A Practical Guide For Prosecutors Patent Prosecution Under The AIA William R. Childs, Ph.D., J.D. August 22, 2013

DISCLAIMER  These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law and practice. These materials reflect only the personal views of the speaker and cannot be considered legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, Drinker Biddle & Reath LLP and the speaker cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with Drinker Biddle & Reath LLP and the speaker. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed. 2

First-To-File (or Disclose): Keep Your Eyes On The Prize  What has changed under the AIA “first-to-file” provisions? – Whether to make a “transition statement” when filing an Application. – Whether or not references qualify as prior art.  Context: – Need to file an application or prepare a Response to an Office Action. – Limited budget and short time frame. 3

Three Steps To Determine What Is Prior Art  Step 1: Determine Which Law Applies  Step 2: Determine The “Effective Filing Date”  Step 3: Determine If a Disclosure Is Prior Art Under 35 U.S.C. § 102(a)1 or § 102(a)2 4

To Check or Not To Check?  Step 1: Determine whether an Application is Pre-AIA, Post-AIA, or a Transition Application. – The real question: which law applies to this application? 5

Step 1A: Determine The Chain of Priority  Step 1A: Determine the Filing Date and Claim of Priority of the specific Application that you are working on. – Look to the Filing Receipt in Public PAIR. 6

Establishing A Time Line 7 JP ‘153 12/02/04 PCT ‘591 12/01/ Nat. Stage ‘828 04/29/08 Con. ‘195 01/04/11 AIA 3/16/13

Step 1B: Two Easy Cases  Was The Filing Date of the present Application Before March 16, 2013? – Note: if 371 National Stage, use the PCT filing date. – If yes, AIA does not apply. Use Pre-AIA law.  Was The Filing Date of the present Application on or after 3/16/13 and does not claim priority to a Pre-3/16/13 Effective Filing Date? – If yes, AIA applies. See, 35 U.S.C. § 100(i). 8

Two Easy Cases: Non-Transition Applications  Pre-AIA Application: the application was filed before March 16,  Post-AIA Application: the application does not claim priority to an application filed before March 16, JP 4/27/14 PCT 4/25/ Nat. Stage 12/31/16 Div. 7/14/17 AIA 3/16/13 JP 12/02/04 PCT 12/01/ Nat. Stage 04/29/08 Con. 01/04/11 AIA 3/16/13

The Third Case: The Transition Application  If the Filing Date of the present Application was filed On or After 3/16/13 and claims priority to a Pre-3/16/13 Effective Filing Date, then the Application is a Transition Application.  Next Question: Is the Application a Hybrid Application? 10 JP 12/02/04 PCT 12/01/ Nat. Stage 04/29/08 Con. 01/04/15 AIA 3/16/13

Step 1C: Is the Transition Application Pre-AIA or a Hybrid?  Determine if the Application is a “Hybrid Application.” – Was there any New Subject Matter in any claim between The Filing Date of the Present Application and March 16, 2013? (includes intervening apps.) > If New Subject Matter, then Hybrid Application, and both Post-AIA § 102 and old § 102(g) (first to invent) apply. > If No New Subject Matter, then Pre-AIA. 11 JP 12/02/04 PCT 12/01/ Nat. Stage 04/29/08 Con. 01/04/115 AIA 3/16/13

Transition Statement Summary: To Check or Not to Check?  Four Types of Application: – Pre-AIA: all filing dates before 3/16/13 >> don’t check. – Post-AIA: all priority dates after 3/16/13 >> don’t check. – Non-Hybrid Transition Application: Filed After 3/16/13, but claims priority before 3/16/13, and no New Subject Matter on day of filing >> don’t check. – Hybrid Transition Application: Filed After 3/16/13, but claims priority before 3/16/13, and has New Subject Matter on day of filing >> must check the box. 12

New Subject Matter vs. New Matter  Avoid Having To Make A Transition Statement: – Claim amendments after the filing date can introduce “New Matter.” > Results in § 132 objection and/or § 112 rejection, but no loss of priority. – Claim amendments on the day of filing can introduce “New Subject Matter.” > Results in loss of priority, but no objection. – Avoid Hybrid Applications by filing the claims of a Pre-AIA Application verbatim or only deleting claims. > Amend the next day to avoid introducing New Subject Matter. 13

Determining Prior Art for Office Actions  If Starting with an Office Action, Choice of Law is even easier to determine. 14

Step 2: Determine The “Effective Filing Date”  “Effective Filing Date” is the earliest filing date for which the application has claim of priority under 35 U.S.C. §§ 119, 120, or 121 and a claim has § 112 support. – Claim-by-claim basis. – What is the earliest Foreign Priority, U.S. Provisional, PCT Application, or U.S. Application to which you have priority? 15

Step 3A: Determine If A Disclosure Is Prior Art Under § 102(a)(1)  Step 3A: Was the disclosure patented, published, on sale, in public use, or otherwise publically available any where in the world, more than one year prior to the Effective Filing Date of a claim? – If so, the entire disclosure Is prior art under 35 U.S.C. § 102(a)(1). > See, § 102(a)(1) and (b)(1). 16

