The America Invents Act: Eighteen Months Post-Enactment Janet

The America Invents Act: Eighteen Months Post-Enactment Janet

The America Invents Act: Eighteen Months Post-Enactment Janet Gongola Patent Reform Coordinator March 27, 2013 Overview First Inventor to File Patent Fee Schedule Micro Entity Discount 2 First Inventor to File Final Rules and Guidelines Effective March 16, 2013

Guidelines Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act , 78 Fed. Reg. 11059 (February 14, 2013) 4 Critical Date for Claimed Invention Pre-AIA: date of invention AIA: effective filing date 5 35 U.S.C. 100(i)(1): New Definition for Effective Filing

Date Effective filing date of a claimed invention under examination is the earlier of: the actual filing date of the patent or application containing a claim to the invention; or the filing date of the earliest application for which the patent or application is entitled to a right of foreign priority or domestic benefit as to such claimed invention 6 AIA Impact on pre-AIA 35 U.S.C. 102 Pre-AIA 35 U.S.C. 102 A person shall be entitled to a patent unless (a)

the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or AIA 35 U.S.C. 102 Concordance 102(a)(1) (b) The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or Abandonment of invention (c) He has abandoned the invention, or

foreign patenting (d) The invention was first Premature patented or caused to be patented, or was the subject of an inventors certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventors certificate filed more than twelve months before the filing date of the application in the United States, or (e) (1) (2) The invention was described in An application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or A patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except than an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was

published under Article 21(2) of such treaty in the English language, or No corresponding provision 102(a)(2) Derivation (f) He did not himself invent the subject matter sought to be patented, or 101 and 115 (g) (1) during the course of an interference conduced under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such persons invention

thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) Before such persons invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. Prior invention by another No corresponding provision 7 AIA Statutory Framework Prior Art 35 U.S.C. 102(a) (Basis for Rejection) 102(a)(1) Disclosure with Prior

Public Availability Date 102(a)(2) U.S. Patent, U.S. Patent Application, and PCT Application with Prior Filing Date Exceptions 35 U.S.C. 102(b) (Not Basis for Rejection) 102(b)(1) (A)

Grace Period Disclosure by Inventor or Obtained from Inventor (B) Grace Period Intervening Disclosure by Third Party (A) Disclosure Obtained from Inventor 102(b)(2) (B) Intervening Disclosure by Third Party (C) Commonly Owned Disclosure 8

35 U.S.C. 102(a)(1): Prior Public Disclosures as Prior Art 35 U.S.C. 102(a)(1) precludes a patent if a claimed invention was, before the effective filing date of the claimed invention: o patented; o described in a printed publication; o in public use; o on sale; or o otherwise available to the public 9 In Public Use or On Sale Does not include pre-AIA geographic limitation Use or sale may occur anywhere in the world

Does not include pre-AIA treatment of secret sale as prior art Sale activity must have been available to the public 10 Otherwise Available to the Public Introduced by the AIA; no corresponding language in pre-AIA 35 U.S.C. 102 Catch-all to account for other means of making an invention publicly available 11 35 U.S.C. 102(b)(1)(A) Exception:

Grace Period Disclosure of Inventors Work First exception: A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) if: the disclosure was made by: the inventor or joint inventor; or another who obtained the subject matter directly or indirectly from the inventor or joint inventor 12 Example 1: Exception in 102(b) (1)(A) July 1, 2013 July 1, 2014

Taylor publishes X Taylor files patent application claiming X Inventor Taylors Grace Period Taylors publication is not available as prior art against Taylors application because of the exception under 102(b)(1)(A) for a grace period disclosure by an inventor. 13 Example 2: Exception in 102(b) (1)(A) Smith publishes X

July 1, 2013 July 1, 2014 Taylor files patent application claiming X Inventor Taylors Grace Period Smiths publication would be prior art to Taylor under 102(a) (1) if it does not fall within any exception in 102(b)(1). However, if Smith obtained subject matter X from Taylor, then it falls into the 102(b)(1)(A) exception as a grace period disclosure obtained from the inventor, and is not prior art to Taylor. 14

