On July 26, 2012, the USPTO released in the Federal Register proposed changes to the patent rules and examination guidelines for implementation of the America Invents Act’s (AIA’s) change to a “first-inventor-to-file” system. Public comments on the proposal must be submitted to the USPTO no later than October 5, 2012. The proposed rules interpret and implement Section 3 of the AIA by defining how to show that certain disclosures are not prior art, where this question may exist, refining the procedures for claims of priority and filing certified copies of foreign priority applications and requiring applicants to specify if the AIA should apply to a patent application where that is not self-evident. How the examining corps is to interpret Section 3 of the AIA is set forth in the proposed examination guidelines as a prelude to adding them to the Manual of Patent Examining Procedure (MPEP). March 16, 2013 will bring many changes to patent prosecution practice, and these proposals give insight into how applicants will interact with the USPTO under the AIA.

Prior Art

Prior art provisions of AIA 35 U.S.C §102 define the new “first-inventor-to-file” system by qualifying as “prior art” the documents or events that came into being before the “effective filing date of the claimed invention,” which is either the actual U.S. filing date or the earliest valid priority date based on a U.S., international or foreign priority application. In contrast, pre-AIA provisions defined prior art either relative to the date the invention was made or to the filing date of the U.S. patent application for the claimed invention.

AIA 35 U.S.C §102(a)(1) includes within the scope of prior art prior patenting, description in a printed publication, public use, sale and other types of public availability of the claimed invention. The guidelines contain examples of prior art falling within the new catch-all category “otherwise available to the public,” including information disseminated at a scientific meeting or a commercial transaction that does not constitute a sale under the Uniform Commercial Code. The guidelines also clarify that the terms “public use” and “sale” will have the same meaning as they did pre-AIA, with the exception that “public use” and “sale” can now occur anywhere in the world. However, the guidelines explicitly state that it is not currently clear whether a sale must be sufficiently public to qualify as prior art. The USPTO is seeking public comments addressing this issue.

AIA 35 U.S.C. §102(b)(1) explicitly excludes from the scope of §102(a)(1) three types of disclosures made one year or less from the effective filing date (“grace period”): disclosures made by an inventor (“grace period inventor disclosures”); disclosures made by another but obtained from an inventor (“grace period non-inventor disclosures”); and disclosures of subject matter that occurred after public disclosure by an inventor or by another who obtained the subject matter from an inventor (“the subject matter had been publicly disclosed”). The guidelines explain that, for “the subject matter had been publicly disclosed” exception to apply, the subject matter in the disclosure in question and the subject matter that had been previously publicly disclosed must be literally the same. Even insubstantial changes would block application of this exception.

Under AIA 35 U.S.C. §102(a)(2), U.S. patents and U.S. and international patent applications qualify as prior art if they name another inventor, describe the invention and are “effectively filed” before the effective filing date. 35 U.S.C. §102(d) provides that an “effectively filed” date can now be based on a foreign patent application, which was not the case pre-AIA. The guidelines emphasize that to have an “effectively filed” date based on an earlier application, the prior art patent document only has to meet “the ministerial requirements” of containing the priority claim, co-pendency and having a common inventor with the earlier application. Although the earlier application must contain the description of the relevant subject matter, compliance with 35 U.S.C. §112 is not required. Accordingly, the USPTO will not evaluate whether the prior art patent document is actually entitled to the benefit of priority based on the “effectively filed” date.

AIA 35 U.S.C §102(b)(2) excludes from the scope of §102(a)(2) disclosures of subject matter obtained from an inventor (“non-inventor disclosure exception”), disclosures of subject matter that “had been previously disclosed” by an inventor, or someone who obtained the subject matter from an inventor, and disclosures of subject matter co-owned or subject to an obligation of assignment to the same person no later than the effective filing date.

In summary, AIA 35 U.S.C §102(a) broadly outlines the scope of prior art, while AIA 35 U.S.C §102(b) carves out the exceptions. What falls within the exceptions is not prior art. An important question is how examiners are going to determine when something that looks like prior art on its face is actually the exception. Several mechanisms and tactics are outlined. For example, the guidelines explain that an examiner would not apply AIA 35 U.S.C. §102(a)(1) prior art if it is apparent from the patent application that the disclosure is a grace-period inventor disclosure (for example, an article published within the “grace period” and listing the same authors as the inventors of the application). To simplify identification of grace-period disclosures, proposed 37 C.F.R 1.77(b) would provide for inclusion into the specification of a statement identifying grace-period inventor disclosures. Such identified disclosures would not be treated as prior art during examination, provided there is no evidence to the contrary. Proposed 37 C.F.R §1.131 would also allow for submission of affidavits or declarations establishing that a prior disclosure is excluded from prior art under AIA 35 U.S.C. §102(b). In the case of the “inventor disclosures,” statements by an inventor may be sufficient to establish the exception. On the other hand, to establish that a “non-inventor disclosure” was obtained from an inventor, an applicant would not only have to show that the named inventor actually invented the subject matter, but also that there was an enabling communication from an inventor to the disclosing entity. Under proposed 37 C.F.R §1.104, an applicant’s or agent’s clear and conspicuous statement on the record will be sufficient to establish that the “common ownership or obligation of assignment exception” applies.

