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| Patent Cooperation Treaty (PCT) Information |
Patent Cooperation Treaty (PCT) Information
For information concerning PCT member countries, see the notice
appearing in the Official Gazette at 1382 O.G. 61, on September 11, 2012.
For information on subject matter under Rule 39 that a particular
International Searching Authority will not search, see Annex D of the PCT
Applicants' Guide.
European Patent Office as Searching and Examining Authority
The European Patent Office (EPO) may act as the International Searching
Authority (ISA) or the International Preliminary Examining Authority (IPEA)
for an international application filed with the United States Receiving
Office or the International Bureau (IB) as Receiving Office where at least
one of the applicants is either a national or resident of the United States
of America. However, the use of the EPO is restricted. The EPO will not act
as an ISA for applications with one or more claims directed to a business
method. For the definition of what the EPO considers to be precluded
subject matter in the field of business methods, see PCT Applicants's
Guide, Annexes D(EP), E(EP) and the Official Notices (PCT Gazette) dated
May 6, 2010, page 94
(http://www.wipo.int/pct/en/official_notices/index.html). The EPO will act
as an IPEA only if it also acted as the ISA.
The search fee of the European Patent Office was decreased, effective
January 1, 2013, and was announced in the Official Gazette at 1385 O.G. 176,
on December 25, 2012.
Korean Intellectual Property Office as Searching and Examining Authority
The Korean Intellectual Property Office may act as the ISA or the IPEA for
an international application filed with the United States Receiving Office
or the International Bureau (IB) as Receiving Office where at least one of
the applicants is either a national or resident of the United States of
America. The announcement appears in the Official Gazette at 1302 O.G.
1261 on January 17, 2006.
The search fee of the Korean Intellectual Property Office was increased,
effective January 1, 2013, and was announced in the Official Gazette at
1385 O.G. 176, on December 25, 2012.
Australian Patent Office as Searching and Examining Authority
The Australian Patent Office (IP Australia) may act as the ISA or the
IPEA for an international application filed with the United States
Receiving Office or the International Bureau (IB) as Receiving Office where
at least one of the applicants is either a national or resident of the
United States of America. The announcement appears in the Offical Gazette
at 1337 O.G. 265, on December 23, 2008. However, the use of IP Australia is
restricted. IP Australia will not act as an ISA for applications with one
or more claims directed to the fields of business methods or mechanical
engineering or analogous fields of technology as defined by specified areas
of the International Patent Classification System, as indicated in the
Official Gazette at 1337 O.G. 261 on December 23, 2008, in Annex A to the
agreement between the USPTO and IP Australia. IP Australia will act as an
IPEA only if it also acted as the ISA.
The search fee of IP Australia was increased, effective January 1, 2013,
and was announced in the Official Gazette at 1385 O.G. 176, on December 25,
2012.
The Federal Service on Intellectual Property, Patents & Trademarks of
Russia as Searching and Examining Authority
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 111 |
The Federal Service on Intellectual Property, Patents & Trademarks of
Russia (Rospatent) may act as the ISA or the IPEA for an international
application filed with the United States Receiving Office or the
International Bureau (IB) as Receiving Office where at least one of the
applicants is either a national or resident of the United States of
America. The announcement appears in the Official Gazette at 1378 O.G. 162,
on May 8, 2012.
The search fee of Rospatent was increased, effective January 1, 2013,
and was announced in the Official Gazette at 1385 O.G. 176, on December 25,
2012.
Fees
The transmittal fee for the USPTO was changed to include a basic portion
and a non-electronic filing fee portion, effective November 15, 2011, and
was announced in the Federal Register on November 15, 2011. Search fees for
the USPTO were changed, effective January 12, 2009, and were announced in
the Federal Register on November 12, 2008. The fee for filing a request for
the restoration of the right of priority was established, effective
November 9, 2007, and was announced in the Federal Register on September
10, 2007.
International filing fees were increased, effective January 1, 2013,
and were announced in the Official Gazette at 1385 O.G. 176, on December 25,
2012.
The schedule of PCT fees (in U.S. dollars), as of January 1, 2013, is
as follows:
International Application (PCT Chapter I) fees:
Transmittal fee
Basic Portion $240.00
Non-electronic filing fee portion for international
applications (other than plant applications) filed
on or after 15 November 2011 other than by the
Office electronic filing system (other than a
small entity) $400.00
Non-electronic filing fee portion for international
applications (other than plant applications) filed
on or after 15 November 2011 other than by the
Office electronic filing system (small entity) $200.00
Search fee
U.S. Patent and Trademark Office (USPTO) as
International Searching Authority (ISA)
- Search fee $2,080.00
- Supplemental search fee, per additional
invention (payable only upon invitation) $2,080.00
European Patent Office as ISA $2,419.00
Korean Intellectual Property Office as ISA $1,167.00
IP Australia as ISA $2,282.00
Federal Service on Intellectual Property, Patents &
Trademarks of Russia (Rospatent) as ISA $217.00
International fees
International filing fee $1,419.00
International filing fee-filed in paper
with PCT EASY zip file or
electronically without PCT EASY zip file $1,312.00
International filing fee-filed
electronically with PCT EASY zip files $1,206.00
Supplemental fee for each page over 30 $16.00
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 112 |
Restoration of Priority
Filing a request for the restoration of the
right of priority under § 1.452 $1,410.00
International Application (PCT Chapter II) fees associated
with filing a Demand for Preliminary Examination:
Handling fee $213.00
Handling fee-90% reduction, if applicants meet criteria
specified at:
http://www.wipo.int/pct/en/fees/fee_reduction.pdf $21.30
Preliminary examination fee
USPTO as International Preliminary
Examining Authority (IPEA)
- USPTO was ISA in PCT Chapter I $600.00
- USPTO was not ISA in PCT Chapter I $750.00
- Additional preliminary examination fee,
per additional invention
(payable only upon invitation) $600.00
U.S. National Stage fees (for international applications entering
the U.S. national phase under 35 U.S.C. 371) can be found on the USPTO's
Web site (www.uspto.gov).
December 13, 2012 ANDREW H. HIRSHFELD
Deputy Commissioner for
Patent Examination Policy
United States Patent and Trademark Office
| Notice of Maintenance Fees Payable |
Notice of Maintenance Fees Payable
Title 37 Code of Federal Regulations (CFR), Section 1.362(d) provides
that maintenance fees may be paid without surcharge for the six-month
period beginning 3, 7, and 11 years after the date of issue of patents
based on applications filed on or after Dec. 12, 1980. An additional
six-month grace period is provided by 35 U.S.C. 41(b) and 37 CFR 1.362(e)
for payment of the maintenance fee with the surcharge set forth in 37 CFR
1.20(h), as amended effective Dec. 16, 1991. If the maintenance fee is
not paid in the patent requiring such payment the patent will expire on
the 4th, 8th, or 12th anniversary of the grant.
Attention is drawn to the patents that were issued on March 9, 2010
for which maintenance fees due at 3 years and six months may now be paid
The patents have patent numbers within the following ranges:
Utility Patents 7,673,348 through 7,676,847
Reissue Patents based on the above identified patents.
Attention is drawn to the patents that were issued on March 7, 2006
for which maintenance fees due at 7 years and six months may now be paid
The patents have patent numbers within the following ranges:
Utility Patents 7,007,306 through 7,010,810
Reissue Patents based on the above identified patents.
Attention is drawn to the patents that were issued on March 5, 2002
for which maintenance fees due at 11 years and six months may now be paid.
The patents have patent numbers within the following ranges:
Utility Patents 6,351,851 through 6,353,930
Reissue Patents based on the above identified patents.
No maintenance fees are required for design or plant patents.
Payments of maintenance fees in patents may be submitted electronically
over the Internet at www.uspto.gov. Click on the "Site Index" link at the
top of the homepage (www.uspto.gov), and then scroll down and click on the
"Maintenance Fees" link for more information.
Payments of maintenance fees in patents not submitted electronically
over the Internet should be mailed to "United States Patent and Trademark
Office, P.O. Box 979070, St. Louis, MO 63197-9000".
Correspondence related to maintenance fees other than payments of
maintenance fees in patents is not to be mailed to P.O. Box 979070,
St. Louis, MO 63197-9000, but must be mailed to "Mail Stop M
Correspondence, Director of the U.S. Patent and Trademark Office, P.O.
Box 1450, Alexandria, VA 22313-1450".
Patent owners must establish small entity status according to 37 CFR
1.27 if they have not done so and if they wish to pay the small entity
amount.
The current amounts of the maintenance fees due at 3 years and six
months, 7 years and six months, and 11 years and six months are set forth
in the most recently amended provisions in 37 CFR 1.20(e)-(g). To obtain
the current maintenance fee amounts, please call the USPTO Contact Center
at (800)-786-9199 or see the current USPTO fee schedule posted on the USPTO
Internet web site. At the top of the USPTO homepage at www.uspto.gov, click
on the "Site Index" link and then scroll down and click on the "Fees,
USPTO" link to find the current USPTO fee schedule.
| Notice of Expiration of Patents Due to Failure to Pay Maintenance Fee |
Notice of Expiration of Patents
Due to Failure to Pay Maintenance Fee
35 U.S.C. 41 and 37 CFR 1.362(g) provide that if the required
maintenance fee and any applicable surcharge are not paid in a patent
requiring such payment, the patent will expire at the end of the 4th, 8th
or 12th anniversary of the grant of the patent depending on the first
maintenance fee which was not paid.
According to the records of the Office, the patents listed below have
expired due to failure to pay the required maintenance fee and any
applicable surcharge.
PATENTS WHICH EXPIRED ON January 30, 2013
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
6,178,553 09/523,122 01/30/01
6,178,564 09/460,570 01/30/01
6,178,570 09/168,699 01/30/01
6,178,582 09/029,274 01/30/01
6,178,584 09/104,957 01/30/01
6,178,585 09/505,615 01/30/01
6,178,600 09/231,938 01/30/01
6,178,601 09/512,296 01/30/01
6,178,604 09/218,397 01/30/01
6,178,607 08/593,670 01/30/01
6,178,611 08/976,142 01/30/01
6,178,613 09/471,627 01/30/01
6,178,620 08/893,104 01/30/01
6,178,628 09/151,927 01/30/01
6,178,629 09/304,707 01/30/01
6,178,633 09/399,184 01/30/01
6,178,643 09/349,579 01/30/01
6,178,644 09/526,108 01/30/01
6,178,648 09/307,762 01/30/01
6,178,651 09/198,537 01/30/01
6,178,656 09/233,892 01/30/01
6,178,657 09/224,386 01/30/01
6,178,658 09/217,840 01/30/01
6,178,659 08/525,570 01/30/01
6,178,663 09/264,446 01/30/01
6,178,667 09/296,543 01/30/01
6,178,668 09/240,168 01/30/01
6,178,679 08/986,395 01/30/01
6,178,684 09/326,567 01/30/01
6,178,686 09/232,312 01/30/01
6,178,687 09/156,924 01/30/01
6,178,689 09/062,277 01/30/01
6,178,690 09/307,732 01/30/01
6,178,692 08/621,491 01/30/01
6,178,694 09/177,398 01/30/01
6,178,696 09/430,257 01/30/01
6,178,704 09/346,185 01/30/01
6,178,712 08/908,644 01/30/01
6,178,713 09/203,994 01/30/01
6,178,718 09/173,495 01/30/01
6,178,727 09/491,003 01/30/01
6,178,735 09/208,830 01/30/01
6,178,739 09/025,898 01/30/01
6,178,745 09/171,571 01/30/01
6,178,753 09/294,926 01/30/01
6,178,756 09/311,991 01/30/01
6,178,763 09/411,606 01/30/01
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
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6,178,771 09/280,743 01/30/01
6,178,779 09/280,826 01/30/01
6,178,780 08/867,043 01/30/01
6,178,782 09/502,436 01/30/01
6,178,784 09/316,831 01/30/01
6,178,785 09/610,658 01/30/01
6,178,788 09/327,636 01/30/01
6,178,795 09/520,957 01/30/01
6,178,796 09/321,844 01/30/01
6,178,801 09/270,116 01/30/01
6,178,811 09/266,681 01/30/01
6,178,814 09/241,574 01/30/01
6,178,816 09/218,586 01/30/01
6,178,818 08/945,996 01/30/01
6,178,825 09/340,515 01/30/01
6,178,831 08/882,089 01/30/01
6,178,836 09/172,136 01/30/01
6,178,843 09/124,984 01/30/01
6,178,856 09/259,775 01/30/01
6,178,859 08/968,980 01/30/01
6,178,864 09/272,409 01/30/01
6,178,872 09/236,448 01/30/01
6,178,874 09/412,641 01/30/01
6,178,877 09/378,245 01/30/01
6,178,898 09/024,331 01/30/01
6,178,908 09/483,591 01/30/01
6,178,909 09/344,421 01/30/01
6,178,914 09/125,015 01/30/01
6,178,928 09/328,824 01/30/01
6,178,929 09/295,671 01/30/01
6,178,931 09/311,166 01/30/01
6,178,932 09/421,289 01/30/01
6,178,953 09/517,973 01/30/01
6,178,977 09/131,581 01/30/01
6,178,984 09/331,126 01/30/01
6,178,993 09/447,906 01/30/01
6,178,999 09/294,135 01/30/01
6,179,005 09/425,687 01/30/01
6,179,006 09/380,872 01/30/01
6,179,008 08/930,205 01/30/01
6,179,013 09/422,667 01/30/01
6,179,017 09/491,648 01/30/01
6,179,018 08/931,424 01/30/01
6,179,020 09/482,412 01/30/01
6,179,021 09/419,961 01/30/01
6,179,028 09/239,168 01/30/01
6,179,037 09/356,037 01/30/01
6,179,046 09/418,633 01/30/01
6,179,047 09/210,264 01/30/01
6,179,049 09/305,759 01/30/01
6,179,056 09/241,721 01/30/01
6,179,076 09/166,531 01/30/01
6,179,078 09/546,401 01/30/01
6,179,081 09/229,291 01/30/01
6,179,090 08/753,190 01/30/01
6,179,096 08/968,687 01/30/01
6,179,098 09/274,770 01/30/01
6,179,107 09/435,673 01/30/01
6,179,108 09/379,441 01/30/01
6,179,115 09/094,893 01/30/01
6,179,120 09/401,518 01/30/01
6,179,123 09/466,070 01/30/01
6,179,128 09/166,063 01/30/01
6,179,134 09/435,886 01/30/01
6,179,135 09/422,767 01/30/01
6,179,140 09/273,838 01/30/01
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
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6,179,141 08/692,752 01/30/01
6,179,155 08/890,701 01/30/01
6,179,157 09/319,705 01/30/01
6,179,159 09/233,284 01/30/01
6,179,165 09/338,374 01/30/01
6,179,170 09/301,379 01/30/01
6,179,179 09/375,992 01/30/01
6,179,180 09/348,228 01/30/01
6,179,183 09/346,216 01/30/01
6,179,197 09/469,906 01/30/01
6,179,212 09/244,028 01/30/01
6,179,222 09/420,628 01/30/01
6,179,233 09/171,355 01/30/01
6,179,235 09/144,421 01/30/01
6,179,250 09/247,961 01/30/01
6,179,255 09/359,454 01/30/01
6,179,256 09/406,323 01/30/01
6,179,257 09/172,005 01/30/01
6,179,258 09/260,898 01/30/01
6,179,262 09/178,440 01/30/01
6,179,264 09/359,541 01/30/01
6,179,266 09/358,518 01/30/01
6,179,278 09/444,107 01/30/01
6,179,283 09/143,374 01/30/01
6,179,288 09/159,084 01/30/01
