Prior Art Changes under the
America Invents Act – Traps to
Avoid and Best Practices
Massachusetts Association of Technology
Transfer Offices
January 15, 2014
presented by
C. Hunter Baker, Shareholder, Wolf Greenfield
Brian D. Gildea, Executive Director, IP & Licensing,
Boston University
Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts 02210 | 617.646.8000 | 617.646.8646 fax | wolfgreenfield.com
“First Inventor to File” Provisions of the AIA
 Overview of “First inventor to file”
provisions
 What law applies?
 Grace periods
 Examples
 Best Practices
2
Overview of “First Inventor to File” Provisions
 Sweeping change from “first to invent” to
“first inventor to file”
 Harmonizes U.S. with the rest of the world, but
still retains 1 year grace period for inventor
activities
 Critical date is now the earliest “effective filing
date of the claimed invention” not the date of
invention
3
Overview of “First Inventor to File” Provisions
 Expansive definition of prior art
 Includes patents, printed publications, or in
public use, on sale, or “otherwise available to
the public before the effective filing date of the
claimed invention”
 Not limited to the US
 Issued US patents and published US patent
applications (including published PCT
applications designating the US) effectively filed
before the effective filing date of the claimed
invention
4
Is It Prior Art?
Was it available to the public anywhere in the
world before my application’s filing date?
OR
Is it a US or PCT application/patent effectively
filed before my application’s filing date (including
any foreign priority dates)?
If “yes” to either, it is prior art . . .
unless an exception applies.
5
What does “First Inventor to File” really mean?
Simply put – Whoever files first wins.
 Even by one day. The date of invention is now
irrelevant.
 First filing can be anywhere around the world
and in any language.
 Creates tension between filing quickly and
ensuring applications are complete
 May be less relevant for universities than for industry
 University filings are driven by public disclosures
 Industry filings are prone to delays before filing
6
What Law Applies to My Application?
If filed on or after March 16, 2013 . . .
 Old law applies if all claims have an earliest
effective date before March 16, 2013
 CONs/DIVs filed after March 16, 2013 - Old law still applies.
 New law applies to whole application if any claim,
pending at any time, has an earliest effective date
of March 16, 2013 or after
 e.g., Non-provisionals or PCTs with added matter, CIPs
7
Exceptions to Prior Art
 Limited exceptions are provided for certain disclosures
occurring 1 year or less before effective filing date
 Disclosures that will not be prior art if:
 By the inventor (or by another who obtained the subject
matter from the inventor), or
 Occurring after a public disclosure by the inventor of the
same subject matter (or by another who obtained the
subject matter from your inventor)
 Note, however, that slightly different disclosures by third
parties will not be knocked out by prior inventor disclosure,
i.e., they will be prior art!!
8
Exceptions to Prior Art
 U.S. or PCT applications will not be prior art if:
 Subject matter obtained directly or indirectly from the
inventor; or
 Filed after a public disclosure of the same subject
matter by the inventor (or by another who obtained the
subject matter from your inventor); or
 Co-owned as of later application’s filing date – this is
an important change
9
What do the USPTO’s Examination Guidelines
say about the Exceptions?
 Verbatim or ipsissimis verbis disclosure is
not required
 More generic disclosure is not prior art
 Conversely, if inventor disclosed a genus,
and a later disclosure during grace period
discloses a species, the species is prior art
 Likewise, an alternative species would be prior
art.
10
What’s Out?
X invents A
X files A
Y invents A
Y files A
 Old: X wins if X can prove an earlier date of
invention of A
 New: Y wins
Must win race to PTO now!!
11
What’s Out?
X invents A
X files A
Y publicly
discloses A
< 1 year
 Old: X could disqualify Y’s public disclosure based
on an earlier date of invention (“swear behind”)
 New: Y’s public disclosure is novelty destroying
prior art to X
Must file before somebody else discloses!!
12
Activity Outside US Is Now More Relevant
X files A
in U.S.
Y files A in
China or
U.S.


Y files A in U.S. with
priority to China
Y U.S. filing
publishes
Old: Y’s Chinese application is not prior art, but U.S. is
New: Y’s Chinese application filing date is effective
prior art date for U.S. application
Does not matter where priority application is filed.
13
Activity Outside US Is More Relevant
X files A
in U.S.
Y files AB
in China


Y files BC in U.S.
with priority to China
The only thing in Y’s U.S. application that is prior
art is B
A is safe if non-obvious over B
14
Activity Outside US Is More Important
X files A
Y openly
sells or
publicly uses
A only in
China
 Old: Y’s sales/use in China are not prior art
 New: Y’s sales/use are now prior art
Does not matter where sales/use occurred.
15
Situations Where You Are Now Better Off
X confidentially sells A
or X’s secret use of A in
commerce even in the
U.S.
X files A
> 1 year
 Old: X’s confidential sale/use are novelty destroying
prior art if activity conducted in the U.S.
 New: X’s confidential sale/use are not prior art in
U.S.
16
Situations Where You Are Now Better Off
X publishes A.
X and Y file A + A’
< 1 year
 Old: X’s publication is by a different entity,
removable by declaration with proper facts.
 New: Joint inventor’s earlier public disclosure is not
prior art
17
There Is Still A Grace Period
X publishes A

< 1 year
X (+Y) files A + A’
Old and New—Same result:
 X (or X+Y) gets to claim A and A’
 Different “inventive entity” OK
18
There Is Still A Grace Period
X publishes A
< 1 year
X files A
Y publishes A


Important for universities
Old and New—Same results:
 X gets to claim A
 Under AIA, Y’s disclosure of A is not prior art
against X’s application to A
19
There Is Still A Grace Period, But…
X publishes A
< 1 year
X files A
Y publishes or
files A + A’



Important for universities
Old: X gets to claim A, but not A’
New:
 A is not prior art against X’s application to A
 A’ is prior art against X’s application to A
20
Commonly Owned Applications No Longer Prior Art
At All
X and Y agree to
assign their
inventions to Co.
Co. Files App 1 on
invention A by X
Co. Files App 2 on
invention A’ by X and Y
prior to publication of App 1
 Old: App 1 is not prior art for App 2 for obviousness BUT it is
for novelty – A’ okay in App 2 only if not anticipated by A
 New: App 1 not prior art to App 2 for either obviousness OR
novelty – A’ okay in App 2 even if anticipated by A
21
What Can You Still Do?
 Until March 16, 2014 – If you have a pending
provisional application filed prior to March
16, 2013
 File under 37 C.F.R. § 1.53(c)(3)
 Direct Conversion: Prov. To Non-Prov.
 Maintains Provisional Appl. Filing Date
 Also, File PCT Application
Written Agreement Before Invention No Longer
Needed for CREATE Act Exception
X invents A
X and Y invent A’
Apl 1 on invention
A filed by X
X and Y execute
written Joint
Development
Agreement
Apl 2 on invention A’ by X
and Y
 Old: Apl 1 is prior art for Apl 2 for all purposes – A’ not
patentable if anticipated or obvious over A
 New: Apl 1 not prior art to Apl 2 for either obviousness OR
novelty – A’ okay in Apl 2 even if anticipated or obvious over A
23
Collaborations under the AIA
102 a) NOVELTY; PRIOR ART.--A person shall be entitled to a patent
unless—
(2) the claimed invention was described in a patent issued under
section 151, or in an application for patent published or deemed
published under section 122(b), in which the patent or application, as
the case may be, names another inventor and was effectively filed
before the effective filing date of the claimed invention.
(b)(2) A disclosure shall not be prior art to a claimed invention under
subsection (a)(2) if—
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.
Collaborations under the AIA
 (c) COMMON OWNERSHIP UNDER JOINT RESEARCH
AGREEMENTS.--Subject matter disclosed and a claimed
invention shall be deemed to have been owned by the same
person or subject to an obligation of assignment to the same
person in applying the provisions of subsection (b)(2)(C) if- (1) the subject matter disclosed was developed and the
claimed invention was made by, or on behalf of, 1 or more
parties to a joint research agreement that was in effect on or
before the effective filing date of the claimed invention;
 (2) the claimed invention was made as a result of activities
undertaken within the scope of the joint research agreement;
and
 (3) the application for patent for the claimed invention
discloses or is amended to disclose the names of the parties
to the joint research agreement.
Collaborations under the AIA
 Suggest MATTO Boilerplate
 Pre-Filing Joint Research Agreement





Acknowledges Joint Research Project
Not An Alternative For a JIAA
Does Not Address Funding
Does Not Address Cost Sharing
Does Not Address Liability Issues
Collaborations under the AIA
Former § 103
For purposes of paragraph (2), the term
"joint research agreement" means a written
contract, grant, or cooperative agreement
entered into by two or more persons or
entities for the performance of experimental,
developmental, or research work in the field
of the claimed invention.
Best Practices
European strategy (file before publishing)
generally a reasonable approach to handle
new US law
 But: US/PCT applications being prior art for
novelty and obviousness urges earlier filing
 But: avoid relying on a weak provisional—
consequences more severe than before
28
Best Practices
 Accelerate drafting to avoid losing “race to
the PTO”
 “best practices” to facilitate drafting
 strong/detailed invention disclosures
 File on early/conceptual embodiments
 Use provisionals
 Draft like non-provisional
 Multiple provisional filings – avoid “one and done”
priority application filing strategy
 Combine together later when you convert
29
BU Preferred Filing Practices







60 Days Pre-filing
Search & Opinion (30 days)
Market Analysis (Concurrent To SO)
Quality Provisional Application (30 days)
Provisional Updates – Very Rare
9-10 Month Review
PCT Conversion Decision
Emergency Filing Practices
 Pre-Publication




File Cover Sheet Provisional
Perform Expedited Search & Opinion (21 days)
Market Analysis (Concurrent To SO)
Make Decision On Expedited Full Provisional
Filing (21 days)
Emergency Filing Practices
 Post-Publication





Ask Why Bother !!
File Cover Sheet Provisional
Perform Market Analysis Before Search
Perform Search & Opinion (21 days)
Make Decision On Expedited Full Provisional
Filing (21 days)
Questions
C. Hunter Baker, Wolf Greenfield, c.hunter.baker@wolfgreenfield.com
Brian D. Gildea, Boston University, gildeabd@bu.edu
33