[author: Courtenay C. Brinckerhoff]
A few weeks ago I was a presenter for the AIPLA webinar on “Patent Prosecution Under The AIA.” I discussed some strategies for preparing for the transition to the “first to file” system of the American Invents Act (AIA), and my co-presenter, Joe Matal, Judiciary Committee Counsel to Senator Jon Kyl, provided insight on the legislative history of some of the key provisions of the new law. Audience members submitted some good questions during the webinar, and since we were not able to answer all of them during our Q & A time, I thought I would address some of them here.
On the upcoming changes to the inventor oath/declaration requirements:
If I want to benefit from the protections of the new law, can I file a declaration on or after September 16, 2012 for an application filed today?
No. The changes to 35 USC §§ 115 and 118 take effect September 16, 2012, and apply only to applications filed on or after that date.
On the effective date of the “first-to-file” provisions (new 35 USC § 102):
If I file a U.S. application today and file a continuation application on or after March 16, 2013 to present new claims that are supported by the original application, which version of 35 USC § 102 will apply?
The continuation application will remain under the current (first-to-invent) version of 35 USC § 102 as long as all claims are entitled to an effective filing date of March 15, 2013 or earlier.
If I file a provisional application today, then file a PCT application one year from now, and then enter the U.S. national phase after that, will my U.S. national phase application still be under the current (first-to-invent) version of 35 USC § 102?
Yes, as long as all claims presented in the U.S. national phase application are entitled to an effective filing date of March 15, 2013 or earlier that application will be examined under the current (first-to-invent) version of 35 USC § 102. This question highlights the very long “transition” period when both version of 35 USC § 102 will be in effect.
On the citation of a U.S. application as of its foreign priority date:
How will the applicant know if the foreign priority application contains the disclosure at issue? Will the USPTO provide a translation of the foreign priority document?
The USPTO should address this issue when it publishes its proposed regulations to implement the changes to 35 USC § 102. Because the USPTO bears the initial burden of establishing the basis for a rejection, it should provide at least a machine translation of at least the relevant portion of the foreign language document.
Can a foreign application that that was not filed in the U.S. be cited as of its foreign filing date?
No. Only published U.S. applications and published PCT applications that designate the U.S. can be cited as of their foreign priority dates under new 35 USC § 102(a)(2).
Can a U.S. provisional application be cited as prior art?
No. Although published U.S. applications and published PCT applications could be cited as of the filing date of a priority provisional application, a provisional application itself cannot be cited as prior art under new 35 USC § 102 (a)(2).
On the citation of a U.S. application by the same inventor or owner:
Can an earlier filed but unpublished U.S. or PCT application by the same inventor be cited as prior art?
No. Only applications that name a different inventive entity can be cited as prior art under new 35 USC § 102(a)(2).
Can a commonly owned, earlier filed but unpublished U.S. or PCT application be cited as prior art?
No. New 35 USC § 102(b)(2)(C) excludes commonly owned, earlier filed, unpublished applications from the prior art as long as the applications were commonly owned by the effective filing date of the claimed invention at issue.
On the new grace period:
Would it be a good strategy to secretly practice an invention and only file an application if the inventor makes a disclosure?
No. One problem with this strategy is that it runs the risk that a third party will independently disclose or file a patent application on the same invention before you do. While new 35 USC §§ 102(b)(1) and 102(b)(2) define limited circumstances under which an independent third party disclosure or application might not constitute prior art against your application, they only apply if you disclose the subject matter at issue before the third party makes its disclosures and/or files its application.
Why is “first-to-publish” not a good strategy?
A strategy based on “first-to-publish”—making a public disclosure of the invention and then filing a patent application within one year—has many downsides. First, most countries do not have any grace period, so disclosing before filing may preclude your ability to obtain a patent in any other country. Even if you only are going to pursue a U.S. patent, this strategy runs the risk that your disclosure will not be effective to shield your claims from an intervening, independent third party disclosure or patent application. For example, your disclosure could be not broad enough and/or not specific enough to sufficiently correspond to the third party disclosure/application or to your patent claims as will be required to invoke the new exceptions of 35 USC §§ 102(b)(1) and 102(b)(2).