6,179,292 09/159,206 01/30/01
6,179,295 09/489,994 01/30/01
6,179,298 09/184,816 01/30/01
6,179,300 09/306,071 01/30/01
6,179,304 09/203,871 01/30/01
6,179,305 09/036,643 01/30/01
6,179,309 09/009,185 01/30/01
6,179,316 09/257,779 01/30/01
6,179,318 09/357,008 01/30/01
6,179,324 09/228,313 01/30/01
6,179,325 09/296,244 01/30/01
6,179,328 09/059,432 01/30/01
6,179,344 09/255,760 01/30/01
6,179,360 09/176,831 01/30/01
6,179,365 09/293,598 01/30/01
6,179,373 09/213,588 01/30/01
6,179,374 09/551,664 01/30/01
6,179,375 09/263,991 01/30/01
6,179,379 09/254,397 01/30/01
6,179,382 09/406,480 01/30/01
6,179,402 09/457,081 01/30/01
6,179,404 09/422,794 01/30/01
6,179,410 08/952,911 01/30/01
6,179,412 08/713,454 01/30/01
6,179,422 09/300,194 01/30/01
6,179,423 09/210,787 01/30/01
6,179,434 09/243,784 01/30/01
6,179,435 09/403,632 01/30/01
6,179,437 09/206,447 01/30/01
6,179,444 09/203,715 01/30/01
6,179,447 09/025,359 01/30/01
6,179,448 09/025,213 01/30/01
6,179,451 09/252,867 01/30/01
6,179,467 09/256,285 01/30/01
6,179,468 09/377,978 01/30/01
6,179,473 09/308,758 01/30/01
6,179,479 09/350,486 01/30/01
6,179,480 09/334,388 01/30/01
6,179,481 09/440,062 01/30/01
6,179,484 08/076,504 01/30/01
6,179,487 08/897,407 01/30/01
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US PATENT AND TRADEMARK OFFICE |
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6,179,492 09/097,558 01/30/01
6,179,494 08/714,673 01/30/01
6,179,496 09/472,788 01/30/01
6,179,500 09/407,408 01/30/01
6,179,504 09/505,526 01/30/01
6,179,506 09/342,658 01/30/01
6,179,511 07/691,053 01/30/01
6,179,539 09/394,390 01/30/01
6,179,540 09/548,332 01/30/01
6,179,553 09/273,400 01/30/01
6,179,554 09/430,321 01/30/01
6,179,555 09/166,954 01/30/01
6,179,558 09/391,864 01/30/01
6,179,561 09/203,744 01/30/01
6,179,562 09/355,765 01/30/01
6,179,564 09/288,933 01/30/01
6,179,569 09/142,292 01/30/01
6,179,577 09/273,248 01/30/01
6,179,593 09/044,169 01/30/01
6,179,595 09/312,349 01/30/01
6,179,597 09/236,280 01/30/01
6,179,602 09/196,805 01/30/01
6,179,615 09/277,200 01/30/01
6,179,616 09/300,469 01/30/01
6,179,624 09/434,593 01/30/01
6,179,628 09/355,971 01/30/01
6,179,630 09/420,512 01/30/01
6,179,642 09/309,541 01/30/01
6,179,651 09/053,190 01/30/01
6,179,652 09/430,364 01/30/01
6,179,664 09/506,388 01/30/01
6,179,669 09/351,154 01/30/01
6,179,675 09/391,602 01/30/01
6,179,676 09/453,658 01/30/01
6,179,677 09/527,340 01/30/01
6,179,681 09/287,697 01/30/01
6,179,682 09/195,786 01/30/01
6,179,684 09/086,637 01/30/01
6,179,686 08/916,256 01/30/01
6,179,697 09/266,900 01/30/01
6,179,702 09/181,099 01/30/01
6,179,734 09/353,725 01/30/01
6,179,746 09/334,849 01/30/01
6,179,747 09/235,923 01/30/01
6,179,749 09/040,694 01/30/01
6,179,757 09/208,186 01/30/01
6,179,759 09/406,295 01/30/01
6,179,760 09/246,710 01/30/01
6,179,763 09/265,816 01/30/01
6,179,765 09/183,284 01/30/01
6,179,775 09/340,227 01/30/01
6,179,777 09/200,864 01/30/01
6,179,786 09/385,387 01/30/01
6,179,788 08/673,674 01/30/01
6,179,792 09/157,755 01/30/01
6,179,794 09/195,974 01/30/01
6,179,797 09/039,521 01/30/01
6,179,798 09/587,829 01/30/01
6,179,809 09/156,964 01/30/01
6,179,813 09/066,223 01/30/01
6,179,817 09/238,707 01/30/01
6,179,821 09/099,282 01/30/01
6,179,825 08/818,120 01/30/01
6,179,826 08/741,228 01/30/01
6,179,831 09/301,576 01/30/01
6,179,835 09/300,936 01/30/01
| March 19, 2013 |
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6,179,836 09/181,936 01/30/01
6,179,846 09/397,860 01/30/01
6,179,847 09/476,376 01/30/01
6,179,856 08/994,697 01/30/01
6,179,863 09/294,154 01/30/01
6,179,864 09/170,500 01/30/01
6,179,870 09/180,203 01/30/01
6,179,872 09/042,549 01/30/01
6,179,874 09/298,524 01/30/01
6,179,876 09/432,901 01/30/01
6,179,882 09/155,211 01/30/01
6,179,886 09/262,609 01/30/01
6,179,891 09/130,035 01/30/01
6,179,892 09/249,286 01/30/01
6,179,904 09/205,361 01/30/01
6,179,905 09/286,795 01/30/01
6,179,930 09/011,816 01/30/01
6,179,932 08/227,686 01/30/01
6,179,938 09/175,204 01/30/01
6,179,949 09/058,842 01/30/01
6,179,954 09/295,519 01/30/01
6,179,959 09/434,011 01/30/01
6,179,964 08/922,995 01/30/01
6,179,966 09/192,517 01/30/01
6,179,968 09/147,556 01/30/01
6,179,982 09/183,611 01/30/01
6,179,984 09/297,400 01/30/01
6,179,986 09/186,942 01/30/01
6,179,991 09/256,323 01/30/01
6,179,993 08/803,209 01/30/01
6,179,996 09/316,508 01/30/01
6,180,003 09/448,014 01/30/01
6,180,004 09/271,952 01/30/01
6,180,005 09/252,479 01/30/01
6,180,006 09/249,034 01/30/01
6,180,007 09/016,518 01/30/01
6,180,012 08/816,792 01/30/01
6,180,021 09/421,232 01/30/01
6,180,032 09/145,901 01/30/01
6,180,035 09/304,059 01/30/01
6,180,037 08/473,369 01/30/01
6,180,038 09/186,519 01/30/01
6,180,039 09/362,986 01/30/01
6,180,042 08/744,987 01/30/01
6,180,048 09/325,907 01/30/01
6,180,049 09/340,887 01/30/01
6,180,051 08/822,893 01/30/01
6,180,052 08/837,067 01/30/01
6,180,056 09/208,473 01/30/01
6,180,063 09/252,325 01/30/01
6,180,067 09/160,188 01/30/01
6,180,068 09/311,395 01/30/01
6,180,070 09/110,220 01/30/01
6,180,072 09/306,134 01/30/01
6,180,075 09/056,641 01/30/01
6,180,081 09/275,798 01/30/01
6,180,082 09/198,562 01/30/01
6,180,084 09/139,802 01/30/01
6,180,085 09/484,318 01/30/01
6,180,086 09/484,319 01/30/01
6,180,087 09/484,320 01/30/01
6,180,105 09/282,763 01/30/01
6,180,106 09/349,100 01/30/01
6,180,108 09/209,915 01/30/01
6,180,109 08/750,717 01/30/01
6,180,112 09/298,367 01/30/01
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 119 |
6,180,114 09/219,057 01/30/01
6,180,118 08/931,561 01/30/01
6,180,129 08/956,424 01/30/01
6,180,136 09/190,049 01/30/01
6,180,142 09/138,435 01/30/01
6,180,143 09/147,987 01/30/01
6,180,156 09/146,964 01/30/01
6,180,160 09/398,512 01/30/01
6,180,162 09/341,177 01/30/01
6,180,163 09/228,997 01/30/01
6,180,173 09/193,282 01/30/01
6,180,180 09/142,924 01/30/01
6,180,186 09/371,872 01/30/01
6,180,192 08/823,222 01/30/01
6,180,193 09/602,237 01/30/01
6,180,201 09/360,749 01/30/01
6,180,204 08/909,796 01/30/01
6,180,207 09/228,585 01/30/01
6,180,213 09/152,540 01/30/01
6,180,221 08/931,130 01/30/01
6,180,227 09/217,751 01/30/01
6,180,230 09/091,021 01/30/01
6,180,250 08/994,967 01/30/01
6,180,252 08/911,716 01/30/01
6,180,255 09/019,106 01/30/01
6,180,259 09/147,290 01/30/01
6,180,263 09/024,075 01/30/01
6,180,268 09/042,916 01/30/01
6,180,284 09/092,192 01/30/01
6,180,286 09/154,006 01/30/01
6,180,287 09/101,971 01/30/01
6,180,289 09/122,208 01/30/01
6,180,297 08/432,291 01/30/01
6,180,314 09/085,851 01/30/01
6,180,315 09/458,771 01/30/01
6,180,318 09/314,554 01/30/01
6,180,320 09/371,499 01/30/01
6,180,332 09/469,226 01/30/01
6,180,335 09/410,341 01/30/01
6,180,339 08/871,678 01/30/01
6,180,351 09/359,536 01/30/01
6,180,355 09/306,927 01/30/01
6,180,360 09/333,645 01/30/01
6,180,365 09/187,710 01/30/01
6,180,375 09/384,924 01/30/01
6,180,377 08/569,147 01/30/01
6,180,383 09/012,431 01/30/01
6,180,384 09/160,494 01/30/01
6,180,387 08/964,652 01/30/01
6,180,393 09/380,319 01/30/01
6,180,396 09/264,671 01/30/01
6,180,399 09/005,325 01/30/01
6,180,402 08/754,491 01/30/01
6,180,403 09/429,093 01/30/01
6,180,420 09/208,543 01/30/01
6,180,439 08/784,290 01/30/01
6,180,444 09/025,710 01/30/01
6,180,449 09/232,511 01/30/01
6,180,458 09/095,260 01/30/01
6,180,459 09/227,974 01/30/01
6,180,484 09/140,776 01/30/01
6,180,497 09/357,977 01/30/01
6,180,500 09/181,461 01/30/01
6,180,501 09/418,036 01/30/01
6,180,506 09/152,836 01/30/01
6,180,511 09/310,557 01/30/01
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 120 |
6,180,513 08/910,007 01/30/01
6,180,533 09/545,700 01/30/01
6,180,536 09/090,840 01/30/01
6,180,538 09/426,240 01/30/01
6,180,542 09/418,188 01/30/01
6,180,544 09/171,312 01/30/01
6,180,545 09/071,742 01/30/01
6,180,548 09/132,087 01/30/01
6,180,552 09/288,093 01/30/01
6,180,554 09/338,418 01/30/01
6,180,555 09/168,920 01/30/01
6,180,557 09/209,834 01/30/01
6,180,559 09/260,115 01/30/01
6,180,560 09/134,689 01/30/01
6,180,565 08/720,752 01/30/01
6,180,566 09/031,730 01/30/01
6,180,571 08/901,805 01/30/01
6,180,574 09/571,797 01/30/01
6,180,596 09/015,573 01/30/01
6,180,598 09/413,933 01/30/01
6,180,602 08/775,882 01/30/01
6,180,603 08/780,335 01/30/01
6,180,610 08/458,833 01/30/01
6,180,615 09/338,183 01/30/01
6,180,619 09/098,393 01/30/01
6,180,625 09/274,448 01/30/01
6,180,629 09/134,425 01/30/01
6,180,631 09/166,723 01/30/01
6,180,632 09/198,718 01/30/01
6,180,635 09/117,426 01/30/01
6,180,636 09/242,592 01/30/01
6,180,643 09/269,600 01/30/01
6,180,646 09/140,922 01/30/01
6,180,647 08/983,004 01/30/01
6,180,649 09/171,530 01/30/01
6,180,656 09/284,032 01/30/01
6,180,657 08/154,903 01/30/01
6,180,660 09/078,087 01/30/01
6,180,662 09/306,067 01/30/01
6,180,665 08/648,001 01/30/01
6,180,669 09/286,236 01/30/01
6,180,671 09/248,471 01/30/01
6,180,674 09/158,892 01/30/01
6,180,678 09/374,736 01/30/01
6,180,680 09/446,806 01/30/01
6,180,681 09/202,553 01/30/01
6,180,690 09/186,230 01/30/01
6,180,713 09/403,276 01/30/01
6,180,717 09/147,431 01/30/01
6,180,724 09/330,563 01/30/01
6,180,730 09/210,469 01/30/01
6,180,731 09/000,011 01/30/01
6,180,732 08/685,038 01/30/01
6,180,739 09/057,766 01/30/01
6,180,744 09/171,263 01/30/01
6,180,750 09/319,939 01/30/01
6,180,751 09/499,518 01/30/01
6,180,759 09/544,680 01/30/01
6,180,766 08/161,674 01/30/01
6,180,767 08/779,072 01/30/01
6,180,773 09/180,077 01/30/01
6,180,780 09/246,908 01/30/01
6,180,788 09/430,804 01/30/01
6,180,794 09/418,847 01/30/01
6,180,801 09/277,941 01/30/01
6,180,802 09/077,099 01/30/01
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 121 |
6,180,803 09/101,775 01/30/01
6,180,806 09/401,260 01/30/01
6,180,807 09/403,439 01/30/01
6,180,814 09/185,535 01/30/01
6,180,818 09/432,770 01/30/01
6,180,822 09/453,536 01/30/01
6,180,823 09/187,832 01/30/01
6,180,829 09/465,563 01/30/01
6,180,831 09/438,376 01/30/01
6,180,838 08/618,734 01/30/01
6,180,839 09/265,923 01/30/01
6,180,844 09/264,678 01/30/01
6,180,846 09/149,849 01/30/01
6,180,847 08/422,676 01/30/01
6,180,860 09/520,179 01/30/01
6,180,871 09/343,069 01/30/01
6,180,875 09/202,446 01/30/01
6,180,883 09/246,518 01/30/01
6,180,888 08/792,790 01/30/01
6,180,894 09/074,640 01/30/01
6,180,895 09/466,188 01/30/01
6,180,900 09/253,404 01/30/01
6,180,903 09/430,340 01/30/01
6,180,905 09/476,532 01/30/01
6,180,912 09/052,774 01/30/01
6,180,929 09/129,965 01/30/01
6,180,945 06/646,325 01/30/01
6,180,948 09/147,160 01/30/01
6,180,955 09/097,236 01/30/01
6,180,963 09/339,805 01/30/01
6,180,990 09/277,694 01/30/01
6,181,000 09/028,060 01/30/01
6,181,005 09/240,691 01/30/01
6,181,006 09/086,667 01/30/01
6,181,007 09/324,318 01/30/01
6,181,009 09/249,089 01/30/01
6,181,015 09/255,018 01/30/01
6,181,016 09/327,877 01/30/01
6,181,034 09/508,357 01/30/01
6,181,058 09/190,187 01/30/01
6,181,060 09/114,648 01/30/01
6,181,065 09/103,365 01/30/01
6,181,066 09/164,102 01/30/01
6,181,078 09/377,712 01/30/01
6,181,081 09/230,098 01/30/01
6,181,086 09/067,352 01/30/01
6,181,091 09/359,930 01/30/01
6,181,094 09/405,648 01/30/01
6,181,096 09/336,705 01/30/01
6,181,102 09/191,685 01/30/01
6,181,107 09/191,388 01/30/01
6,181,123 09/267,879 01/30/01
6,181,131 09/122,401 01/30/01
6,181,133 09/064,881 01/30/01
6,181,135 09/207,456 01/30/01
6,181,142 09/119,803 01/30/01
6,181,143 09/307,864 01/30/01
6,181,145 09/170,634 01/30/01
6,181,169 09/429,334 01/30/01
6,181,170 09/350,164 01/30/01
6,181,176 09/272,348 01/30/01
6,181,190 09/205,606 01/30/01
6,181,194 09/133,240 01/30/01
6,181,209 09/206,189 01/30/01
6,181,215 09/519,542 01/30/01
6,181,228 09/436,830 01/30/01
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 122 |
6,181,230 09/158,012 01/30/01
6,181,238 09/037,496 01/30/01
6,181,259 09/518,785 01/30/01
6,181,267 09/163,811 01/30/01
6,181,282 09/494,109 01/30/01
6,181,285 09/577,315 01/30/01
6,181,289 09/420,265 01/30/01
6,181,302 08/797,097 01/30/01
6,181,308 08/701,306 01/30/01
6,181,312 09/229,214 01/30/01
6,181,323 09/010,937 01/30/01
6,181,327 09/129,937 01/30/01
6,181,337 08/745,285 01/30/01
6,181,343 08/996,678 01/30/01
6,181,357 09/024,476 01/30/01
6,181,359 09/572,837 01/30/01
6,181,365 09/403,874 01/30/01
6,181,368 08/982,642 01/30/01
6,181,370 09/056,032 01/30/01
6,181,371 08/794,122 01/30/01
6,181,373 09/013,367 01/30/01
6,181,375 08/769,316 01/30/01
6,181,388 08/824,785 01/30/01
6,181,392 09/579,360 01/30/01
6,181,393 09/220,364 01/30/01
6,181,395 09/366,385 01/30/01
6,181,397 09/048,754 01/30/01
6,181,399 09/236,642 01/30/01
6,181,401 09/130,693 01/30/01
6,181,410 09/085,677 01/30/01
6,181,412 09/335,912 01/30/01
6,181,415 09/427,685 01/30/01
6,181,424 09/211,770 01/30/01
6,181,428 09/396,230 01/30/01
6,181,431 09/215,374 01/30/01
6,181,439 09/224,689 01/30/01
6,181,440 08/746,620 01/30/01
6,181,476 09/359,620 01/30/01
6,181,477 09/354,451 01/30/01
6,181,485 09/338,888 01/30/01
6,181,488 09/562,692 01/30/01
6,181,491 09/366,373 01/30/01
6,181,494 09/202,012 01/30/01
6,181,497 08/570,878 01/30/01
6,181,498 08/375,850 01/30/01
6,181,499 09/056,381 01/30/01
6,181,500 09/062,140 01/30/01
6,181,501 08/992,558 01/30/01
6,181,509 09/298,391 01/30/01
6,181,512 09/168,975 01/30/01
6,181,521 09/071,119 01/30/01
6,181,522 09/210,532 01/30/01
6,181,524 08/533,450 01/30/01
6,181,531 09/189,301 01/30/01
6,181,535 09/260,722 01/30/01
6,181,541 09/177,795 01/30/01
6,181,543 09/273,192 01/30/01
6,181,548 09/344,289 01/30/01
6,181,589 09/346,328 01/30/01
6,181,593 09/225,021 01/30/01
6,181,600 09/342,225 01/30/01
6,181,617 09/483,549 01/30/01
6,181,618 09/037,681 01/30/01
6,181,645 09/270,491 01/30/01
6,181,649 09/352,070 01/30/01
6,181,656 08/310,107 01/30/01
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 123 |
6,181,663 09/068,039 01/30/01
6,181,664 09/525,121 01/30/01
6,181,668 09/125,987 01/30/01
6,181,669 09/001,461 01/30/01
6,181,671 09/203,527 01/30/01
6,181,677 09/025,032 01/30/01
6,181,680 08/753,374 01/30/01
6,181,687 09/176,917 01/30/01
6,181,698 08/890,350 01/30/01
6,181,700 08/895,242 01/30/01
6,181,701 08/994,717 01/30/01
6,181,725 09/131,807 01/30/01
6,181,729 09/330,944 01/30/01
6,181,732 09/069,418 01/30/01
6,181,733 09/194,009 01/30/01
6,181,740 08/972,175 01/30/01
6,181,743 09/275,362 01/30/01
6,181,755 08/858,990 01/30/01
6,181,756 09/468,583 01/30/01
6,181,765 09/208,874 01/30/01
6,181,768 09/325,909 01/30/01
6,181,779 08/785,781 01/30/01
6,181,783 09/191,760 01/30/01
6,181,799 09/011,835 01/30/01
6,181,804 09/101,486 01/30/01
6,181,809 08/580,389 01/30/01
6,181,819 08/426,628 01/30/01
6,181,831 08/721,622 01/30/01
6,181,841 09/481,289 01/30/01
6,181,842 09/480,342 01/30/01
6,181,846 09/340,858 01/30/01
6,181,847 09/307,994 01/30/01
6,181,868 08/978,415 01/30/01
6,181,873 08/484,019 01/30/01
6,181,875 09/379,596 01/30/01
6,181,877 09/413,234 01/30/01
6,181,880 09/258,823 01/30/01
6,181,882 09/394,312 01/30/01
6,181,894 08/771,285 01/30/01
6,181,897 09/425,227 01/30/01
6,181,900 09/357,986 01/30/01
6,181,915 08/930,753 01/30/01
6,181,916 09/140,890 01/30/01
6,181,933 09/187,633 01/30/01
6,181,939 09/404,613 01/30/01
6,181,953 08/810,711 01/30/01
6,181,959 09/155,586 01/30/01
6,181,961 09/212,380 01/30/01
6,181,974 09/280,756 01/30/01
6,181,976 09/056,637 01/30/01
6,181,979 09/005,667 01/30/01
6,181,982 09/394,677 01/30/01
6,181,984 09/027,408 01/30/01
6,181,991 09/300,270 01/30/01
6,181,997 09/283,055 01/30/01
6,182,005 09/304,037 01/30/01
6,182,015 09/268,261 01/30/01
