State Bar of Texas27th ANNUAL ADVANCED INTELLECTUAL PROPERTY LAW COURSE

I’m so confused — what is prior art now?

Marc A. HubbardHubbard Law, PLLC

March 20-21, 2014 Dallas, Texas

Leahy-Smith America Invents Act

“First Inventor to File”The Leahy-Smith American Invents Act (Public Law 112–29—Sept. 16, 2011) changed the US patent system from a “first to invent” to a “first inventor to file” system by amending 35 USC §102, and changed what constitutes “prior art”

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Agenda

Critical concepts

Overview of the new §102

Comparison of differences between old and new §102 and prior art under the old and new system

Unresolved issues

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Guidance

Not yet any case law on how to interpret or apply new §102

Will follow USPTO’s “Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act” 78 Fed. Reg. 11059 (Feb. 14, 2013)

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Two prior art regimes for decades

For applications filed before March 16, 2013

Apply pre-AIA §102

For applications filed on or after March 16, 2013, if the application includes, or was amended to include at any time, a claim with an effective filing date after March 16, 2013, then

apply post-AIA §102/103 to every claim, even to claim withan effective filing date prior to March 16, 2013

Otherwise apply pre-AIA §102/104

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Critical concepts / points

Novelty is determined on a claim-by-claim basis

A world-wide absolute novelty standard, but —

Disclosures of subject matter originating from inventor can be in certain circumstances (a grace period for inventor disclosures)

Prior-filed but later published applications are secret prior art for obviousness

Priority between parties claiming the same invention will be based on filing dates and whether one party derived the invention from the other

Date of conception and diligence in reduction to practice are irrelevant, except to show that one party had conceived of it and the other obtained it

Secret, commercial uses and sale activities by inventor or patent owner appear to be no longer prior art (an interpretation that would overrule Metallizing Engineering and W.L. Gore cases)

Prior art for novelty is also prior art for obviousness (obviousness determined as of date of filing)

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Critical terminology

“claimed invention” — “subject matter” defined by a claim. See 35 USC §100(j)

“effective filing date” — critical date for determining novelty of a “claimed invention.” See 35 USC §100(i)(1)

“effectively filed” — date on which a US patent or US/PCT published application is effective as prior art. See 35 USC §102(d)

“disclosure” — no definition in statute, but appears to refer to an act or a thing disclosing subject matter; can include patents, patent applications, public uses, sales, publications

“subject matter” — no definition given; seems to refer to conceptual content, and not necessarily dependent of form, wording, or mode of disclosure

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Effective filing date

For a claimed invention, it is the earlier of —

The actual filing of the application containing a claim to the invention, and

The filing date of the earliest application for which the patent or application is entitled, as to invention, to a right of priority under §119 (one year Paris Convention priority period) or benefit to an earlier US filing date under §120-121 (domestic priority)

“entitled” — requires a written, fully enabling description

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Effectively filed

For subject matter described in a US patent, a published US application, or a PCT application published by WIPO, the effectively filed date is the earlier of —

Actual filing date of such patent or application, and

Filing date of earliest application describing the subject matter to which such patent or application is entitled to claim a right of priority or benefit

“entitled to claim” requires only that a valid claim was made (all requirements for making the claim satisfied) and that the earlier application describes the subject matter relied upon

Compare In re Wertheim (CCPA 1981), requiring inclusion in the application of claim entitled to the benefit of the earlier application

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§ 102. Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(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) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS. —A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(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.

(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.

(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

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Basic structure of post-AIA §§102(a) and (b)

102(a) — defines prior art (1) Anything made available to the public prior to the effective filing

date of the claimed invention (implementation of absolute novelty) (2) US patents and patent applications, and WIPO published PCT

applications designating the US with “effectively filed” dates prior to the effective filing date of the claimed invention, that “names another inventor” (implementation of first inventor to file priority)

102(b) — ”exceptions” that disqualify certain subject matter disclosures defined not to be prior art under (a) (1) certain inventor-originated and intervening third party

disclosures within 1 year of earliest effective filing date of claimed invention

(2) certain disclosures in patents and patent applications with earlier effectively filed dates

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Prior art under §102(a)(1)

Public disclosures: inventions that are “available to the public” by any mode or means —

been patented

described in a printed publication

in public use

on sale

or “otherwise available to the public”

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Prior art under §102(a)(2)

US patents issued under 35 USC §151

US patent applications published or deemed published under 35 USC §122(b)

Includes WIPO published PCT applications designating US. See 35 USC §374

Even if no US national phase application and even if not in English

Must name another inventor

Prior art as of their “effectively filed” date, which takes into account priority claims to earlier foreign applications, in addition to benefit claims to earlier domestic applications

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§102(b)(1): exceptions to 102(a)(1) prior art

Public disclosures of subject matter within 1 year of effective filing date of claimed invention of are not prior art if —

(A) Subject matter was publicly disclosed by the inventor or a joint inventor, or by another “who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor”

(B) Subject matter disclosed by a third party after disclosure of the subject matter by an inventor or someone who obtained it from him

Under PTO’s interpretation, the “subject matter” must be identical, though the mode of disclosure need not be the same or the same words used

