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ImplementingFirst-Inventor-to-File Provisions of the AIA
By: Scott D. Malpede, Seth Boeshore and Chitra Kalyanaraman
USPTO Rules Effective March 16, 2013
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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)
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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)
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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)
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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)
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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)
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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)
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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)
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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)
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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)
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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)
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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)
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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)
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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)
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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
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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
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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
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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)
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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)
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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 293-297 (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, 293-297, 321
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