6,182,021 09/132,308 01/30/01
6,182,039 09/047,274 01/30/01
6,182,043 08/795,826 01/30/01
6,182,055 08/943,806 01/30/01
6,182,057 08/990,050 01/30/01
6,182,065 09/064,628 01/30/01
6,182,070 09/137,621 01/30/01
6,182,071 09/081,276 01/30/01
6,182,099 09/031,048 01/30/01
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 124 |
6,182,101 08/524,103 01/30/01
6,182,123 08/933,488 01/30/01
6,182,130 09/080,112 01/30/01
6,182,138 08/800,375 01/30/01
6,182,143 09/104,811 01/30/01
6,182,156 08/616,429 01/30/01
6,182,167 09/176,766 01/30/01
6,182,181 08/999,178 01/30/01
6,182,184 09/510,213 01/30/01
6,182,185 09/198,026 01/30/01
6,182,194 08/156,011 01/30/01
6,182,200 09/470,702 01/30/01
6,182,205 09/209,656 01/30/01
6,182,207 09/213,522 01/30/01
6,182,240 09/020,723 01/30/01
6,182,243 08/033,731 01/30/01
PATENTS WHICH EXPIRED ON January 25, 2013
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
6,845,521 10/179,138 01/25/05
6,845,527 10/826,017 01/25/05
6,845,529 10/382,952 01/25/05
6,845,531 10/343,757 01/25/05
6,845,532 10/637,454 01/25/05
6,845,534 10/661,192 01/25/05
6,845,535 09/947,615 01/25/05
6,845,540 10/136,952 01/25/05
6,845,546 10/601,153 01/25/05
6,845,550 10/375,264 01/25/05
6,845,555 09/466,428 01/25/05
6,845,558 10/650,293 01/25/05
6,845,562 10/300,129 01/25/05
6,845,569 10/787,840 01/25/05
6,845,574 09/172,830 01/25/05
6,845,575 10/658,242 01/25/05
6,845,579 10/452,249 01/25/05
6,845,581 09/771,430 01/25/05
6,845,590 10/418,970 01/25/05
6,845,595 10/276,314 01/25/05
6,845,596 10/725,142 01/25/05
6,845,597 10/445,029 01/25/05
6,845,607 10/338,528 01/25/05
6,845,616 10/469,116 01/25/05
6,845,618 10/398,805 01/25/05
6,845,621 10/275,049 01/25/05
6,845,628 10/721,189 01/25/05
6,845,631 10/619,675 01/25/05
6,845,637 10/079,889 01/25/05
6,845,641 10/209,881 01/25/05
6,845,648 10/752,273 01/25/05
6,845,653 10/748,605 01/25/05
6,845,658 10/168,867 01/25/05
6,845,677 10/048,415 01/25/05
6,845,680 10/451,093 01/25/05
6,845,685 10/157,771 01/25/05
6,845,692 10/674,084 01/25/05
6,845,695 10/446,705 01/25/05
6,845,705 10/816,437 01/25/05
6,845,706 10/223,475 01/25/05
6,845,708 10/653,356 01/25/05
6,845,714 10/751,494 01/25/05
6,845,718 10/325,253 01/25/05
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 125 |
6,845,719 10/456,644 01/25/05
6,845,736 10/209,864 01/25/05
6,845,738 10/739,293 01/25/05
6,845,748 10/329,439 01/25/05
6,845,764 10/753,597 01/25/05
6,845,771 10/141,218 01/25/05
6,845,774 09/827,262 01/25/05
6,845,777 10/261,541 01/25/05
6,845,783 10/157,691 01/25/05
6,845,785 10/675,105 01/25/05
6,845,790 10/630,084 01/25/05
6,845,794 10/704,134 01/25/05
6,845,799 10/257,180 01/25/05
6,845,807 10/605,333 01/25/05
6,845,810 10/269,659 01/25/05
6,845,812 10/325,115 01/25/05
6,845,818 10/425,512 01/25/05
6,845,821 10/332,193 01/25/05
6,845,823 10/470,743 01/25/05
6,845,824 10/427,471 01/25/05
6,845,835 10/210,044 01/25/05
6,845,842 10/302,925 01/25/05
6,845,843 10/345,508 01/25/05
6,845,844 10/088,815 01/25/05
6,845,851 10/761,677 01/25/05
6,845,853 10/381,241 01/25/05
6,845,854 10/281,439 01/25/05
6,845,855 10/465,081 01/25/05
6,845,873 10/621,475 01/25/05
6,845,876 10/176,332 01/25/05
6,845,879 10/344,811 01/25/05
6,845,880 10/243,424 01/25/05
6,845,883 10/272,331 01/25/05
6,845,885 10/265,828 01/25/05
6,845,890 10/122,830 01/25/05
6,845,892 10/203,042 01/25/05
6,845,897 10/290,818 01/25/05
6,845,900 10/440,658 01/25/05
6,845,908 10/101,387 01/25/05
6,845,911 10/289,179 01/25/05
6,845,918 10/611,511 01/25/05
6,845,919 09/710,899 01/25/05
6,845,923 10/698,146 01/25/05
6,845,936 10/895,360 01/25/05
6,845,938 09/955,151 01/25/05
6,845,939 10/693,800 01/25/05
6,845,946 10/781,410 01/25/05
6,845,947 10/681,499 01/25/05
6,845,948 10/361,957 01/25/05
6,845,952 10/340,480 01/25/05
6,845,956 10/776,765 01/25/05
6,845,960 10/466,999 01/25/05
6,845,969 10/339,979 01/25/05
6,845,981 10/342,883 01/25/05
6,845,983 10/243,638 01/25/05
6,845,992 10/049,354 01/25/05
6,845,999 10/464,972 01/25/05
6,846,003 10/301,958 01/25/05
6,846,004 10/253,358 01/25/05
6,846,011 10/391,251 01/25/05
6,846,023 10/254,085 01/25/05
6,846,028 09/681,814 01/25/05
6,846,031 10/622,138 01/25/05
6,846,036 10/284,751 01/25/05
6,846,037 10/433,552 01/25/05
6,846,041 10/641,870 01/25/05
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 126 |
6,846,045 10/409,892 01/25/05
6,846,054 09/985,998 01/25/05
6,846,070 10/149,105 01/25/05
6,846,071 10/470,449 01/25/05
6,846,076 10/409,941 01/25/05
6,846,080 10/635,577 01/25/05
6,846,091 10/255,003 01/25/05
6,846,092 10/073,394 01/25/05
6,846,107 10/198,799 01/25/05
6,846,109 10/392,297 01/25/05
6,846,110 10/189,151 01/25/05
6,846,111 10/034,616 01/25/05
6,846,143 10/354,292 01/25/05
6,846,148 10/279,244 01/25/05
6,846,150 10/353,610 01/25/05
6,846,154 10/097,403 01/25/05
6,846,168 10/699,955 01/25/05
6,846,174 10/065,079 01/25/05
6,846,185 10/640,318 01/25/05
6,846,188 10/617,056 01/25/05
6,846,190 10/134,226 01/25/05
6,846,192 10/645,898 01/25/05
6,846,193 10/426,658 01/25/05
6,846,194 10/302,546 01/25/05
6,846,197 10/464,040 01/25/05
6,846,200 10/820,801 01/25/05
6,846,227 10/085,747 01/25/05
6,846,232 10/033,436 01/25/05
6,846,236 10/341,241 01/25/05
6,846,245 10/400,258 01/25/05
6,846,256 10/243,454 01/25/05
6,846,257 10/316,668 01/25/05
6,846,262 10/721,309 01/25/05
6,846,276 10/034,097 01/25/05
6,846,277 10/062,832 01/25/05
6,846,284 10/319,281 01/25/05
6,846,292 10/078,903 01/25/05
6,846,299 10/171,655 01/25/05
6,846,310 10/071,960 01/25/05
6,846,316 10/001,538 01/25/05
6,846,328 10/418,576 01/25/05
6,846,330 10/310,521 01/25/05
6,846,346 09/830,830 01/25/05
6,846,352 09/914,482 01/25/05
6,846,356 10/311,377 01/25/05
6,846,361 10/351,239 01/25/05
6,846,362 10/093,123 01/25/05
6,846,367 10/364,832 01/25/05
6,846,372 10/401,890 01/25/05
6,846,377 10/189,746 01/25/05
6,846,378 10/631,909 01/25/05
6,846,381 10/215,335 01/25/05
6,846,390 10/237,826 01/25/05
6,846,392 10/009,744 01/25/05
6,846,396 10/215,968 01/25/05
6,846,400 10/043,745 01/25/05
6,846,406 10/412,116 01/25/05
6,846,409 10/380,314 01/25/05
6,846,419 10/348,161 01/25/05
6,846,422 10/124,147 01/25/05
6,846,425 10/260,509 01/25/05
6,846,429 10/050,281 01/25/05
6,846,436 10/019,858 01/25/05
6,846,444 10/319,065 01/25/05
6,846,451 10/122,725 01/25/05
6,846,463 09/914,062 01/25/05
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 127 |
6,846,474 10/361,176 01/25/05
6,846,479 10/448,345 01/25/05
6,846,482 09/928,463 01/25/05
6,846,488 09/825,105 01/25/05
6,846,499 10/189,888 01/25/05
6,846,506 10/773,970 01/25/05
6,846,512 09/950,757 01/25/05
6,846,514 10/849,273 01/25/05
6,846,517 10/262,068 01/25/05
6,846,522 09/407,218 01/25/05
6,846,524 10/105,737 01/25/05
6,846,526 09/770,782 01/25/05
6,846,530 10/091,152 01/25/05
6,846,541 10/668,251 01/25/05
6,846,544 10/281,714 01/25/05
6,846,551 09/470,386 01/25/05
6,846,552 10/203,857 01/25/05
6,846,557 10/160,025 01/25/05
6,846,558 10/059,852 01/25/05
6,846,560 10/428,800 01/25/05
6,846,562 10/635,262 01/25/05
6,846,563 10/276,698 01/25/05
6,846,566 10/340,629 01/25/05
6,846,568 10/195,434 01/25/05
6,846,571 10/264,144 01/25/05
6,846,578 10/353,071 01/25/05
6,846,582 10/292,469 01/25/05
6,846,583 10/356,465 01/25/05
6,846,591 09/937,067 01/25/05
6,846,602 10/264,837 01/25/05
6,846,606 10/719,728 01/25/05
6,846,608 09/998,685 01/25/05
6,846,611 10/085,692 01/25/05
6,846,621 09/937,862 01/25/05
6,846,623 08/836,734 01/25/05
6,846,633 10/241,384 01/25/05
6,846,636 09/700,455 01/25/05
6,846,637 09/719,646 01/25/05
6,846,639 09/993,870 01/25/05
6,846,642 09/948,094 01/25/05
6,846,644 09/861,098 01/25/05
6,846,646 09/220,913 01/25/05
6,846,657 08/928,893 01/25/05
6,846,665 09/913,240 01/25/05
6,846,667 09/830,807 01/25/05
6,846,674 10/196,000 01/25/05
6,846,676 09/328,130 01/25/05
6,846,679 09/806,564 01/25/05
6,846,682 09/907,314 01/25/05
6,846,685 10/372,410 01/25/05
6,846,687 10/692,473 01/25/05
6,846,699 09/987,409 01/25/05
6,846,722 10/616,155 01/25/05
6,846,725 10/351,534 01/25/05
6,846,727 09/861,590 01/25/05
6,846,735 10/235,270 01/25/05
6,846,736 10/227,325 01/25/05
6,846,738 10/099,020 01/25/05
6,846,759 09/961,676 01/25/05
6,846,767 10/123,139 01/25/05
6,846,768 10/397,542 01/25/05
6,846,770 10/073,839 01/25/05
6,846,771 10/359,263 01/25/05
6,846,776 10/224,872 01/25/05
6,846,780 10/149,584 01/25/05
6,846,785 10/210,105 01/25/05
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 128 |
6,846,792 10/325,309 01/25/05
6,846,795 09/999,637 01/25/05
6,846,800 09/050,366 01/25/05
6,846,801 09/158,554 01/25/05
6,846,802 09/825,399 01/25/05
6,846,803 09/744,441 01/25/05
6,846,804 09/894,030 01/25/05
6,846,805 10/367,599 01/25/05
6,846,807 10/627,451 01/25/05
6,846,808 09/845,511 01/25/05
6,846,813 09/895,843 01/25/05
6,846,814 10/240,852 01/25/05
6,846,815 10/357,240 01/25/05
6,846,816 10/347,714 01/25/05
6,846,822 10/169,656 01/25/05
6,846,823 10/817,332 01/25/05
6,846,824 09/816,584 01/25/05
6,846,825 10/049,131 01/25/05
6,846,826 10/105,265 01/25/05
6,846,827 10/070,360 01/25/05
6,846,828 10/288,968 01/25/05
6,846,829 10/121,758 01/25/05
6,846,832 10/625,116 01/25/05
6,846,834 10/004,287 01/25/05
6,846,835 10/332,617 01/25/05
6,846,837 10/178,074 01/25/05
6,846,843 10/387,843 01/25/05
6,846,848 10/226,752 01/25/05
6,846,855 09/847,009 01/25/05
6,846,862 10/311,615 01/25/05
6,846,865 10/247,569 01/25/05
6,846,871 10/424,025 01/25/05
6,846,877 10/329,594 01/25/05
6,846,896 10/690,526 01/25/05
6,846,900 10/089,240 01/25/05
6,846,902 10/268,934 01/25/05
6,846,903 10/312,591 01/25/05
6,846,909 10/437,589 01/25/05
6,846,918 10/351,468 01/25/05
6,846,923 09/956,742 01/25/05
6,846,925 10/705,198 01/25/05
6,846,926 10/439,805 01/25/05
6,846,935 10/312,194 01/25/05
6,846,937 10/491,576 01/25/05
6,846,942 10/441,266 01/25/05
6,846,946 10/236,382 01/25/05
6,846,948 10/411,379 01/25/05
6,846,950 10/420,154 01/25/05
6,846,956 10/344,407 01/25/05
6,846,957 10/302,806 01/25/05
6,846,959 10/266,958 01/25/05
6,846,961 10/309,253 01/25/05
6,846,962 10/480,497 01/25/05
6,846,963 10/775,167 01/25/05
6,846,967 10/036,199 01/25/05
6,846,977 10/408,270 01/25/05
6,846,981 09/816,202 01/25/05
6,846,984 10/258,720 01/25/05
6,846,985 10/810,916 01/25/05
6,846,992 10/453,302 01/25/05
6,847,021 10/257,109 01/25/05
6,847,033 10/009,451 01/25/05
6,847,042 10/465,270 01/25/05
6,847,045 09/975,297 01/25/05
6,847,052 10/463,219 01/25/05
6,847,064 10/140,176 01/25/05
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 129 |
6,847,067 10/419,735 01/25/05
6,847,082 10/160,265 01/25/05
6,847,087 10/065,591 01/25/05
6,847,096 10/286,881 01/25/05
6,847,110 10/366,190 01/25/05
6,847,113 10/419,943 01/25/05
6,847,125 10/671,681 01/25/05
6,847,132 10/183,594 01/25/05
6,847,134 10/616,336 01/25/05
6,847,140 10/322,969 01/25/05
6,847,142 10/221,076 01/25/05
6,847,153 10/161,991 01/25/05
6,847,154 10/255,968 01/25/05
6,847,155 10/108,203 01/25/05
6,847,164 10/316,970 01/25/05
6,847,167 09/709,265 01/25/05
6,847,200 09/169,024 01/25/05
6,847,202 10/316,047 01/25/05
6,847,215 10/048,101 01/25/05
6,847,223 10/779,567 01/25/05
6,847,231 10/373,857 01/25/05
6,847,252 10/671,477 01/25/05
6,847,258 10/299,363 01/25/05
6,847,259 10/204,995 01/25/05
6,847,266 10/337,967 01/25/05
6,847,274 10/297,763 01/25/05
6,847,279 10/652,318 01/25/05
6,847,300 10/051,721 01/25/05
6,847,305 10/601,740 01/25/05
6,847,306 10/439,361 01/25/05
6,847,307 10/156,128 01/25/05
6,847,315 10/417,707 01/25/05
6,847,316 10/698,296 01/25/05
6,847,323 09/888,196 01/25/05
6,847,332 10/233,792 01/25/05
6,847,337 10/173,632 01/25/05
6,847,338 09/726,020 01/25/05
6,847,346 10/278,883 01/25/05
6,847,354 09/804,645 01/25/05
6,847,359 09/685,688 01/25/05
6,847,384 09/286,133 01/25/05
6,847,387 09/817,692 01/25/05
6,847,391 09/546,901 01/25/05
6,847,404 09/787,830 01/25/05
6,847,409 10/048,506 01/25/05
6,847,425 10/193,701 01/25/05
6,847,431 10/384,969 01/25/05
6,847,434 10/314,419 01/25/05
6,847,446 10/395,130 01/25/05
6,847,447 09/804,613 01/25/05
6,847,448 10/180,193 01/25/05
6,847,449 10/307,533 01/25/05
6,847,455 10/254,567 01/25/05
6,847,480 09/826,032 01/25/05
6,847,481 10/002,545 01/25/05
6,847,482 10/307,352 01/25/05
6,847,489 10/708,272 01/25/05
6,847,490 09/591,706 01/25/05
6,847,496 09/904,880 01/25/05
6,847,500 09/947,741 01/25/05
6,847,511 10/066,608 01/25/05
6,847,514 10/323,677 01/25/05
6,847,517 10/721,502 01/25/05
6,847,523 10/244,992 01/25/05
6,847,530 10/474,648 01/25/05
6,847,541 10/454,505 01/25/05
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 130 |
6,847,584 10/611,388 01/25/05
6,847,591 09/673,919 01/25/05
6,847,621 09/576,294 01/25/05
6,847,660 10/220,100 01/25/05
6,847,665 10/101,696 01/25/05
6,847,668 10/216,239 01/25/05
6,847,673 10/177,339 01/25/05
6,847,681 09/766,263 01/25/05
6,847,683 09/989,252 01/25/05
6,847,684 09/585,492 01/25/05
6,847,689 09/619,905 01/25/05
6,847,692 10/208,707 01/25/05
6,847,695 10/313,032 01/25/05
6,847,696 10/689,031 01/25/05
6,847,701 10/277,071 01/25/05
6,847,707 10/110,750 01/25/05
6,847,710 10/110,799 01/25/05
6,847,712 10/409,596 01/25/05
6,847,716 09/945,057 01/25/05
6,847,722 09/508,404 01/25/05
6,847,730 09/677,530 01/25/05
6,847,740 09/566,553 01/25/05
6,847,741 10/264,609 01/25/05
6,847,749 10/058,873 01/25/05
6,847,765 10/099,517 01/25/05
6,847,770 10/024,512 01/25/05
6,847,776 09/262,366 01/25/05
6,847,783 10/751,446 01/25/05
6,847,787 09/948,942 01/25/05
6,847,794 10/383,258 01/25/05
6,847,799 10/388,824 01/25/05
6,847,811 09/815,203 01/25/05
6,847,838 10/247,450 01/25/05
6,847,846 10/176,625 01/25/05
6,847,852 09/992,583 01/25/05
6,847,860 10/014,764 01/25/05
6,847,863 09/905,003 01/25/05
6,847,870 10/322,821 01/25/05
6,847,880 10/030,582 01/25/05
6,847,897 09/469,360 01/25/05
6,847,900 10/024,101 01/25/05
6,847,906 10/309,218 01/25/05
6,847,910 09/838,905 01/25/05
6,847,938 09/399,366 01/25/05
6,847,956 09/777,941 01/25/05
6,847,964 09/961,830 01/25/05
6,847,965 10/124,697 01/25/05
6,847,967 09/640,672 01/25/05
6,847,974 09/916,243 01/25/05
6,847,976 09/594,144 01/25/05
6,847,988 09/394,621 01/25/05
6,847,998 09/762,541 01/25/05
6,848,009 09/777,208 01/25/05
6,848,020 09/995,368 01/25/05
6,848,021 09/918,713 01/25/05
6,848,026 10/010,788 01/25/05
6,848,034 10/116,650 01/25/05
6,848,037 10/228,615 01/25/05
6,848,048 09/687,288 01/25/05
6,848,054 08/572,202 01/25/05
6,848,075 09/507,484 01/25/05
6,848,083 09/903,904 01/25/05
6,848,096 10/424,921 01/25/05
6,848,098 09/626,372 01/25/05
6,848,099 09/975,859 01/25/05
6,848,115 09/969,590 01/25/05
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 131 |
PATENTS WHICH EXPIRED ON January 27, 2013
DUE TO FAILURE TO PAY MAINTENANCE FEES
Patent Application Issue
Number Number Date
7,480,958 10/400,651 01/27/09
7,480,962 10/555,731 01/27/09
7,480,964 11/345,182 01/27/09
7,480,967 11/036,807 01/27/09
7,480,980 11/724,211 01/27/09
7,480,981 10/915,219 01/27/09
7,480,982 11/254,111 01/27/09
7,480,983 10/856,637 01/27/09
7,480,985 11/145,106 01/27/09
7,480,986 11/367,095 01/27/09
7,480,990 11/306,668 01/27/09
7,480,999 11/502,762 01/27/09
7,481,000 11/032,989 01/27/09
7,481,001 11/818,275 01/27/09
7,481,006 11/222,397 01/27/09
7,481,010 11/388,959 01/27/09
7,481,011 11/095,124 01/27/09
7,481,012 11/599,793 01/27/09
7,481,014 11/544,444 01/27/09
7,481,015 11/277,751 01/27/09
7,481,016 10/845,340 01/27/09
7,481,017 10/131,018 01/27/09
7,481,019 11/256,522 01/27/09
