The PTO recently issued new rules for implementing the first-inventor-to-file provisions of the America Invents Act (AIA). The rules go into effect on March 16, 2013, along with the AIA provisions pertaining to conditions of patentability as set forth in 35 U.S.C. §§102 and 103.
March 16 Changes Everything
For applications filed in the U.S. Patent and Trademark Office with an effective filing date on or after March 16, 2013, the claims will be examined under 35 U.S.C. §§102 and 103 as amended by the AIA. Under the new statutes, §102(e) is discontinued, U.S. patents and U.S. patent application publications will be prior art as of their earliest priority date, domestic or foreign, and §102(a) no longer requires that a prior public use or sale be “in this country.” Applications with an effective filing date prior to March 16, 2013, on the other hand, will still be examined under the current 35 U.S.C. §§102 and 103.
Highlights of the new rules are discussed below. A more detailed look at the new rules may be found by clicking here.
Foreign Priority Claims
Since patent application publications become prior art as of their claimed foreign priority date, the PTO is requiring the claim for priority and a certified copy of the foreign application to be filed within the later of four months from the actual filing date or sixteen months from the filing date of the foreign application. This 4 month/16 month deadline is intended to perfect applicant’s claim for priority by time the application is published. Additionally, the claim for priority must be presented in an application data sheet (ADS).
There are exceptions to these filing requirements. Notably, the requirement will be satisfied if the foreign application was filed in a foreign office having a priority document exchange agreement with the PTO and a copy is timely received by the PTO, or if the applicant files a separate request that the PTO obtain a copy of the foreign application from a participating foreign office that received a copy of the foreign application in another application. Alternatively, the applicant may file an “Interim Copy” of the foreign application within the 4 month/16 month time limit and provide a certified copy before the patent is granted.
A claim for priority not timely made under the new rules is considered to have been waived. However, a petition to accept a delayed claim for priority can be filed with a statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional. The certified copy can be filed late, up to the issue date, if accompanied by a showing of good and sufficient cause for the delay.
In a nonprovisional application filed on or after March 16, 2013, and claiming priority to a foreign application filed before that date -- a so-called “transitional application,” the applicant is required to file a statement if the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013. This will assist the PTO in determining whether the application is to be examined under 35 U.S.C. §102 and §103 as amended by the AIA or in effect prior to the AIA.
The statement must be filed within the later of 4 months from the actual filing date (or entry into the national stage in an international application), sixteen months from the filing date of the priority application, or the date that a first claim to a claimed invention with an effective filing date on or after March 16, 2013, is presented in the application.
Domestic Priority Claims
Domestic priority claims based on an earlier-filed provisional application or an earlierfiled nonprovisional application must abide by the same rules as foreign priority claims. Namely, the application is to contain a reference to the priority application, and the reference must be included in the ADS. If the reference is not made within the 4 month/16 month time period, the priority claim is considered to be waived. As with foreign priority claims, however, a petition to accept an unintentionally delayed priority claim can be filed and must include a statement that the entire delay was unintentional.
Domestic priority claims also can trigger transitional statements. In an application filed on or after March 16, 2013, and claiming domestic priority to March 15, 2013, or earlier, a statement will be required if the application contains, or at any time contained, a claim to a claimed invention with an effective filing date on or after March 16, 2013. The timeline for filing the statement is the same 4 month/16 month/first claim as discussed above.
Finally, 37 C.F.R. §1.30 has been rewritten to provide applicant the means to file a declaration (or affidavit) to disqualify a disclosure as prior art. Specifically, this new rule allows for showing attribution of a disclosure to an inventor or prior public disclosure necessary to remove a disclosure under 35 U.S.C. §102(b) as amended by the AIA.
Section (a) allows the applicant to disqualify a disclosure as prior art by establishing that (i) the disclosure was made by the inventor, or (ii) the subject matter disclosed was obtained directly or indirectly from the inventor. Section (b) lets the applicant disqualify a disclosure as prior art by establishing that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or another who obtained the subject matter directly or indirectly from the inventor.
Rule 130 declarations are not available if the rejection is based on a disclosure made more than one year before the effective filing date of the claimed invention.
The impact of these new rules will be felt immediately, particularly with priority claims and transitional statements, and new standard practices may be required. Other rules, such as declaration practice under new Rule 130, will develop more slowly over time as applications with effective filing dates on or after March 16, 2013 are examined.