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2.3 – 35 U.S.C. § 102(a)

35 U.S.C. 102(a) List Patent Bar

“A person shall be entitled to a patent unless the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.”

There are a lot of different interpretations of “was known or used” but basically the invention has to be unique (someone else can not have already invented and be using the invention) before the effective filing date in the USA and the invention can’t be shown in a prior filed patent or printed publication anywhere in the world before the effective date of invention seeking to be patented.

  • 102(a) applies if the invention was known or used before the date of invention (not the filing date) by a 3rd party.
  • Activities in NAFTA countries (12/8/93) and WTO countries (1/1/96) may be introduced to prove earlier conception and reduction to practice.

Overcoming a 102(a) Rejection:

1.  Swear back to an earlier conception date (commonly referred to as using Rule 31).

This can be done by using a 37 C.F.R. 1.131 affidavit through which an applicant can prove prior conception to the prior art used in a 35 U.S.C. § 102 rejection.  The applicant must establish reduction to practice before the application’s filing date, or establish conception and diligence up to the application fling date.

2.  Prove derivation on a reference:

An applicant can prove that the referenced prior art was derived from the applicant.  This is done through using a 37 C.F.R. 1.131 affidavit.

3.  Amending the claims:

Simply amend the claims so that they will not interfere with the prior art.  It is important to note that there can be no new matter not supported in the original disclosure added with the amendment.

4.  Persuasive Arguments:

The applicant or their representative can persuasively argue to the examiner that the reference used in the 35 U.S.C. § 102(a) rejection is not prior art to the new application.

5.  Perfect Priority:

One can file an application data sheet with specific reference to prior applications using 35 U.S.C. § 119(a)-(e) or 35 U.S.C. § 120.

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5.10 – MPEP 2300 Interferences (Derivation Proceeding)

Interferences AIA Derivation Featured

Overview

The derivation proceeding described in section 3 of the America invents act is intended to ensure the person obtaining a patent is a true inventor and did not derive the invention from another. If a question as to the true inventor arises between two applicants a derivation proceeding can be instituted before the patent trial and appeal Board.  The derivation proceeding replaces the interference proceeding.

Specifics

Derivation proceeding may only be requested if the inventor has filed an application claiming the same or substantially the same as another applicant.  This can be instituted by copying earlier filed application, making necessary changes to the application to reflect true invention or submitting a petition for derivation proceeding along with the application.

Derivation petition must be filed under oath and be supported by substantial evidence.  It must: identify the disputed patent or application; Distinctly point out how earlier invention was derived from petitioners; Show communication of the derived invention from petitioner to initial applicant; Provide affidavit for lack of authorization from petitioner for filing the initial application.

Derivation proceedings must be filed within one year of the first publication of the invention by the earlier applicant.

Director will file a derivation proceeding if the petition successfully shows: The petitioner’s patent is the same or substantially the same and is not patently distinct from the earlier applicant’s invention; The invention was derived from the petitioner; The first invention was filed without the inventors authorization; Construction of the petitioner’s claims accurately reflects the true invention.

A decision by the director to institute a derivation proceeding is final and non-appealable.  A settlement agreement may be achieved to terminate the proceedings.  The settlement agreement will terminate the proceeding as long as a patent trial and appeal board does not find it inconsistent with the evidence of record.  If the board does find the settlement inconsistent with the evidence, it may disregard it and continue the derivation proceeding.  Binding arbitration may be used to determine inventorship.

Interference proceedings are disclosed in MPEP 2300.

General overview of interferences:

An interference is between either 2 patent applications, or a patent application and a granted patent.  Claims do not need to be identical but they must have the same subject matter.  37 C.F.R. § 1.131 can not be used to swear behind another patent which claims the same invention however this not the case if the patent only discloses and does not claim the invention.  The senior party in an interference proceeding has the earliest effective filing date and becomes the defendant automatically.  If a party wins an interference this means they were the first to invent and diligently reduce the invention to practice before the other inventors conception and reduction to practice.

An interference can be provoked by another party.  This is done by proposing a count including mock claim(s) and presenting or identifying a claim corresponding to the count in an application.  This should include identifying the other pending application or issued patent and explaining why the interference should be issued.  If the examiner suggests, the claims can be copied verbatim from the other pending application or issued patent.

The provocation of an interference with an issued patent must be done less than one year from its issue date.  If the other application is published and the applicant’s filing date is after the publication the copying of the claims needs to be completed less than 1 year from the publication date.  If two applications are involved the examiner will not suggest the copying of claims if more than 3 months separate the applications for a simple claim.  If the claim is complex then this can be extended to 6 months.  If the applicant fails to copy claims as suggested, this acts as a disclaimer on the uncopied subject matter.

Once the interference is filed, each party has access to the other parties patent file.  Declarations are only required for issued patents and pending applications not with two pending applications.

If so desired, the parties can voluntarily settle before the interference terminates through a written agreement being filed with the USPTO.

Burden of proof in an interference proceeding is on the junior party, or the party with the later filing date.  In the case of more than one parties being included in an interference, a party is junior to any other party who has a later filing date.  In cases where the filing date is the same, whoever has the later date of execution is made the junior party.

In the case of issued patents in an interference, a higher standard of proof is required versus two applications.  For issued patents clear and convincing evidence is required.  For applications a preponderance of evidence is requested, this evidence doesn’t necessarily have to be clear and convincing.

