1. AIA Strategies

2. First-To-File Changes take effect March 16, 2013
Apply to any application having a priority claim falling on or after March 16, 2013
Significantly expands the scope of applicable prior art

3. First-To-File
Critical date for any application is its “effective filing date”
The effective filing date of a US nonprovisional application is the earlier of:
(a) the actual US filing date; or
(b) the filing date of any earlier application from which the US nonprovisional application claims priority benefits (German, European, US provisional, etc.)

4. First-To-File Effective Filing Date
Appl. A
US Non-Prov
Filing Date
Effective Filing Date
Appl. B
German
Priority Date
US Non-Prov
Filing Date

5. First-to-File
New § 102 defines lack of novelty: The invention lacks novelty if:
(a) the invention was “available to the public” before the effective filing date; or
(b) the invention was described in a US patent or published US patent application that names another inventor and has an earlier effective filing date.

6. First-To-File New § 102 Appl. A US Non-Prov Filing Date
Effective Filing Date
Literature published prior to
the effective filing date will be
prior art
Literature Pub Date

7. First-To-File New § 102 Appl. A German Priority Date US Non-Prov
Filing Date
Effective Filing Date
Literature published prior to
the effective filing date will be
prior art
Literature Pub Date

8. First-To-File New § 102 Appl. A German Priority Date US Non-Prov
Filing Date
Effective Filing Date
A PCT or other patent published
prior to the effective filing date
will be prior art
PCT
Pub Date

9. First-To-File New § 102 Appl. A Appl. B US Non-Prov Filing Date
A US application claiming a priority
date prior to the effective filing date
will be prior art
Effective Filing Date
Appl. B
German
Priority Date
US Non-Prov
Filing Date

10. First-To-File New § 102 Appl. A Appl. B German Priority Date
US Non-Prov
Filing Date
A US application claiming a priority
date prior to the effective filing date
will be prior art
Effective Filing Date
Appl. B
German
Priority Date
US Non-Prov
Filing Date

11. First-To-File New § 102 Appl. A Appl. B German Priority Date
US Non-Prov
Filing Date
A US application claiming a priority
date prior to the effective filing date
will be prior art
Effective Filing Date
Appl. B
German
Priority Date
PCT Nationalized in US
Filing Date

12. First-To-File
The new definition of lack of novelty in new §102 significantly expands the applicable prior art:
Publications published less than a year before the actual US filing date and published before any priority date claimed cannot be antedated (old: can antedate)
PCT applications designating the US but not published in English will be prior art as of their earliest priority dates (old: prior art upon publication)
US applications claiming priority to non-US applications will be prior art as of their earliest non-US priority dates (old: prior art as of earliest US filing date)

13. First-To-File
Potential Gaps in New § 102: The following would appear according to present understanding not to be prior art until publication:
A PCT application that is not nationalized and published in the US
A non-US application for which no corresponding application is filed in the US

14. First-To-File Grace Periods: New §102 contains two exceptions:
(1) A rejection based on a disclosure less than one year before the effective filing date can be overcome by:
(A) showing the disclosure was that of the inventor or someone who derived from the inventor; or
(B) showing the inventor or someone who derived from the inventor publicly made the same disclosure previously.

15. First-To-File Grace Period
Appl. A
US Non-Prov
Filing Date
Effective Filing Date
Earlier disclosure can be overcome by showing disclosure was by A or Deriv
A/Deriv
< 1 year before EFD
Literature Pub Date

16. First-To-File Grace Period
Appl. A
US Non-Prov
Filing Date
Effective Filing Date
< 1 year before EFD B
Earlier disclosure by B can be overcome by showing A or Deriv prepublished
Literature
Pub Date
A/Deriv
Literature
Pub Date

17. First-To-File Exceptions continued:
(2) A rejection based on a disclosure in a US patent or published US patent application can be overcome by:
(A) showing the disclosure is that of the inventor or someone who derived from the inventor;
(B) showing the inventor or someone who derived from the inventor had publicly disclosed before the effective filing date of the cited reference; or
(C) showing the reference and the application being examined were commonly owned or subject to assignment to the same person/entity.

