In Hollmer v. Harari, the Federal Circuit clarified the requirements for incorporation by reference of subject matter required to support a priority claim under 35 USC § 120. The decision underscores the care that must be taken in a seemingly clerical matter to preserve substantive patent rights.
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 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.
In Goeddel v. Sugano, the Federal Circuit determined that a priority application that disclosed the gene encoding a full-length “precursor” protein did not constitute constructive reduction to practice of interference counts that focused on the “mature” protein. This decision is an important reminder that a disclosure that might be effective to render a claim obvious may nonetheless be ineffective to support a priority claim.
On July 20, 2010, the USPTO hosted a public meeting on the proposed Enhanced Examination Timing Control Initiative, which would offer three tracks for examination while delaying examination of foreign-based applications. (Other blog articles discuss some drawbacks of this proposal and its particular impact on foreign-based applications.) The program began with opening remarks from Director Kappos, which were followed by brief presentations from representatives of Microsoft, AIPLA, AIPR, IPO, 3M, BIO and UIA. The speakers generally were receptive to the idea of giving applicants more options and control over the timing of examination, although each raised concerns about specific aspects of the proposed program.
The USPTO’s proposed changes to the application queuing system will derail foreign-based applications in order to promote the USPTO’s worksharing goals. While domestic applicants will be able to opt into one of three examination tracks (“prioritized,” “traditional,” and “delayed”) applications that claim priority to a foreign application will have their brakes set until the foreign patent office issues a substantive examination report. The USPTO has not explained the legality of this second-class treatment of foreigners, and has not shown that temporarily taking foreign-based applications off track will benefit the U.S. examination system in the long run.
Applications “based on a prior foreign-filed application” will not be placed in the examination queue until substantive examination in the foreign application begins. In order to obtain U.S. examination, the applicant will have to file in the U.S. application a copy of any search report and the first office action from the foreign application, as well as “an appropriate reply to the foreign office action” as it may apply to the U.S. application. Once this requirement is met, foreign-based applications will be queued up for traditional examination unless a request and fee are submitted for prioritized examination.