Wolf, Greenfield & Sacks, P.C. | 600 Atlantic Avenue | Boston, Massachusetts | | fax | wolfgreenfield.com Prior Art Changes under the America Invents Act – Traps to Avoid and Best Practices Massachusetts Association of Technology Transfer Offices January 15, 2014 presented by C. Hunter Baker, Shareholder, Wolf Greenfield Brian D. Gildea, Executive Director, IP & Licensing, Boston University

2 “First Inventor to File” Provisions of the AIA  Overview of “First inventor to file” provisions  What law applies?  Grace periods  Examples  Best Practices

Overview of “First Inventor to File” Provisions  Sweeping change from “first to invent” to “first inventor to file”  Harmonizes U.S. with the rest of the world, but still retains 1 year grace period for inventor activities  Critical date is now the earliest “effective filing date of the claimed invention” not the date of invention 3

Overview of “First Inventor to File” Provisions  Expansive definition of prior art  Includes patents, printed publications, or in public use, on sale, or “otherwise available to the public before the effective filing date of the claimed invention”  Not limited to the US  Issued US patents and published US patent applications (including published PCT applications designating the US) effectively filed before the effective filing date of the claimed invention 4

Is It Prior Art? 5 Was it available to the public anywhere in the world before my application’s filing date? OR Is it a US or PCT application/patent effectively filed before my application’s filing date (including any foreign priority dates)? If “yes” to either, it is prior art... unless an exception applies.

What does “First Inventor to File” really mean? Simply put – Whoever files first wins.  Even by one day. The date of invention is now irrelevant.  First filing can be anywhere around the world and in any language.  Creates tension between filing quickly and ensuring applications are complete  May be less relevant for universities than for industry  University filings are driven by public disclosures  Industry filings are prone to delays before filing 6

What Law Applies to My Application? If filed on or after March 16,  Old law applies if all claims have an earliest effective date before March 16, 2013  CONs/DIVs filed after March 16, Old law still applies.  New law applies to whole application if any claim, pending at any time, has an earliest effective date of March 16, 2013 or after  e.g., Non-provisionals or PCTs with added matter, CIPs 7

Exceptions to Prior Art  Limited exceptions are provided for certain disclosures occurring 1 year or less before effective filing date  Disclosures that will not be prior art if:  By the inventor (or by another who obtained the subject matter from the inventor), or  Occurring after a public disclosure by the inventor of the same subject matter (or by another who obtained the subject matter from your inventor)  Note, however, that slightly different disclosures by third parties will not be knocked out by prior inventor disclosure, i.e., they will be prior art!! 8

9 Exceptions to Prior Art  U.S. or PCT applications will not be prior art if:  Subject matter obtained directly or indirectly from the inventor; or  Filed after a public disclosure of the same subject matter by the inventor (or by another who obtained the subject matter from your inventor); or  Co-owned as of later application’s filing date – this is an important change

What do the USPTO’s Examination Guidelines say about the Exceptions?  Verbatim or ipsissimis verbis disclosure is not required  More generic disclosure is not prior art  Conversely, if inventor disclosed a genus, and a later disclosure during grace period discloses a species, the species is prior art  Likewise, an alternative species would be prior art. 10

What’s Out?  Old: X wins if X can prove an earlier date of invention of A  New: Y wins Must win race to PTO now!! 11 X files A Y invents A X invents A Y files A

12 What’s Out?  Old: X could disqualify Y’s public disclosure based on an earlier date of invention (“swear behind”)  New: Y’s public disclosure is novelty destroying prior art to X Must file before somebody else discloses!! X invents AX files A Y publicly discloses A < 1 year

Activity Outside US Is Now More Relevant 13 Y files A in China or U.S. Y U.S. filing publishes X files A in U.S. Y files A in U.S. with priority to China  Old: Y’s Chinese application is not prior art, but U.S. is  New: Y’s Chinese application filing date is effective prior art date for U.S. application Does not matter where priority application is filed.

