantly expands the scope of
applicable prior art
First-To-File
• Critical date for any application is its “effective
filing date”
• The effective filing date of a US nonprovisional
application is the earlier of:
(a) the actual US filing date; or
(b) the filing date of any earlier application
from which the US nonprovisional application
claims priority benefits (German, European, US
provisional, etc.)
First-To-File
Effective Filing Date
Appl. A
US Non-Prov
Filing Date
Effective
Filing Date
Appl. B
German
Priority Date
US Non-Prov
Filing Date
First-to-File
New § 102 defines lack of novelty: The
invention lacks novelty if:
(a) the invention was “available to the
public” before the effective filing date; or
(b) the invention was described in a
US patent or published US patent
application that names another inventor
and has an earlier effective filing date.
First-To-File
New § 102
Appl. A
US Non-Prov
Filing Date
Effective
Filing Date
Literature
Pub Date
Literature published prior to
the effective filing date will be
prior art
First-To-File
New § 102
Appl. A
German
Priority Date
US Non-Prov
Filing Date
Effective
Filing Date
Literature
Pub Date
Literature published prior to
the effective filing date will be
prior art
First-To-File
New § 102
Appl. A
German
Priority Date
US Non-Prov
Filing Date
Effective
Filing Date
PCT
Pub Date
A PCT or other patent published
prior to the effective filing date
will be prior art
First-To-File
New § 102
Appl. A
US Non-Prov
Filing Date
Effective
Filing Date
A US application claiming a priority
date prior to the effective filing date
will be prior art
Appl. B
German
Priority Date
US Non-Prov
Filing Date
First-To-File
New § 102
Appl. A
German
Priority Date
US Non-Prov
Filing Date
Effective
Filing Date
A US application claiming a priority
date prior to the effective filing date
will be prior art
Appl. B
German
Priority Date
US Non-Prov
Filing Date
First-To-File
New § 102
Appl. A
German
Priority Date
US Non-Prov
Filing Date
Effective
Filing Date
A US application claiming a priority
date prior to the effective filing date
will be prior art
Appl. B
German
Priority Date
PCT Nationalized in US
Filing Date
First-To-File
The new definition of lack of novelty in new §102
significantly expands the applicable prior art:
– Publications published less than a year before the
actual US filing date and published before any priority
date claimed cannot be antedated (old: can antedate)
– PCT applications designating the US but not
published in English will be prior art as of their earliest
priority dates (old: prior art upon publication)
– US applications claiming priority to non-US
applications will be prior art as of their earliest non-US
priority dates (old: prior art as of earliest US filing
date)
First-To-File
Potential Gaps in New § 102: The
following would appear according to
present understanding not to be prior art
until publication:
– A PCT application that is not nationalized and
published in the US
– A non-US application for which no
corresponding application is filed in the US
First-To-File
Grace Periods: New §102 contains two
exceptions:
(1) A rejection based on a disclosure less than
one year before the effective filing date can be
overcome by:
– (A) showing the disclosure was that of the inventor or
someone who derived from the inventor; or
– (B) showing the inventor or someone who derived
from the inventor publicly made the same disclosure
previously.
First-To-File
Grace Period
Appl. A
US Non-Prov
Filing Date
Effective
Filing Date
< 1 year
before EFD
A/Deriv
Literature
Pub Date
Earlier disclosure can
be overcome by
showing disclosure
was by A or Deriv
First-To-File
Grace Period
Appl. A
US Non-Prov
Filing Date
Effective
Filing Date
< 1 year
before EFD
B
Literature
Pub Date
A/Deriv
Literature
Pub Date
Earlier disclosure by B
can be overcome by
showing A or Deriv
prepublished
First-To-File
Exceptions continued:
(2) A rejection based on a disclosure in a US
patent or published US patent application can be
overcome by:
– (A) showing the disclosure is that of the inventor or
someone who derived from the inventor;
– (B) showing the inventor or someone who derived
from the inventor had publicly disclosed before the
effective filing date of the cited reference; or
– (C) showing the reference and the application being
examined were commonly owned or subject to
assignment to the same person/entity.
