Maximizing the Value of Pre-AIA Patent Applications Using First-to-File Regime – Part II

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Our previous post discussed the need for invoking the first-to-file regime in order to maximize the value of certain pre-AIA applications that claim foreign priorities. Here, we present another scenario where the different prior art standards between the AIA and the pre-AIA patent law is likely to justify a deliberate entry into the first-to-file regime.

Consider this fact pattern:

  1. Company filed a US patent application (Application A) on January 1, 2009, claiming a novel process invented by X for fabricating an organic solar cell. The specification discloses a number of possible materials for a photoactive layer of the solar cell, including Compound K.
  2. Company filed another US patent application (Application B) on January 1, 2010, claiming a genus of compounds invented by Y that are suitable for use in a photoactive layer. Compound K is a species of the claimed genus.
  3. Application A published on July 1, 2010. Both Application A and Application B are assigned to Company.

Under §102(e) of the pre-AIA patent law, Application A, which was filed before Application B and subsequently published, qualifies as “secret prior art” against Application B. Although a commonly-owned “secret prior art” can be disqualified from obviousness consideration under §103(c), the same reference cannot be disqualified if it is novelty-destroying. Thus, under the first-to-invent regime, the Patent Office can reject Application B under §102(e) for lack of novelty over Application A, notwithstanding the fact that both applications are commonly-owned by the same assignee.

In contrast, under §102(b)(2)(C) of the AIA, a commonly-owned application can be disqualified from prior art even if it is novelty-destroying:

DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if…(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

If Application B is examined under the first-to-file regime, Application A is no longer citable as novelty-destroying prior art, provided evidence of common-ownership is submitted.

Therefore, in the above fact pattern, it could be strategically advantageous for Company to file a Continuation-In-Part application claiming benefit to Application B and including a new claim with an effective filing date on or after March 16, 2013. This new claim will bring the entire Continuation-In-Part application under the first-to file regime, where a commonly-owned “secret” application can no longer be asserted as novelty-destroying prior art.

*Peng Sun is a summer associate with Foley & Lardner.