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 to preissuance submissions) and 37 CFR § 1.292 (the current rule relating to public use proceedings). The USPTO will consider written comments received by March 5, 2012.Continue reading this entry
Tag Archives: Prior Art
Will Any Patent Application Be Better Off Under The America Invents Act?
Posted in 102; Patent ReformThe 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 to a broader definition of prior art and will lose the ability to swear behind certain prior art by proving an earlier date of invention. Moreover, patents granted from such applications will be subject to challenge under the new post-grant review provisions.
In counseling clients on how to prepare for the impact of patent reform, I’ve been trying to identify situations where an application might be better off under the new law. So far, only one scenario comes to mind–an application threatened by an inventor-based disclosure that was made before a foreign priority date.
The Disharmonious Loss Of The Hilmer Doctrine
Posted in Patent ReformOne 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 actually may widen the gulf between the U.S. and the rest of world.
Federal Circuit Overturns Obviousness Rejection Based On Non-Analogous Art
Posted in Federal Circuit DecisionsIn 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.
How Effective is That Published Application as Prior Art?
Posted in Federal Circuit Decisions; Patent Office PracticeOnce 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 filing date, as long as the provisional application includes the disclosure that is being cited. While this decision affirms long-standing Patent Office practice (see MPEP § 2136.03), it serves as a good reminder that determining the effective date of a published application can require more than skimming the front page for the earliest U.S. priority date.