A Practical Guide For Prosecutors

Patent Prosecution Under The AIA

William R. Childs, Ph.D., J.D.

August 22, 2013

DISCLAIMER

These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law and practice. These materials reflect only the personal views of the speaker and cannot be considered legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, Drinker Biddle & Reath LLP and the speaker cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with Drinker Biddle & Reath LLP and the speaker. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed.

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First-To-File (or Disclose):Keep Your Eyes On The Prize

What has changed under the AIA “first-to-file” provisions?– Whether to make a “transition statement” when filing

an Application. – Whether or not references qualify as prior art.

Context:– Need to file an application or prepare a Response to

an Office Action.– Limited budget and short time frame.

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Three Steps To Determine What Is Prior Art

Step 1: Determine Which Law Applies

Step 2: Determine The “Effective Filing Date”

Step 3: Determine If a Disclosure Is Prior Art Under 35 U.S.C. § 102(a)1 or § 102(a)2

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To Check or Not To Check?

Step 1: Determine whether an Application is Pre-AIA, Post-AIA, or a Transition Application.– The real question: which law applies to this

application?

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Step 1A: Determine The Chain of Priority

Step 1A: Determine the Filing Date and Claim of Priority of the specific Application that you are working on.– Look to the Filing Receipt in Public PAIR.

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http://portal.uspto.gov/pair/PublicPair

Establishing A Time Line

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JP ‘15312/02/04

PCT ‘59112/01/05

371 Nat. Stage ‘82804/29/08

Con. ‘19501/04/11

AIA3/16/13

Step 1B: Two Easy Cases

Was The Filing Date of the present Application Before March 16, 2013?– Note: if 371 National Stage, use the PCT filing date.– If yes, AIA does not apply. Use Pre-AIA law.

Was The Filing Date of the present Application on or after 3/16/13 and does not claim priority to a Pre-3/16/13 Effective Filing Date?

– If yes, AIA applies. See, 35 U.S.C. § 100(i).

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Two Easy Cases: Non-Transition Applications

Pre-AIA Application: the application was filed before March 16, 2013.

Post-AIA Application: the application does not claim priority to an application filed before March 16, 2013.

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JP 4/27/14

PCT 4/25/15

371 Nat. Stage 12/31/16

Div. 7/14/17

AIA3/16/13

JP 12/02/04

PCT 12/01/05

371 Nat. Stage 04/29/08

Con. 01/04/11

AIA3/16/13

The Third Case: The Transition Application

If the Filing Date of the present Application was filed On or After 3/16/13 and claims priority to a Pre-3/16/13 Effective Filing Date, then the Application is a Transition Application.

Next Question: Is the Application a Hybrid Application?

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JP 12/02/04

PCT 12/01/05

371 Nat. Stage 04/29/08

Con. 01/04/15

AIA3/16/13

Step 1C: Is the Transition Application Pre-AIA or a Hybrid?

Determine if the Application is a “Hybrid Application.”– Was there any New Subject Matter in any claim

between The Filing Date of the Present Application and March 16, 2013? (includes intervening apps.)

> If New Subject Matter, then Hybrid Application, and both Post-AIA § 102 and old § 102(g) (first to invent) apply.

> If No New Subject Matter, then Pre-AIA.

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JP 12/02/04

PCT 12/01/05

371 Nat. Stage 04/29/08

Con. 01/04/115

AIA3/16/13

Transition Statement Summary: To Check or Not to Check?

Four Types of Application:– Pre-AIA: all filing dates before 3/16/13 >> don’t

check.– Post-AIA: all priority dates after 3/16/13 >> don’t

check.– Non-Hybrid Transition Application: Filed After

3/16/13, but claims priority before 3/16/13, and no New Subject Matter on day of filing >> don’t check.

– Hybrid Transition Application: Filed After 3/16/13, but claims priority before 3/16/13, and has New Subject Matter on day of filing >> must check the box.

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New Subject Matter vs. New Matter

Avoid Having To Make A Transition Statement:– Claim amendments after the filing date can introduce

“New Matter.” > Results in § 132 objection and/or § 112 rejection, but no loss

of priority.

– Claim amendments on the day of filing can introduce “New Subject Matter.”

> Results in loss of priority, but no objection.

– Avoid Hybrid Applications by filing the claims of a Pre-AIA Application verbatim or only deleting claims.

> Amend the next day to avoid introducing New Subject Matter.

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Determining Prior Art for Office Actions

If Starting with an Office Action, Choice of Law is even easier to determine.

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Step 2: Determine The “Effective Filing Date”

“Effective Filing Date” is the earliest filing date for which the application has claim of priority under 35 U.S.C. §§ 119, 120, or 121 and a claim has § 112 support.– Claim-by-claim basis.– What is the earliest Foreign Priority, U.S. Provisional,

PCT Application, or U.S. Application to which you have priority?

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Step 3A: Determine If A Disclosure Is Prior Art Under § 102(a)(1)

Step 3A: Was the disclosure patented, published, on sale, in public use, or otherwise publically available any where in the world, more than one year prior to the Effective Filing Date of a claim?– If so, the entire disclosure

Is prior art under

35 U.S.C. § 102(a)(1).> See, § 102(a)(1) and (b)(1).

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Step 3B: Determine If A Disclosure Is Prior Art Under § 102(a)(1)

Step 3B: Was the disclosure patented, published, on sale, publically used, or otherwise publically available any where in the world one year or less prior to the Effective Filing Date of a claim?– If yes, proceed as if the

disclosure is prior art under

35 U.S.C. § 102(a)(1).– Inquire about disclosures

by the inventor or co-inventor.