35 U.S.C. 102(b)(1)(B) Exception: Grace Period Intervening Disclosure by Third Party Second exception: A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) if: the subject matter disclosed was, before such disclosure, publicly disclosed by: the inventor or joint inventor; or another who obtained the subject matter directly or indirectly from the inventor or joint inventor 15

The Subject Matter For the 35 U.S.C. 102(b)(1)(B) exception to apply: the subject matter in the prior disclosure must be the same as that which is later publicly disclosed the mode of prior disclosure by the inventor need not be the same as the mode of later disclosure by another verbatim disclosures are not required 16 Example 3: Exception in 102(b)(1)(B) Smith publishes X July 1, 2013 Taylor

publishes X July 1, 2014 Taylor files patent application claiming X Inventor Taylors Grace Period Smiths publication is not prior art because of the exception under 102(b)(1)(B) for a grace period intervening disclosure by a third party. Taylors publication is not prior art because of the exception under 102(b)(1)(A) for a grace period disclosure by the inventor.

If Taylors disclosure had been before the grace period, it would be prior art against his own application. However, it would still render Smith inapplicable as prior art. 17 AIA Statutory Framework Prior Art 35 U.S.C. 102(a) (Basis for Rejection) 102(a)(1) Disclosure with Prior Public Availability Date 102(a)(2) U.S. Patent, U.S. Patent Application, and PCT

Application with Prior Filing Date Exceptions 35 U.S.C. 102(b) (Not Basis for Rejection) 102(b)(1) (A) Grace Period Disclosure by Inventor or Obtained from Inventor (B) Grace Period Intervening Disclosure by Third Party (A)

Disclosure Obtained from Inventor 102(b)(2) (B) Intervening Disclosure by Third Party (C) Commonly Owned Disclosure 18 35 U.S.C. 102(a)(2): U.S. and PCT Patent Documents Are Prior Art as of the Date They Are Effectively Filed 35 U.S.C. 102(a)(2) precludes a patent if a claimed invention was described in a: o U.S. Patent;

o U.S. Patent Application Publication; or o PCT Application Publication designating the U.S. that names another inventor and was effectively filed before the effective filing date of the claimed invention 19 35 U.S.C. 102(d): Determining the Date that a U.S. or PCT Patent Document Is Effectively Filed Date that a U.S. or PCT patent document being applied as a reference is effectively filed is the earlier of: the actual filing date of the U.S. patent or published application; or the filing date of the earliest application to which the U.S. patent or published application is entitled to claim a right

of foreign priority or domestic benefit which describes the subject matter Date that a patent document used as a reference is effectively filed may be different depending on whether the 20 application under examination is subject to AIA or pre-AIA 35 U.S.C. 102(b)(2)(A) Exception: Disclosure Obtained from Inventor First exception: A disclosure in an application or patent shall not be prior art under 35 U.S.C. 102(a)(2) if: the disclosure was made by another who obtained the subject matter directly or indirectly from the inventor or joint inventor 21

Example 4: Exception in 102(b)(2)(A) Smiths application publishes Smith files patent application disclosing X October 1, 2015 April 1, 2014 July 1, 2014 Taylor files patent application claiming X

Smiths patent application publication is not prior art if Smith obtained X from Inventor Taylor because of the exception under 102(b)(2)(A) for a disclosure obtained from the inventor 22 35 U.S.C. 102(b)(2)(B) Exception: Intervening Disclosure by Third Party Second exception: A disclosure in an application or patent shall not be prior art under 35 U.S.C. 102(a)(2) if: the subject matter disclosed was, before such subject matter was effectively filed, publicly disclosed by: the inventor or joint inventor; or another who obtained the subject matter directly or indirectly from the

inventor or joint inventor 23 Example 5: Exception in 102(b) (2)(B) Smith files patent application disclosing X Smiths application publishes April 1, 2014 March 1, 2014 Taylor

publishes subject matter X October 1, 2015 July 1, 2014 Taylor files patent application claiming X Smiths patent application publication is not prior art against Taylors application because of the exception under 102(b)(2)(B) for an intervening disclosure by a third party. 24