7,481,022 10/620,207 01/27/09
7,481,023 11/526,889 01/27/09
7,481,024 10/369,485 01/27/09
7,481,045 10/543,740 01/27/09
7,481,066 10/568,549 01/27/09
7,481,075 11/442,018 01/27/09
7,481,081 10/995,709 01/27/09
7,481,083 11/186,886 01/27/09
7,481,145 11/401,762 01/27/09
7,481,153 11/549,318 01/27/09
7,481,154 10/496,616 01/27/09
7,481,168 11/100,775 01/27/09
7,481,170 11/198,407 01/27/09
7,481,176 11/806,532 01/27/09
7,481,179 11/824,229 01/27/09
7,481,180 11/308,627 01/27/09
7,481,191 11/776,287 01/27/09
7,481,195 11/627,966 01/27/09
7,481,201 10/503,882 01/27/09
7,481,208 11/474,319 01/27/09
7,481,223 11/832,628 01/27/09
7,481,229 10/698,521 01/27/09
7,481,231 11/225,982 01/27/09
7,481,232 10/650,949 01/27/09
7,481,244 11/807,158 01/27/09
7,481,249 11/663,693 01/27/09
7,481,256 11/188,424 01/27/09
7,481,260 10/585,527 01/27/09
7,481,261 11/097,420 01/27/09
7,481,294 11/211,759 01/27/09
7,481,297 11/021,448 01/27/09
7,481,303 11/978,627 01/27/09
7,481,309 11/828,883 01/27/09
7,481,311 11/716,180 01/27/09
7,481,313 11/235,445 01/27/09
7,481,315 09/921,713 01/27/09
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 132 |
7,481,316 10/542,072 01/27/09
7,481,318 10/685,394 01/27/09
7,481,323 11/200,057 01/27/09
7,481,327 11/604,780 01/27/09
7,481,329 10/447,044 01/27/09
7,481,331 11/222,220 01/27/09
7,481,332 11/265,263 01/27/09
7,481,335 11/113,929 01/27/09
7,481,339 10/926,129 01/27/09
7,481,341 11/764,390 01/27/09
7,481,342 11/117,208 01/27/09
7,481,357 11/986,216 01/27/09
7,481,361 11/239,505 01/27/09
7,481,368 11/295,411 01/27/09
7,481,375 11/072,707 01/27/09
7,481,392 11/418,056 01/27/09
7,481,408 11/999,562 01/27/09
7,481,415 11/482,252 01/27/09
7,481,420 11/337,879 01/27/09
7,481,443 11/417,684 01/27/09
7,481,448 10/488,830 01/27/09
7,481,459 11/352,537 01/27/09
7,481,464 11/607,544 01/27/09
7,481,471 10/571,258 01/27/09
7,481,473 11/086,621 01/27/09
7,481,486 11/021,608 01/27/09
7,481,492 11/849,011 01/27/09
7,481,499 11/729,001 01/27/09
7,481,502 10/992,280 01/27/09
7,481,513 11/380,206 01/27/09
7,481,523 10/530,755 01/27/09
7,481,528 11/163,098 01/27/09
7,481,530 11/810,150 01/27/09
7,481,537 11/374,805 01/27/09
7,481,540 11/311,356 01/27/09
7,481,555 11/645,061 01/27/09
7,481,558 11/790,470 01/27/09
7,481,566 11/524,816 01/27/09
7,481,589 11/321,933 01/27/09
7,481,595 11/516,236 01/27/09
7,481,608 11/253,535 01/27/09
7,481,609 11/563,926 01/27/09
7,481,613 11/213,723 01/27/09
7,481,627 10/929,926 01/27/09
7,481,628 11/363,335 01/27/09
7,481,634 10/591,562 01/27/09
7,481,648 11/984,344 01/27/09
7,481,658 11/682,143 01/27/09
7,481,663 11/952,845 01/27/09
7,481,672 11/186,302 01/27/09
7,481,673 12/149,707 01/27/09
7,481,675 11/810,232 01/27/09
7,481,687 11/807,658 01/27/09
7,481,688 11/222,017 01/27/09
7,481,691 11/353,404 01/27/09
7,481,693 10/532,225 01/27/09
7,481,694 11/208,931 01/27/09
7,481,695 09/748,708 01/27/09
7,481,697 11/903,617 01/27/09
7,481,698 11/889,872 01/27/09
7,481,706 11/337,031 01/27/09
7,481,730 11/552,207 01/27/09
7,481,747 11/559,623 01/27/09
7,481,748 11/534,485 01/27/09
7,481,780 10/497,170 01/27/09
7,481,798 10/846,476 01/27/09
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 133 |
7,481,802 10/321,483 01/27/09
7,481,803 10/422,624 01/27/09
7,481,809 11/158,286 01/27/09
7,481,833 11/012,305 01/27/09
7,481,839 10/995,626 01/27/09
7,481,842 11/180,368 01/27/09
7,481,845 11/040,001 01/27/09
7,481,852 11/133,474 01/27/09
7,481,854 10/918,137 01/27/09
7,481,860 11/273,094 01/27/09
7,481,874 10/653,863 01/27/09
7,481,881 10/905,768 01/27/09
7,481,893 10/518,916 01/27/09
7,481,894 10/483,338 01/27/09
7,481,900 11/636,193 01/27/09
7,481,906 11/274,288 01/27/09
7,481,907 11/311,496 01/27/09
7,481,922 11/030,618 01/27/09
7,481,927 11/910,141 01/27/09
7,481,930 11/191,944 01/27/09
7,481,931 10/513,569 01/27/09
7,481,936 11/078,016 01/27/09
7,481,940 11/506,394 01/27/09
7,481,979 10/827,754 01/27/09
7,481,980 10/936,245 01/27/09
7,481,984 09/662,849 01/27/09
7,481,985 11/500,129 01/27/09
7,481,987 11/229,011 01/27/09
7,481,993 11/371,241 01/27/09
7,481,999 11/003,150 01/27/09
7,482,000 11/029,574 01/27/09
7,482,005 11/682,197 01/27/09
7,482,008 09/662,784 01/27/09
7,482,017 11/223,729 01/27/09
7,482,020 10/654,534 01/27/09
7,482,028 11/230,012 01/27/09
7,482,029 11/277,811 01/27/09
7,482,030 11/809,747 01/27/09
7,482,031 10/457,182 01/27/09
7,482,041 11/954,279 01/27/09
7,482,042 11/235,140 01/27/09
7,482,047 10/357,649 01/27/09
7,482,056 11/392,671 01/27/09
7,482,059 11/125,120 01/27/09
7,482,069 11/079,203 01/27/09
7,482,075 11/008,760 01/27/09
7,482,123 11/267,461 01/27/09
7,482,126 11/591,825 01/27/09
7,482,149 10/560,198 01/27/09
7,482,155 10/312,963 01/27/09
7,482,156 10/947,812 01/27/09
7,482,159 11/599,664 01/27/09
7,482,164 11/827,782 01/27/09
7,482,192 11/383,576 01/27/09
7,482,193 11/017,521 01/27/09
7,482,209 11/559,151 01/27/09
7,482,216 11/474,774 01/27/09
7,482,232 11/553,331 01/27/09
7,482,253 11/689,487 01/27/09
7,482,270 11/566,848 01/27/09
7,482,301 11/642,290 01/27/09
7,482,304 10/732,864 01/27/09
7,482,308 10/594,570 01/27/09
7,482,312 11/096,471 01/27/09
7,482,313 10/597,289 01/27/09
7,482,320 10/471,221 01/27/09
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 134 |
7,482,326 11/272,757 01/27/09
7,482,338 10/573,132 01/27/09
7,482,339 10/568,963 01/27/09
7,482,340 10/541,677 01/27/09
7,482,342 11/096,375 01/27/09
7,482,343 11/600,683 01/27/09
7,482,345 11/602,782 01/27/09
7,482,346 11/466,192 01/27/09
7,482,347 11/572,652 01/27/09
7,482,349 11/153,633 01/27/09
7,482,353 11/452,443 01/27/09
7,482,356 10/983,114 01/27/09
7,482,357 10/557,171 01/27/09
7,482,358 11/348,459 01/27/09
7,482,359 11/660,289 01/27/09
7,482,360 11/524,867 01/27/09
7,482,362 10/450,930 01/27/09
7,482,363 10/508,332 01/27/09
7,482,365 10/502,266 01/27/09
7,482,369 11/374,720 01/27/09
7,482,373 11/540,772 01/27/09
7,482,374 10/561,414 01/27/09
7,482,375 11/408,286 01/27/09
7,482,376 10/869,430 01/27/09
7,482,394 10/507,124 01/27/09
7,482,401 11/248,234 01/27/09
7,482,404 10/941,545 01/27/09
7,482,434 11/641,128 01/27/09
7,482,437 11/670,467 01/27/09
7,482,448 11/409,601 01/27/09
7,482,452 10/561,051 01/27/09
7,482,455 10/530,986 01/27/09
7,482,456 10/554,176 01/27/09
7,482,457 10/544,440 01/27/09
7,482,460 11/114,604 01/27/09
7,482,461 11/732,623 01/27/09
7,482,462 10/490,464 01/27/09
7,482,464 11/680,261 01/27/09
7,482,468 11/334,932 01/27/09
7,482,471 10/553,957 01/27/09
7,482,472 11/717,414 01/27/09
7,482,473 11/470,820 01/27/09
7,482,476 11/581,133 01/27/09
7,482,477 11/664,317 01/27/09
7,482,481 10/492,618 01/27/09
7,482,487 10/598,843 01/27/09
7,482,489 11/133,721 01/27/09
7,482,494 10/548,387 01/27/09
7,482,504 10/837,452 01/27/09
7,482,508 10/733,407 01/27/09
7,482,520 11/581,752 01/27/09
7,482,523 11/900,965 01/27/09
7,482,527 11/422,333 01/27/09
7,482,529 12/100,125 01/27/09
7,482,531 11/551,015 01/27/09
7,482,534 11/226,150 01/27/09
7,482,543 11/735,508 01/27/09
7,482,546 11/660,856 01/27/09
7,482,568 10/260,012 01/27/09
7,482,570 11/826,927 01/27/09
7,482,573 11/059,604 01/27/09
7,482,584 10/959,732 01/27/09
7,482,588 10/390,695 01/27/09
7,482,591 10/946,658 01/27/09
7,482,597 10/572,042 01/27/09
7,482,613 11/016,457 01/27/09
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 135 |
7,482,615 11/161,062 01/27/09
7,482,617 11/244,387 01/27/09
7,482,624 11/185,861 01/27/09
7,482,676 11/484,075 01/27/09
7,482,701 11/812,154 01/27/09
7,482,705 10/845,305 01/27/09
7,482,708 10/502,507 01/27/09
7,482,718 11/199,309 01/27/09
7,482,719 11/357,948 01/27/09
7,482,723 10/548,141 01/27/09
7,482,725 11/313,889 01/27/09
7,482,732 10/590,367 01/27/09
7,482,740 11/436,694 01/27/09
7,482,741 11/346,165 01/27/09
7,482,754 11/202,193 01/27/09
7,482,756 11/353,428 01/27/09
7,482,758 11/367,985 01/27/09
7,482,767 11/046,533 01/27/09
7,482,773 11/701,263 01/27/09
7,482,810 11/791,543 01/27/09
7,482,826 11/332,137 01/27/09
7,482,844 11/326,832 01/27/09
7,482,845 11/469,219 01/27/09
7,482,847 10/396,811 01/27/09
7,482,875 11/209,691 01/27/09
7,482,894 11/601,885 01/27/09
7,482,896 11/367,555 01/27/09
7,482,902 10/546,759 01/27/09
7,482,912 11/372,275 01/27/09
7,482,916 11/046,047 01/27/09
7,482,918 11/326,741 01/27/09
7,482,919 11/499,095 01/27/09
7,482,921 11/184,355 01/27/09
7,482,922 11/109,025 01/27/09
7,482,928 11/375,504 01/27/09
7,482,938 11/367,545 01/27/09
7,482,948 12/111,762 01/27/09
7,482,977 11/073,620 01/27/09
7,482,990 11/723,432 01/27/09
7,483,014 10/514,741 01/27/09
7,483,033 10/829,012 01/27/09
7,483,038 11/312,913 01/27/09
7,483,045 11/402,205 01/27/09
7,483,062 11/064,352 01/27/09
7,483,070 10/387,514 01/27/09
7,483,076 11/098,487 01/27/09
7,483,086 11/729,019 01/27/09
7,483,093 11/506,735 01/27/09
7,483,144 11/713,237 01/27/09
7,483,154 11/543,689 01/27/09
7,483,155 11/051,617 01/27/09
7,483,158 11/735,731 01/27/09
7,483,181 10/494,072 01/27/09
7,483,182 10/844,354 01/27/09
7,483,185 11/149,205 01/27/09
7,483,189 11/378,395 01/27/09
7,483,217 11/604,469 01/27/09
7,483,225 11/377,496 01/27/09
7,483,234 11/983,493 01/27/09
7,483,235 11/475,746 01/27/09
7,483,242 10/089,397 01/27/09
7,483,243 11/252,913 01/27/09
7,483,244 11/213,525 01/27/09
7,483,254 12/077,481 01/27/09
7,483,263 11/193,731 01/27/09
7,483,266 11/193,922 01/27/09
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 136 |
7,483,274 11/238,232 01/27/09
7,483,278 10/504,947 01/27/09
7,483,283 11/694,401 01/27/09
7,483,286 11/494,081 01/27/09
7,483,322 11/963,794 01/27/09
7,483,329 11/625,309 01/27/09
7,483,343 10/962,517 01/27/09
7,483,345 10/505,470 01/27/09
7,483,353 11/078,881 01/27/09
7,483,354 11/313,510 01/27/09
7,483,356 11/199,200 01/27/09
7,483,357 11/118,349 01/27/09
7,483,371 10/465,049 01/27/09
7,483,378 11/182,319 01/27/09
7,483,397 10/965,991 01/27/09
7,483,422 11/055,366 01/27/09
7,483,424 11/191,578 01/27/09
7,483,428 11/054,934 01/27/09
7,483,429 11/133,477 01/27/09
7,483,446 10/807,699 01/27/09
7,483,456 11/286,251 01/27/09
7,483,467 11/518,173 01/27/09
7,483,477 11/115,663 01/27/09
7,483,480 10/997,442 01/27/09
7,483,509 11/871,846 01/27/09
7,483,515 10/558,722 01/27/09
7,483,517 10/599,792 01/27/09
7,483,526 10/865,703 01/27/09
7,483,536 10/984,577 01/27/09
7,483,544 11/040,949 01/27/09
7,483,556 11/111,787 01/27/09
7,483,566 11/153,022 01/27/09
7,483,567 11/211,555 01/27/09
7,483,570 10/775,238 01/27/09
7,483,576 10/770,433 01/27/09
7,483,578 11/226,417 01/27/09
7,483,607 11/558,738 01/27/09
7,483,628 11/524,893 01/27/09
7,483,630 12/044,960 01/27/09
7,483,676 11/197,750 01/27/09
7,483,678 11/235,907 01/27/09
7,483,697 10/471,613 01/27/09
7,483,704 10/368,698 01/27/09
7,483,730 10/957,843 01/27/09
7,483,749 11/091,554 01/27/09
7,483,763 11/280,993 01/27/09
7,483,766 11/476,220 01/27/09
7,483,770 10/545,987 01/27/09
7,483,806 11/866,537 01/27/09
7,483,812 11/182,723 01/27/09
7,483,836 10/139,179 01/27/09
7,483,844 10/342,320 01/27/09
7,483,865 11/943,763 01/27/09
7,483,866 11/305,935 01/27/09
7,483,873 11/038,513 01/27/09
7,483,874 11/424,651 01/27/09
7,483,876 10/389,552 01/27/09
7,483,906 10/823,870 01/27/09
7,483,908 11/072,866 01/27/09
7,483,912 11/094,205 01/27/09
7,483,914 10/621,902 01/27/09
7,483,920 11/268,910 01/27/09
7,483,924 11/037,593 01/27/09
7,483,931 11/045,044 01/27/09
7,483,941 10/756,106 01/27/09
7,483,955 11/548,032 01/27/09
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 137 |
7,483,962 10/455,476 01/27/09
7,483,979 10/114,633 01/27/09
7,483,988 09/802,252 01/27/09
7,484,007 10/280,597 01/27/09
7,484,009 10/488,013 01/27/09
7,484,025 10/554,401 01/27/09
7,484,030 11/931,640 01/27/09
7,484,034 11/787,966 01/27/09
7,484,036 11/281,112 01/27/09
7,484,039 11/438,411 01/27/09
7,484,040 11/125,709 01/27/09
7,484,051 11/093,392 01/27/09
7,484,052 11/120,909 01/27/09
7,484,075 10/320,150 01/27/09
7,484,091 10/835,350 01/27/09
7,484,093 10/840,257 01/27/09
7,484,098 10/471,661 01/27/09
7,484,099 10/902,712 01/27/09
7,484,107 10/824,806 01/27/09
7,484,116 11/324,591 01/27/09
7,484,122 10/872,211 01/27/09
7,484,135 11/374,076 01/27/09
7,484,149 11/276,768 01/27/09
7,484,156 11/474,755 01/27/09
7,484,166 11/006,669 01/27/09
7,484,170 10/615,505 01/27/09
7,484,173 11/252,513 01/27/09
7,484,174 10/475,906 01/27/09
7,484,178 10/929,752 01/27/09
7,484,185 10/146,885 01/27/09
7,484,186 11/399,577 01/27/09
7,484,196 11/532,582 01/27/09
7,484,201 10/201,207 01/27/09
7,484,202 10/962,648 01/27/09
7,484,203 11/085,324 01/27/09
7,484,206 11/034,271 01/27/09
7,484,214 10/566,359 01/27/09
7,484,215 10/697,917 01/27/09
7,484,217 11/066,065 01/27/09
7,484,226 11/077,340 01/27/09
7,484,228 10/592,753 01/27/09
7,484,229 10/563,428 01/27/09
7,484,230 10/947,025 01/27/09
7,484,232 11/301,188 01/27/09
7,484,243 10/675,670 01/27/09
7,484,244 10/302,943 01/27/09
7,484,246 09/943,773 01/27/09
| Patents Reinstated Due to the Acceptance of a Late Maintenance Fee from 02/18/2013 |
Patents Reinstated Due to the Acceptance of a
Late Maintenance Fee from 02/18/2013
Patent Application Filing Issue Granted
Number Number Date Date Date
5,865,627 08/798,130 02/12/97 02/02/99 02/22/13
6,024,471 08/947,546 10/11/97 02/15/00 02/20/13
6,030,099 09/097,798 06/16/98 02/29/00 02/20/13
6,111,898 08/987,184 12/08/97 08/29/00 02/20/13
6,140,943 09/372,573 08/12/99 10/31/00 02/22/13
6,162,246 09/250,742 02/16/99 12/19/00 02/21/13
6,174,446 09/274,577 03/23/99 01/16/01 02/20/13
6,494,209 09/823,116 04/02/01 12/17/02 02/22/13
6,494,460 09/750,624 12/26/00 12/17/02 02/22/13
6,698,771 10/076,997 02/19/02 03/02/04 02/21/13
6,727,117 10/291,126 11/07/02 04/27/04 02/19/13
6,731,607 09/629,664 08/01/00 05/04/04 02/20/13
6,765,949 10/231,925 08/29/02 07/20/04 02/22/13
6,766,040 09/677,257 10/02/00 07/20/04 02/22/13
6,785,232 09/723,206 11/27/00 08/31/04 02/20/13
6,796,725 09/972,282 10/05/01 09/28/04 02/19/13
6,805,313 10/340,541 01/10/03 10/19/04 02/18/13
6,824,694 10/286,847 11/04/02 11/30/04 02/20/13
7,177,703 10/436,006 05/11/03 02/13/07 02/22/13
7,217,917 11/524,994 09/21/06 05/15/07 02/18/13
7,331,397 10/986,694 11/12/04 02/19/08 02/20/13
7,392,775 11/037,419 01/18/05 07/01/08 02/20/13
7,442,298 12/067,176 03/18/08 10/28/08 02/19/13
7,457,399 10/644,792 08/21/03 11/25/08 02/22/13
7,458,193 11/581,200 10/13/06 12/02/08 02/20/13
| Reissue Applications Filed |
Reissue Applications Filed
Notice under 37 CFR 1.11(b). The reissue applications listed below
are open to public inspection by the general public through the Image
File Wrapper (IFW) system (http://portal.uspto.gov/external/portal/pair)
on the USPTO internet web site (www.uspto.gov), and copies may be obtained
by paying the fee therefor (37 CFR 1.19).
8,026,128, Re. S.N. 13/756,679, Feb. 01, 2013, Cl. 438/107,
SEMICONDUCTOR DEVICE AND METHOD OF SELF-CONFINEMENT OF CONDUCTIVE BUMP
MATERIAL DURING REFLOW WITHOUT SOLDER MASK, Rajendra D. Pendse, et al.,
Owner of Record: STATS ChipPAC, Ltd., Singapore, SG, Attorney or Agent:
Robert D. Atkins, Ex. Gp.: 1792
8,097,085, Re. S.N. 13/507,362, Jun. 07, 2012, Cl. 118/724, THERMAL
DIFFUSION CHAMBER, Mark R. Erickson, et al., Owner of Record: Poole
Ventura, Inc., Oxnard, CA, Attorney or Agent: Daniel P. Dooley, Ex. Gp.:
1716
8,188,598, Re. S.N. 13/756,779, Feb. 01, 2013, Cl. 257/734,
BUMP-ON-LEAD FLIP CHIP INTERCONNECTION, Rajendra D. Pendse, et al., Owner
of Record: STATS ChipPAC, Ltd., Singapore, SG, Attorney or Agent: Robert D.