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§102(b)(2): exceptions to 102(a)(2) prior art

Subject matter disclosed in a patent or application that would be prior art under 102(a)(2) is disqualified if the subject matter —

(A) was obtained directly or indirectly from an inventor

If also claimed, may need to initiate derivation proceeding under § 135

(B) was publicly disclosed, before the patent or application was effectively filed, by an inventor or someone who directly or indirectly obtained it from him, or

(C) the claimed invention and subject matter are owned by, or subject to an obligation to assign to, the same person not later than the effective filing date of the claimed invention

Similar to old §103(c)(1), but now also applies to anticipation rejections and does not require common ownership at time of invention

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§102(c) — joint research agreements

Similar to pre-AIA §103(e)(2)

Subject matter disclosed by a US patent, or US or PCT published patent application, is deemed commonly owned and thus disqualified, if —

a written joint research agreement (defined by §100(h)) is in effect as of the effective filing date of claimed invention

the subject matter was developed by, and the claimed invention was made by or on behalf of, one or more parties to the joint research agreement

claimed invention was result of activities within the scope of the joint research agreement

application for claimed invention discloses or is amended to disclose names of parties to joint research agreement

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Comparison to old §102(a)

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Comparison to old §102(b)

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Comparison to old §102(e)

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Comparison to old §102(e) (cont.)

Post-AIA §102(a)(2) is closest analogue

Date of invention no longer relevant; claim’s effective filing date is the critical date

Claim of priority to foreign application will now be taken into account. In re Hilmer doctrine overruled.

No English language requirements

Priority document or PCT application need not be in English (PTO will provide translation if relied on)

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Old §§102(c), (d), (f) and (g) gone

Old 102(c) — Abandonment is no longer a bar

Old 102(d) — patenting by applicant outside the US on an application filed more than 12 months prior to US application no longer a bar

Old 102(f) — applicant-did-not-invent bar no longer needed because of 102(b)(2)(A), definition of “inventor” in new §100(f), and derivation proceeding under §135 or lawsuit under §291

Old 102(g) — interferences eliminated; everything keyed to filing dates; dates of conception and reduction to practice no longer relevant (except possibly to show that subject matter was derived)

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Summary of key differences

Date of invention irrelevant

No 1 year grace period for 3rd party publications, public uses, and offers for sales/sales

No geographical limits on publications, public uses and on-sale activities

In re Hilmer doctrine overruled — foreign priority taken into account when determining effectively filed date of patent literature

No requirement for priority docs to be in English language

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Summary of new prior art

(1) Public activities

Patented

Described in a printed publication

In public use

On sale

Otherwise available to the public

(2) US patents, published patent applications, and published PCT applications

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Patents / printed publication

No big changes, except for most third party publications becoming prior art immediately

Prior art date is date on which the patent or printed publication is first accessible anywhere in the world

Anticipation still requires, as with pre-AIA 102, that the disclosure —

Explicitly or inherently disclose all elements in the claimed arrangement

Enable one of ordinarily skill in the art to make the invention without undue experimentation

Exceptions:

Inventor originated disclosures within 1 year of effective filing date of claim

Intervening disclosures between disqualifying inventor originated disclosure and effective filing date

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Public use and on sale

Apply existing case law, except that activity must make invention available to public (big change)

USPTO: secret commercial activity, offers for sale, and sales no longer prior art (a controversial interpretation)

A confidentiality agreement among seller and buyer = not available

Exceptions:

Inventor originated disclosures within 1 year of effective filing date of claim (Not a big change, unless USPTO interpretation not followed)

Intervening disclosures between disqualifying inventor originated disclosure and effective filing date (Not a big change, unless USPTO interpretation not followed)

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Otherwise available to the public

Focus on whether the claimed invention has been made sufficiently available

Can be by any mode or means, and not just the ones listed (patented, printed publication, public use, on sale)

Rely on existing case law to determine when claimed invention is sufficiently available

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US patents and published applications

Prior art as of date publicly accessible (102(a)(1) prior art) (no change)

Once published or deemed published, they are also prior art as of “effectively filed” date (Big change from old 102(e))

Exceptions:

Common ownership (or obligation to assign to same person) of subject matter and claimed invention as of the effective filing date of the claimed invention (similar to current law)

Subject matter disqualified under 102(c) due to joint research agreement (similar to current law)

Subject matter derived from the inventor (new)

Subject matter publicly disclosed by an inventor or someone who obtained it from an inventor (new)

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Unresolved issues/fodder for controversy

Are AIA eliminated secret commercial use and secret on sale activities really no longer prior art?

If so, what will be required to demonstrate public availability?

Disqualifying disclosures

What showing or proof is required to disqualify a disclosure by an inventor, or by someone who obtained the subject matter from an inventor

How similar must a third party disclosure be to an inventor disclosure to disqualify it

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Marc A. Hubbard

Hubbard Law, PLLC

4849 Greenville Ave, Suite 1490

Dallas, Texas 75206

(214) 396-6001

mhubbard@hubbardip.com

www.hubbardip.com

© 2014 Marc A. Hubbard