[author: Courtenay C. Brinckerhoff]

For a short time on Friday, July 20, 2012, the USPTO’s proposed rules to implement the first-to-file provisions of the America Invents Act (“AIA) were available in the Federal Register’s “electronic Reading Room.” According to the USPTO’s AIA Implementation website, the USPTO temporarily withdrew the proposed rules in order “to enable the Federal Register to publish the first-inventor-to-file rulemaking at the same time as the first-inventor-to-file guidance document” that the USPTO plans to issue. Because this explanation suggests that the USPTO does not intend to change the substance of the proposed rules, I will proceed with my review and analysis of the proposed rules as pre-published.

Changes Addressed by the Proposed Rules

According to the pre-published notice, the proposed rules address the following changes effected by § 3 of the AIA:

1. convert[ing] the United States patent system from a “first to invent” system to a “first inventor to file” system;
2. treat[ing] U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the U.S. or in another country;
3. eliminate[ing] the requirement that a prior public use or sale be “in this country” to be a prior art activity; and
4. treat[ing] commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103.

These changes take effect in principle on March 16, 2013, but apply only to certain applications filed on or after that date. (Please see this article for a closer look at the first-to-file effective date provisions.)

Significant Rule Changes

According to the pre-published notice, the proposed rules include the following changes (among others):

• adding the definitions provided in the AIA changes to 35 USC § 100.
• providing for situations in which a U.S. patent or U.S. patent application publication has a prior art effect as of the filing date of a foreign priority application by requiring that the certified copy of the foreign application be filed within certain (early) time periods.
• imposing additional requirements for nonprovisional applications that straddle the first-to-file effective date, by requiring applicants to identify applications that include claims with an effective filing date on or after March 16, 2013 or that include additional disclosure as compare to the earlier application.
• providing for the submission of affidavits/declarations regarding the new prior art exceptions embodied in new 35 USC § 102(b), and indicating that such information can be included in the specification of the application.
• eliminating provisions directed to statutory invention registrations.

The following points caught my attention during my first review of the proposed rules.

Foreign Priority Applications

As set forth in the pre-published notice, for applications with a foreign priority application, the proposed rules will require that the certified copy of the foreign application(s) be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. The proposed rules note that the USPTO can require a certified copy earlier, such as if the application is undergoing expedited examination. The proposed rules also address timing requirements for delayed priority claims.

According to the pre-published notice, these changes are required because “patent application publications will have a prior art effect as of the earliest priority date (for subject matter disclosed in the priority application),” and so “the Office needs to ensure that it has a copy of the priority application by the time of publication,” and by the time of examination and/or grant (if earlier).

According to the pre-published notice, “[t]he proposed time period of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application is consistent with the international norm for when the certified copy of the foreign application needs to be filed in an application.”

Disclosure Requirement for Applications That Straddle March 16, 2013

As set forth in the pre-published notice, the proposed rules will impose the following disclosure requirements on applications that straddle the first-to-file effective date, e.g., on applications that are filed on or after March 16, 2013 and claim the benefit of the filing date of a foreign, provisional, or nonprovisional application filed prior to March 16, 2013:

If such a nonprovisional application contains at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the application.

If such a nonprovisional application does not contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013, but discloses subject matter not also disclosed in the foreign, provisional, or nonprovisional application, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage in an international application, or sixteen months from the filing date of the prior-filed application.

According to the pre-published notice, the rules will “not require that the applicant identify how many or which claims . . . have an effective filing date on or after March 16, 2013, or … identify the subject matter . . . not also disclosed in the [earlier filed] application.”

On the other hand, according to the pre-published notice:

If an applicant fails to timely provide such a statement and then later indicates that the nonprovisional application contains a claim having an effective filing date on or after March 16, 2013, or subject matter not also disclosed in the [earlier filed] application, the Office may issue a requirement for information under [37 CFR] § 1.105 requiring the applicant to identify where (by page and line or paragraph number) there is written description support . . . in the [earlier filed] application for the remaining claims in the nonprovisional application.

Likewise, if the applicant later seeks to retract a previous statement that the nonprovisional application contains a claim having an effective filing date on or after March 16, 2013, or subject matter not also disclosed in the [earlier filed] application, the Office may issue a requirement for information . . . requiring the applicant to identify where (by page and line or paragraph number) there is written description support . . . in the [earlier filed] application for each claim in the nonprovisional application.

According to the pre-published notice, these rules are designed to permit the USPTO “to readily determine whether the nonprovisional application is subject to [the first-to-file provisions of the AIA.]”

New Prior Art Exceptions

As set forth in the pre-published notice, proposed new 37 CFR § 1.130 will provide for the submission of affidavits or declarations regarding the new prior art exceptions embodied in new 35 USC § 102(b). Such declarations may attest that:

1. a disclosure upon which a claim rejection is based was by the inventor or joint inventor or by a party who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
2. there was a prior public disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(The proposed rules set forth specific requirements for the declarations which I will discuss in a separate article.)

Additionally, proposed new 37 CFR § 1.77 will indicate that the specification may include a “[s]tatement regarding prior disclosures by the inventor or a joint inventor.”

Common Ownership/Joint Research Agreements

As set forth in the pre-published notice, the proposed rules will provide that subject matter that qualifies as prior art under 35 U.S.C. 102(a)(2) will be treated as “commonly owned” with the claimed invention for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant provides a statement that the prior art 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.

Similarly, the proposed rules will provide that subject matter that qualifies as prior art under 35 U.S.C. 102(a)(2) will be treated as “commonly owned” with the claimed invention if: (1) the applicant provides a statement that the prior art was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement . . . that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (2) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

The Devil Is in the Details

The proposed rules include many details that may create traps for unwary practitioners and applicants. Once the proposed rules are officially published, practitioners should consider investing the time it will require to understand the proposals and submit comments and suggestions for the final rules that will take effect on March 16, 2013.