18. First-To-File Grace Period
Appl. A
German
Priority Date
US Non-Prov
Filing Date
Second US application with
priority date less than one year
earlier can be overcome by
showing disclosure was by A or Deriv
Effective Filing Date
Appl. A/Deriv
< 1 year before EFD
German
Priority Date
US Non-Prov
Filing Date

19. First-To-File Grace Period
Appl. A
German
Priority Date
US Non-Prov
Filing Date
Effective Filing Date
< 1 year before EFD
Appl. B
German
Priority Date
US Non-Prov
Filing Date
US application by B with
priority date less than one year
earlier can be overcome by
showing A or Deriv prepublished
A/Deriv
Literature
Pub Date

20. First-To-File Grace Period
Appl. A
German
Priority Date
US Non-Prov
Filing Date
Effective Filing Date
< 1 year before EFD
Appl. B
German
Priority Date
PCT
Filing Date
US application by B with
priority date less than one year
earlier can be overcome by
showing common ownership

21. First-To-File
All of the prior art available to show lack of novelty under new §102 will also be available to show lack of inventive step/obviousness under §103
This includes even prior US patent applications that were unpublished at the time of your filing

22. Recommendations
File new German/European priority applications if practicable before March 16, 2013 (to avoid First-To-File provisions)
Nationalize and publish even unimportant applications in the US to establish prior art
Avoid the use of continuations-in-part that “straddle” the March 16, 2013 date (combination claims of old + new matter will be subject to First-To-File provisions)

23. Recommendations Retain Laboratory Notebooks/Records
Detail cooperations with third-parties:
To support a derivation claim:
What exactly was disclosed?
Exactly to whom was it disclosed?
When was it disclosed?
To defend a derivation claim:
Record inventor’s individual/group efforts
Unexpected results

24. Third-Party Submissions
Takes effect on September 16, 2012, and applies to any application pending on that date or filed thereafter
Third-party can submit patents, published patent applications or other printed publications
Submission can be electronic; USPTO will not list in PAIR until compliance with applicable rules is confirmed

25. Third-Party Submissions
Must be made before earlier of:
(a) Mailing of Notice of Allowance; or
(b) Later of:
(i) 6 months from first publication of the application by USPTO; or
(ii) Mailing of First Office Action on the Merits (FOAM)

26. Third-Party Submissions
6 months from
publication
FOAM
Third-party submission will
be timely if filed by this later date
(unless in the situation below the
Notice of Allowance has issued)
6 months from
publication
FOAM

27. Third Party Submissions
Proposed fees are €139 ($180) for every 10 documents submitted or fraction thereof
An exemption from fees is proposed for:
A submission of 3 or fewer documents
Where the submission is the third-party’s first submission

28. Supplemental Examination
Takes effect on September 16, 2012
Applies to any patent in force on or after September 16, 2012

29. Supplemental Examination
Requested by Patentee
To consider, reconsider or correct information believed to be relevant to the patent
The information that may be presented is not limited to patents and printed publications
Information includes, for example, also patentability under §§ 101 and 112

30. Supplemental Examination
Instituted by Patentee’s filing of Request for Supplemental Examination
Within 3 months, USPTO will determine whether there is a “substantial new question of patentability”
If a substantial new question of patentability is raised, the USPTO will order ex parte reexamination

31. Supplemental Examination
With two exceptions, a patent that cures a defect through supplemental examination will not be held unenforceable in subsequent litigation
Exception 1: Cure will not apply if the defect had been pleaded in a civil action before the Request was filed
Exception 2: Cure will not apply if the defect is defense raised in a civil action and supplemental examination and any ex parte reexamination are not concluded before the action is brought

32. Supplemental Examination
Examples of Defects that Can be Cured by Supplemental Examination:
A prior art reference that was not submitted during the original prosecution or, if submitted, was inadequately considered
Comparison data later found to be erroneous
An erroneous priority benefit claim

33. Supplemental Examination
As with most cures, Supplemental Examination will be expensive
USPTO proposes:
Fee for filing Request €3 916 ($5180)
Conducting Reexam subsequent to Request € ($16,120)
For each document over 20 pages long to be considered €125+ ($166+)

