Implementing First-Inventor-to-File Provisions of the AIA By: Scott D. Malpede, Seth Boeshore and Chitra Kalyanaraman USPTO Rules Effective March 16, 2013

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 2 Claim for Foreign Priority  Domestic nonprovisional applications— – Must be filed within 12 months of foreign filing – Priority claim, including submission of certified copy of foreign application, must be made by later of: 1.four months of domestic filing date, or 2.sixteen months from foreign filing date  PCT applications—current rules do not change – PCT regulations require priority claim and certified copy of foreign application in international application within 16 months of foreign filing 37 C.F.R. § 1.55(b)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 3 Delayed Claim for Foreign Priority  May be accepted if Applicant files petition that includes:  application data sheet containing priority claim  certified copy of foreign application  petition fee  statement that entire delay was unintentional  Priority claims that do not comply will be waived 37 C.F.R. § 1.55(e)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 4 Late Filing of Certified Foreign Application  May be accepted if Applicant files petition that includes: – certified copy – showing of good and sufficient cause for delay – petition fee 37 C.F.R. § 1.55(f)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 5 Claim for Foreign Priority  Issue date is absolute deadline for perfecting claim to foreign priority  Patent will not be printed with priority claim if perfected after payment of issue fee – Certificate of correction available 37 C.F.R. § 1.55(g)(1)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 6 Claim for Foreign Priority—Early Deadlines  Applicant may be required to perfect foreign priority claim earlier than normal deadline if: – application is in interference or derivation proceeding, – priority date needed to overcome art rejection, or – specifically requested by Examiner  English translation may be required 37 C.F.R. § 1.55(g)(2)-(3)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 7 Claim for Foreign Priority—Document Exchange  PTO will obtain certified copy of foreign patent application from foreign patent office if: – foreign patent office participates in document exchange agreement – priority claim includes information necessary for PTO to access foreign application  If foreign application initially filed in non-participating country but subsequently filed in participating country, Applicant may file request that PTO obtain certified copy from participating country’s patent office  Absolute deadline for certified copy still applies—PTO must receive certified copy from foreign patent office during pendency of application 37 C.F.R. § 1.55(h)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 8 Claim for Foreign Priority—Interim Copy  PTO will accept uncertified copy of foreign application during application pendency if: – copy marked “Interim Copy” is timely filed, including statement that copy is a true copy – certified copy is filed prior to date of issuance 37 C.F.R. § 1.55(i)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 9 Claim for Foreign Priority—Statement in Transitional Application  When nonprovisional application: – is filed on or after March 16, 2013, and – has foreign priority date before March 16, 2013, but – includes claim with effective filing date on or after March 16, 2013, Applicant must file statement notifying PTO of these facts  Statement due by later of: – four months of domestic filing date, – sixteen months from foreign filing date, or – presentation of claim (if newly added) 37 C.F.R. § 1.55(j)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 10 Claiming Benefit of Earlier Filing Date  Nonprovisional application can claim benefit of: – earlier provisional application, if nonprovisional filed within one year of provisional – earlier nonprovisional or international application, if filed during pendency of earlier application 37 C.F.R. § 1.78(a), (c)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 11 Claiming Benefit of Earlier Filing Date  Benefit claim requires that application: – name at least one inventor of earlier application – contain reference to earlier application  Reference in nonprovisional must be in ADS  If reference not included in filed application, it must be added during application’s pendency and by later of: – four months of filing date, or – sixteen months from earlier application’s filing date 37 C.F.R. § 1.78 (a), (c)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 12 Claiming Benefit of Earlier Filing Date—Delayed Reference  Delayed benefit claim may be accepted if Applicant files petition that includes: – amendment containing reference to earlier application – petition fee, and – statement that entire delay after due date was unintentional  Late benefit claims that do not comply will be waived 37 C.F.R. § 1.78(b), (d)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 13 Claiming Benefit of Earlier Filing Date—Statement in Transitional Application  When nonprovisional application: – is filed on or after March 16, 2013, and – claims benefit of application filed prior to March 16, 2013, but – has claim with effective filing date on or after March 16, 2013 Applicant must file statement notifying PTO of these facts  Statement must be filed by later of: – four months from filing date, – sixteen months from filing date of earlier application, or – presentation of claim (if newly added) 37 C.F.R. § 1.78(a)(6), (c)(6)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 14 Nature of Examination—Common Ownership of Claimed Subject Matter and Asserted Prior Art  AIA-examined applications—earlier-filed U.S. patent or application can be removed from prior art (under 35 U.S.C. § 102(b)(2)(C)) if, as of effective filing date, subject matter disclosed in reference and subject matter claimed were: – owned by same person (or obliged to be assigned to same person), or – developed under joint research agreement, so long as parties to agreement are named in application  Pre-AIA-examined applications—§ 102(e)-(g) prior art can be removed, for purposes of § 103(c), by making either above showing, but with reference to date of claimed invention 37 C.F.R. § 1.104(c)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 15 Effective Filing Date of Claimed Invention Under AIA  Effective filing date is earlier of: – actual filing date of application containing claim, and – filing date of earliest priority application that discloses subject matter of claim  Effective filing date in a reissue patent or application is determined by deeming the claim to the invention to have been contained in the patent for which reissue is sought 37 C.F.R. § 1.109

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 16 Inventorship and Ownership of Subject Matter of Individual Claims  When joint inventors are named in application, PTO can require Applicant to identify inventorship and ownership of each claim in application, as of effective filing date  PTO can further require Applicant to identify invention dates of each claim 37 C.F.R. § 1.110

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 17 Affidavit of Attribution or Prior Public Disclosure Under AIA  Applications examined under first-inventor-to-file rules are provided grace period of one year preceding effective filing date – Certain disclosures that occur during grace period can be disqualified as prior art  Disclosures made more than one year before effective filing date are not eligible for disqualification 37 C.F.R. § 1.130

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 18 Affidavit of Attribution  Grace period disclosure can be disqualified as prior art if it is attributed to inventor  Affidavit of attribution must establish that grace period disclosure was made by: – inventor/joint inventor, or – someone who obtained subject matter of grace period disclosure from inventor/joint inventor 37 C.F.R. § 1.130(a)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 19 Affidavit of Prior Public Disclosure  Grace period disclosure can be disqualified if it occurred after earlier public disclosure attributable to inventor  Affidavit of public disclosure must establish that: – public disclosure was made prior to date of grace period disclosure – earlier public disclosure contained same subject matter as grace period disclosure – earlier public disclosure was made by  inventor/joint inventor, or  someone who obtained subject matter disclosed from inventor/joint inventor 37 C.F.R. § 1.130(b)

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 20 Other Changes  Rule 9 (definitions)—revised to incorporate terms used by AIA  Rule 117 (fees)—revised to add new fees  Rule 131 (disqualification of prior art by prior invention)— revised to include old Rule 130 (disqualification of prior art by common ownership) for pre-AIA-examined applications  Rules (statutory invention registration)—removed to comply with AIA’s elimination of invention registrations  Rule 321 (filing of terminal disclaimers)—revised to be consistent with changes to §§ 102 and 103 with respect to joint research activities 37 C.F.R. §§ 9, 17, 131, , 321

© 2013 FITZPATRICK, CELLA, HARPER & SCINTO | 21 NEW YORK 1290 Avenue of the Americas New York, NY WASHINGTON 975 F Street, NW Washington, DC CALIFORNIA 650 Town Center Drive, Suite 1600 Costa Mesa, CA