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The last and possibly most significant change to the U.S. patent system from the AIA goes into effect in less than a month. What will it mean for inventors and for prior art submitters?

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1 Answer 1

Answering my own question:

What applications are covered under the new rules?

The first issue is which applications are dealt with under the old laws and which will be dealt with under the new laws. Two easy categories are: (1) Non provisional applications filed before March 16 - they are treated under the old system. And (2) applications filed on or after that date that do not make any priority or benefit claim to any application filed before that date - they are treated under the new system. More difficult are transitional applications. Transitional applications have an actual filing date on or after March 16 but claim priority to or the benefit of an application filed before that date. If every claim in a transitional application has full support in priority applications filed before March 16 then the application is treated under the old system. If any claim ever existed in a transitional application that was not supported by a pre-f-2-f application then the whole application is treated under the new law. That means that a f-2-f application can't be made into a f-2-i application by canceling claims. In practice many transitional applications will be non provisional applications filed between March 16 2013 and March 15 2014 that claim the benefit of a provisional application filed before March 16 2013.

What are the new rules?

Rather than explain the differences, which requires a clear understanding of the old laws/rules, I'm primarily going to explain the new system - it is considerably simpler ( not necessarily better, fairer, etc.) than the old. This all boils down to what falls into the domain of prior art for an application. On Ask Patents we often use the term prior art as a short hand for "prior art that can knock out a patent or patent application." Prior art, properly, is the entire body of information that is allowed to be considered in evaluating the patentability of a specific patent document. Whether or not something is prior art to application X is significantly a question of timing. In some sense it needs to come before the thing it is being used against. In the U.S., 35 USC section 102, and court cases interpreting it, tell us if something qualifies or does not qualify to be used against an application based on that application's effective filing date, priority date and sufficiently of priority filings.

The new 102 is laid out very logically. 102(a) says you are entitled to a patent unless the same thing was previously done, as evidenced in one of the listed ways. And 102(b) has the exceptions to that list in 102(a). There is additional parallelism in that 102(b) 1 has the exceptions to 102(a) 1 while 102(b) 2 has the exceptions to 102(a) 2. The types of prior art defined in 102(a) and (b) 1 have to do with information actually potentially available to the public before the effective filing date. In contrast, the documents covered by 102(a) and (b) 2 involve information that, while in a patent document submitted before the effective filing date, do not become public until after that date. This is sometimes called secret prior art.

What can be used against a claim in a patent application under the new rules? Under 102(a)1 it is anything, by anyone, anywhere in the world, described in a "printed publication" or issued patent, or on public sale or in public use or otherwise available to the public anywhere in the world as of the day before the effective filing date of the specific claim in question.

The exceptions to this (as seen in 102(b) 1) are: (A) it was done by the inventor or by someone who got the information from the inventor within a year of the filing. This the one year grace period applied to your own activities. The trap is that someone inspired by your disclosure can then publish something different but related and it will be prior art to you. (B) the publication, public use, etc. was preceded by an essentially identical disclosure by the inventor or by someone who got it from the inventor. If the inventor, for example, publishes an article and a 3rd party afterward published essentially the same information, the inventor can still later file and have the 3rd party's article discounted as prior art under this exception without needing to show that the 3rd party derived it from the inventor.

Besides the actually public information of 102(a) 1, the secret information under 102(a) 2 can also be used against a patent application. This is a very specific category of information. It includes things described in a patent application filed (anywhere in the world) before the one in question's effective filing date but only if that patent application either eventually issues as a patent anywhere in the world OR eventually is published as a "U.S." application. The quotes around U.S. are because it includes not only things published by the USPTO's publication department but all PCT applications on a world-wide basis that designate the United States. Since the default PCT application form designates ALL member states, that is pretty much all PCT applications.

The exceptions to 102(a)2 are in 102(b)2. In (A) the exception is if it is from the same inventor. The inventorship of the earlier application can't include anyone who is not also an applicant on the later application for this exception to apply. (B) the patent or published application was preceded by an essentially identical disclosure by the inventor. (C) at the time of the effective filing date the applications were commonly owned or obligated to be commonly assigned.

Other provisions in 102 and 103

102c defines what commonly owned means

102d defines what effective filing date means.

103 says that everything admittable under 102 can be used in an obviousness analysis.

How does this apply to finding prIor art for purposes of reducing the number of bad software patents?

No longer does 102 say "in the U.S." - one thing that does is open up sales and use outside of the U.S. as prior art - Unfortunately for the goals of Ask Patents, the AIA provisions for 3rd party submission only allows printed publications and patents to be submitted and, if dated before the effective filing date, they were already allowable on a worldwide basis.

However in the category of secret prior art - information existing in patent applications that were filed but not published as of the effective date - a potentially large new category of prior art will exist under F-2-F. Rather than only PCT applications that became "real" U.S. applications counting as of their date of becoming real (published in English, fees paid to U.S. , etc.) - essentially all PCT applications will count as of their earliest priority date - independent of the country that the priority filing was made.

To see section 102 old and new, clean and marked up see this page at bitlaw.

To download the final rules follow this to PatentlyO

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