0 Charles R. Macedo, Esq. Partner

1 Brief Overview of Priority Under AIA Implications for Public Disclosures and Private Disclosures Role of Provisional Filings Under AIA Role of NDAs Under AIA Recapturing Disclosures After the Fact Recommended Procedures

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3 First-to-Invent Priority Rule Patent goes to first inventor of invention: One year grace period Can overcome certain kinds of prior art if show – conception – reduction to practice and – diligence * US is only patent system in world to use this kind of rule

4 First-to-Invent Priority Rule Patent goes to first inventor of invention: One year grace period Can overcome certain kinds of prior art if show – conception – reduction to practice and – diligence * US is only patent system in world to use this kind of rule First-to File Priority Rule Patent goes to first inventor to file for patent application Generally no grace period Public disclosure is absolute bar to obtaining a patent Disclosure under NDA will not bar a patent *Rest of world use this kind of rule

5 –Replaces old “first to invent” with modified “first to file”

6 102(a): Absolute Novelty Prior art if before filing date –Issued Patents –Printed Publications –In public use –On sale –Otherwise available to the public –Earlier filed patent application or patent which was subsequently published § 102. Conditions for patentability; novelty (a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. –Replaces old “first to invent” with modified “first to file”

7 102(b)(1): Exceptions Disclosure less than 1 year before effective filing date not prior art if: –Private disclosure by inventor or derived from inventor –Earlier Public disclosure by inventor or derived from inventor § 102. Conditions for patentability; novelty (b) EXCEPTIONS.— (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. –Replaces old “first to invent” with modified “first to file” X

8 102(b)(2): Exceptions Earlier filed patent applications and patents that are published/issued after effective filing date are not prior art if: –Obtained from inventor –Prior public disclosure by inventor or derived from inventor –Commonly owned by effective filing date § 102. Conditions for patentability; novelty (b) EXCEPTIONS.— (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. –Replaces old “first to invent” with modified “first to file” X

9 Application Filed Prior to March 16, Old first-to-invent rule continues to apply Applications filed after March 16, 2013, not claiming back -- New first-to-file rule will apply March 16, 2013

10 Applications filed after March 16, 2013, but claiming priority to applications filed before -- Old first to invent rule may apply Or -- New first-to-file rule may apply with old 102(g) March 16, 2013 Priority Claim BUT

11 Implications for Public Disclosures and Private Disclosures

12 Is a public sale, a public disclosure under the 102(b)(1)(B)? Is a confidential sale, a private disclosure under 102(b)(1)(A)? Does a subsequent “disclosure” under 102(b)(1)(B) need to be identical to earlier disclosure by inventor for exception to apply?

13 BENEFITS Still not prior art to an application for the same invention Can be prior art to others Can prevent later disclosures of same invention from being prior art Give time to develop invention before spending attorney fees

14 BENEFITS Still not prior art to an application for the same invention Can be prior art to others Can prevent later disclosures of same invention from being prior art Give time to develop invention before spending attorney fees RISKS May not be prior art to others if they disclosed same invention If invention modified, may not prevent later disclosures of inventions May not prevent disclosures of obvious modifications from being prior art May give false sense of security

15 BENEFITS Still not prior art to an application for the same invention Protected against derived patents on same invention Give time to develop invention before spending attorney fees Protects foreign rights

16 BENEFITS Still not prior art to an application for the same invention Protected against derived patents on same invention Give time to develop invention before spending attorney fees Protects foreign rights RISKS Not prior art to others If invention modified, may not prevent later derived applications Does not prevent lather disclosures of others from being prior art May give false sense of security

17 PTO’s View of Section 3 of the AIA Executive Summary: Purpose: Section 3 of the AIA, inter alia, amends the patent laws to: (1)convert the U.S. patent system from a “first to invent” system to a “first inventor to file” system; (2)treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country; (3)eliminate the requirement that a prior public use or sale be “in this country” to be a prior art activity; and (4)treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C These changes in section 3 of the AIA are effective on March 16, 2013, but apply only to certain applications filed on or after March 16, Final Rules (Feb. 14, 2013) (available at )

18 Role of Provisional Filings Under AIA

19 BENEFITS Creates priority Information contained in disclosure can be disclosed without creating prior art Government filing fee is nominal compared to an application Remains secret until patent application is published or patent issues claiming priority Can use many in the one year grace period Gives export license Gives inventor up to 1 year to convert to nonprovisional Extends patent term

20 BENEFITS Creates priority Information contained in disclosure can be disclosed without creating prior art Government filing fee is nominal compared to an application Remains secret until patent application is published or patent issues claiming priority Can use many in the one year grace period Gives export license Gives inventor up to 1 year to convert to nonprovisional Extends patent term RISKS Need to be enabling disclosure Must be converted into nonprovisional to be effective If not converted and published, does not become prior art May provide false sense of security to inventor Delays prosecution

21 What happens if you rely upon private disclosure? public disclosure? provisional application? combination?

22 Role of NDAs Under AIA

23 BENEFITS Avoids disclosure being prior art under new §102(a)(1) Protects against derivative disclosures of the same invention under new § 102(b)(1) Gives time to develop before incur attorney expense