First-To-File
Grace Period
Appl. A
German
Priority Date
US Non-Prov
Filing Date
Second US application with
priority date less than one year
earlier can be overcome by
showing disclosure was by A or Deriv
Effective
Filing Date
Appl. A/Deriv
< 1 year
before EFD
German
Priority Date
US Non-Prov
Filing Date
First-To-File
Grace Period
Appl. A
German
Priority Date
US Non-Prov
Filing Date
Effective
Filing Date
< 1 year
before EFD
German
Priority Date
A/Deriv
Literature
Pub Date
Appl. B
US Non-Prov
Filing Date
US application by B with
priority date less than one year
earlier can be overcome by
showing A or Deriv prepublished
First-To-File
Grace Period
Appl. A
German
Priority Date
US Non-Prov
Filing Date
Effective
Filing Date
< 1 year
before EFD
German
Priority Date
Appl. B
PCT
Filing Date
US application by B with
priority date less than one year
earlier can be overcome by
showing common ownership
First-To-File
All of the prior art available to show lack of
novelty under new §102 will also be
available to show lack of inventive
step/obviousness under §103
This includes even prior US patent
applications that were unpublished at the
time of your filing
Recommendations
• File new German/European priority
applications if practicable before March
16, 2013 (to avoid First-To-File provisions)
• Nationalize and publish even unimportant
applications in the US to establish prior art
• Avoid the use of continuations-in-part that
“straddle” the March 16, 2013 date
(combination claims of old + new matter
will be subject to First-To-File provisions)
Recommendations
• Retain Laboratory Notebooks/Records
– Detail cooperations with third-parties:
• To support a derivation claim:
– What exactly was disclosed?
– Exactly to whom was it disclosed?
– When was it disclosed?
• To defend a derivation claim:
– Record inventor’s individual/group efforts
– Unexpected results
Third-Party Submissions
• Takes effect on September 16, 2012, and
applies to any application pending on that
date or filed thereafter
• Third-party can submit patents, published
patent applications or other printed
publications
• Submission can be electronic; USPTO will
not list in PAIR until compliance with
applicable rules is confirmed
Third-Party Submissions
Must be made before earlier of:
(a) Mailing of Notice of Allowance; or
(b) Later of:
(i)
6 months from first publication of the
application by USPTO; or
(ii) Mailing of First Office Action on the
Merits (FOAM)
Third-Party Submissions
6 months from
publication
FOAM
Third-party submission will
be timely if filed by this later date
(unless in the situation below the
Notice of Allowance has issued)
FOAM
6 months from
publication
Third Party Submissions
• Proposed fees are €139 ($180) for every
10 documents submitted or fraction
thereof
• An exemption from fees is proposed for:
– A submission of 3 or fewer documents
– Where the submission is the third-party’s first
submission
Supplemental Examination
• Takes effect on September 16, 2012
• Applies to any patent in force on or after
September 16, 2012
Supplemental Examination
• Requested by Patentee
• To consider, reconsider or correct
information believed to be relevant to the
patent
• The information that may be presented is
not limited to patents and printed
publications
• Information includes, for example, also
patentability under §§ 101 and 112
Supplemental Examination
• Instituted by Patentee’s filing of Request
for Supplemental Examination
• Within 3 months, USPTO will determine
whether there is a “substantial new
question of patentability”
• If a substantial new question of
patentability is raised, the USPTO will
order ex parte reexamination
Supplemental Examination
• With two exceptions, a patent that cures a defect
through supplemental examination will not be
held unenforceable in subsequent litigation
• Exception 1: Cure will not apply if the defect had
been pleaded in a civil action before the
Request was filed
• Exception 2: Cure will not apply if the defect is
defense raised in a civil action and supplemental
examination and any ex parte reexamination are
not concluded before the action is brought
Supplemental Examination
Examples of Defects that Can be Cured by
Supplemental Examination:
– A prior art reference that was not submitted
during the original prosecution or, if
submitted, was inadequately considered
– Comparison data later found to be erroneous
– An erroneous priority benefit claim
Supplemental Examination
• As with most cures, Supplemental
Examination will be expensive
• USPTO proposes:
– Fee for filing Request €3 916 ($5180)
– Conducting Reexam subsequent to Request
€12 188 ($16,120)
– For each document over 20 pages long to be
considered €125+ ($166+)
Trial Proceedings:
Litigation Alternatives
• Post-Grant Review
• Inter Partes Review
• Derivation
Post-Grant Review
• Takes effect on September 16, 2012
• Applies to patents that issue from
applications subject to First-To-File
provisions
• First-To-File provisions take effect on
March 16, 2013, and apply to any patent
application having a priority date after
March 16, 2013
Post-Grant Review
• Provides a vehicle for challenging the
validity of any patent on any prosecution
grounds (utility, enablement,
indefiniteness, anticipation, obviousness)
• Petition to institute Post-Grant review can
be by anyone other than the patentee
• Petition must be filed within 9 months of
the issue date of the patent
Inter Partes Review
• Takes effect on September 16, 2012
• Applies to any patent in force on or after
September 16, 2012
• Converts present inter partes
reexamination from an examination to an
adjudication
Inter Partes Review
• Challenge is limited to lack of novelty
(§102) and obviousness (§103) grounds
• Challenge is based on patents and printed
publications only
• Petition to institute Inter Partes review can
be by anyone other than the patentee
• Petition may be filed upon issuance of the
patent.
