Implementing First-Inventor-to-File Provisions of the AIA By: Scott D. Malpede, Seth Boeshore and...

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Transcript of Implementing First-Inventor-to-File Provisions of the AIA By: Scott D. Malpede, Seth Boeshore and...

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Implementing First-Inventor-to-File Provisions of the AIA By: Scott D. Malpede, Seth Boeshore and Chitra Kalyanaraman USPTO Rules Effective March 16, 2013 Slide 2 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 2 Claim for Foreign Priority Domestic nonprovisional applications Must be filed within 12 months of foreign filing Priority claim, including submission of certified copy of foreign application, must be made by later of: 1.four months of domestic filing date, or 2.sixteen months from foreign filing date PCT applicationscurrent rules do not change PCT regulations require priority claim and certified copy of foreign application in international application within 16 months of foreign filing 37 C.F.R. 1.55(b) Slide 3 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 3 Delayed Claim for Foreign Priority May be accepted if Applicant files petition that includes: application data sheet containing priority claim certified copy of foreign application petition fee statement that entire delay was unintentional Priority claims that do not comply will be waived 37 C.F.R. 1.55(e) Slide 4 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 4 Late Filing of Certified Foreign Application May be accepted if Applicant files petition that includes: certified copy showing of good and sufficient cause for delay petition fee 37 C.F.R. 1.55(f) Slide 5 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 5 Claim for Foreign Priority Issue date is absolute deadline for perfecting claim to foreign priority Patent will not be printed with priority claim if perfected after payment of issue fee Certificate of correction available 37 C.F.R. 1.55(g)(1) Slide 6 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 6 Claim for Foreign PriorityEarly Deadlines Applicant may be required to perfect foreign priority claim earlier than normal deadline if: application is in interference or derivation proceeding, priority date needed to overcome art rejection, or specifically requested by Examiner English translation may be required 37 C.F.R. 1.55(g)(2)-(3) Slide 7 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 7 Claim for Foreign PriorityDocument Exchange PTO will obtain certified copy of foreign patent application from foreign patent office if: foreign patent office participates in document exchange agreement priority claim includes information necessary for PTO to access foreign application If foreign application initially filed in non-participating country but subsequently filed in participating country, Applicant may file request that PTO obtain certified copy from participating countrys patent office Absolute deadline for certified copy still appliesPTO must receive certified copy from foreign patent office during pendency of application 37 C.F.R. 1.55(h) Slide 8 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 8 Claim for Foreign PriorityInterim Copy PTO will accept uncertified copy of foreign application during application pendency if: copy marked Interim Copy is timely filed, including statement that copy is a true copy certified copy is filed prior to date of issuance 37 C.F.R. 1.55(i) Slide 9 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 9 Claim for Foreign PriorityStatement in Transitional Application When nonprovisional application: is filed on or after March 16, 2013, and has foreign priority date before March 16, 2013, but includes claim with effective filing date on or after March 16, 2013, Applicant must file statement notifying PTO of these facts Statement due by later of: four months of domestic filing date, sixteen months from foreign filing date, or presentation of claim (if newly added) 37 C.F.R. 1.55(j) Slide 10 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 10 Claiming Benefit of Earlier Filing Date Nonprovisional application can claim benefit of: earlier provisional application, if nonprovisional filed within one year of provisional earlier nonprovisional or international application, if filed during pendency of earlier application 37 C.F.R. 1.78(a), (c) Slide 11 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 11 Claiming Benefit of Earlier Filing Date Benefit claim requires that application: name at least one inventor of earlier application contain reference to earlier application Reference in nonprovisional must be in ADS If reference not included in filed application, it must be added during applications pendency and by later of: four months of filing date, or sixteen months from earlier applications filing date 37 C.F.R. 1.78 (a), (c) Slide 12 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 12 Claiming Benefit of Earlier Filing DateDelayed Reference Delayed benefit claim may be accepted if Applicant files petition that includes: amendment containing reference to earlier application petition fee, and statement that entire delay after due date was unintentional Late benefit claims that do not comply will be waived 37 C.F.R. 1.78(b), (d) Slide 13 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 13 Claiming Benefit of Earlier Filing DateStatement in Transitional Application When nonprovisional application: is filed on or after March 16, 2013, and claims benefit of application filed prior to March 16, 2013, but has claim with effective filing date on or after March 16, 2013 Applicant must file statement notifying PTO of these facts Statement must be filed by later of: four months from filing date, sixteen months from filing date of earlier application, or presentation of claim (if newly added) 37 C.F.R. 1.78(a)(6), (c)(6) Slide 14 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 14 Nature of ExaminationCommon Ownership of Claimed Subject Matter and Asserted Prior Art AIA-examined applicationsearlier-filed U.S. patent or application can be removed from prior art (under 35 U.S.C. 102(b)(2)(C)) if, as of effective filing date, subject matter disclosed in reference and subject matter claimed were: owned by same person (or obliged to be assigned to same person), or developed under joint research agreement, so long as parties to agreement are named in application Pre-AIA-examined applications 102(e)-(g) prior art can be removed, for purposes of 103(c), by making either above showing, but with reference to date of claimed invention 37 C.F.R. 1.104(c) Slide 15 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 15 Effective Filing Date of Claimed Invention Under AIA Effective filing date is earlier of: actual filing date of application containing claim, and filing date of earliest priority application that discloses subject matter of claim Effective filing date in a reissue patent or application is determined by deeming the claim to the invention to have been contained in the patent for which reissue is sought 37 C.F.R. 1.109 Slide 16 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 16 Inventorship and Ownership of Subject Matter of Individual Claims When joint inventors are named in application, PTO can require Applicant to identify inventorship and ownership of each claim in application, as of effective filing date PTO can further require Applicant to identify invention dates of each claim 37 C.F.R. 1.110 Slide 17 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 17 Affidavit of Attribution or Prior Public Disclosure Under AIA Applications examined under first-inventor-to-file rules are provided grace period of one year preceding effective filing date Certain disclosures that occur during grace period can be disqualified as prior art Disclosures made more than one year before effective filing date are not eligible for disqualification 37 C.F.R. 1.130 Slide 18 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 18 Affidavit of Attribution Grace period disclosure can be disqualified as prior art if it is attributed to inventor Affidavit of attribution must establish that grace period disclosure was made by: inventor/joint inventor, or someone who obtained subject matter of grace period disclosure from inventor/joint inventor 37 C.F.R. 1.130(a) Slide 19 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 19 Affidavit of Prior Public Disclosure Grace period disclosure can be disqualified if it occurred after earlier public disclosure attributable to inventor Affidavit of public disclosure must establish that: public disclosure was made prior to date of grace period disclosure earlier public disclosure contained same subject matter as grace period disclosure earlier public disclosure was made by inventor/joint inventor, or someone who obtained subject matter disclosed from inventor/joint inventor 37 C.F.R. 1.130(b) Slide 20 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 20 Other Changes Rule 9 (definitions)revised to incorporate terms used by AIA Rule 117 (fees)revised to add new fees Rule 131 (disqualification of prior art by prior invention) revised to include old Rule 130 (disqualification of prior art by common ownership) for pre-AIA-examined applications Rules 293-297 (statutory invention registration)removed to comply with AIAs elimination of invention registrations Rule 321 (filing of terminal disclaimers)revised to be consistent with changes to 102 and 103 with respect to joint research activities 37 C.F.R. 9, 17, 131, 293-297, 321 Slide 21 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com 21 NEW YORK 1290 Avenue of the Americas New York, NY 10104-3800 212.218.2100 WASHINGTON 975 F Street, NW Washington,