24 BENEFITS Avoids disclosure being prior art under new §102(a)(1) Protects against derivative disclosures of the same invention under new § 102(b)(1) Gives time to develop before incur attorney expense RISKS Does not prevent sales from being prior art under §102(a)(1) May not protect against derivative disclosure of similar derived invention under new §102(b)(1) May provide false sense of security to inventor Delays prosecution

25 Some provisions to consider Precluding filing of patents applications by recipients Ownership language of intellectual property resulting from discussions and any derivations Common interest privilege protection

26 Recapturing Disclosures After the Fact

27 Pre-screening publications Setting up docketing systems Setting up “Google Alerts” to see what your company is saying or is being said about your company Monitoring your business partners patent publications Quarterly meetings with “thought” stakeholders to review what working on, published, planning on doing, etc.

28 Some Significant Aspects Of The Final Rules

29 Significant Aspects of Final Rules Time period for submitting a certified copy of the foreign priority application Statements required for nonprovisional applications claiming priority to or the benefit of an application filed prior to March 16, 2013 Affidavits or declarations showing a prior disclosure by an inventor or another who obtained the subject matter from an inventor Final Rules (Feb. 14, 2013) (available at )

30 Time Period for Submitting a Certified Copy of the Foreign Priority Application Either a certified copy or an interim copy of the foreign application must be filed within the later of: 4 months from the actual filing date of the application or 16 months from the filing date of the prior foreign application, If an interim copy is provided, a certified copy must be filed before the patent issues. Exceptions apply for priority applications filed with a participating foreign intellectual property office

31 Statements Required For Transitional Applications For applications filed on or after March 16, 2013, but claiming priority to applications filed before that date: a statement is required only if a transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, Thus, no statement is required if a transition application discloses subject matter not also disclosed in the prior-filed priority application that does not ever contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.

32 Statements Required For Transitional Applications An applicant is not required to provide such a statement if the applicant (and those responsible for the prosecution) reasonably believe on the basis of information already known that the transition application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, Thus, an applicant in this situation is not required to conduct any additional investigation or analysis to determine the effective filing date of the claims in their applications.

33 Affidavits or Declarations Showing a Prior Disclosure Affidavits or Declarations showing derivation: May be used to disqualify a prior public disclosure during prosecution of the application. May not be used to disqualify prior filed U.S. patents or patent applications, and instead a petition for a derivation proceeding must be used.

34 Recommended Procedures

35 Preparing and filing provisional as early as and as often as possible Track filings by related matters (include listing or prior related provisional applications of background or each provisional) Follow up on what is potentially important Get budget for conversion

36 Date-stamp invention disclosures File provisional applications – Use auto-docket filing Evaluate provisional applications – How to convert to a full application – Follow up within 6 months of provisional filing to ensure adequate time for PCT or international filings File provisional application before entering into CDAs with potential clients or partners

37 Questions?

38 Thank You!

39 Exact meaning of prior art under AIA appears to be a moving target -Technology Transfer Tactics, October 2012Technology Transfer Tactics, October 2012 ARE Patent Law Alert: USPTO Issues Proposed Rules For Implementing A First-Inventor-To-File System -ARELAW.COM, July 30, 2012ARELAW.COM, July 30, 2012 Learning by example: The limited grace period for prior disclosures under the AIA -Technology Transfer Tactics, Vol. 6, No. 6 June 2012Technology Transfer Tactics, Vol. 6, No. 6 June 2012 ARE Patent Law Alert: President Obama Signs Leahy-Smith America Invents Act into Law: Overview of Provisions Now In Effect -ARELAW.COM, September 19, 2011ARELAW.COM, September 19, 2011 ARE Patent Law Alert: Overview of the Leahy-Smith America Invents Act on Patents -ARELAW.COM, September 13, 2011ARELAW.COM, September 13, 2011

40 §102. Conditions for patentability; novelty (a) Novelty; Prior Art.—A person shall be entitled to a patent unless— (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention (b)

41 §102. Conditions for patentability; novelty (b) Exceptions.— (1) Disclosures made 1 year or less before the effective filing date of the claimed invention.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

42 §102. Conditions for patentability; novelty (b) Exceptions.— (2) Disclosures appearing in applications and patents.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

43 §102. Conditions for patentability; novelty (c) Common Ownership Under Joint Research Agreements.— Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if— (1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention; (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

44 §102. Conditions for patentability; novelty (d) Patents and Published Applications Effective as Prior Art.— For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application— (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

45 (n) EFFECTIVE DATE.— (1) IN GENERAL.—Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act [i.e., March 16, 2013], and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time— (A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

46 (o) SENSE OF CONGRESS.—It is the sense of the Congress that converting the United States patent system from “first to invent” to a system of “first inventor to file” will promote the progress of science and the useful arts by securing for limited times to inventors the exclusive rights to their discoveries and provide inventors with greater certainty regarding the scope of protection provided by the grant of exclusive rights to their discoveries.

47 (p) SENSE OF CONGRESS.—It is the sense of the Congress that converting the United States patent system from “first to invent” to a system of “first inventor to file” will improve the United States patent system and promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries.