PharmaPatents Timely Insight on Emerging Legal Developments

Tag Archives: Prior Art

Does The Experimental Use Exception Survive The AIA?

Posted in Patent Reform; Uncategorized

Now that the March 16, 2013 effective date of the first-to-file provisions of the Leahy-Smith America Invents Act (AIA) is fast-approaching, I have been reviewing the commentary in the USPTO’s February 14, 2013 Federal Register Notices publishing the final First Inventor To File rules and Examination Guidelines. Comment 12 of the Guidelines, which relates to experimental use, caught my attention. Continue reading this entry

Maximizing The Effect Of Patent Applications As Prior Art Under The AIA

Posted in Patent Reform

Now that we are less than one month away from implementation of the First-Inventor-To-File provisions of the America Invents Act (AIA), stakeholders are considering whether to file new patent applications now, to secure examination under the current First-To-Invent patent system, or wait until March 16, 2013, so that the applications will be governed by the new U.S. patent laws. While there are a few situations where delaying filing could be advantageous, stakeholders do not need to wait to file their patent applications until March 16, 2013 in order to maximize their prior art effect.Continue reading this entry

The Federal Circuit Focuses On The Problem When Evaluating Non-Analogous Art

Posted in Federal Circuit Decisions

In K-Tec, Inc. v. Vita-Mix Corp., the Federal Circuit affirmed the district court’s finding that two design patents relating to pitchers were non-analogous art to utility patent claims relating to a blender jar. The Federal Circuit’s analysis focused on the problem being solved by the invention, and differs from a decision of the U.S. Patent Office Board of Appeals and Interferences, which focused on similarities between the functions of pitchers and blender jars.

Continue reading this entry

First To File Practice: Mandatory Derivation Proceedings?

Posted in Patent Reform

This is the fourth article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art, the proposed requirements for invoking the “grace period non-inventor disclosure” exception to prior art, the proposed requirements for invoking the “grace period shielding disclosure” exception to prior art, and the expanded prior art exception for commonly owned patent applications. Here, I look at the proposed rule that could require an applicant to initiate a derivation proceeding.Continue reading this entry

Federal Circuit Holds That Prior Art Cited By USPTO Is Presumptively Enabled

Posted in Federal Circuit Decisions

In In re Antor Media Corp., the Federal Circuit held that a prior art reference cited by a USPTO Examiner is presumptively enabled, even when the reference at issue is a printed publication. Although Antor had submitted a declaration regarding the non-enabling quality of the prior art at issue, the court found that it was inadequate to overcome the presumption. While I understand the premise of the presumption, I am not comfortable with the court’s second-guessing of the expert declaration, and fear that it may invite violations of the court’s own rule against relying on conjecture over evidence.Continue reading this entry

First To File Practice: Commonly Owned Applications

Posted in Patent Reform; USPTO Proposed Rule Changes

This is the fourth article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art, the proposed requirements for invoking the “grace period non-inventor disclosure” exception to prior art, and the proposed requirements for invoking the “grace period shielding disclosure” exception to prior art. Here, I look at the expanded prior art exception for commonly owned patent applications.Continue reading this entry

USPTO Publishes Final Rules For Preissuance Submissions By Third Parties

Posted in Patent Reform; USPTO Proposed Rule Changes

The USPTO published the final rules to implement the Preissuance Submissions provisions of the America Invents Act in the July 17, 2012 Federal Register. The final rules add new 37 CFR § 1.290, revise 37 CFR § 1.291, and remove 37 CFR § 1.99 (the current rule relating to preissuance submissions) and 37 CFR § 1.292 (the current rule relating to public use proceedings). The rules take effect on September 16, 2012, and are applicable in principle to all pending patent applications. The final rules are similar to the proposed rules that were published in January, but there are some important differences and clarifications set forth in the final rulemaking.Continue reading this entry

Proposed AIA Implementation Rules: Preissuance Submissions In Pending Applications

Posted in Patent Reform; USPTO Proposed Rule Changes

On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to preissuance submissions of publications in a pending patent application. The proposed rules add new 37 CFR § 1.290, revise 37 CFR § 1.291, and remove 37 CFR § 1.99 (the current rule relating to preissuance submissions) and 37 CFR § 1.292 (the current rule relating to public use proceedings). The USPTO will consider written comments received by March 5, 2012.Continue reading this entry

Will Any Patent Application Be Better Off Under The America Invents Act?

Posted in 102; Patent Reform

The changes to 35 USC § 102 embodied in the America Invents Act (AIA) take effect on March 16, 2013, under complicated effective date provisions. The general consensus seems to be that applicants should try to file new applications before the law changes, because (for example) applications filed under the new law will be subject to a broader definition of prior art and will lose the ability to swear behind certain prior art by proving an earlier date of invention. Moreover, patents granted from such applications will be subject to challenge under the new post-grant review provisions.

In counseling clients on how to prepare for the impact of patent reform, I’ve been trying to identify situations where an application might be better off under the new law. So far, only one scenario comes to mind–an application threatened by an inventor-based disclosure that was made before a foreign priority date.

Continue reading this entry

The Disharmonious Loss Of The Hilmer Doctrine

Posted in Patent Reform

One of the many changes included in the Leahy-Smith America Invents Act relates to the date that a U.S. patent application is effective as prior art. While eliminating the Hilmer doctrine and giving prior art effect to U.S. patent applications as of their foreign priority dates might seem to be a step towards international harmonization, it actually may widen the gulf between the U.S. and the rest of world.

Continue reading this entry

Federal Circuit Overturns Obviousness Rejection Based On Non-Analogous Art

Posted in Federal Circuit Decisions

In In re Klein, the Federal Circuit reversed an obviousness rejection because the cited references were found to be non-analogous art. This case is an important reminder that questioning the relevance of the cited references can be an important first step to overcoming an obviousness rejection.

Continue reading this entry

How Effective is That Published Application as Prior Art?

Posted in Federal Circuit Decisions; Patent Office Practice

Once a U.S. patent application is published, it can be cited as prior art as of its filing date, under 35 USC § 102(e). The Federal Circuit’s recent decision in In re Giacomini holds that when a U.S. patent application claims priority to a U.S. provisional application, it can be cited as of the provisional application filing date, as long as the provisional application includes the disclosure that is being cited. While this decision affirms long-standing Patent Office practice (see MPEP § 2136.03), it serves as a good reminder that determining the effective date of a published application can require more than skimming the front page for the earliest U.S. priority date. 

Continue reading this entry