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The Uncertainty of “Disclosure”

Even if an exception under 35 U.S.C.

§ 102(b)(1) applies: a “Disclosure” is interpreted

narrowly. The Subject Matter removed only applies to the

parts of a Disclosure that are identical.> Can differ by mode.

(e.g., poster vs. paper)> Can be non-verbatim.> Can be a more general

description of what is claimed. (e.g., genus is not art against species)

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Step 3C: Determine If A Disclosure Is Prior Art Under § 102(a)(2)

Step 3C: Was the cited Disclosure a U.S. Patent, U.S. Patent Publication, or PCT Publication designating the U.S., having non-identical inventorship, and has a filing date before the Effective Filing Date of a claim?– If no, not prior art under § 102(a)(2).– If yes and common assignee as of the Effective Filing

Date, then § 102(b)(3) exception applies.– If yes, and no common assignee as above, proceed

as if prior art under § 102(a)(2).

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Step 3D: Not Prior Art

Step 3D: Was the disclosure publically available and had an effective filing date after the Effective Filing Date of a claim?– If yes, then the Disclosure

is not prior art.

– The Disclosure cannot

be cited as prior art for

anticipation or

obviousness rejection.

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Prioritized Examination (a.k.a. “Track One” or “Fast-Track”) Petition to have an application considered out of

turn.– For regular examination

> Avg. 18.7 months until

a first Office Action.> Avg. 30.6 months total

pendency.

– For Track One,> Avg. 1.6 months until a first Office Action.> Ave. 4.7 months from petition grant to allowance.

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Prioritized Examination Requirements

The Application must be a Utility or Plant Application AND– Continuing Application (By-pass PCT, Divisional, Continuation,

Continuation-in-Part (CIP), or Request for Continued Examination (RCE x 1)). Cannot be a § 371 national stage application.

To Prioritize, file a petition with the application.– No more than 4 independent claims, no more than 30 total

claims, no multiple dependent claims– Electronically filed– Fee of $4,000 (unless small or micro entity)– Complete under 37 C.F.R. § 1.51(b) (oath and dec.)

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How To Lose Priority Status:In One Easy Step!

An Prioritized Application Generally Remains Prioritized Until a Final Office Action or Notice of Allowance is Received.

Unless:– File a Petition for Extension of Time.– Amend to more than 4 independent claims.– Amend to more than 30 total claims.– Amend a claim into multiple dependent format.

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Pre-Issuance Submission of Prior Art in Applications

Allows a Third-Party to file prior art in an application with a “concise description of relevance.”– Timing: Later of 6 months after publication or before

first rejection (i.e., first Office Action), and before allowance

– Any pending non-provisional

Application. – Must provide copies and

English translations

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Concise Description of Relevance

Factual description of relevance for each document to each claim.

No arguments, only descriptions.

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Claim Publication X Patent Y

A composition comprising A + B + C.

“A mixture of A + B” See, ¶ [0024] of X.

“Adding C improves a property.” Col. 2, lines 1-3 of Y.

Supplemental Examination

Allows for patent owners to submit documents for reexamination of the patent.– Provides a way to avoid inequitable conduct by

cleaning up the file wrapper.> Failure to submit material

references in IDS> Erroneous statements> Lack of Statement of Substance

of the Interview> What about payment of incorrect

fees?

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Supplemental Examination: How to Use It

Can only be filed by all Patent Owner(s). Any time during enforceability, but will not help

for if law suits is already filed (or notice sent) Must raise a “substantial new question of

patentability”. Up to 12 “items” per Supplemental Examination $5,140 for request and $16,120, if granted. If granted, then Ex Parte Reexamination. Non-patent owners cannot intervene.

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Micro Entity Status

If qualify, can reduce many PTO fees by 75% There are two paths to Micro Entity Status:

– The Higher Education path requires:

> 1. The applicant's employer, from which the applicant obtains the majority of the applicant's income, is a institution of higher education (U.S. or protectorate) OR

> 2. The applicant has assigned, licensed, etc… or is under obligation to assign interest to such a institution of higher education.

– See, 77 Fed. Reg. 75019

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Micro Entity Status: the Narrow Path

The Small Entity Path requires:– qualifies as a small entity (i.e., individual, business

with less than 500 employees, or non-profit);– Not been named as an inventor on more than 4

previously filed patent applications;– No gross annual income exceeding three times the

median household income ($150,162 in 2011); and– Not assigned, licensed, etc. to a party with gross

income of more than three times the median household income.

> See, 77 Fed. Reg. 75019 and 37 CFR § 1.27.

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Oaths and Declarations

For Applications filed on or after September 16, 2013, follow AIA Declaration, Assignment, and Power of Attorney rules.

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http://www.uspto.gov/forms/index.jsp

Best Mode: It Just Won’t Die

“[F]ailure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.”– 35 U.S.C. § 112(b)(3)(A)

“A practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions.”– 37 C.F.R. § 11.106(c)

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