A First Look at the Final First Inventor to File Rules

19 February 2013 PharmaPatents Blog

The USPTO’s final First Inventor To File rules and Examination Guidelines were published in the February 14, 2013 edition of the Federal Register. While many of the final rules are identical to the proposed rules, there are some important changes to note.

USPTO Says Secret Sales Do Not Qualify as Prior Art Under 35 USC § 102(a)(1)

In the proposed Examination Guidelines, the USPTO solicited public comments on whether secret sales qualify as prior art under 35 USC § 102(a)(1), which states:

A person shall be entitled to a patent unless —

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention …

In the final Examination Guidelines, the USPTO takes the position that secret sales do not qualify as prior art under 35 USC § 102(a)(1). In explaining its position, the USPTO notes that its interpretation of “on sale” is influenced by the “or otherwise available to the public” language in the statute, which it reads as indicating that § 102(a)(1) as a whole relates to “public” activities. Thus, in the USPTO’s view, the Metallizing Engineering decision does not apply to applications subject to the AIA.

The Guidelines also take the position that an activity is secret (e.g., not prior art under the AIA) “if, for example, it is among individuals having an obligation of confidentiality to the inventor.”

As noted in the Guidelines themselves, the Guidelines do not have the force of law. Thus, these and other positions taken in the Guidelines likely will be subject to litigation and ultimately resolved by the Federal Circuit or Supreme Court.

USPTO Will Require “Same Subject Matter” But Not “Ipsissimis Verbis” Identity for Inventor’s Earlier Public Disclosure to Disqualify a Third-Party Disclosure Under 35 USC § 102(b)(1)(B) or a Third-Party Patent Application Under 35 USC § 102(b)(2)(B)

In the proposed Examination Guidelines, the USPTO indicated that an inventor’s earlier public disclosure would not be effective to disqualify a subsequent third-party disclosure under 35 USC § 102(b)(1)(B) or third-party application under 35 USC § 102(b)(2)(B) if there were even “insubstantial changes, or only trivial or obvious variations” between the disclosures. In the final Examination Guidelines, the USPTO has tempered its interpretation of the “shielding disclosure” prior art exceptions to permit minor variations between the disclosures.

As set forth in the final Examination Guidelines, the subject matter in the disclosure being disqualified “must be the same ‘subject matter’ as the subject matter previously publicly disclosed by the inventor.” However, the “mode of disclosure … (e.g. publication, public use, sale activity)” can be different, and the disclosures need not be identical on a “verbatim or ipsimissis verbis” level. Further, the “shielding disclosure” prior art exceptions may apply if the subject matter of the disclosure being disqualified “is simply a more general description of the subject matter previously publicly disclosed by the inventor.”

A Declaration under 37 CFR § 1.130(b) will be required to disqualify a third-party disclosure or third-party patent application.

Required Statement in “Transition” Applications

In the proposed rules, the USPTO proposed to require certain statements in “transition” applications that straddle the March 16, 2013 First-Inventor-To-File effective date, e.g., applications filed on or after March 16, 2013 with a priority claim to an application filed before March 16, 2013. The USPTO proposed to require a first type of statement for transition applications that contain (or ever contained) a claim with an effective filing date on or after March 16, 2013, and a second type of statement for transition applications that do not include such claims, but that do disclose “subject matter not also disclosed in the prior-filed … application.” In the final rules, the USPTO retains the requirement to make the first type of statement, but abandons the requirement to make the second type of statement.

Thus, under the final rules, if a transition application contains (or ever contained) a claim with an effective filing date on or after March 16, 2013, a statement to that effect must be submitted within the later of four months from the actual filing date of the application at issue (or four months from entry into the U.S. national stage), or 16 months from the filing date of the earlier-filed application. The final rules also provide that such a statement is not required unless warranted by information “already known” to individuals governed by Rule 56—that is, applicants are “not required to conduct any additional investigation or analysis to determine the effective filing date of the claims.”

This requirement is set forth in 37 CFR § 1.55(j).

Certified Copy of Foreign Priority Application

The final rules still generally require that a certified copy of a foreign priority application be filed within the later of four months from the actual U.S. filing date (or U.S. national phase entry) or sixteen months from the foreign filing date, but provides some exceptions:

  • If the priority application was filed or submitted in a “participating foreign intellectual property office” that permits the USPTO to obtain a copy of the application, and the USPTO receives a copy of the priority application from the foreign intellectual property office or a certified copy of the priority application while the U.S. application is pending and before grant.
  • If the Applicant provides an interim (non-certified) copy of the priority application within the 4/16 month time period and files a certified copy of the priority application while the U.S. application is pending and before grant.
  • If the Applicant otherwise shows “good cause” for belated filing of a certified copy of the priority application.

These rules are set forth in 37 CFR § 1.55(f)-(i).

Are You Ready for March 16?

The USPTO is hosting a free “public forum” on Friday, March 8, 2013 at the USPTO’s Alexandria campus, to discuss the First-Inventor-To-File rules and Examination Guidelines, and address the new fees and the micro entity discount that take effect later in March. The forum will run from 10:00 AM to 12:30 PM Eastern Daylight Time and will be Webcast on the USPTO’s AIA Web page.

This week, IPO is offering a one day program on AIA Strategy Considerations on Wednesday, February 20, 2013, at the Grand Hyatt Washington, in Washington, D.C.  You can read more details about the program and register here.

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