Atkins, Ex. Gp.: 2811
8,216,930, Re. S.N. 13/756,817, Feb. 01, 2013, Cl. 438/613, SOLDER JOINT
FLIP CHIP INTERCONNECTION HAVING RELIEF STRUCTURE, Rajendra D. Pendse, et
al., Owner of Record: STATS ChipPAC, Ltd., Singapore, SG, Attorney or
Agent: Robert D. Atkins, Ex. Gp.: 2812
| Requests for Ex Parte Reexamination Filed |
Requests for Ex Parte Reexamination Filed
5,378,043, Reexam. C.N. 90/012,770, Requested Date: January 23, 2013,
Cl. 297/408, Title: VEHICLE PIVOTAL HEADREST, Inventor: David C. Viano et
al., Owners of Record: Lear Corporation, Southfield, MI, Attorney or Agent:
Brooks Kushman, PC., Southfield, MI, Ex. Gp.: 3993, Requester: TS Tech
North America, J. Steven Baughman, Ropes & Gray, Boston, MA
5,530,597, Reexam. C.N. 90/012,781, Requested Date: February 4, 2013,
Cl. 395/735, Title: INTERRUPT MASK DISABLE CIRCUIT AND METHOD, Inventor:
James E. Bowles et al., Owners of Record: Norman IP Holdings, LLC., Tyler,
TX, Attorney or Agent: Jenkens & Gilchrist, PC., Dallas, TX, Ex. Gp.: 3992,
Requester: Volkswagen Group of America, Inc., Clifford A. Ulrich, Kenyon &
Kenyon, LLP., New York, NY
5,874,850, Reexam. C.N. 90/012,777, Requested Date: January 30, 2013,
Cl. 327/536, Title: MOS VOLTAGE ELEVATOR OF THE CHARGE PUMP TYPE, Inventor:
Francesco Pulvirenti et al., Owners of Record: Consorzio Per La Ricerca
Sulla Microelettronica Nel Mezzogiorno, Italy, Attorney or Agent: Wolf
Greenfield & Sacks, Boston, MA, Ex. Gp.: 3992, Requester: InvenSense, Inc.,
Mehran Arjomand, Morrison & Foerster, LLP., Los Angeles, CA
5,986,861, Reexam. C.N. 90/012,776, Requested Date: January 30, 2013,
Cl. 361/056, Title: CLAMP, Inventor: Serge Pontarollo, Owners of Record:
SGS-Thomson Microelectronics, SA., France, Attorney or Agent: Wolf
Greenfield & Sacks, Boston, MA, Ex. Gp.: 3992, Requester: InvenSense, Inc.,
Mehran Arjomand, Morrison & Foerster, LLP., Los Angeles, CA
6,070,068, Reexam. C.N. 90/012,780, Requested Date: January 31, 2013,
Cl. 455/414, Title: COMMUNICATION TERMINAL DEVICE AND METHOD FOR
CONTROLLING A CONNECTING STATE OF A CALL INTO A DESIRED CONNECTION STATE
UPON A PREDETERMINED OPERATION BY A USER, Inventor: Fukuharu Sudo, Owners
of Record: MobileMedia Ideas, LLC., Chevy Chase, MD, Attorney or Agent:
Proskauer Rose, LLP., Boston, MA, Ex. Gp.: 3992, Requester: Bryan C. Diner,
Finnegan Henderson Farabow Garrett & Dunner, LLP., Washington, DC
6,504,253, Reexam. C.N. 90/012,778, Requested Date: January 30, 2013,
Cl. 257/723, Title: STRUCTURE FOR ELECTRICALLY CONNECTING A FIRST BODY OF
SEMICONDUCTOR MATERIAL OVERLAID BY A SECOND BODY OF SEMICONDUCTOR MATERIAL
COMPOSITE STRUCTURE USING ELECTRIC CONNECTION STRUCTURE, Inventor: Ubaldo
Mastromatteo et al., Owners of Record: STMicroelectronics, Inc., Coppell,
TX, Attorney or Agent: Seed Intellectual Property Law Group, PLLC.,
Seattle, WA, Ex. Gp.: 3992, Requester: InvenSense, Inc., Mehran Arjomand,
Morrison & Foerster, LLP., Los Angeles, CA
6,715,639, Reexam. C.N. 90/012,773, Requested Date: January 28, 2013,
Cl. 221/255, Title: CARTON WITH AN IMPROVED DISPENSING FEATURE, Inventor:
Raymond Rudolph Spivey, Owners of Record: Graphic Packaging International,
Inc., Marietta, GA, Attorney or Agent: Womble Carlyle Sandridge & Rice,
Atlanta, GA, Ex. Gp.: 3993, Requester: Keith R. Haupt, Wood Herron & Evans,
LLP., Cincinnati, OH
6,848,072, Reexam. C.N. 90/012,775, Requested Date: January 30, 2013,
Cl. 714/781, Title: NETWORK PROCESSOR HAVING CYCLIC REDUNDANCY CHECK
IMPLEMENTED IN HARDWARE, Inventor: Walter Clark Milliken, Owners of Record:
Seesaw Foundation, Longview, TX, Attorney or Agent: The Caldwell Firm,
LLC., Dallas, TX, Ex. Gp.: 3992, Requester: Intel Corp., Chun M. Ng,
Perking Coie, LLP., Seattle, WA
7,409,291, Reexam. C.N. 90/012,779, Requested Date: January 30, 2013,
Cl. 701/220, Title: DEVIDE FOR AUTOMATIC DETECTION OF STATES OF MOTION AND
REST, AND PORTABLE ELECTRONIC APPARATUS INCORPORATING IT, Inventor: Fabio
Pasolini et al., Owners of Record: STMicroelectronics, Inc., Coppell, TX,
Attorney or Agent: Seed Intellectual Property Law Group, PLLC., Seattle,
WA, Ex. Gp.: 3993, Requester: InvenSense, Inc., Mehran Arjomand, Morrison &
Foerster, LLP., Los Angeles, CA
7,411,578, Reexam. C.N. 90/012,774, Requested Date: January 29, 2013,
Cl. 714/781, Title: DIGITAL PHOTO ALBUM, Inventor: Jacob Shuhami, Owners of
Record: Displeigh, LLC., Longview, TX, Attorney or Agent: Novel, IP., Santa
Ana, CA, Ex. Gp.: 3992, Requester: PATENT OWNER
| Requests for Supplemental Examination Filed |
Requests for Supplemental Filed
7,662,967, Reexam. C.N. 96/030,000, Requested Date: January 10, 2013,
Cl. 546/243, Title: ANIT-INFLAMMATORY COMPOUNDS AND COMPOSITIONS, Inventor:
David J. Grainger et al., Owners of Record: Cambridge Enterprise Limited,
United Kingdom; Boehringer Ingelheim International, GMBH, Germany, Attorney
or Agent: Kenyon & Kenyon, LLP., New York, NY, Ex. Gp.: 3991, Requester:
PATENT OWNER
| Notice of Expiration of Trademark Registrations Due to Failure to Renew |
Notice of Expiration of Trademark Registrations
Due to Failure to Renew
15 U.S.C. 1059 provides that each trademark registration may be
renewed for periods of ten years from the end of the expiring period
upon payment of the prescribed fee and the filing of an acceptable
application for renewal. This may be done at any time within one year
before the expiration of the period for which the registration was
issued or renewed, or it may be done within six months after such
expiration on payment of an additional fee.
According to the records of the Office, the trademark registrations
listed below are expired due to failure to renew in accordance with 15
U.S.C. 1059.
TRADEMARK REGISTRATIONS WHICH EXPIRED
February 22, 2013
DUE TO FAILURE TO RENEW
Reg. Number Serial Number Reg. Date
1,701,601 74/155,507 07/21/1992
3,117,281 79/000,206 07/18/2006
3,117,282 79/000,725 07/18/2006
3,117,283 79/000,836 07/18/2006
3,117,284 79/000,944 07/18/2006
3,023,862 79/001,975 12/06/2005
2,992,673 79/001,976 09/06/2005
3,023,863 79/001,978 12/06/2005
3,011,560 79/001,979 11/01/2005
3,029,255 79/001,987 12/13/2005
3,011,561 79/001,996 11/01/2005
3,011,562 79/001,997 11/01/2005
1,201,791 73/311,457 07/20/1982
1,701,429 74/163,804 07/21/1992
2,594,452 74/367,271 07/16/2002
2,593,318 74/654,862 07/16/2002
2,594,456 74/669,483 07/16/2002
2,594,458 74/716,901 07/16/2002
2,594,459 75/001,977 07/16/2002
2,596,153 75/074,037 07/16/2002
2,593,323 75/105,008 07/16/2002
2,594,467 75/113,571 07/16/2002
2,594,468 75/114,681 07/16/2002
2,594,472 75/185,480 07/16/2002
2,594,473 75/185,481 07/16/2002
2,594,477 75/197,184 07/16/2002
2,594,480 75/206,246 07/16/2002
2,594,482 75/214,097 07/16/2002
2,594,485 75/232,688 07/16/2002
2,594,499 75/308,193 07/16/2002
2,594,500 75/308,245 07/16/2002
2,594,503 75/314,691 07/16/2002
2,596,155 75/329,447 07/16/2002
2,594,507 75/331,659 07/16/2002
2,594,511 75/339,914 07/16/2002
2,594,512 75/340,650 07/16/2002
2,594,519 75/355,611 07/16/2002
2,594,528 75/374,522 07/16/2002
2,594,531 75/382,842 07/16/2002
2,594,538 75/412,359 07/16/2002
2,594,545 75/426,166 07/16/2002
2,596,159 75/427,339 07/16/2002
2,594,558 75/457,205 07/16/2002
2,593,347 75/469,254 07/16/2002
2,594,577 75/494,541 07/16/2002
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 143 |
2,594,586 75/511,542 07/16/2002
2,593,353 75/521,712 07/16/2002
2,594,600 75/535,234 07/16/2002
2,594,601 75/535,462 07/16/2002
2,594,605 75/537,573 07/16/2002
2,593,357 75/540,351 07/16/2002
2,594,609 75/540,868 07/16/2002
2,594,611 75/544,704 07/16/2002
2,596,163 75/549,795 07/16/2002
2,594,617 75/552,156 07/16/2002
2,594,630 75/566,002 07/16/2002
2,596,164 75/578,555 07/16/2002
2,594,644 75/580,995 07/16/2002
2,596,165 75/583,935 07/16/2002
2,594,654 75/594,885 07/16/2002
2,594,658 75/597,461 07/16/2002
2,594,669 75/605,953 07/16/2002
2,594,698 75/635,854 07/16/2002
2,594,699 75/636,176 07/16/2002
2,594,701 75/637,904 07/16/2002
2,594,719 75/654,427 07/16/2002
2,594,722 75/658,830 07/16/2002
2,594,728 75/662,431 07/16/2002
2,594,738 75/672,282 07/16/2002
2,594,739 75/674,468 07/16/2002
2,594,742 75/676,026 07/16/2002
2,594,743 75/676,465 07/16/2002
2,594,744 75/678,472 07/16/2002
2,593,391 75/679,803 07/16/2002
2,594,754 75/687,272 07/16/2002
2,594,755 75/687,559 07/16/2002
2,594,756 75/688,014 07/16/2002
2,594,760 75/689,867 07/16/2002
2,594,764 75/693,872 07/16/2002
2,594,767 75/694,926 07/16/2002
2,594,771 75/696,546 07/16/2002
2,594,785 75/705,807 07/16/2002
2,594,786 75/706,304 07/16/2002
2,594,788 75/707,239 07/16/2002
2,594,792 75/709,347 07/16/2002
2,594,800 75/712,230 07/16/2002
2,594,801 75/713,370 07/16/2002
2,594,806 75/715,934 07/16/2002
2,594,807 75/717,809 07/16/2002
2,594,811 75/720,824 07/16/2002
2,594,815 75/721,550 07/16/2002
2,593,405 75/722,143 07/16/2002
2,594,827 75/728,226 07/16/2002
2,594,841 75/736,897 07/16/2002
2,594,851 75/738,660 07/16/2002
2,594,856 75/741,577 07/16/2002
2,594,863 75/742,725 07/16/2002
2,596,180 75/754,990 07/16/2002
2,593,416 75/755,082 07/16/2002
2,594,881 75/761,032 07/16/2002
2,593,422 75/764,780 07/16/2002
2,594,911 75/782,191 07/16/2002
2,594,912 75/782,381 07/16/2002
2,594,915 75/783,297 07/16/2002
2,594,921 75/784,970 07/16/2002
2,594,926 75/787,499 07/16/2002
2,594,931 75/789,815 07/16/2002
2,594,944 75/800,074 07/16/2002
2,594,957 75/802,663 07/16/2002
2,594,958 75/802,700 07/16/2002
2,594,960 75/804,004 07/16/2002
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 144 |
2,594,963 75/806,789 07/16/2002
2,593,442 75/814,214 07/16/2002
2,594,988 75/819,340 07/16/2002
2,594,991 75/820,568 07/16/2002
2,593,450 75/821,209 07/16/2002
2,594,999 75/826,611 07/16/2002
2,593,452 75/826,816 07/16/2002
2,593,455 75/828,218 07/16/2002
2,595,004 75/828,220 07/16/2002
2,595,010 75/831,617 07/16/2002
2,595,012 75/832,855 07/16/2002
2,593,463 75/834,181 07/16/2002
2,593,464 75/834,306 07/16/2002
2,595,017 75/834,724 07/16/2002
2,593,466 75/837,076 07/16/2002
2,595,022 75/839,657 07/16/2002
2,595,035 75/844,945 07/16/2002
2,595,036 75/845,018 07/16/2002
2,595,040 75/847,315 07/16/2002
2,595,053 75/853,105 07/16/2002
2,595,056 75/855,616 07/16/2002
2,595,073 75/861,845 07/16/2002
2,593,492 75/862,653 07/16/2002
2,596,202 75/862,730 07/16/2002
2,595,075 75/863,263 07/16/2002
2,595,076 75/863,327 07/16/2002
2,595,081 75/865,231 07/16/2002
2,595,084 75/866,591 07/16/2002
2,595,088 75/867,323 07/16/2002
2,593,498 75/868,366 07/16/2002
2,593,506 75/874,140 07/16/2002
2,595,101 75/874,444 07/16/2002
2,595,106 75/878,069 07/16/2002
2,593,510 75/878,313 07/16/2002
2,595,118 75/884,123 07/16/2002
2,595,123 75/886,486 07/16/2002
2,595,133 75/891,411 07/16/2002
2,593,518 75/891,668 07/16/2002
2,593,519 75/892,036 07/16/2002
2,593,521 75/893,439 07/16/2002
2,593,523 75/894,521 07/16/2002
2,595,153 75/899,743 07/16/2002
2,595,158 75/901,996 07/16/2002
2,595,165 75/903,322 07/16/2002
2,593,533 75/906,378 07/16/2002
2,593,536 75/907,101 07/16/2002
2,595,172 75/908,762 07/16/2002
2,593,540 75/909,206 07/16/2002
2,593,541 75/912,069 07/16/2002
2,595,178 75/913,252 07/16/2002
2,595,180 75/914,459 07/16/2002
2,593,548 75/916,610 07/16/2002
2,593,550 75/923,479 07/16/2002
2,595,200 75/924,309 07/16/2002
2,595,201 75/924,457 07/16/2002
2,595,204 75/924,672 07/16/2002
2,595,205 75/925,777 07/16/2002
2,596,216 75/928,665 07/16/2002
2,593,553 75/928,826 07/16/2002
2,595,221 75/931,642 07/16/2002
2,595,223 75/933,223 07/16/2002
2,595,224 75/933,413 07/16/2002
2,593,560 75/936,337 07/16/2002
2,593,564 75/942,049 07/16/2002
2,593,568 75/942,882 07/16/2002
2,595,257 75/960,559 07/16/2002
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 145 |
2,595,267 75/981,653 07/16/2002
2,595,269 75/981,677 07/16/2002
2,595,275 75/981,859 07/16/2002
2,595,285 75/982,141 07/16/2002
2,595,297 75/982,269 07/16/2002
2,595,299 75/982,287 07/16/2002
2,593,581 76/001,012 07/16/2002
2,593,582 76/002,009 07/16/2002
2,595,310 76/002,565 07/16/2002
2,595,311 76/002,805 07/16/2002
2,593,598 76/015,018 07/16/2002
2,596,234 76/017,875 07/16/2002
2,595,334 76/018,389 07/16/2002
2,595,335 76/019,006 07/16/2002
2,595,339 76/019,662 07/16/2002
2,593,608 76/020,772 07/16/2002
2,593,609 76/021,142 07/16/2002
2,595,342 76/021,723 07/16/2002
2,595,343 76/021,962 07/16/2002
2,595,345 76/023,164 07/16/2002
2,595,347 76/023,736 07/16/2002
2,595,348 76/023,765 07/16/2002
2,593,614 76/025,266 07/16/2002
2,595,357 76/026,433 07/16/2002
2,595,359 76/028,327 07/16/2002
2,595,360 76/028,481 07/16/2002
2,595,368 76/034,044 07/16/2002
2,595,383 76/039,903 07/16/2002
2,593,639 76/040,249 07/16/2002
2,596,245 76/041,857 07/16/2002
2,595,392 76/044,224 07/16/2002
2,595,395 76/045,623 07/16/2002
2,595,396 76/046,241 07/16/2002
2,595,397 76/046,249 07/16/2002
2,595,400 76/047,183 07/16/2002
2,595,401 76/047,640 07/16/2002
2,595,403 76/048,575 07/16/2002
2,595,408 76/051,386 07/16/2002
2,596,254 76/051,620 07/16/2002
2,595,410 76/052,047 07/16/2002
2,593,655 76/053,077 07/16/2002
2,595,414 76/054,191 07/16/2002
2,593,656 76/054,917 07/16/2002
2,593,658 76/055,350 07/16/2002
2,593,662 76/057,075 07/16/2002
2,593,665 76/058,917 07/16/2002
2,593,668 76/060,991 07/16/2002
2,595,436 76/063,274 07/16/2002
2,593,675 76/063,712 07/16/2002
2,593,677 76/065,606 07/16/2002
2,595,446 76/068,716 07/16/2002
2,596,260 76/070,965 07/16/2002
2,593,695 76/071,417 07/16/2002
2,593,705 76/073,676 07/16/2002
2,593,707 76/074,118 07/16/2002
2,593,710 76/075,346 07/16/2002
2,595,474 76/077,136 07/16/2002
2,593,716 76/077,281 07/16/2002
2,593,725 76/079,427 07/16/2002
2,593,735 76/083,527 07/16/2002
2,595,488 76/083,815 07/16/2002
2,595,489 76/083,932 07/16/2002
2,593,738 76/084,459 07/16/2002
2,593,739 76/085,308 07/16/2002
2,595,499 76/087,614 07/16/2002
2,593,744 76/088,647 07/16/2002
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 146 |
2,593,746 76/088,962 07/16/2002
2,596,270 76/090,132 07/16/2002
2,593,756 76/092,442 07/16/2002
2,593,769 76/096,608 07/16/2002
2,593,770 76/096,609 07/16/2002
2,595,530 76/098,490 07/16/2002
2,595,531 76/098,700 07/16/2002
2,595,537 76/099,949 07/16/2002
2,595,538 76/099,968 07/16/2002
2,595,543 76/102,460 07/16/2002
2,593,781 76/103,796 07/16/2002
2,595,552 76/104,048 07/16/2002
2,595,560 76/106,010 07/16/2002
2,596,275 76/106,022 07/16/2002
2,593,785 76/106,206 07/16/2002
2,593,786 76/106,275 07/16/2002
2,593,788 76/106,570 07/16/2002
2,593,792 76/106,964 07/16/2002
2,593,794 76/107,923 07/16/2002
2,593,796 76/107,983 07/16/2002
2,595,567 76/108,763 07/16/2002
2,595,569 76/108,916 07/16/2002
2,595,574 76/110,633 07/16/2002
2,595,576 76/110,957 07/16/2002
2,595,583 76/112,263 07/16/2002
2,595,585 76/112,462 07/16/2002
2,595,588 76/112,549 07/16/2002
2,595,591 76/113,435 07/16/2002
2,595,604 76/119,206 07/16/2002
2,593,828 76/121,813 07/16/2002
2,593,829 76/122,177 07/16/2002
2,595,607 76/122,184 07/16/2002
2,595,608 76/122,290 07/16/2002
2,593,830 76/122,511 07/16/2002
2,596,287 76/127,402 07/16/2002
2,595,620 76/127,581 07/16/2002
2,593,841 76/127,594 07/16/2002
2,593,848 76/129,686 07/16/2002
2,595,627 76/129,774 07/16/2002
2,593,856 76/131,674 07/16/2002
2,593,857 76/132,061 07/16/2002
2,595,635 76/132,102 07/16/2002
2,593,865 76/133,606 07/16/2002
2,595,656 76/137,638 07/16/2002
2,595,657 76/137,915 07/16/2002
2,595,658 76/137,940 07/16/2002
2,595,660 76/139,566 07/16/2002
2,593,888 76/140,612 07/16/2002
2,595,664 76/141,183 07/16/2002
2,593,894 76/141,550 07/16/2002
2,596,290 76/142,036 07/16/2002
2,593,901 76/142,825 07/16/2002
2,595,669 76/143,120 07/16/2002
2,595,675 76/144,677 07/16/2002
2,593,909 76/145,952 07/16/2002
2,593,911 76/146,203 07/16/2002
2,593,920 76/149,781 07/16/2002
2,595,693 76/150,645 07/16/2002
2,593,923 76/151,050 07/16/2002
2,595,695 76/151,435 07/16/2002
2,593,930 76/153,434 07/16/2002
2,593,931 76/153,514 07/16/2002
2,595,706 76/156,407 07/16/2002
2,593,940 76/157,395 07/16/2002
2,595,711 76/158,317 07/16/2002
2,595,715 76/159,701 07/16/2002
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 147 |
2,596,296 76/161,253 07/16/2002
2,595,724 76/161,890 07/16/2002
2,593,963 76/163,927 07/16/2002
2,593,964 76/164,068 07/16/2002
2,593,967 76/164,544 07/16/2002
2,595,732 76/165,221 07/16/2002
2,593,968 76/165,780 07/16/2002
2,595,737 76/166,759 07/16/2002
2,593,976 76/168,390 07/16/2002
2,595,747 76/169,114 07/16/2002
2,595,754 76/171,391 07/16/2002
2,594,000 76/175,125 07/16/2002
2,595,764 76/175,312 07/16/2002
2,594,013 76/180,734 07/16/2002
2,595,775 76/181,360 07/16/2002
2,594,028 76/184,068 07/16/2002
2,594,029 76/184,163 07/16/2002
2,594,031 76/184,703 07/16/2002
2,595,784 76/186,362 07/16/2002
2,594,044 76/189,482 07/16/2002
2,594,055 76/192,723 07/16/2002
2,594,057 76/193,170 07/16/2002
2,594,063 76/196,333 07/16/2002
2,595,814 76/197,310 07/16/2002
2,596,315 76/197,581 07/16/2002
2,594,069 76/199,045 07/16/2002
2,595,825 76/201,203 07/16/2002
2,595,828 76/201,803 07/16/2002
2,595,830 76/202,961 07/16/2002
2,595,833 76/203,331 07/16/2002
2,595,840 76/205,454 07/16/2002
2,595,846 76/207,675 07/16/2002
2,595,850 76/209,707 07/16/2002
2,595,851 76/209,708 07/16/2002
2,595,854 76/211,066 07/16/2002
2,595,858 76/211,442 07/16/2002
2,594,106 76/211,761 07/16/2002
2,595,863 76/213,563 07/16/2002
2,595,866 76/213,689 07/16/2002
2,596,323 76/213,856 07/16/2002
2,596,324 76/213,970 07/16/2002
2,594,115 76/213,981 07/16/2002
2,594,117 76/215,764 07/16/2002
2,595,875 76/219,174 07/16/2002
2,594,127 76/222,897 07/16/2002
2,594,128 76/223,111 07/16/2002
2,594,131 76/223,642 07/16/2002
2,594,132 76/223,809 07/16/2002
2,596,330 76/224,606 07/16/2002
2,595,884 76/225,495 07/16/2002
2,595,886 76/227,577 07/16/2002
2,595,887 76/227,787 07/16/2002
2,595,889 76/228,702 07/16/2002