35 U.S.C. 102(b)(2)(C) Exception: Commonly Owned Disclosure Third exception: A disclosure made in an application or patent shall not be prior art under 35 U.S.C. 102(a) (2) if: the subject matter and the claimed invention were commonly owned or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention Resembles pre-AIA 35 U.S.C. 103(c), but applies to both novelty and obviousness, whereas pre-AIA disqualified art only for obviousness 25 Commonly Owned or Subject to Obligation of Assignment Applicant can establish common

ownership or obligation of assignment by making a clear and conspicuous statement Corroborating evidence is not required 26 Example 6: Exception in 102(b)(2)(C) February 1, 2014 Smith invents X and assigns toMarch Company 1, 2014Z

Taylor invents X and assigns to Company Z Smith files patent application disclosing X April 1, 2014 July 1, 2014 Taylor files patent application claiming X Smiths patent application publication is not prior art because of the exception under 102(b)(2)(C) for a commonly

owned disclosure. There is no requirement that Smiths and Taylors subject matter be the same in order for the common ownership exception to apply. 27 Rules Changes to Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11024 (February 14, 2013) 28 Rule 1.130 Affidavits or Declarations Revised rule 1.130 provides a mechanism for an applicant or patent owner to provide information relevant to certain prior art exceptions:

affidavit or declaration of attribution under 1.130(a), to invoke the 102(b)(1)(A) or 102(b) (2)(A) exception affidavit or declaration of prior public disclosure under 1.130(b), to invoke the 102(b)(1)(B) or 102(b)(2)(B) exception 29 Rule 1.130(a): Affidavit or Declaration of Attribution In response to a rejection based on a disclosure, applicant or patent owner may submit an affidavit or declaration of attribution attesting that 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 joint inventor Declaration or affidavit may be used to overcome a rejection based on 102(a)(1) or 102(a)(2) prior art by invoking the 102(b)(1)(A) or 102(b)(2)(A) 30 Rule 1.130(b): Affidavit or Declaration of Prior Public Disclosure In response to a rejection based on a disclosure, applicant or patent owner may submit an affidavit or declaration of prior public disclosure attesting that a prior public disclosure of the subject matter was made by the inventor or joint inventor or by another who obtained the subject matter

disclosed directly or indirectly from the inventor or joint inventor Declaration or affidavit may be used to overcome a rejection based on 102(a)(1) or 102(a)(2) prior art by 31 invoking the 102(b)(1)(B) or 102(b)(2)(B) exception, Rule 1.130(c): Affidavit or Declaration Not Available An affidavit or declaration is not available to overcome a rejection if: the rejection is based on a disclosure made more than one year before effective filing date of claimed invention An affidavit or declaration under rule 1.130 may

not available to overcome a rejection if: the affidavit or declaration contends that the inventor named in prior art U.S. patent or U.S. patent application publication derived the claimed invention 32 Applicability of AIA Filed before March 16, 2013; Priority/Benefit claim before March 16, 2013 pre-AIA application Filed on or after March 16, 2013;

Priority/Benefit claim before March 16, 2013 Transitional application Filed after March 16, 2013; Priority/Benefit claim after March 16, 2013 AIA application 33 Rule 1.55(j), 1.78(a)(6), or 1.78(c)(6): Statements in Transitional

Applications Nonprovisional applications that are: filed on or after March 16, 2013; and claim foreign priority or domestic benefit of an application filed before March 16, 2013, are called transitional applications If a transitional application has ever included a claim to an invention having an effective filing date on or after March 16, 2013, applicant must provide a statement to that effect 34 Rule 1.55(j), 1.78(a)(6), or 1.78(c)(6): Timing of Statements for Transitional Applications Statements must be filed within the later of: 4 months from the actual filing date of the later-filed

application; 4 months from the date of entry into the national stage; 16 months from the filing date of the prior-filed application from which benefit or priority is sought; or the date that a first claim having an effective filing date on or after March 16, 2013, is presented in the later-filed application. 35 Rule 1.55(j), 1.78(a)(6), or 1.78(c)(6): Statements in Transitional Applications Applicant is not required to identify how many or which claims have an effective filing date on or after March 16, 2013

