Tag Archives: Prior Art

Does The Experimental Use Exception Survive The AIA?

Now that the March 16, 2013 effective date of the first-to-file provisions of the Leahy-Smith America Invents Act (AIA) is fast-approaching, I have been reviewing the commentary in the USPTO’s February 14, 2013 Federal Register Notices publishing the final First Inventor To File rules and Examination Guidelines. Comment 12 of the Guidelines, which relates to … Continue reading this entry

Maximizing The Effect Of Patent Applications As Prior Art Under The AIA

Now that we are less than one month away from implementation of the First-Inventor-To-File provisions of the America Invents Act (AIA), stakeholders are considering whether to file new patent applications now, to secure examination under the current First-To-Invent patent system, or wait until March 16, 2013, so that the applications will be governed by the … Continue reading this entry

The Federal Circuit Focuses On The Problem When Evaluating Non-Analogous Art

In K-Tec, Inc. v. Vita-Mix Corp., the Federal Circuit affirmed the district court’s finding that two design patents relating to pitchers were non-analogous art to utility patent claims relating to a blender jar. The Federal Circuit’s analysis focused on the problem being solved by the invention, and differs from a decision of the U.S. Patent … Continue reading this entry

First To File Practice: Mandatory Derivation Proceedings?

This is the fourth article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. … Continue reading this entry

Federal Circuit Holds That Prior Art Cited By USPTO Is Presumptively Enabled

In In re Antor Media Corp., the Federal Circuit held that a prior art reference cited by a USPTO Examiner is presumptively enabled, even when the reference at issue is a printed publication. Although Antor had submitted a declaration regarding the non-enabling quality of the prior art at issue, the court found that it was … Continue reading this entry

First To File Practice: Commonly Owned Applications

This is the fourth article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. … Continue reading this entry

USPTO Publishes Final Rules For Preissuance Submissions By Third Parties

The USPTO published the final rules to implement the Preissuance Submissions provisions of the America Invents Act in the July 17, 2012 Federal Register. The final rules add new 37 CFR § 1.290, revise 37 CFR § 1.291, and remove 37 CFR § 1.99 (the current rule relating to preissuance submissions) and 37 CFR § … Continue reading this entry

Proposed AIA Implementation Rules: Preissuance Submissions In Pending Applications

On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to preissuance submissions of publications in a pending patent application. The proposed rules add new 37 CFR § 1.290, revise 37 CFR § 1.291, and remove 37 CFR § 1.99 (the current rule relating … Continue reading this entry

Will Any Patent Application Be Better Off Under The America Invents Act?

The changes to 35 USC § 102 embodied in the America Invents Act (AIA) take effect on March 16, 2013, under complicated effective date provisions. The general consensus seems to be that applicants should try to file new applications before the law changes, because (for example) applications filed under the new law will be subject … Continue reading this entry

The Disharmonious Loss Of The Hilmer Doctrine

One of the many changes included in the Leahy-Smith America Invents Act relates to the date that a U.S. patent application is effective as prior art. While eliminating the Hilmer doctrine and giving prior art effect to U.S. patent applications as of their foreign priority dates might seem to be a step towards international harmonization, it … Continue reading this entry

Federal Circuit Overturns Obviousness Rejection Based On Non-Analogous Art

In In re Klein, the Federal Circuit reversed an obviousness rejection because the cited references were found to be non-analogous art. This case is an important reminder that questioning the relevance of the cited references can be an important first step to overcoming an obviousness rejection.… Continue reading this entry

How Effective is That Published Application as Prior Art?

Once a U.S. patent application is published, it can be cited as prior art as of its filing date, under 35 USC § 102(e). The Federal Circuit’s recent decision in In re Giacomini holds that when a U.S. patent application claims priority to a U.S. provisional application, it can be cited as of the provisional application … Continue reading this entry