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8.11 “Derivation Proceeding” – America Invents Act

Derivation Proceeding America Invents Act Patent Law

Derivation Proceeding America Invents Act Patent Law

Overview

The derivation proceeding described in section 3 of the America invents act is intended to ensure the person obtaining a patent is a true inventor and did not derive the invention from another. If a question as to the true inventor arises between two applicants a derivation proceeding can be instituted before the patent trial and appeal Board.  The derivation proceeding replaces the interference proceeding.

Specifics

Derivation proceeding may only be requested if the inventor has filed an application claiming the same or substantially the same as another applicant.  This can be instituted by copying earlier filed application, making necessary changes to the application to reflect true invention or submitting a petition for derivation proceeding along with the application.

Derivation petition must be filed under oath and be supported by substantial evidence.  It must: identify the disputed patent or application; Distinctly point out how earlier invention was derived from petitioners; Show communication of the derived invention from petitioner to initial applicant; Provide affidavit for lack of authorization from petitioner for filing the initial application.

Derivation proceedings must be filed within one year of the first publication of the invention by the earlier applicant.

Director will file a derivation proceeding if the petition successfully shows: The petitioner’s patent is the same or substantially the same and is not patently distinct from the earlier applicant’s invention; The invention was derived from the petitioner; The first invention was filed without the inventors authorization; Construction of the petitioner’s claims accurately reflects the true invention.

A decision by the director to institute a derivation proceeding is final and non-appealable.  A settlement agreement may be achieved to terminate the proceedings.  The settlement agreement will terminate the proceeding as long as a patent trial and appeal board does not find it inconsistent with the evidence of record.  If the board does find the settlement inconsistent with the evidence, it may disregard it and continue the derivation proceeding.  Binding arbitration may be used to determine inventorship.

Key dates

March 16, 2013

  • Effective date of the derivation proceeding
  • Subject to all patents and patent applications of the first to file system

September 11, 2012

  • Final rules released on derivation proceedings

Key concepts

  • Derivation proceeding is intended to ensure the true inventor obtains the patent
  • Insures invention is not a derivation from another inventor
  • Replaces interference proceeding
  • Can be instituted by filing a new application along with the petition for derivation proceeding
  • Must be filed within one year of first publication of derived invention
  • The petition must sufficiently show
    • Petitioner’s invention is the same or substantially the same and is not patently distinct from the earlier applicants invention
    • Invention was derived from the inventor on the petitioners application
    • Earlier application was filed without the inventors authorization
      • Filed through an affidavit
    • Construction of petitioner’s claims accurately reflects the true invention
    • Must identify the disputed patent or application
  • The decision to institute the derivation is final and non-appealable
  • Can be terminated by a settlement with a written agreement
  • Board must find the settlement to be consistent with the evidence to terminate the proceeding
  • If the settlement is not consistent with the evidence the derivation proceeding will continue

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8.12 “First Inventor to File” – America Invents Act

First Inventor to File America Invents Act Patent Law

First Inventor to File America Invents Act Patent Law

Overview

Section 3 of the America invents act changes the patent system from a first to invent to a first to file. Applicant must still be an inventor, but is no longer required to be the first true inventor only the first inventor to file or publicly disclose the invention.

Date of invention or conception will no longer be key dates in determining patentability.

Change is aimed to being consistent with other developed countries who have first-to-file system, but ensure the individual who obtains the patent is a true inventor.

Now a patent can be obtained unless before the effective filing date:

  • The claimed invention was patented
  • Described in a printed publication
  • In public use
  • On sale
  • Available to the public in another way

Prior public use or on sale can now occur in any other country not just the United States

Derivation proceeding is designed to ensure the true inventor obtains the patent and the first inventor did not derive the invention from the second inventor

Two exceptions to first the file system

  • Public disclosure will not bar patentability if it is within one year of the effective filing date of the application and the disclosure was made by the inventor or another who obtained the disclosed subject matter from the inventor
  • Another party’s public disclosure before the effective filing date will not bar patentability if before the disclosure the disclosed subject matter was made public by the inventor or another who obtained the subject matter from the inventor

The two exceptions basically bar anyone else from obtaining a patent on the subject matter after the inventor publicly discloses the invention.

  • This public disclosure will not be considered a statutory bar if the application is filed within one year of the disclosure.

Public disclosure protects the rights of the inventor in the US for year however will most likely bar the invention being granted protection in foreign countries since absolute secrecy is needed to obtain a patent, generally speaking.

The 103 obviousness type rejections remain unchanged in this first to file system

 

Key dates

March 16, 2013

  • Implementation of the first inventor to file system
  • Applications filed on or after this date are first to file
  • Applications with one or more claims with an effective filing date after this date are also first the file

July 26, 2012

  • Final rules published for first to file

 

Key concepts

  • Changes from first to invent to first to file
  • First to file change can be translated to first to file or publicly disclose with the two exemptions
  • the first true inventor is no longer required only a true inventor
  • Derivation proceedings created to ensure true inventor obtains the patent
  • Prior public use or sale now not just the US but other foreign countries as well
  • Prior public disclosure sale by inventor or another who obtained the subject matter from the inventor does not bar patentability
  • One year disclosure likely bars protection in foreign countries, complete secrecy usually required