Step 3B: Determine If A Disclosure Is Prior Art Under § 102(a)(1)  Step 3B: Was the disclosure patented, published, on sale, publically used, or otherwise publically available any where in the world one year or less prior to the Effective Filing Date of a claim? – If yes, proceed as if the disclosure is prior art under 35 U.S.C. § 102(a)(1). – Inquire about disclosures by the inventor or co-inventor. 17

The Uncertainty of “Disclosure”  Even if an exception under 35 U.S.C. § 102(b)(1) applies: a “Disclosure” is interpreted narrowly.  The Subject Matter removed only applies to the parts of a Disclosure that are identical. > Can differ by mode. (e.g., poster vs. paper) > Can be non-verbatim. > Can be a more general description of what is claimed. (e.g., genus is not art against species) 18

Step 3C: Determine If A Disclosure Is Prior Art Under § 102(a)(2)  Step 3C: Was the cited Disclosure a U.S. Patent, U.S. Patent Publication, or PCT Publication designating the U.S., having non-identical inventorship, and has a filing date before the Effective Filing Date of a claim? – If no, not prior art under § 102(a)(2). – If yes and common assignee as of the Effective Filing Date, then § 102(b)(3) exception applies. – If yes, and no common assignee as above, proceed as if prior art under § 102(a)(2). 19

Step 3D: Not Prior Art  Step 3D: Was the disclosure publically available and had an effective filing date after the Effective Filing Date of a claim? – If yes, then the Disclosure is not prior art. – The Disclosure cannot be cited as prior art for anticipation or obviousness rejection. 20

Prioritized Examination (a.k.a. “Track One” or “Fast-Track”)  Petition to have an application considered out of turn. – For regular examination > Avg months until a first Office Action. > Avg months total pendency. – For Track One, > Avg. 1.6 months until a first Office Action. > Ave. 4.7 months from petition grant to allowance. 21

Prioritized Examination Requirements  The Application must be a Utility or Plant Application AND – Continuing Application (By-pass PCT, Divisional, Continuation, Continuation-in-Part (CIP), or Request for Continued Examination (RCE x 1)). Cannot be a § 371 national stage application.  To Prioritize, file a petition with the application. – No more than 4 independent claims, no more than 30 total claims, no multiple dependent claims – Electronically filed – Fee of $4,000 (unless small or micro entity) – Complete under 37 C.F.R. § 1.51(b) (oath and dec.) 22

How To Lose Priority Status: In One Easy Step!  An Prioritized Application Generally Remains Prioritized Until a Final Office Action or Notice of Allowance is Received.  Unless: – File a Petition for Extension of Time. – Amend to more than 4 independent claims. – Amend to more than 30 total claims. – Amend a claim into multiple dependent format. 23

Pre-Issuance Submission of Prior Art in Applications  Allows a Third-Party to file prior art in an application with a “concise description of relevance.” – Timing: Later of 6 months after publication or before first rejection (i.e., first Office Action), and before allowance – Any pending non-provisional Application. – Must provide copies and English translations 24

Concise Description of Relevance  Factual description of relevance for each document to each claim.  No arguments, only descriptions. 25 ClaimPublication XPatent Y A composition comprising A + B + C. “A mixture of A + B” See, ¶ [0024] of X. “Adding C improves a property.” Col. 2, lines 1-3 of Y.

Supplemental Examination  Allows for patent owners to submit documents for reexamination of the patent. – Provides a way to avoid inequitable conduct by cleaning up the file wrapper. > Failure to submit material references in IDS > Erroneous statements > Lack of Statement of Substance of the Interview > What about payment of incorrect fees? 26

Supplemental Examination: How to Use It  Can only be filed by all Patent Owner(s).  Any time during enforceability, but will not help for if law suits is already filed (or notice sent)  Must raise a “substantial new question of patentability”.  Up to 12 “items” per Supplemental Examination  $5,140 for request and $16,120, if granted.  If granted, then Ex Parte Reexamination.  Non-patent owners cannot intervene. 27

Micro Entity Status  If qualify, can reduce many PTO fees by 75%  There are two paths to Micro Entity Status: – The Higher Education path requires: > 1. The applicant's employer, from which the applicant obtains the majority of the applicant's income, is a institution of higher education (U.S. or protectorate) OR > 2. The applicant has assigned, licensed, etc… or is under obligation to assign interest to such a institution of higher education. –See, 77 Fed. Reg

Micro Entity Status: the Narrow Path  The Small Entity Path requires: – qualifies as a small entity (i.e., individual, business with less than 500 employees, or non-profit); – Not been named as an inventor on more than 4 previously filed patent applications; – No gross annual income exceeding three times the median household income ($150,162 in 2011); and – Not assigned, licensed, etc. to a party with gross income of more than three times the median household income. > See, 77 Fed. Reg and 37 CFR §

Oaths and Declarations  For Applications filed on or after September 16, 2013, follow AIA Declaration, Assignment, and Power of Attorney rules. 30

Best Mode: It Just Won’t Die  “[F]ailure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.” – 35 U.S.C. § 112(b)(3)(A)  “A practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions.” – 37 C.F.R. § (c) 31

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