34. Trial Proceedings: Litigation Alternatives
Post-Grant Review
Inter Partes Review
Derivation

35. Post-Grant Review Takes effect on September 16, 2012
Applies to patents that issue from applications subject to First-To-File provisions
First-To-File provisions take effect on March 16, 2013, and apply to any patent application having a priority date after March 16, 2013

36. Post-Grant Review
Provides a vehicle for challenging the validity of any patent on any prosecution grounds (utility, enablement, indefiniteness, anticipation, obviousness)
Petition to institute Post-Grant review can be by anyone other than the patentee
Petition must be filed within 9 months of the issue date of the patent

37. Inter Partes Review Takes effect on September 16, 2012
Applies to any patent in force on or after September 16, 2012
Converts present inter partes reexamination from an examination to an adjudication

38. Inter Partes Review
Challenge is limited to lack of novelty (§102) and obviousness (§103) grounds
Challenge is based on patents and printed publications only
Petition to institute Inter Partes review can be by anyone other than the patentee
Petition may be filed upon issuance of the patent.

39. Derivation Takes effect on March 16, 2013
Applies to patents that issue from applications subject to First-To-File provisions
First-To-File provisions take effect on March 16, 2013, and apply to any patent application having a priority date after March 16, 2013

40. Derivation
Provides a vehicle to challenge any person who has derived/stolen the invention from you and attempted to patent it him/herself
Must be filed on the earlier of 1) within one year after grant of the derived claim or 2) within one year after publication of the earlier application containing a claim to the same or substantially the same invention (US PGPub or PCT designating US)

41. Trial Proceedings: Overview
Petitioner Reply to PO Response & Opposition to Amendment
PO Preliminary Response
Decision on Petition
PO Response & Motion to Amend Claims
PO Reply to Opposition to Amendment
Final Written Decision
Petition Filed
Oral Hearing
2 months
5 months
4 months
PO Discovery Period
2 months
Petitioner Discovery Period
1 month
PO Discovery Period
Hearing Set On Request
Period for Observations & Motions to Exclude Evidence
No more than 12 months
PO = Patent Owner

42. Trial Proceedings: Common Attributes
Quick: Final Written Decision issued within one year of instituting trial, which can be extended once for 6 months on good cause
Expensive: For example, USPTO proposed filing fee for PGR petition of 20 or fewer claims is € ($35,800); estimated cost to prepare that PGR petition is € ($61,333)
Estoppel: Petitioner is barred from later raising in the USPTO, any district court action or any ITC proceeding, any ground that was raised or reasonably could have been raised

43. Trial Proceedings: The Petition
Filed on time
Identifies claims challenged and the grounds for challenge
Includes the evidence the Petitioner intends to rely upon
Shows how the requisite standard for instituting the trial are met

44. Trial Proceedings: Institution of Trial
Once the Petition is filed, Patentee has 2 months to file optional Preliminary Response
Within 3 months of the date such Preliminary Response was due, the Board will determine whether to institute trial
Board will narrow the issues for final determination by authorizing the trial to proceed as to specific claims and on specific grounds for which the threshold requirements for proceeding have been met

45. Trial Proceedings: Discovery
Direct examination proceeds in the form of Declarations
Cross-examination will be live
Discovery is in Sequenced Fashion:
Patentee can begin deposing Petitioner’s declarants as soon as trial is instituted
Petitioner can depose Patentee’s declarants as soon as Patentee files a response including declarations

46. Best Mode Took effect on September 16, 2011
Applies to litigation proceedings commenced on our after that date

47. Best Mode Best mode will cease to be a litigation defense
This does not affect examination practice
USPTO has indicated that best mode will continue to be evaluated as set forth in MPEP § 2165

48. Best Mode
Compliance with the best mode requirement is a two-pronged test:
(1) Did the inventor have a best mode at the time the application was filed?
(2) If so, does the specification disclose the best mode such that persons skilled in the art can practice it?
Under the MPEP, the examiner will presume the best mode is disclosed until evidence of concealment is submitted, which is rare

49. Thank You!
If you have questions or need further information, please contact Kurt Briscoe at or Dr. Christa Hildebrand at