2,596,333 76/230,209 07/16/2002
2,595,898 76/232,804 07/16/2002
2,594,154 76/234,536 07/16/2002
2,595,906 76/236,092 07/16/2002
2,594,161 76/237,743 07/16/2002
2,594,162 76/237,824 07/16/2002
2,595,917 76/240,804 07/16/2002
2,595,918 76/241,767 07/16/2002
2,596,341 76/246,395 07/16/2002
2,594,183 76/248,718 07/16/2002
2,595,921 76/249,227 07/16/2002
2,594,186 76/249,798 07/16/2002
2,594,188 76/254,296 07/16/2002
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 148 |
2,594,189 76/254,751 07/16/2002
2,596,344 76/256,120 07/16/2002
2,596,345 76/256,566 07/16/2002
2,595,936 76/258,158 07/16/2002
2,595,942 76/262,082 07/16/2002
2,594,204 76/264,292 07/16/2002
2,594,211 76/266,882 07/16/2002
2,596,355 76/269,870 07/16/2002
2,594,220 76/271,067 07/16/2002
2,595,954 76/275,437 07/16/2002
2,595,955 76/275,865 07/16/2002
2,595,956 76/275,982 07/16/2002
2,595,957 76/275,985 07/16/2002
2,595,964 76/285,074 07/16/2002
2,595,965 76/285,818 07/16/2002
2,595,966 76/286,389 07/16/2002
2,595,967 76/286,504 07/16/2002
2,595,974 76/290,731 07/16/2002
2,594,265 76/293,049 07/16/2002
2,594,266 76/293,382 07/16/2002
2,594,268 76/294,351 07/16/2002
2,594,271 76/295,278 07/16/2002
2,596,372 76/295,922 07/16/2002
2,594,286 76/301,361 07/16/2002
2,594,298 76/306,637 07/16/2002
2,594,300 76/308,452 07/16/2002
2,594,302 76/309,454 07/16/2002
2,594,313 76/311,783 07/16/2002
2,596,379 76/316,502 07/16/2002
2,594,320 76/317,039 07/16/2002
2,596,382 76/317,762 07/16/2002
2,594,323 76/317,794 07/16/2002
2,594,330 76/320,731 07/16/2002
2,594,331 76/320,888 07/16/2002
2,594,335 76/322,632 07/16/2002
2,594,337 76/324,023 07/16/2002
2,594,342 76/326,869 07/16/2002
2,594,347 76/330,725 07/16/2002
2,594,349 76/333,565 07/16/2002
2,594,354 76/336,598 07/16/2002
2,594,360 76/339,582 07/16/2002
2,594,363 76/340,126 07/16/2002
2,594,364 76/340,170 07/16/2002
2,596,395 76/346,983 07/16/2002
2,594,370 78/006,068 07/16/2002
2,596,000 78/008,549 07/16/2002
2,596,018 78/014,112 07/16/2002
2,596,019 78/014,782 07/16/2002
2,596,023 78/015,758 07/16/2002
2,596,030 78/019,052 07/16/2002
2,594,376 78/019,608 07/16/2002
2,596,399 78/025,599 07/16/2002
2,596,071 78/034,302 07/16/2002
2,594,389 78/034,539 07/16/2002
2,594,397 78/038,078 07/16/2002
2,596,083 78/039,607 07/16/2002
2,594,405 78/043,398 07/16/2002
2,596,405 78/047,906 07/16/2002
2,594,413 78/049,775 07/16/2002
2,596,406 78/050,291 07/16/2002
2,596,110 78/053,566 07/16/2002
2,596,407 78/055,889 07/16/2002
2,594,419 78/057,336 07/16/2002
2,594,423 78/063,998 07/16/2002
2,594,427 78/066,540 07/16/2002
2,594,428 78/067,212 07/16/2002
| March 19, 2013 |
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2,596,410 78/068,674 07/16/2002
2,596,132 78/069,534 07/16/2002
2,596,133 78/069,535 07/16/2002
2,594,434 78/076,795 07/16/2002
2,596,146 78/078,719 07/16/2002
2,594,443 78/087,320 07/16/2002
2,594,449 78/091,163 07/16/2002
9,170,67 72/373,032 07/27/1971
1,195,600 73/297,130 05/18/1982
1,569,117 73/791,223 12/05/1989
1,624,144 74/024,026 11/20/1990
1,667,636 74/033,649 12/10/1991
1,632,651 74/046,558 01/22/1991
1,704,826 74/071,916 08/04/1992
1,683,707 74/138,493 04/21/1992
1,675,864 74/143,179 02/18/1992
1,698,691 74/163,213 07/07/1992
Service by Publication
A notice of opposition to the registration of the mark in the
application identified below having been filed, and the notice of such
proceeding sent to applicant at the last known address having been returned
by the Postal Service as undeliverable, notice is hereby given that unless
the applicant listed herein, its assigns or legal representatives, shall
enter an appearance within thirty days of this publication, the opposition
will proceed as in the case of default.
Jayson Lang, Phoenix, AZ, Application Serial No. 85568503 for the mark
"SKINNY JOE BEVERAGES", Opposition No. 91208585.
VERONICA WHITE
Trademark Trial and Appeal Board, for
DEBORAH S. COHN
Commissioner for Trademarks
Service by Publication
A petition to cancel the registration identified below having been
filed, and the notice of such proceeding sent to registrant at the last
known address having been returned by the Postal Service as undeliverable,
notice is hereby given that unless the registrant listed herein, its
assigns or legal representatives, shall enter an appearance within thirty
days of this publication, the cancellation will proceed as in the case of
default.
Nuri Erol, Annandale, VA, Registration No. 3361959 for the mark "MANGINOS",
Cancellation No. 92055741.
ROCHELLE ADAMS
Paralegal
Trademark Trial and Appeal Board, for
DEBORAH S. COHN
Commissioner for Trademarks
Service by Publication
A petition to cancel the registration identified below having been
filed, and the notice of such proceeding sent to registrant at the last
known address having been returned by the Postal Service as undeliverable,
notice is hereby given that unless the registrant listed herein, its
assigns or legal representatives, shall enter an appearance within thirty
days of this publication, the cancellation will proceed as in the case of
default.
Global Trade Connection Co., Inc., Tarzana, CA, Registration No. 3571709
for the mark "THE CAR PART WAREHOUSE", Cancellation No. 92056273.
MONIQUE TYSON
Paralegal Specialist
Trademark Trial and Appeal Board, for
DEBORAH S. COHN
Commissioner for Trademarks
| 37 CFR 1.47 Notice by Publication |
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of a joint inventor. The petition has been granted. A notice has
been sent to the last known address of the non-signing inventor. The
inventor whose signature is missing (Roger J. D'SOUZA) may join in the
application by promptly filing an appropriate oath or declaration complying
with 37 CFR 1.63. The international application number is PCT/US2010/058866
and was filed on December 3, 2010 in the names of Roger J. D'SOUZA, Scott D.
SMITH and Kirthivasan NAGARAJAN for the invention entitled PROCESS FOR
PRODUCING A T-BUTYL PHENOL FROM A C4 RAFFINATE STREAM. The national stage
application number is 13/513,666 and has a 35 U.S.C. 371(c)(1), (2) and (4)
date of January 24, 2013.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of a national stage application
with a petition under 37 CFR 1.47 requesting acceptance of the application
without the signature of all of the inventors. The petition has been
granted. A notice has been sent to the last known address of the
non-signing inventor, Keith Malcolm Lovegrove. The inventor whose signature
is missing may join in the application by promptly filing an appropriate
oath or declaration complying with 37 CFR 1.63. The international
application number is PCT/AU2010/000390 and was filed on 06 April 2010 in
the names of Keith Malcolm Lovegrove, Gregory John Burgess and Joseph
Sydney Coventry for the invention entitled Solar Mirror Panels and Their
Manufacture. The national stage application is assigned number 13/263,085
and has a 35 U.S.C. 371(c)(1), (c)(2) and (c)(4) date of 20 April 2012.
37 CFR 1.47 Notice by Publication
Notice is hereby given of the filing of an application with a petition
under 37 CFR 1.47 requesting acceptance of the application without the
signature of one of the joint inventors. The petition has been granted. A
notice has been sent to the last known address of the non-signing inventor.
The inventor whose signature is missing (Mudalige Gunewardene) may join in
the application by promptly filing an appropriate oath or declaration
complying with 37 CFR 1.63. The international application number is
PCT/US2010/027866 and was filed on 18 March 2010 in the name of Brian
Bennett et al for the invention entitled "A MICROSCOPY SYSTEM AND METHOD
FOR CREATING THREE DIMENSIONAL IMAGES USING PROBE MOLECULES". The national
stage application number is 13/257,588 and has a date of 11 April 2012
under 35 U.S.C. 371(c)(1), (c)(2), and (c)(4).
Registration to Practice
The following list contains the names of persons seeking for
registration to practice before the United States Patent and Trademark
Office. Final approval for registration is subject to establishing to the
satisfaction of the Director of the Office of Enrollment and Discipline
that the person seeking registration is of good moral character and repute.
37 CFR § 11.7 Accordingly, any information tending to affect the
eligibility of any of the following persons on moral ethical or other
grounds should be furnished to the Director of Enrollment and Discipline on
or before April 06, 2013 at the following address: Mail Stop OED United
States Patent and Trademark Office P.O. Box 1450 Alexandria VA 22314
Clyde, Damon Schley, 1521 Becky Lane, Boulder City, NV 89005
Foltenyi, Krisztina, 614 East 24th Street, #14, National City, CA 91950
Gottfredson, Jacob Paul, 456 Ridge Street NW, Washington, DC 20001
Grant, Lisa Frances, Mindspark Interactive Network, 543 Main Street, #407,
New Rochelle, NY 10801
Hosseini, Suzanne Puneh, 6607 Goldsboro Road, Falls Church, VA 22042
Janardhanan, Deepa, Park Vaughan Fleming & Dowler LLP, 2820 Fifth Street,
Davis, CA 95618
Kawasaki, Daisuke, Kenyon & Kenyon LLP, 1500 K Street NW, Suite 700,
Washington, DC 20005
Kim, Minar, 3601 Sweetgrass Lane, Charlotte, NC 28226
Latham, Russell Paul, Teitelbaum & MacLean Registered Patent & Trade-Mark
Agents, 280 Sunnyside Avenue, Ottawa, Ontario, K1S 0R8 Canada
Moore, Robert James, Cetrulo & Capone LLP, 2 Seaport Lane, 10th Floor,
Boston, MA 02210
Mpamugo, Chinyere Nneoma Obia, 2712 Senate Drive, Apartment C203, Lansing,
MI 48912
Pinasco, Pablo Gustavo, 167 Adwick Street, Corona, CA 92881
Powers, Fiona Tapper, Litman Law, 8955 Center Street, Manassas, VA 20110
Rice, James Matthew, 3417 Berkshire Circle, Johnson City, TN 37604
Sagdeo, Parth Vivek, Kilpatrick Townsned Stockton LLP, Two Embarcadero
Center, Eighth Floor, San Francisco, CA 94111
Schwarz, Mark Ronald, Marshall, Gerstein & Borun LLP, 233 South Wacker
Drive, 6300 Willis Tower, Chicago, IL 60605
Steyer, Grant Joseph, Renner, Otto, Boisselle & Sklar, LLP, 3510 Trails
End Drive, Medina, OH 44256
Tauchi, Koji, University of Washington School of Law, William H. Gates
Hall, Box 353020, Seattle, WA 98195-3020
VanVliet, David Scott, 1010 Tara Lane, Apartment 3, Charlotte, NC 28213
Vaughn, Tearra Jerie, 1710 Ambrose Terrace, Swansea, IL 62226
White, Kiley Ann, 1011 Arlington Blvd., Apartment 312, Arlington, VA 22209
Zhu, Zhengmao, IBM, 17 Santa Anna Drive, Poughkeepsie, NY 12603
February 20, 2013 WILLIAM R. COVEY
Deputy General Counsel for Enrollment and Discipline and
Director of the Office of Enrollment and Discipline
Notice of Reprimand
This notice concerns Steven Bruce Lehat of Newport Beach, California.
Mr. Lehat is not a registered patent practitioner and is not authorized to
practice before the United States Patent and Trademark Office ("USPTO" or
"Office") in patent matters. Mr. Lehat is authorized to practice before the
Office in trademark matters and does so.]
The USPTO Director has publicly reprimanded Mr. Lehat and directed that
he refund unearned fees to a client because Mr. Lehat violated 37 C.F.R.
§§ 10.40(a) (proscribing failure to promptly refund any part of a fee paid
in advance that has not been earned); 10.112(a) (proscribing failure to
promptly pay or deliver to the client as requested by a client the funds or
other properties in the possession of the practitioner which the client is
entitled to receive); 10.36(a) (proscribing entering into an agreement for,
charge, or collect an illegal or clearly excessive fee); and 10.37(a)
(proscribing dividing a fee for legal services with another practitioner
who is not a partner in or associate of the practitioner's law firm or law
office unless (i) the client consents to employment of the other
practitioner after a full disclosure that a division of fees will be made,
(ii) the division is made in proportion to the services performed and
responsibility assumed by each, and (iii) the total fee of the
practitioners does not clearly exceed reasonable compensation for all legal
services rendered to the client).
The aforementioned violations of Disciplinary Rules of the USPTO Code of
Professional Responsibility are based on Mr. Lehat not promptly refunding
$4,200 in unearned legal fees to a patent applicant who had paid $5,000 to
Respondent for the preparation, filing, and prosecuting of a patent
application where only $800 of patent work had been completed by the
registered patent attorney with whom Mr. Lehat had contracted to perform
the patent work. Mr. Lehat claimed entitlement to the $4,200 because he
served as a "relationship attorney" and, in that capacity, he charged the
patent applicant at the rate of $1,000 per hour when the applicant
terminated the attorney-client relationship.
In agreeing to the above-described sanction, the OED Director took into
account that Mr. Lehat has no prior disciplinary history before the Office
during the 32 years he has been licensed to practice law and that Mr. Lehat
now appears to understand fully why his conduct violated the Disciplinary
Rules of USPTO Code of Professional Responsibility set forth above.
This action is the result of a settlement agreement between the OED
Director and Mr. Lehat pursuant to the provisions of 35 U.S.C. §§
2(b)(2)(D) and 32 and 37 C.F.R. §§ 11.20, 11.26, and 11.59. Disciplinary
decisions involving practitioners are posted for public reading at the
Office of Enrollment and Discipline Reading Room, which is accessible at:
http://e-foia.uspto.gov/Foia/OEDReadingRoom.jsp.
February 22, 2013 JAMES O. PAYNE
Deputy General Counsel for General Law
United States Patent and Trademark Office
on behalf of
TERESA STANEK REA
Acting Under Secretary of Commerce for Intellectual Property and
Acting Director of the United States Patent and Trademark Office
| Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the Portugal National Institute of Industrial Property based on Patent Cooperation Treaty Work Products |
Patent Prosecution Highway Pilot Program between the
United States Patent and Trademark Office and the
Portugal National Institute of Industrial Property based on
Patent Cooperation Treaty Work Products
I. Background
Since 2006, the United States Patent and Trademark Office (USPTO) has
established Patent Prosecution Highway (PPH) pilot programs with several
offices. In general, such PPH pilot programs permit an applicant who
receives a determination from one office that at least one claim is
allowable or patentable to request that a corresponding application in
another office be accorded special status and advanced out of turn for
examination. These PPH pilot programs are limited to the utilization of
search and examination results of national applications between cross
filings under the Paris Convention.
In order to expand the potential of the PPH program, the USPTO
implemented new PPH pilot programs with various offices based on Patent
Cooperation Treaty (PCT) work products. The USPTO had discussions with the
Portugal National Institute of Industrial Property (INPI-PT) to launch a
PPH pilot program based on PCT work products (PCT-PPH pilot program)
similar to the established PCT-PPH pilot programs mentioned above. The
USPTO and the INPI-PT agreed that consistency between PCT-PPH pilot
programs should be maintained to the extent possible, to avoid creating
burdens on applicants and offices, and to ensure maximum work-sharing
potential.
II. PCT-PPH Pilot Program
The PCT-PPH pilot program was established to enable an applicant, who
has received:
(1) a Written Opinion from the United States International Searching
Authority, or
(2) a Written Opinion from the United States International
Preliminary Examining Authority, or
(3) an International Preliminary Examination Report from the United
States International Preliminary Examining Authority,
that indicates that at least one claim in the PCT application has novelty,
inventive step and industrial applicability, to file a request to
participate in the PCT-PPH pilot program and request accelerated
examination for the corresponding application filed with the INPI-PT. The
procedures and requirements for filing a request in the INPI-PT for
participation in the PCT-PPH pilot program were made available on January
29, 2013, from the INPI-PT Web site at: http://www.marcasepatentes.pt/.
III. Trial Period for the PCT-PPH Pilot Program
The USPTO and the INPI-PT agreed that the PCT-PPH pilot program will
commence on January 29, 2013, for a period of one year ending on January
28, 2014. The trial period may be extended if necessary to adequately
assess the feasibility of the PCT-PPH pilot program. The USPTO and the
INPI-PT may also terminate the PCT-PPH pilot program early if the volume of
participation exceeds a manageable level, or for any other reasons. Notice
will be published if the PCT-PPH pilot program will be terminated before
January 28, 2014.
Any inquiries concerning this notice may be directed to Bryan Lin,
Office of PCT Legal Administration at 571-272-3303, or via e-mail addressed
to bryan.lin@uspto.gov.
Specific questions about the Patent Prosecution Highway should be
directed to the Office of Petitions at 571-272-3282, or via e-mail
addressed to PPHfeedback@uspto.gov.
February 12, 2013 TERESA STANEK REA
Acting Under Secretary of Commerce for Intellectual Property and
Acting Director of the United States Patent and TrademarkOffice
| Examination Guidelines for Implementing the First Inventor To File Provisions of the Leahy-Smith America Invents Act |
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2012-0024]
Examination Guidelines for Implementing the First Inventor To
File Provisions of the Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Examination guidelines.