Under AIA 35 U.S.C. §102(c), subject matter disclosed in AIA 35 U.S.C. §102(a)(2) prior art document and a claimed invention are deemed commonly owned or subject to an obligation of assignment to the same person if the claimed invention was developed by the parties to a joint research agreement in effect on or before the effective filing date of the claimed invention and as a result of the activities within a scope of the agreement. Importantly, for 35 U.S.C. §102(c) to apply, the application has to disclose the names of the parties to the joint research agreement. Congress has made it clear that the intent of AIA 35 U.S.C. §102(c) is to continue the promotion of joint research activities that was begun under the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). As such, the provisions of AIA 35 U.S.C. §102(c) generally track those of the CREATE Act. The major differences between AIA 35 U.S.C. §102(c) and the CREATE Act are that: 1) The new AIA provision is keyed to the effective filing date of the claimed invention, while the CREATE Act focused on the date that the claimed invention was made, and 2) The CREATE Act provisions only applied to prior art obviousness rejections. AIA 35 U.S.C. §102(c) treats joint research agreement patents and patent application publications as being by the same inventive entity for purposes of novelty as well as obviousness determinations.

Claiming Pre-AIA Treatment

AIA 35 U.S.C. §102 and §103 take effect on March 16, 2013, and will apply to any application that contains or contained a claim having an effective filing date that is on or after March 16, 2013. To simplify the determination of whether or not a patent application should be examined under the AIA, the USPTO is proposing that applicants provide a statement regarding the applicability of AIA provisions to claims in applications filed on or after March 16, 2013. This information will assist the USPTO in determining whether the application is subject to AIA 35 U.S.C. §102 and §103 or pre-AIA 35 U.S.C. §102 and §103. According to the guidelines, examination costs will significantly increase if the USPTO must determine on its own the effective filing date of every claim ever presented in an application filed on or after March 16, 2013, that claims priority to an application filed prior to that date.

When the AIA takes effect March 16, 2013, an additional provision includes a further requirement for applications filed on or after this date, but containing priority claims predating the effective date of March 16, 2013. Specifically, 37 C.F.R. §1.55(a)(4) and 37 C.F.R. §1.78(a)(3) are proposed to be amended to add an additional requirement for nonprovisional applications filed on or after March 16, 2013 that claim the benefit of the filing date of a foreign, provisional or nonprovisional application filed prior to March 16, 2013. Under these scenarios, if the nonprovisional application also contains a claim to a claimed invention that has an effective filing date on or after March 16, 2013 or subject matter not also disclosed in the prior application, then applicants must provide a statement to that effect within a designated time limit.

In such a statement, an applicant would not be required to identify how many or which claims have an effective filing date on or after March 16, 2013. The effect of such a statement is that the USPTO would apply the new laws to all claims of the application and not merely to the claim with the later effective filing date. Accordingly, applicants should take caution to avoid the inclusion of material not supported by the original priority application unless it is critical to the invention being claimed.

In particular, applicants must provide such a statement if a nonprovisional application filed on or after March 16, 2013 (i) claims the benefit of the filing date of a foreign, provisional or nonprovisional application that was filed prior to March 16, 2013, and also (ii) contains or contained at any time a claimed invention having an effective filing date on or after March 16, 2013. The USPTO indicates that the following statement would satisfy this requirement: “Upon reasonable belief, this application contains at least one claim that has an effective filing date on or after March 16, 2013.” If a nonprovisional application filed on or after March 16, 2013 does not contain a claim to a claimed invention having an effective filing date on or after March 16, 2013 but discloses subject matter not also disclosed in the foreign, provisional or nonprovisional application, the following statement would satisfy this requirement: “Upon reasonable belief, this application contains subject matter not also disclosed in the foreign, provisional or nonprovisional application.”

Practical Considerations

First and foremost, any comments to these rule proposals and examination guidelines must be filed by October 5, 2012. Presuming this guidance on implementing the AIA will become law, all practitioners need honed strategies prepared for their particular portfolios and how they are staged. For cases with large priority claims that would extend through the March 16, 2013 switchover, it is recommended to file these before that date to avoid the various statements required under these rules. We also emphasize the continuing need for patenting entities to document inventing activities diligently. The need to establish the date of the invention through such documentation will diminish over time, as the pre-AIA “first-to-invent” system is phased out. However, under the “first-inventor-to-file” system, it may still be necessary to establish inventorship of claims in an application to show that a certain disclosure obtained from an inventor is not prior art.

Furthermore, the new system makes it essential, for several reasons, to document public disclosures by the inventors of their inventions, as well as communications by the inventors of their inventions to other parties. Including statements on inventor disclosures in patent applications may simplify their examination. The patenting entity may also be called to establish by evidence the dates and the content of inventor communications in order to avoid the characterization of the inventor-derived disclosures as prior art. For research universities and other entities actively engaged in publication activities and other types of scientific communication, it is particularly important to document and regularly review past and future publications and all other types of public disclosure by inventors as well as non-inventors (e.g., lab personnel, students, public relations officers), including discussions at scientific meetings, pertaining to the claimed inventions.

Systematic attention to monitoring and documentation of inventor communications may help to avoid loss of the potential patent rights due to prior art stemming from the disclosures of the subject matter that a patenting entity is attempting to protect. Another practical advantage of monitoring and documenting the communications pertaining to the invention is that the activities falling into the new category “otherwise available to the public” should be disclosed to the USPTO in information disclosure statements to fulfill the duty of the disclosure requirement, which will remain in force after the AIA takes effect. Joint research agreements should be drafted to ensure that their scope covers the desired inventing activities, and appropriate care should be taken to include the required information in patent applications.