August 2012 prosecution luncheon

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<ul><li> 1. Prosecution Group Luncheon Patents August 2012</li></ul> <p> 2. Proposed First-To-File Rules Add definitions in AIA to Rules Declarations for removing references basedon exceptions in new 102 Notification to PTO of post-AIA claim or newmatter in child application Comment period closes October 5 77 Fed. Reg. 43742-59 (July 26, 2012) 3. 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 partof activities of joint research agreement Within 1 year of filing, it came from inventor or onewho obtained from inventor (OWO), or it cameafter public disclosure of the information byinventor or OWO Proposed Rule 104(c): common ownership Applicant files statement in the record Joint research agreement condition also requiresgiving names of parties to agreement in application 4. Submissions to Remove References Proposed Rule 130: Declarations (a)(1) Show that reference was by inventor, orthat its info was publicly disclosed by inventorbefore reference date (a)(2) Same, as to reference or disclosure byOWO Reference is by inventor: decln must showhe/she is in fact inventor of relied-on info Reference by OWO: same, and show inventorcommunicated the relied-on info (in)directly toOWO 5. Submissions to Remove References Inventor disclosed before reference: declnmust Identify/give date of disclosure Show inventor is in fact inventor of that earlierdisclosure If reference is printed publication, provide copy If not, describe disclosure with detail andparticularity to show it is public disclosure ofrelied-on information OWO disclosed before reference: same, andshow communication of relied-on info 6. Statements of Post-AIA Claims, DisclosureIn 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 containsat least one claim that has an effective filing dateon or after March 16, 2013Proposed 37 CFR 1.55, 1.78(a) 7. Statements of Post-AIA Claims, DisclosureIn 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 containssubject matter not also disclosed in the priorforeign, provisional or non-provisional application 8. Statements of Post-AIA Claims, Disclosure If you fail to provide statement in given timeperiod, or seek to retract statement May result in Rule 105 request for specificidentification of support in benefit-application No statement required if: Application discloses only subject matter also inbenefit-application Benefit only claimed to applications dated3/16/13 or after 9. Proposed Post-AIA Examination Guidelines Reviews new provisions and how to apply Guidelines generally consider that procedureand theory remains the same Anticipation, enablement standards No difference of approach to the question ofobviousness Notes that geographic limitations are removed Comment period closes October 5 77 Fed. Reg. 43759-73 (July 26, 2012) 10. 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 Inventors earlier public disclosure must be the same as the disclosure in the reference to be removed Even if differences between reference info and inventors earlier disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception does not apply 11. 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, makessearch query Results come from Google Patents, GoogleScholar, Google Books, and web 12. Googles Find Prior Art 13. Googles Find Prior Art </p>

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