SUMMARY: The United States Patent and Trademark Office (Office) is
publishing examination guidelines concerning the first inventor to file
provisions of the Leahy-Smith America Invents Act (AIA). The AIA amends the
patent laws pertaining to the conditions of patentability to convert the
U.S. patent system from a "first to invent" system to a "first inventor to
file" system, treats patents and patent application publications as prior
art as of their earliest effective U.S., foreign, or international filing
date, eliminates the requirement that a prior public use or sale activity
be "in this country" to be a prior art activity, and treats commonly owned
or joint research agreement patents and patent application publications as
being by the same inventive entity for purposes of novelty, as well as
nonobviousness. The changes to the conditions of patentability in the AIA
result in greater transparency, objectivity, predictability, and simplicity
in patentability determinations. The Office is providing these examination
guidelines to Office personnel, and notifying the public of these
guidelines, to assist in the implementation of the first inventor to file
provisions of the AIA. These examination guidelines also clarify, in
response to the public comment, that there is no requirement that the mode
of disclosure by an inventor or joint inventor be the same as the mode of
disclosure of an intervening disclosure (e.g., inventor discloses his
invention at a trade show and the intervening disclosure is in a
peer-reviewed journal). Additionally, there is no requirement that the
disclosure by the inventor or a joint inventor be a verbatim or ipsissimis
verbis disclosure of an intervening disclosure in order for the exception
based on a previous public disclosure of subject matter by the inventor or
a joint inventor to apply. These guidelines also clarify that the exception
applies to subject matter of the intervening disclosure that is simply a
more general description of the subject matter previously publicly
disclosed by the inventor or a joint inventor.
DATES: Effective March 16, 2013.
FOR FURTHER INFORMATION CONTACT: Mary C. Till, Senior Legal Advisor
(telephone (571) 272-7755; electronic mail message (mary.till@uspto.gov))
or Kathleen Kahler Fonda, Senior Legal Advisor (telephone (571) 272-7754;
electronic mail message (kathleen.fonda@uspto.gov)), of the Office of the
Deputy Commissioner for Patent Examination Policy.
SUPPLEMENTARY INFORMATION: The AIA 1 was enacted into law on September 16,
2011. Section 3 of the AIA amends the patent laws to: (1) Convert the
patent system from a "first to invent" system to a "first inventor to file"
system; (2) eliminate the requirement that a prior public use or sale
activity be "in this country" to be a prior art activity; (3) treat U.S.
patents and U.S. patent application publications as prior art as of their
earliest effective filing date, regardless of whether the earliest
effective filing date is based upon an application filed in the United
States or in another country; and (4) treat commonly owned patents and
patent application publications, or those resulting from a joint research
agreement, as being by the same inventive entity for purposes of 35 U.S.C.
102 and 103. The changes in section 3 of the AIA take effect on March 16,
2013. The Office is providing these examination guidelines to Office
personnel, and notifying the public of these guidelines, to assist in the
implementation of the first inventor to file provisions of the AIA.
| March 19, 2013 |
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These examination guidelines do not constitute substantive rulemaking
and do not have the force and effect of law. The examination guidelines set
out the Office's interpretation of 35 U.S.C. 102 and 103 as amended by the
AIA, and advise the public and Office personnel on how the changes to 35
U.S.C. 102 and 103 in the AIA impact the provisions of the Manual of Patent
Examining Procedure (MPEP) 2 pertaining to 35 U.S.C. 102 and 103. The
guidelines have been developed as a matter of internal Office management
and are not intended to create any right or benefit, substantive or
procedural, enforceable by any party against the Office. Rejections will
continue to be based upon the substantive law, and it is these rejections
that are appealable. Failure of Office personnel to follow the guidelines
is not, in itself, a proper basis for either an appeal or a petition.
These examination guidelines apply the case law on pre-AIA 35 U.S.C. 102
and 103 to interpret the provisions of AIA 35 U.S.C. 102 and 103 where the
AIA retains principles of pre-AIA 35 U.S.C. 102 and 103. Office personnel
may and should continue to rely upon pre-AIA 35 U.S.C. 102 and 103 case law
and the discussion of that case law in MPEP chapter 2100, except where
these guidelines specifically indicate that the AIA does not retain a
principle of pre-AIA 35 U.S.C. 102 and 103. The provisions of AIA 35 U.S.C.
102 and 103 will be further clarified as the case law on the first inventor
to file provisions of the AIA develops, and the Office will provide
additional or revised guidelines as necessary.
Table of Contents
Discussion of the Public Comments
General Discussion of the Recurrent Issues Raised in the Comments
Responses to Specific Comments
Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First
Inventor To File Provisions of the Leahy-Smith America Invents Act
I. Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA
II. Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)
A. Effective Filing Date of the Claimed Invention
B. Provisions Pertaining to Disclosures Before the Effective
Filing Date of the Claimed Invention
1. Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a
Printed Publication, or in Public Use, on Sale, or Otherwise Available to
the Public)
a. Patented
b. Described in a Printed Publication
c. In Public Use
d. On Sale
e. Otherwise Available to the Public
f. No Requirement of "by Others"
g. Admissions
h. The Meaning of "Disclosure"
2. Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35
U.S.C. 102(a)(1)
a. Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) to AIA 35 U.S.C.
102(a)(1) (Grace Period Inventor or Inventor-Originated Disclosure
Exception)
i. Grace Period Inventor Disclosure Exception
ii. Grace Period Inventor-Originated Disclosure Exception
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b. Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 U.S.C.
102(a)(1) (Inventor or Inventor-Originated Prior Public Disclosure
Exception)
C. Provisions Pertaining to Subject Matter in a U.S. Patent or
Application for a U.S. Patent Effectively Filed Before the Effective Filing
Date of the Claimed Invention
1. Prior Art Under AIA 35 U.S.C. 102(a)(2) (U.S. Patents, U.S. Patent
Application Publications, and World Intellectual Property Organization
(WIPO) Publications of International Applications (WIPO Published
Applications)
a. WIPO Published Applications
b. Determining When Subject Matter Was Effectively Filed Under AIA 35
U.S.C. 102(d)
c. Requirement of "Names Another Inventor"
2. Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C.
102(a)(2)
a. Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C.
102(a)(2) (Inventor-Originated Disclosure Exception)
b. Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C.
102(a)(2) (Inventor or Inventor-Originated Prior Public Disclosure
Exception)
c. Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C.
102(a)(2) (Common Ownership or Obligation of Assignment)
D. Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome
Prior Art Rejections
1. Showing That the Disclosure Was Made by the Inventor or a Joint
Inventor
2. Showing That the Subject Matter Disclosed Had Been Previously
Publicly Disclosed by the Inventor or a Joint Inventor
3. Showing That the Disclosure Was Made, or That Subject Matter Had Been
Previously Publicly Disclosed, by Another Who Obtained the Subject Matter
Disclosed Directly or Indirectly From the Inventor or a Joint Inventor
4. Enablement
5. Who May File an Affidavit or Declaration under 37 CFR 1.130
6. Situations in Which an Affidavit or Declaration Is Not Available
III. Joint Research Agreements
IV. Improper Naming of Inventors
V. AIA 35 U.S.C. 103
VI. Applicability Date Provisions and Determining Whether an Application Is
Subject to the First Inventor To File Provisions of the AIA
A. Applications Filed Before March 16, 2013
B. Applications Filed on or After March 16, 2013
C. Applications Subject to the AIA But Also Containing a Claimed
Invention Having an Effective Filing Date Before March 16, 2013
D. Applicant Statement in Transition Applications Containing a Claimed
Invention Having an Effective Filing Date on or after March 16, 2013
Discussion of the Public Comments: The Office published a notice of
| March 19, 2013 |
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proposed rulemaking and a notice of proposed examination guidelines on July
26, 2012, to implement the first inventor to file provisions of section 3
of the AIA. See Changes To Implement the First Inventor To File Provisions
of the Leahy-Smith America Invents Act, 77 FR 43742 (July 26, 2012) (notice
of proposed rulemaking), and Examination Guidelines for Implementing the
First Inventor To File Provisions of the Leahy-Smith America Invents Act,
77 FR 43759 (July 26, 2012) (notice of proposed examination guidelines).
The Office also conducted a roundtable discussion with the public on
September 6, 2012, to obtain public input from organizations and
individuals on issues relating to the Office's proposed implementation of
the first inventor to file provisions of the AIA. See Notice of Roundtable
on the Implementation of the First Inventor To File Provisions of the
Leahy-Smith America Invents Act, 77 FR 49427 (Aug. 16, 2012). The Office
also conducted a number of roadshow presentations in September of 2012 that
included a discussion of the first inventor to file provisions of the AIA.
The Office received approximately seventy comments (from intellectual
property organizations, governmental organizations, academic and research
institutions, industry, law firms, and individuals) in response to these
notices. The comments germane to the proposed changes to the rules of
practice will be discussed in the final rule that revises the rules of
practice in title 37 of the Code of Federal Regulations (CFR) in light of
the changes in section 3 of the AIA. The comments germane to the proposed
examination guidelines (other than those specific to the proposed rules)
and the Office's responses to the comments follow:
General Discussion of the Recurrent Issues Raised in the Comments: A
number of comments addressed the following issues raised in the proposed
examination guidelines.
The Office indicated in the proposed examination guidelines that AIA 35
U.S.C. 102(a)(1) does not expressly state whether a sale must be
"sufficiently" public to preclude the grant of a patent on the claimed
invention, and sought the benefit of public comment on the extent to which
public availability plays a role in "on sale" prior art defined in AIA 35
U.S.C. 102(a)(1). See Examination Guidelines for Implementing the First
Inventor To File Provisions of the Leahy-Smith America Invents Act, 77 FR
at 43765. The Office received a number of comments on this question. These
examination guidelines indicate that the Office views the "or otherwise
available to the public" residual clause of the AIA's 35 U.S.C. 102(a)(1)
as indicating that secret sale or use activity does not qualify as prior
art. These examination guidelines also indicate that an activity (such as a
sale, offer for sale, or other commercial activity) is secret (non-public)
if, for example, it is among individuals having an obligation of
confidentiality to the inventor. The specific comments on this issue are
discussed in greater detail in the Responses to Specific Comments section.
The Office also indicated in the proposed examination guidelines that
the subject matter in the prior disclosure being relied upon under AIA 35
U.S.C. 102(a) must be the same "subject matter" as the subject matter
previously publicly disclosed by the inventor for the exceptions in AIA 35
U.S.C. 102(b)(1)(B) and 102(b)(2)(B) to apply, and that the exceptions in
AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply even if the only
differences between the subject matter in the prior art disclosure that is
relied upon under AIA 35 U.S.C. 102(a) and the subject matter previously
publicly disclosed by the inventor are mere insubstantial changes, or only
trivial or obvious variations. See Examination Guidelines for Implementing
the First Inventor To File Provisions of the Leahy-Smith America Invents
Act, 77 FR at 43767 and 43769. The Office also received a number of
comments on this issue. These examination guidelines maintain the identical
subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and
102(b)(2)(B). However, these examination guidelines also clarify that there
is no requirement that the mode of disclosure by an inventor or joint
inventor (e.g., publication, public use, sale activity) be the same as the
mode of disclosure of the intervening disclosure, and also does not require
that the disclosure by the inventor or a joint inventor be a verbatim or
ipsissimis verbis disclosure of the intervening disclosure. In addition,
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these examination guidelines also clarify that if subject matter of the
intervening disclosure is simply a more general description of the subject
matter previously publicly disclosed by the inventor or a joint inventor,
the exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter
of the intervening disclosure. The specific comments on this issue are also
discussed in greater detail in the Responses to Specific Comments section.
Responses to Specific Comments:
Comment 1: One comment suggested that Office actions clearly indicate
whether an application is examined under the pre-AIA first to invent
provisions or the AIA first inventor to file provisions, and provide the
reasons the pre-AIA first to invent provisions or the AIA first inventor
to file provisions apply to the application.
Response: The Office plans to indicate in the Office's Patent
Application Locating and Monitoring (PALM) system whether the Office is
treating an application as subject to pre-AIA 35 U.S.C. 102 and 103 (a
pre-AIA application) or AIA 35 U.S.C. 102 and 103 (an AIA application).
Members of the public may access this information via the Patent
Application Information Retrieval (PAIR) system. Furthermore, form
paragraphs for use in Office actions will be developed which will identify
whether the provisions of pre-AIA 35 U.S.C. 102 and 103 or AIA 35 U.S.C.
102 and 103 apply if there is a rejection based upon 35 U.S.C. 102 or 103.
The Office does not plan to provide a specific explanation in an Office
action of why the pre-AIA first to invent provisions or the AIA first
inventor to file provisions apply to an application unless the matter is
called into question.
Comment 2: One comment suggested that in determining whether an
application is an AIA application or a pre-AIA application, a procedure
should be available to ensure that disputes concerning whether an
application is an AIA application or a pre-AIA application are readily
resolved.
Response: The Office plans to have staff in each Technology Center who
are able to assist Office personnel in determining whether the application
is a pre-AIA application or an AIA application. If an issue arises during
the course of examination about whether the application is a pre-AIA
application or an AIA application, Office personnel may consult with these
staff members. If a disagreement between the applicant and an examiner
cannot be resolved informally and results in a rejection that would
otherwise be inapplicable, the applicant may respond to the merits of the
rejection with an explanation of why the Office's treatment of the
application as a pre-AIA application or an AIA application is improper.
Ultimately, if there is a disagreement between the applicant and an
examiner as to whether the application is subject to pre-AIA 35 U.S.C. 102
and 103 or AIA 35 U.S.C. 102 and 103, and the propriety of a rejection
turns on the resolution of this question, the disagreement would need to be
resolved on appeal.
Comment 3: One comment questioned whether a patent is valid if examined
under the wrong prior art regime.
Response: The bases for invalidity are specified in 35 U.S.C. 282(b) and
have not changed with implementation of the AIA, except for the removal of
best mode as a grounds to cancel, invalidate, or render unenforceable a
claim of a patent. Specifically, AIA 35 U.S.C. 282(b) provides the
following bases for invalidity: (1) Noninfringement, absence of liability
for infringement, or unenforceability; (2) invalidity of the patent or any
claim in suit on any ground specified in part II of title 35, United States
Code, as a condition for patentability; (3) invalidity of the patent or any
claim in suit for failure to comply with: (A) Any requirement of 35 U.S.C.
112, except that the failure to disclose the best mode shall not be a basis
on which any claim of a patent may be canceled or held invalid or otherwise
unenforceable; or (B) any requirement of 35 U.S.C. 251; and (4) any other
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fact or act made a defense by title 35.
Comment 4: One comment took issue with the use of the phrases "claimed
invention" and "claim to a claimed invention" in the proposed examination
guidelines. The comment argued that AIA 35 U.S.C. 100(j), 102, and 103 use
phrase "claimed invention," and that the phrase "a claim to a claimed
invention" is used only in section 3(n) of the AIA (the effective date
provisions for section 3).
Response: The examination guidelines have been revised to use the phrase
"claimed invention" when discussing the provisions of AIA 35 U.S.C. 100(j),
102, and 103.
Comment 5: One comment suggested clearly differentiating between "claim"
in the sense of a claim to a claimed invention and "claim" in the sense of
a benefit or priority claim.
Response: With respect to a claimed invention, the examination
guidelines use the phrase "claimed invention" or the phrase "a claim to a
claimed invention." With respect to a claim to priority or benefit under 35
U.S.C. 119, 120, 121, or 365, the examination guidelines use the term
"claim" along with either benefit or priority in the same sentence to
distinguish a benefit or priority claim from a claimed invention.
Comment 6: Several comments suggested that the examination guidelines
maintain the status quo with respect to the terms "on sale" and "public
use" to force issues such as whether secret sales qualify as prior art to
the courts as soon as possible. Another comment suggested that the Office
serves a gatekeeper role and that ultimately the courts will provide
clarity on open legal questions presented by the AIA. Thus, the comment
recommended that the Office construe the statute in a manner biased against
applicants so that issues concerning the meaning of AIA 35 U.S.C. 102 and
103 quickly and expeditiously move to the courts for resolution.
Response: The Office appreciates that the courts may ultimately address
questions concerning the meaning of AIA 35 U.S.C. 102 and 103. However, as
a practical matter, the Office needs to provide examination guidelines so
that the public is aware of how the Office will apply AIA 35 U.S.C. 102 and
103. The Office considers its interpretation of AIA 35 U.S.C. 102 and 103
as set forth in these examination guidelines to be the correct
interpretation of AIA 35 U.S.C. 102 and 103 based upon the statutory
language of the AIA and its legislative history.
Comment 7: A number of comments suggested that public availability
should be a requirement for "on sale" activities under AIA 35 U.S.C.
102(a)(1), and that non-public uses and non-public sales or offers for sale
do not qualify as prior art under the AIA. The comments suggesting that
public availability should be a requirement for "on sale" activities under
AIA 35 U.S.C. 102(a)(1) gave the following reasons: (1) The catch-all
phrase "otherwise available to the public" in AIA 35 U.S.C. 102(a)(1) and
case law cited in the legislative history of the AIA supports the view that
"available to the public" should be read as informing the meaning of all of
the listed categories of prior art in AIA 35 U.S.C. 102(a)(1); (2) the
removal of derivation under pre-AIA 35 U.S.C. 102(f) and prior invention
under pre-AIA 35 U.S.C. 102(g) as prior art indicates that the AIA intended
to do away with "secret" prior art; (3) public availability is the intent
of AIA, and for the Office to construe the statute otherwise would erode
the availability of patent protection in the United States, and weaken the
economy; (4) interpreting the "on sale" provision to require public
availability is good public policy in that it would lower litigation costs
by simplifying discovery, and would reduce unexpected prior art pitfalls
for inventors who are not well-versed in the law.
Several comments, however, suggested that the legislative history of the
AIA is insufficient to compel the conclusion that Congress intended to
overturn pre-AIA case law 3 holding that an inventor's non-public sale
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before the critical date is a patent-barring "on sale" activity as to that
inventor. One comment suggested that commercial uses that are not
accessible to the public are nonetheless disqualifying prior art because
Metallizing Engineering 4 and other pre-AIA case law interpreting "public
use" and "on sale" continue to apply under the AIA, and do not require
public availability. The comment further suggested that commercial uses
that are accessible to the public, even if such accessibility is not
widespread, are disqualifying prior art to all parties. Another comment
suggested that Metallizing Engineering and other forfeiture doctrines
should be preserved because they serve important public policies. Another
comment suggested that if the Office does adopt the position that
Metallizing Engineering is overruled, and that any sale under AIA 35 U.S.C.
102(a)(1) must be public, the Office should promulgate a rule requiring
that any secret commercial use of the claimed invention more than one year
prior to the effective filing date be disclosed to the Office. Another
comment indicated that sales between joint ventures and sales kept secret
from the "trade" should still be considered prior art under AIA 35 U.S.C.
102(a)(1).
One comment suggested that under AIA 35 U.S.C. 102(a)(1) there are two
general categories of prior art, with each having subcategories: The first
category is patents and printed publications, and the second category is
"on sale," "public use," or "otherwise available to the public." The
comment suggested that "otherwise available to the public" clause only
modifies the second category: "public use" and "on sale."
Response: The starting point for construction of a statute is the
language of the statute itself. 5 A patent is precluded under AIA 35 U.S.C.
102(a)(1) if "the claimed invention was patented, described in a printed
publication, or in public use, on sale, or otherwise available to the
public before the effective filing date of the claimed invention." AIA 35
U.S.C. 102(a)(1) contains the additional residual clause "or otherwise
available to the public." Residual clauses such as "or otherwise" or "or
other" are generally viewed as modifying the preceding phrase or phrases. 6
Therefore, the Office views the "or otherwise available to the public"
residual clause of the AIA's 35 U.S.C. 102(a)(1) as indicating that secret
sale or use activity does not qualify as prior art. 7
The Office's interpretation of AIA 35 U.S.C. 102(a)(1) also ensures that
the AIA grace period can extend to all of the documents and activities
enumerated in AIA 35 U.S.C. 102(a)(1) that would otherwise defeat
patentability. In addition, this interpretation avoids the very odd
potential result that the applicant who had made his invention accessible
to the public for up to a year before filing an application could still
obtain a patent, but the inventor who merely used his invention in secret
one day before he filed an application could not obtain a patent. Finally,
the Office's interpretation is consistent with the interpretation that was
clearly expressed by the bicameral sponsors of the AIA during the
congressional deliberations on the measure. 8
With respect to suggestions concerning what information concerning
patentability must be disclosed to the Office (secret commercial sale or
use), 37 CFR 1.56 provides that applicants have a duty to disclose all
information known to be material to patentability as defined in 37 CFR
1.56, and there is no reason to treat public or non-public commercial sale
or use or activity differently from other information.
With respect to comments that Metallizing Engineering and other
forfeiture doctrines should be preserved because they serve important
public policies, the Office notes that the choice of which public policies
to pursue through the definition of prior art is made by Congress, not by
the Office. Also, some of the purposes ascribed to these doctrines in case
law appear to be ill-suited to or inconsistent with the AIA. The problem of
delayed filing of applications is unique to pre-AIA 35 U.S.C. 102, under
which an applicant can rely on a secret invention date in order to
establish a priority date.
