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

ImplementingFirst-Inventor-to-File Provisions of the AIA

By: Scott D. Malpede, Seth Boeshore and Chitra Kalyanaraman

USPTO Rules Effective March 16, 2013

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | www.fitzpatrickcella.com2

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 applications—current 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)


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)


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)


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)


Claim for Foreign Priority—Early 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)


Claim for Foreign Priority—Document 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 country’s patent office

Absolute deadline for certified copy still applies—PTO must receive certified copy from foreign patent office during pendency of application

37 C.F.R. § 1.55(h)


Claim for Foreign Priority—Interim 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)


Claim for Foreign Priority—Statement 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)


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)


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 application’s pendency and by later of:

– four months of filing date, or

– sixteen months from earlier application’s filing date

37 C.F.R. § 1.78 (a), (c)


Claiming Benefit of Earlier Filing Date—Delayed 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)


Claiming Benefit of Earlier Filing Date—Statement 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)


Nature of Examination—Common Ownership of Claimed Subject Matter and Asserted Prior Art

AIA-examined applications—earlier-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)


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


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


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


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)


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)


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 AIA’s 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


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

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