Prosecution Group Luncheon

Patents

August 2012

Proposed First-To-File Rules

• Add definitions in AIA to Rules

• Declarations for removing references based on exceptions in new 102

• Notification to PTO of post-AIA claim or new matter in child application

• Comment period closes October 5

• 77 Fed. Reg. 43742-59 (July 26, 2012)

Submissions to Remove References

• Recall prior art exceptions in new 102(b)/(c): reference information not applicable if– It and claimed invention commonly owned or part

of activities of joint research agreement– Within 1 year of filing, it came from inventor or one

who obtained from inventor (“OWO”), or it came after public disclosure of the information by inventor or OWO

• Proposed Rule 104(c): common ownership– Applicant files statement in the record – Joint research agreement condition also requires

giving names of parties to agreement in application

Submissions to Remove References• Proposed Rule 130: Declarations

– (a)(1) Show that reference was by inventor, or that its info was publicly disclosed by inventor before reference date

– (a)(2) Same, as to reference or disclosure by OWO

• Reference is by inventor: decl’n must show he/she is in fact inventor of relied-on info

• Reference by OWO: same, and show inventor communicated the relied-on info (in)directly to OWO

Submissions to Remove References

• Inventor disclosed before reference: decl’n must– Identify/give date of disclosure– Show inventor is in fact inventor of that earlier

disclosure– If reference is printed publication, provide copy– If not, describe disclosure with “detail and

particularity” to show it is public disclosure of relied-on information

• OWO disclosed before reference: same, and show communication of relied-on info

Statements of Post-AIA Claims, Disclosure

In post-AIA applications claiming pre-AIA benefit, that include(d) claim(s) with post-AIA date

• Must file “statement to that effect” by later of:– Four months from application filing date– 16 months from benefit-application filing date– Date that the first post-AIA claim is presented

• Need not identify particular claim(s) – “upon reasonable belief, this application contains

at least one claim that has an effective filing date on or after March 16, 2013”

Proposed 37 CFR 1.55, 1.78(a)

Statements of Post-AIA Claims, Disclosure

In post-AIA applications claiming pre-AIA benefit, with disclosure not also in benefit application

• Must file “statement to that effect” by later of:– Four months from application filing date– 16 months from benefit-application filing date

• Need not identify particular matter – “upon reasonable belief, this application contains

subject matter not also disclosed in” the prior foreign, provisional or non-provisional application

Statements of Post-AIA Claims, Disclosure

• If you fail to provide statement in given time period, or seek to retract statement– May result in Rule 105 request for specific

identification of support in benefit-application

• No statement required if:– Application discloses only subject matter also in

benefit-application– Benefit only claimed to applications dated

3/16/13 or after

Proposed Post-AIA Examination Guidelines

• Reviews new provisions and how to apply

• Guidelines generally consider that procedure and theory remains the same– Anticipation, enablement standards– No “difference of approach to the question of

obviousness”– Notes that geographic limitations are removed

• Comment period closes October 5

• 77 Fed. Reg. 43759-73 (July 26, 2012)

Proposed Post-AIA Examination Guidelines• “On Sale”

– Comment sought on whether public availability has role

• “Otherwise available prior art”: “Catch-all” provision – Focus on availability rather than on means of dissemination– May include thesis, poster display, Internet posting,

transaction not amounting to UCC “sale”

• Removing prior art through early disclosure– Inventor’s earlier public disclosure must be the same as the

disclosure in the reference to be removed– Even if differences between reference info and inventor’s

earlier disclosure “are mere insubstantial changes, or only trivial or obvious variations,” the exception does not apply

New Google Patents Features

• European Patents– Search by number (e.g. EP1692064A1)– OCR text, links to EP site

• Prior Art Finder– Identifies key phrases from patent text, makes

search query– Results come from Google Patents, Google

Scholar, Google Books, and web

Google’s Find Prior Art

Google’s Find Prior Art