Activity Outside US Is More Relevant 14 Y files AB in China X files A in U.S. Y files BC in U.S. with priority to China  The only thing in Y’s U.S. application that is prior art is B  A is safe if non-obvious over B

15  Old: Y’s sales/use in China are not prior art  New: Y’s sales/use are now prior art Does not matter where sales/use occurred. X files A Y openly sells or publicly uses A only in China Activity Outside US Is More Important

16  Old: X’s confidential sale/use are novelty destroying prior art if activity conducted in the U.S.  New: X’s confidential sale/use are not prior art in U.S. > 1 year X confidentially sells A or X’s secret use of A in commerce even in the U.S. X files A Situations Where You Are Now Better Off

17  Old: X’s publication is by a different entity, removable by declaration with proper facts.  New: Joint inventor’s earlier public disclosure is not prior art < 1 year X publishes A. X and Y file A + A’ Situations Where You Are Now Better Off

18 There Is Still A Grace Period  Old and New—Same result:  X (or X+Y) gets to claim A and A’  Different “inventive entity” OK < 1 year X publishes A X (+Y) files A + A’

19 There Is Still A Grace Period  Important for universities  Old and New—Same results:  X gets to claim A  Under AIA, Y’s disclosure of A is not prior art against X’s application to A < 1 year X publishes A X files A Y publishes A

20 There Is Still A Grace Period, But…  Important for universities  Old: X gets to claim A, but not A’  New:  A is not prior art against X’s application to A  A’ is prior art against X’s application to A < 1 year X publishes A X files A Y publishes or files A + A’

21 Commonly Owned Applications No Longer Prior Art At All  Old: App 1 is not prior art for App 2 for obviousness BUT it is for novelty – A’ okay in App 2 only if not anticipated by A  New: App 1 not prior art to App 2 for either obviousness OR novelty – A’ okay in App 2 even if anticipated by A X and Y agree to assign their inventions to Co. Co. Files App 1 on invention A by X Co. Files App 2 on invention A’ by X and Y prior to publication of App 1

What Can You Still Do?  Until March 16, 2014 – If you have a pending provisional application filed prior to March 16, 2013  File under 37 C.F.R. § 1.53(c)(3)  Direct Conversion: Prov. To Non-Prov.  Maintains Provisional Appl. Filing Date  Also, File PCT Application

23 Written Agreement Before Invention No Longer Needed for CREATE Act Exception  Old: Apl 1 is prior art for Apl 2 for all purposes – A’ not patentable if anticipated or obvious over A  New: Apl 1 not prior art to Apl 2 for either obviousness OR novelty – A’ okay in Apl 2 even if anticipated or obvious over A X and Y execute written Joint Development Agreement Apl 1 on invention A filed by X Apl 2 on invention A’ by X and Y X invents A X and Y invent A’

Collaborations under the AIA 102 a) NOVELTY; PRIOR ART.--A person shall be entitled to a patent unless— (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)(2) A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— 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.

Collaborations under the AIA  (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.

Collaborations under the AIA  Suggest MATTO Boilerplate  Pre-Filing Joint Research Agreement  Acknowledges Joint Research Project  Not An Alternative For a JIAA  Does Not Address Funding  Does Not Address Cost Sharing  Does Not Address Liability Issues

Collaborations under the AIA Former § 103 For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

Best Practices European strategy (file before publishing) generally a reasonable approach to handle new US law  But: US/PCT applications being prior art for novelty and obviousness urges earlier filing  But: avoid relying on a weak provisional— consequences more severe than before 28

Best Practices  Accelerate drafting to avoid losing “race to the PTO”  “best practices” to facilitate drafting  strong/detailed invention disclosures  File on early/conceptual embodiments  Use provisionals  Draft like non-provisional  Multiple provisional filings – avoid “one and done” priority application filing strategy  Combine together later when you convert 29

BU Preferred Filing Practices  60 Days Pre-filing  Search & Opinion (30 days)  Market Analysis (Concurrent To SO)  Quality Provisional Application (30 days)  Provisional Updates – Very Rare  9-10 Month Review  PCT Conversion Decision

Emergency Filing Practices  Pre-Publication  File Cover Sheet Provisional  Perform Expedited Search & Opinion (21 days)  Market Analysis (Concurrent To SO)  Make Decision On Expedited Full Provisional Filing (21 days)

Emergency Filing Practices  Post-Publication  Ask Why Bother !!  File Cover Sheet Provisional  Perform Market Analysis Before Search  Perform Search & Opinion (21 days)  Make Decision On Expedited Full Provisional Filing (21 days)

33 ? Questions C. Hunter Baker, Wolf Greenfield, Brian D. Gildea, Boston University,