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PTO's Final Rules on First Inventor to File Provisions Effective March 16, 2013

March 16, 2013 – The PTO has issued proposed rules regarding implementation of the first inventor to file provisions of the AIA Patent Reform Act to take effect on March 16, 2013. They have also issued proposed Examiner guidelines for these provisions. These are subject to change based on the comments received. Our summary of the proposals follows.

In November we provided comments on the PTO's proposed rules regarding the first inventor to file provisions of the AIA Patent Reform Act and the Examiner guidelines thereon. The PTO has made those rules and guidelines final, with some changes. Below, we provide our previous discussion of the proposed rules and guidelines with the significant changes made in the final version highlighted in red.

I) Rules to Implement First Inventor to File Provisions of AIA

In general, the rules are to help the USPTO determine which applications will be examined under the "first inventor to file" system and provide procedures to aid examination under the new system with respect to addressing prior art exceptions and perfecting priority claims.

A. Identifying Applications under the "First Inventor to File" System of the AIA

The "first inventor to file" rules under the AIA will apply to applications having at least one claim with an effective filing date on or after March 16, 2013. The new rules will not apply to applications filed before March 16, 2013. The rules will apply to applications filed on or after March 16, 2013, that do not have a priority claim before that date. The rules address possible uncertainty for those applications filed on or after March 16, 2013, having a priority claim before March 16, 2013. For such applications, the rules propose that (to have the new rules apply to the application):

1) the applicant provide a statement that at least one claim has an effective filing date on or after March 16, 2013, where such a claim exists and

2) the applicant provide a statement that subject matter within the non-provisional application is not disclosed in the priority application, where new matter has been added. (See 37 C.F.R. §1.78(a) & (c)).

Of course, these statements will not be required if the disclosure of the non-provisional application is identical to that of the priority application filed before March 16, 2013, in which case there is no basis for establishing "first to file" status for the application and the old rules apply.

There are time limits to filing these statements, i.e., 4 months from the actual filing date (or entry into the US national stage) or 16 months from the filing date of a priority application, whichever is later. If a claim is added with an effective filing date on or after March 16, 2013, during prosecution, applicant must provide a statement to that effect when the claim is presented.

The proposed rules do not require that the statements identify particular claims or that the new subject matter be identified. However, if the statement is untimely or if the statement is retracted, the Office may require the applicant identify where there is written description support in the priority application for the remaining claims in the non-provisional application.

B. Prior Art Exceptions

1) Disclosures by the Inventor

The AIA provides a twelve month grace period for prior disclosures made by an inventor or derived from an inventor. The proposed rules include amendments to 37 CFR 1.130 to provide a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art in accordance with 35 U.S.C. 102(b) as amended by the AIA — the amendments and mechanism for this were simplified in the final rules. More particularly, 37 CFR 1.130 provides for the submission of affidavits or declarations showing that (1) a prior art disclosure was by an inventor or a third party who obtained the subject matter directly or indirectly from an inventor, or (2) the subject matter in a reference was disclosed prior to the reference publication by an inventor or a third party who obtained the subject matter directly or indirectly from an inventor.

The provisions of § 1.130 are not available if a rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention.

The formal requirements of these affidavits or declarations will be comparable to the current requirements for affidavits and declarations under 37 CFR §§1.131 and 1.132.

As an alternative to a declaration, the proposed rules allow for an inventor to provide a statement regarding prior disclosures directly in an application. (37 C.F.R. §1.77(b)).

2. Common Ownership and Joint Research Agreements

The AIA expands the exclusion of patents and applications that are commonly owned or developed under a joint research agreement as prior art under 35 U.S.C. §102 (novelty), as well as under 35 U.S.C. §103 (non-obviousness). In addition, the critical time for common ownership or joint development will be "on or before the effective filing date of the application" rather than at the time of the invention.

The proposed rules provide for statements by the applicant that

1) the prior art and the claimed invention were commonly owned on or before the effective filing date (37 C.F.R. §1.104) or

2) the prior art and claimed invention were made on behalf of one or more parties to a joint research agreement in effect on or before the effective filing date of the claimed invention and the invention was made under the agreement.

Under the proposed rules the application must identify the parties to a joint research agreement. The parties can be identified in the original application or by an amendment to the application. The Office has also proposed that under certain conditions, the prior art exclusion for joint research agreements be expanded to applications and patents granted after 2004.

C) Change in Effective Prior Art Date and Perfecting Priority Claims

The AIA changes the definition of the "effective filing date" of United States patents and published applications to include the filing dates of foreign priority applications. Thus — only for applications which fall under the first inventor to file rules -- published patent applications will have a prior art effect against such applications as of their earliest priority date (foreign or US).

As a result, the Office needs to ensure that it has a copy of the priority application by the time the application is published. To accomplish this, the proposed rules require that, within the later of 4 months from the actual filing date of the US application or 16 months from the filing date of the foreign priority application,

(1) the claim for priority must be presented in an application data sheet (see 37 C.F.R. §1.78(a) and (c)) and

(2) a certified copy of any foreign priority application must be filed.

-- The final rules provide that the requirement for the certified copy of foreign priority documents will be considered satisfied if the applicant: 1) files an uncertified copy of the foreign application labeled as "Interim Copy" within the time period specified above; and 2) files the certified copy of the foreign application before the patent issues.

For a national stage application, the claim for priority and a certified copy of any foreign priority application must be filed within the period set in the PCT regulations. If a claim to a foreign priority application is unintentionally delayed, it can be made late but a petition is required.

II) Examiner Training Materials for First Inventor to File Provisions

The USPTO has provided training materials for the examining corps on how to interpret the provisions of the AIA first-inventor-to-file rule. The PTO guidelines attempt to clarify some ambiguities, and not surprisingly take an expansive view of what is considered to be prior art. A few highlights are below.

The guidelines attempt to put to rest any suggestion that what remains of the grace period under 35 U.S.C. §102 is an expansive exception that protects inventors against others, e.g., by the inventor establishing prior art by publishing an invention prior to filing a patent application. The guidelines inform examiners that, first, in order to qualify as unavailable against a later filed application, the inventor must "show" that the disclosure is by the same inventor or joint inventors, and this showing may require an affidavit. Further, even if the inventor has published a disclosure, and a third party subsequently publishes the same or similar subject matter, that third party publication is prior art against the inventor unless the invention was derived from the inventor (again, an affidavit is needed to establish that fact) or the third party publication is exactly the same as the initial inventor publication. Differences -- even "trivial or obvious variations" -- mean that the third party disclosure is not excluded from prior art against the inventor. -- The guidelines were changed to be less restrictive. They now say that there is no requirement that the mode of disclosure is the same or that the disclosure must be exactly the same for the grace period to be preserved. The guidelines state, "[I]f subject matter of the intervening disclosure is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, the exception in AIA 35 U.S.C. §102(b)(1)(B) applies to such subject matter of the intervening disclosure."

The guidelines reinforce the elimination of 35 USC §102(f) ("he himself did not invent the subject matter sought to be patented"), i.e., we now have a first-to-file system. But they make the curious statement that "inventorship may still be addressed under 35 USC §101" (whoever invents any new and useful process? etc.). This, seemingly, sets the stage for some unspecified "inventorship" rejection.

The PTO requested comments specifically on whether the phrase in §102, "otherwise available to the public" limits the "on sale" bar to public sales, noting that case law under the prior version of the statute indicated that sales could be private. However, to the extent that some commentators have suggested that even public uses or sales would not be considered to be "disclosures" giving rise to prior art, the guidelines clearly state the opposite, i.e., that the term "disclosure" is a generic expression encompassing all categories of prior art under §102, including sales and use. As with all of these proposed rules, it remains to be seen what the final rules will state on this question. — In view of the comments received, the PTO clarified that "on sale" under §102(a)(1) means a "public" sale. They further clarified that secret processes or uses do no meet the prior art requirements, stating "the Office views the ?or otherwise available to the public' residual clause of the AIA's 35 U.S.C. §102(a)(1) as indicating that secret sale or use activity does not qualify as prior art." The guidelines further indicate that information is secret and not prior art if it is kept among individuals having an obligation of confidentiality to the inventor.

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