A statement is not required if applicant reasonably believes that the application does not, and did not at any time, contain a claim that has an effective filing date on or after March 16, 2013 A statement is not required for transitional applications that add unclaimed subject matter, which if claimed would have an effective filing date on or after March 16, 2013 36 AIA Indicators Applicants can view PAIR to find out whether an application is being examined under the AIA or under pre-AIA law Certain USPTO forms received with Office actions also will include an AIA indictor Examiners will have indicators in our internal IT systems (i.e., eDAN and PALM) to show

whether an application has been identified as subject to the AIA or to pre-AIA law 37 Application Data Sheet with AIA Statement 38 AIA Indicator: PAIR 39 AIA Indicator: Office Action Summary 40

AIA Indicator: Notice of Allowability 41 Rule 1.55(a), (b), (d), and (e): Foreign Priority in a 35 U.S.C. 111(a) Application To take advantage of the new definition of effective filing date which includes a foreign filing date, applicant must: claim foreign priority within the later of: 4 months from the actual filing date of the application; or 16 months from the filing date of the foreign priority application and include the foreign priority in an application data

sheet (ADS) Foreign priority claimed is waived if omitted from the ADS 42 Rule 1.55(f): Certified Copy of Foreign Priority Document Certified copy of any foreign priority application must be filed within the later of: 4 months from the actual filing date; or 16 months from the filing date of the prior foreign application unless an exception applies Certified copy is needed since U.S. patents and U.S. patent application publications have prior art effect as of the date that they are effectively filed, which might be the foreign

priority date 43 Rule 1.55(f)-(i): Three Ways to Satisfy the Time Limit Requirement to File the Certified Copy Applicant files a certified copy of the foreign priority document with the Office within the 4/16 time period Applicant authorizes Office to retrieve a copy of the foreign priority application through the Offices Priority Document Exchange Program (PDX) Applicant files interim copy of the foreign priority within the 4/16 time period In order to perfect foreign priority, the certified copy of the foreign priority document or a copy retrieved via PDX, must be received by the Office no later than patent grant 44

FITF Examiner Training Three-part overview training (March-April 2013) Introductory Video: background for overview training Live Training: >20 training sessions Follow-up Video: statutory review and illustrations Comprehensive training (June-July 2013) Just-in-time training as needed (March-July 2013) 45 Resources Statutory Framework Chart: http:// www.uspto.gov/aia_implementation/FITF_card.pdf FAQs: http:// www.uspto.gov/aia_implementation/faqs_first_inventor.jsp Examiner Introductory Video:

http://helix-1.uspto.gov/asxgen/AIA Close Cpt.wmv Examiner Overview Training Slides: (available on AIA microsite soon) Examiner Follow-up Video: (available on AIA micro-site soon) 46 Patent Fee Schedule and Micro Entity Discount Fee Setting (Effective March 19, 2013) Ensure patent fee schedule generates sufficient aggregate revenue to recover aggregate costs of USPTO operations Individual fees set using agency discretion http ://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm 48

Fee Setting Goals Optimize patent timeliness and quality; Implement a sustainable funding model for operations; Encourage innovation; Facilitate administration of patent system; and Offer prosecution options to applicants 49 Comparison of Current to Final Fees: Filing through Issue $4,500 $3,330 $3,000 $2,560

$1,000 $500 $2,560 $1,260 $0 Current Fees $960 6 2 % $960 6

2 % $1,500 80% of Cost $2,000 $2,070 o f C o s t

$2,500 $431 $1,600 $1,600 Proposed in NPRM Final Rule Filing, Search, and Examination $3,713

o f C o s t $4,000 $3,500 $4,144 Reduced by $770 (23%) Average Historical Cost

Pre-Grant Publication and Issue Note: In each of the following summary pages, from the Current to the Final Rule fee structures, the fees paid could also increase by (a) $170 for each independent claim in excess of 3; (b) $18 for total claims in excess of 20; and (c) $320 for each multiple 50 dependent claim. Comparison of Current to Final Fees: Filing through 3rd Stage Maintenance $16,000 $14,000 $15,160 $15,160 $7,400