Derivation
• Takes effect on March 16, 2013
• Applies to patents that issue from
applications subject to First-To-File
provisions
• First-To-File provisions take effect on
March 16, 2013, and apply to any patent
application having a priority date after
March 16, 2013
Derivation
• Provides a vehicle to challenge any
person who has derived/stolen the
invention from you and attempted to
patent it him/herself
• Must be filed on the earlier of 1) within one
year after grant of the derived claim or 2)
within one year after publication of the
earlier application containing a claim to the
same or substantially the same invention
(US PGPub or PCT designating US)
Trial Proceedings:
Overview
Petition
Filed
2 months
PO
Preliminary
Response
Decision
on
Petition
5 months
PO Response
& Motion to
Amend Claims
Petitioner
Reply to
PO Response
& Opposition
to Amendment
PO Reply
to Opposition
to Amendment
4 months
2 months
1 month
Hearing Set
On Request
PO
Discovery
Period
Petitioner
Discovery
Period
PO
Discovery
Period
Period for
Observations
& Motions to
Exclude Evidence
No more than 12 months
PO = Patent Owner
Oral
Hearing
Final
Written
Decision
Trial Proceedings:
Common Attributes
• Quick:
•
•
Final Written Decision issued within
one year of instituting trial, which can be
extended once for 6 months on good cause
Expensive: For example, USPTO proposed
filing fee for PGR petition of 20 or fewer claims is
€27 068 ($35,800); estimated cost to prepare
that PGR petition is €46 373 ($61,333)
Estoppel: Petitioner is barred from later
raising in the USPTO, any district court action or
any ITC proceeding, any ground that was raised
or reasonably could have been raised
Trial Proceedings:
The Petition
• Filed on time
• Identifies claims challenged and the
grounds for challenge
• Includes the evidence the Petitioner
intends to rely upon
• Shows how the requisite standard for
instituting the trial are met
Trial Proceedings:
Institution of Trial
• Once the Petition is filed, Patentee has 2 months
to file optional Preliminary Response
• Within 3 months of the date such Preliminary
Response was due, the Board will determine
whether to institute trial
• Board will narrow the issues for final
determination by authorizing the trial to proceed
as to specific claims and on specific grounds for
which the threshold requirements for proceeding
have been met
Trial Proceedings:
Discovery
• Direct examination proceeds in the form of
Declarations
• Cross-examination will be live
• Discovery is in Sequenced Fashion:
– Patentee can begin deposing Petitioner’s
declarants as soon as trial is instituted
– Petitioner can depose Patentee’s declarants
as soon as Patentee files a response
including declarations
Best Mode
• Took effect on September 16, 2011
• Applies to litigation proceedings
commenced on our after that date
Best Mode
• Best mode will cease to be a litigation
defense
• This does not affect examination practice
• USPTO has indicated that best mode will
continue to be evaluated as set forth in
MPEP § 2165
Best Mode
• Compliance with the best mode requirement
is a two-pronged test:
– (1) Did the inventor have a best mode at the time
the application was filed?
– (2) If so, does the specification disclose the best
mode such that persons skilled in the art can
practice it?
• Under the MPEP, the examiner will presume
the best mode is disclosed until evidence of
concealment is submitted, which is rare
Thank You!
If you have questions or need further information, please
contact Kurt Briscoe at kgbriscoe@nmmlaw.com; or Dr.
Christa Hildebrand at childebrand@nmmlaw.com.