$7,400 $12,190 $12,000 $10,000 $4,810 Note: The cost for 1 st, 2nd, and 3rd Stage Maintenance Fees is $1 each $1,150 $3,600 $1,600

366% of Cost $2,900 366% of Cost $4,000 294% of Cost $8,000 $6,000 $3,600

$4,147 $1,600 $2,000 $0 Increased by $2,970 (24%) $3,713 $1,260 $1,600 $1,600 Current Fees

Proposed in NPRM Final Rule Average Historical Cost 3rd Stage Maintenance 11.5 years 2nd Stage Maintenance 7.5 years 1st Stage Maintenance 3.5 years Pre-Grant Publication and Issue 51 Micro Entity Discount (Effective March 19, 2013) Entitled to a 75% discount on fees for filing,

searching, examining, issuing, appealing, and maintaining patent applications/patents 2 ways to be eligible: Limited income and limited number of patent filings; or Employment or assignment to institution of higher education Must certify micro entity eligibility before paying a fee in the micro entity amount 52 Micro Entity Certification Forms: Gross Income Basis 53 Micro Entity Certification Form: Institution of Higher Education Basis

54 AIA Help Center 1-855-HELP-AIA (1-855-435-7242) [email protected] 55 Thank You 56

Recently Viewed Presentations

  • February 15 - cs.unc.edu

    February 15 - cs.unc.edu

    February 15 Your assignment: ASK QUESTIONS Send email to "gb" describing as carefully as you can what you don't understand...
  • HERPES SIMPLEX DENDRITIC ULCER - Zagazig University

    HERPES SIMPLEX DENDRITIC ULCER - Zagazig University

    Direct contact of skin or mucous membrane with virus-laden lesions or secretions. Inter-neuronal spread. Virus becomes dormant in trigeminal (V) ganglion. PREDISPOSING FACTORS. Low resistance. Fever. Menstruation. Drugs. Psychic stress. Recurrence occurs with decreased body resistance. Virus ...
  • Mr. Popper's Penguins

    Mr. Popper's Penguins

    Title: Mr. Popper's Penguins. Write down what you think will happen in this book based on the title and the picture on the cover. Write at least 3 sentences. Draw a picture of something you think will happen on the...
  • Effect of Credentialing on Sailor Behavior

    Effect of Credentialing on Sailor Behavior

    "On an impulse, he buys a new truck at one of the dealers near base, borrowing the down payment from a payday loan a couple blocks away." Insomnia ... Servicemembers are more likely to help a good performer get back...
  • BHS 499-07 Memory and Amnesia

    BHS 499-07 Memory and Amnesia

    A (as a prefix) means complete inability or lack of a function. Alcohol & Memory Alcoholic amnesia - alcohol prevents consolidation so nothing is remembered and no memory can be recovered. Alcoholic blackout - state-dependent memory, so recall is possible...
  • Compare SHARC 2000 Workshop -- Coding highly parallel ...

    Compare SHARC 2000 Workshop -- Coding highly parallel ...

    This presentation will probably involve audience discussion, which will create action items. Use PowerPoint to keep track of these action items during your presentation
  • How to draw different sections of the brain

    How to draw different sections of the brain

    Mesencephalic nucleus of trigeminal nerve. Trigeminal lemniscus. Spinal lemniscus. Medial lemniscus. Substantia nigra. Cerebral peduncle. Red nucleus. Reticular formation. Periaqueductal Gray Matter. PPRF = Paramedian pontine reticular formation. Medial longitudinal fasciculus.
  • Z-Town User Tutorial Cameron Jett, Ryan Southard, Drew

    Z-Town User Tutorial Cameron Jett, Ryan Southard, Drew

    Cameron Jett, Ryan Southard, Drew Switzer, Ben Trivett. Department of Computer Science and Engineering. The Ohio State University. Main Menu. After starting the game and watching the beginning splash screens, you will be at the Main Menu. From here you...