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Comment 8: A comment suggested that offers for sale must be public in
order to constitute prior art under AIA 35 U.S.C. 102(a)(1) and that an
offer for license is not an offer for sale.
Response: The case law distinguishing between offers for sale and offers
for license under pre-AIA 35 U.S.C. 102(b) is equally applicable under AIA
35 U.S.C. 102(a)(1) as the AIA did not amend 35 U.S.C. 102 to change the
treatment of the prior art effect of an offer for license. The U.S. Court
of Appeals for the Federal Circuit (Federal Circuit) has held that "a
'license' that merely grants rights under a patent cannot per se trigger
the application of the on-sale bar," 9 and that "[a]n offer to enter into a
license under a patent for future sale of the invention covered by the
patent when and if it has been developed * * * is not an offer to sell the
patented invention that constitutes an on-sale bar." 10 If a transaction or
offer with respect to an invention constitutes licensing within the meaning
of these cases, the offer or transaction does not implicate the on sale
bar. However, if the licensing of an invention makes the invention
available to the public, patentability would be independently barred by the
residual clause of AIA 35 U.S.C. 102, which precludes patenting of a
claimed invention that was "available to the public" more than one year
before the effective filing date of the claimed invention.
Comment 9: One comment requested guidance on what might be required for
showing disclosure of a previously secret process to produce an "on sale"
product, e.g., through reverse engineering.
Response: Any rejection of a claim under AIA 35 U.S.C. 102 requires
evidence of a prior disclosure of the claimed invention via a document or
activity as defined in AIA 35 U.S.C. 102(a)(1), or evidence that the
claimed invention was effectively filed prior to the effective filing date
of the application under examination as defined in AIA 35 U.S.C. 102(a)(2).
Thus, any rejection of a claim under AIA 35 U.S.C. 102(a)(1) on the basis
of a prior disclosure of the claimed invention via a sale or an offer for
sale of a product produced by a previously secret process (e.g., a
situation in which the public could learn the claimed process by examining
the product) would need to be supported by some amount of documentary
evidence or an affidavit or declaration. However, once any potentially
patent-defeating sale or use is shown, evidence as to whether that sale or
use made the invention available to the public should be accessible to the
applicant and it is thus appropriate to require the applicant to come
forward with that evidence. 11
Comment 10: Several comments suggested that a public use or sale need
not be enabling to constitute prior art under AIA 35 U.S.C. 102(a)(1).
Response: The case law provides that the enablement inquiry is
applicable to the question of whether a claimed invention is described in a
patent, published patent application, or printed publication, but is not
applicable to the question of whether a claimed invention is "in public
use" or "on sale." 12 The Office does not view the AIA as changing this
principle of pre-AIA case law.
Comment 11: One comment sought clarification on whether a "motion for
sale" was included with the prior art category of "on sale."
Response: Insofar as a "motion for sale" is equal to an "offer for
sale," the Office understands that the pre-AIA case law on "offers for
sale" would equally apply under the AIA. The on sale provision of pre-AIA
35 U.S.C. 102(b) is triggered if the invention is both: (1) The subject of
a commercial offer for sale; and (2) ready for patenting. 13 Traditional
contract law principles are applied when determining whether a commercial
offer for sale has occurred. 14
Comment 12: One comment questioned whether the experimental use
exception to public use would continue under the AIA first inventor to file
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provisions.
Response: Under pre-AIA case law, the experimental use exception negates
a use that would otherwise defeat patentability. Neither the AIA nor its
legislative history expressly addresses whether the experimental use
exception applies to a public use under AIA 35 U.S.C. 102(a)(1), or to a
use that makes the invention available to the public under the residual
clause of AIA 35 U.S.C. 102(a)(1). Because this doctrine arises
infrequently before the Office, and is case-specific when it does arise,
the Office will approach this issue when it arises on the facts presented.
Comment 13: One comment sought elaboration on what constitutes "publicly
available" within the context of 35 U.S.C. 102(a)(1). The comment sought
input on the transitory nature of on-line materials, economic factors
regarding accessibility to public materials, restrictions on access, and
password or user agreement access to on-line materials.
Response: MPEP § 2128 discusses whether material that is posted on the
Internet or that is challenging to access is sufficiently accessible to the
public to be considered a "printed publication" under pre-AIA 35 U.S.C.
102. Since the "otherwise available to the public" clause of AIA 35 U.S.C.
102(a)(1) encompasses these materials, the case law on whether material is
available and accessible as discussed in MPEP § 2128 will guide the Office
and the public in making determinations as to whether any particular
disclosure is sufficiently publicly available under the "otherwise
available to the public" clause of AIA 35 U.S.C. 102(a)(1). The Federal
Circuit recently reiterated that the ultimate question is whether the
material was "available to the extent that persons interested and
ordinarily skilled in the subject matter or art[,] exercising reasonable
diligence, can locate it." 15 The determination of whether material was
publicly available does not turn on the logistical or economic issues a
person would face in gaining access to the material. For example, material
whose distribution was restricted to persons involved in a specific project
was considered not publicly accessible, 16 but material housed in a library
that provides access to the public was considered publicly accessible even
though a person would need to engage in considerable travel to actually
gain access to the material. 17
Comment 14: One comment questioned whether, in order for a WIPO
publication to be considered prior art under AIA 35 U.S.C. 102(a)(2), the
PCT application must enter the national stage in the United States
(analogous to the requirement for a WIPO publication to enter the national
stage in Japan in order to be considered prior art as of its priority date
in Japan). The comment also suggested that if a WIPO publication will be
prior art as of its priority date under AIA 35 U.S.C. 102(a)(2) when
published in any language, the Office should provide a translation to the
applicant against whose claims the WIPO publication has been cited.
Response: Under AIA 35 U.S.C. 102(a)(2), a person shall be entitled to a
patent unless the claimed invention was described in an application for
patent that was published or "deemed published" pursuant to 35 U.S.C.
122(b). In accordance with 35 U.S.C. 374, the WIPO publication of a PCT
international application designating the United States is deemed a
publication under 35 U.S.C. 122(b). Thus, the Office cannot set forth an
interpretation that a WIPO publication can be prior art under AIA 35 U.S.C.
102(a)(2) only if the PCT application enters the national stage in the
United States because that interpretation would conflict with AIA 35 U.S.C.
102(a)(2) and 35 U.S.C. 374. Patent documents and non-patent-literature are
prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) regardless of the
language of the publication. Although the Office does not currently provide
translations as a matter of course for non-English-language patent
documents and non-patent-literature, translation services are available to
Office personnel for use on a case-by-case basis. See MPEP § 901.05(d). If
an Office action relies upon a document in a language other than English, a
translation (machine or human) will be made of record if necessary for the
record to be clear as to the precise facts relied upon in support of the
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rejection. See MPEP § 706.02 (section II).
Comment 15: One comment suggested that the Office adopt a process to
avoid granting a patent on a later-filed application claiming subject
matter disclosed in an earlier-filed application by another.
Response: The Office is in the process of developing a Patents
End-to-End (PE2E) patent application processing system that will permit
Office personnel to text search pending applications that have not yet been
published, which will help avoid granting a patent on a later-filed
application claiming subject matter disclosed in an earlier-filed
application by another. However, in the event that a patent is issued on a
later-filed application claiming subject matter disclosed in an
earlier-filed application, the applicant in the earlier-filed application
may request early publication of the application under 37 CFR 1.219 and
cite the resulting patent application publication in the file of the
later-filed application under 35 U.S.C. 301 and 37 CFR 1.501.
Comment 16: One comment requested clarification as to whether the Office
will continue to apply the Hilmer 18 doctrine to pre-AIA applications.
Response: Under the "Hilmer doctrine," the foreign priority date of a
U.S. patent (or U.S. patent application publication) may not be relied upon
in determining the date that the U.S. patent (or U.S. patent application
publication) is effective as prior art under pre-AIA 35 U.S.C. 102(e). AIA
35 U.S.C. 102(d) eliminates the Hilmer doctrine. The "Hilmer doctrine" as
discussed in MPEP § 2136.03 remains applicable to pre-AIA applications
because AIA 35 U.S.C. 102(d) does not apply to pre-AIA applications.
Comment 17: One comment expressed concern that Office personnel would
rely on a foreign priority date as the applicable prior art date for
rejecting a claim in an application under examination solely because the
prior art patent document reference was "entitled to claim priority to, or
benefit of" a prior-filed application. The comment suggested use of machine
translations to ensure proper reliance on the earlier filing date.
Response: The issue is similar to the current situation in which a U.S.
patent or U.S. patent application publication claims the benefit under 35
U.S.C. 119(e) of a provisional application, except that foreign priority
applications are originally filed in a foreign patent office and may be in
a language other than English. The Office is revising 37 CFR 1.55 in a
separate action (RIN 0651-AC77) to ensure that a copy of a foreign priority
application (a certified copy from the foreign patent office, an interim
copy from the applicant, or a copy via a priority document exchange
program) is available for situations in which a U.S. patent or U.S. patent
application publication has a prior art effect as of the filing date of a
foreign priority application. As discussed previously, if an Office action
relies upon a document in a language other than English, a translation
(machine or human) will be made of record if necessary for the record to be
clear as to the precise facts relied upon in support of the rejection. See
MPEP § 706.02 (section II).
Comment 18: One comment suggested that when applying prior art as of its
earliest effective filing date to a claim in an application under 35 U.S.C.
102(a)(2), the applicant should be able to rebut the rejection by
establishing that the subject matter relied upon for the rejection is not
supported in the earlier filed application from which a benefit or priority
is sought and hence may not be prior art under AIA 35 U.S.C. 102(a)(1) or
102(a)(2).
Response: AIA 35 U.S.C. 102(d) provides that for purposes of determining
whether a patent or application for patent is prior art to a claimed
invention under AIA 35 U.S.C. 102(a)(2), the patent or application shall be
considered to have been effectively filed, with respect to any subject
matter described in the patent or application, as of the earlier of the
actual filing date of the patent or the application for patent, or the
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filing date of the earliest application that describes the subject matter
and for which the patent or application for patent is entitled to claim a
benefit or right of priority under 35 U.S.C. 119, 120, 121, or 365. Thus,
if an applicant believes the subject matter relied on in a rejection under
AIA 35 U.S.C. 102(a)(2) is not supported by a prior application for which
benefit or priority is claimed under 35 U.S.C. 119, 120, 121, or 365, it is
appropriate for the applicant to argue that the application does not
contain support for the subject matter and that the patent or application
is available as prior art under AIA 35 U.S.C. 102(a)(2) only as of the
benefit or priority date of the earliest application that does describe the
subject matter. This is similar to current practice under pre-AIA 35 U.S.C.
102(e). 19
Comment 19: One comment suggested that the level of enablement for a
prior art reference to be applicable to the claims of an application as
described by the Office in accordance with Donohue 20 fails to consider a
line of cases that Donohue recognizes.
Response: The Office cited to Donohue simply to indicate the level of
enablement required for a prior art reference to anticipate a claim in an
application. The Office does not view the AIA as changing the pre-AIA
enablement requirement for prior art references.
Comment 20: One comment indicated that the examination guidelines were
overly broad with respect to admissions as prior art. Another comment urged
that the treatment of admissions, especially to transition applications
(applications filed on or after March 16, 2013, that claim priority to or
the benefit of the filing date of an earlier application that was filed
prior to March 16, 2013), be treated on a case-by-case basis.
Response: The Office included a discussion of admissions as prior art in
the examination guidelines simply to indicate that the Office does not view
the AIA as changing the status quo with respect to the use of admissions as
prior art. The Office's position on the use of admissions as prior art is
discussed at MPEP § 2129.
Comment 21: One comment questioned how the time of day of a sale in a
foreign jurisdiction would be determined for purposes of prior art.
Response: As with current practice under pre-AIA 35 U.S.C. 102, the
Office does not take time of day into consideration in making
determinations of activities or documents that constitute prior art under
AIA 35 U.S.C. 102(a)(1).
Comment 22: One comment supported the Office's interpretation of the
evidence needed to establish reliance on the AIA 35 U.S.C. 102(b)(1)(A) and
102(b)(2)(A) provisions relating to showing that the subject matter of a
disclosure was obtained directly or indirectly from an inventor or a joint
inventor.
Response: The Office has adopted 37 CFR 1.130(a) as a mechanism for an
applicant to submit information to establish the facts and evidence when
necessary to rely upon the exception provisions in AIA 35 U.S.C.
102(b)(1)(A) or 102(b)(2)(A). The showing should provide facts, not
conclusions, to show that the disclosure, although not made directly by the
inventor or joint inventor, originated with the inventor or joint inventor.
Comment 23: One comment suggested that when there are any discrepancies
in inventorship on an application as compared to authorship of a prior art
publication that is potentially excepted as prior art under AIA 35 U.S.C.
102(b)(1)(A), an applicant should be required to present a showing that the
publication is not available as prior art even when it is apparent that the
prior art disclosure is a grace period disclosure from an inventor. Several
comments indicated that a grace period publication should be treated under
the exception in AIA 35 U.S.C. 102(b)(1)(A) when there is any overlap
between authorship and inventorship.
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Response: AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period
disclosure "shall not be prior art" to a claimed invention if "the
disclosure was made by the inventor or a joint inventor or by another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor." When the Office can readily ascertain by
examination of inventorship and authorship that a certain disclosure falls
under AIA 35 U.S.C. 102(b)(1)(A), the Office will not apply such a document
in a prior art rejection. Alternatively, when there are additional named
individuals on a prior art publication as compared to the inventors named
on a patent application, it is incumbent upon the applicant to provide a
satisfactory showing that the additional named authors did not contribute
to the claimed subject matter. 21
Comment 24: One comment requested clarification on what constitutes an
"unequivocal" statement from the inventor or a joint inventor that he/she
invented the subject matter of a publication such that the publication is
not prior art in accordance with AIA 35 U.S.C. 102(b)(1)(A), and requested
clarification on what constitutes a "reasonable explanation" to explain the
presence of additional authors on the publication. Another comment
suggested that the examination guidelines should define as precisely as
possible what is needed to establish that a disclosure originated with an
inventor, and questioned the intent of the statement in the examination
guidelines that an unequivocal assertion may be accepted in the absence of
evidence to the contrary. The comment also suggested that the examination
guidelines should make clear whether or not evidence that a disclosure
originated from the inventor will be rejected if it is not initially
presented. Several comments requested examples of acceptable affidavits or
declarations under 37 CFR 1.130.
Response: The evidence required to show that a disclosure originated
with the inventor or a joint inventor (e.g., whether an "unequivocal"
statement from the inventor or a joint inventor is sufficient, or an
explanation is a reasonable explanation of the presence of additional
authors on the publication) is necessarily a case-by-case determination.
Given the fact-specific nature of affidavits and declarations, the Office
cannot provide a "template" of an acceptable affidavit or declaration under
37 CFR 1.130. However, the case law on pre-AIA 35 U.S.C. 102(a) and (e)
contains examples of affidavits or declarations that were found acceptable
to show that a disclosure originated with the inventor. 22 There is no
requirement that such evidence be present on filing, although early
presentation will streamline prosecution.
Comment 25: One comment stated that to address situations where there
are overlapping inventors between an application under examination and a
prior art reference under AIA 35 U.S.C. 102(a)(2), a declaration to
attribute certain inventive activities from the prior art to the named
inventors should be a viable mechanism to overcome a rejection on this
basis.
Response: Under pre-AIA 35 U.S.C. 102, attribution of inventive
activities to disqualify prior art references was permitted pursuant to 37
CFR 1.132, as discussed in MPEP §§ 716.10 and 2131.01. The Office is
promulgating a new 37 CFR 1.130 to provide for the disqualification of a
disclosure as prior art on the basis of attribution (37 CFR 1.130(a)) or a
prior public disclosure of the inventor's or a joint inventor's own work
(37 CFR 1.130(b)) under AIA 35 U.S.C. 102(b). An applicant may establish
attribution of a cited prior art reference to the inventor or joint
inventor via an affidavit or declaration under 37 CFR 1.130(a).
Comment 26: One comment questioned whether a publication of a foreign
patent application during the year preceding the filing of a patent
application could qualify as AIA 35 U.S.C. 102(a)(1) prior art that is
potentially excepted under AIA 35 U.S.C. 102(b)(1)(A) if it is "a
disclosure [during the grace period] by another who obtained the subject
matter directly or indirectly from the inventor or joint inventor."
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Response: An applicant may establish that the foreign patent application
publication was by another who obtained subject matter disclosed in the
foreign patent application publication directly or indirectly from the
inventor or joint inventor via an affidavit or declaration under 37 CFR
1.130(a).
Comment 27: One comment questioned whether an assignee, to whom the
inventors are obligated to assign their rights, who was selling a product
within the scope of the inventor's claims during the grace period, would be
able to rely on the AIA 35 U.S.C. 102(b)(1)(A) provisions that the
"disclosure was made by another who obtained the subject matter directly or
indirectly from the inventor or joint inventor."
Response: A sale by an assignee, to whom the inventors are obligated to
assign their rights, may qualify as a sale "by another who obtained the
subject matter disclosed directly or indirectly from the inventor or a
joint inventor" within the meaning of AIA 35 U.S.C. 102(b)(1)(A).
Comment 28: One comment indicated that the Office's guidelines regarding
the reliance on the AIA 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A) exception
appear to apply to any inventor or inventor-originated disclosure which is
prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2) regardless of the
relationship of the disclosed subject matter and the claimed invention.
Response: Strictly speaking, neither AIA 35 U.S.C. 102(b)(1)(A) nor
102(b)(2)(A) requires a relationship between "the subject matter disclosed"
and the claimed invention. As a practical matter, however, if the subject
matter disclosed (e.g., contained in a publication that would qualify as
prior art under 35 U.S.C. 102(a)) is not relevant to the claimed invention,
there will be no occasion to inquire into whether the disclosure could be
disqualified as prior art under 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A).
Comment 29: One comment interpreted the provisions of AIA 35 U.S.C.
102(b)(2)(A) as requiring not only that the subject matter disclosed be
"obtained directly or indirectly from the inventor or a joint inventor,"
but also that the disclosure upon which the rejection is based in the
application under examination be owned by the same entity.
Response: This interpretation appears to combine the provision of AIA
35 U.S.C. 102(b)(2)(A) with the common ownership disqualification provision
of AIA 35 U.S.C. 102(b)(2)(C). Each of subparagraph (A) and subparagraph
(C) of AIA 35 U.S.C. 102(b)(2) stands alone and forms an independent basis
for disqualifying references that otherwise qualify as prior art under 35
U.S.C. 102(a)(2).
Comment 30: A number of comments, including comments from a number of
universities and university groups, opposed the Office's interpretation of
the subparagraph (B) provision of AIA 35 U.S.C. 102(b)(1) or 102(b)(2) (the
subparagraph (B) provision), requiring that the subject matter previously
publicly disclosed by the inventor be identical to the subject matter of
the disclosure to be disqualified under the subparagraph (B) provision
(identical subject matter approach). The comments opposing the Office's
interpretation of the subparagraph (B) provision stated that: (1) The
Office's identical subject matter approach is not supported by a reasonable
reading of the statute and is contrary to the intent of the AIA; (2) the
Office's identical subject matter approach violates the superfluity canon
of statutory construction as it would render the provision worthless; (3)
the Office's identical subject matter approach is disadvantageous to
inventors who must seek venture capital, and to academics who must publish
their results; (4) the Office's identical subject matter approach is
unworkable due to the ease with which the Internet can be fraudulently used
to publish trivial variations of an inventor's disclosed work, thereby
depriving him or her of patent protection; and (5) the Office's identical
subject matter approach is unworkable because even those acting in good
faith, such as by publishing an editorial commenting on a disclosed
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invention, may create prior art which would deprive an inventor of a patent
on his or her invention. Several comments suggested that the Office's
interpretation of the subparagraph (B) provision is an unwarranted
extrapolation of the statute that constitutes substantive rulemaking, fails
to maintain the bedrock of separation of powers, is contrary to the intent
and function of the grace period, and exceeds the intended scope for
interpretive rules.
The Office of Advocacy of the Small Business Administration
(SBA-Advocacy) also indicated that it has heard from many patent
stakeholders (within the university-based and non-profit research
community, as well as the startup inventor community) that they have
concerns with the Office's interpretation of the subparagraph (B) provision
(discussed previously) and suggested there are alternative legal
interpretations of the subparagraph (B) provision that would address these
concerns. SBA-Advocacy encouraged the Office to examine the merits of
alternative interpretations of the subparagraph (B) provision.
Several comments, by contrast, suggested that the proposal to require
identity of disclosure in order for an inventor to invoke the subparagraph
(B) provision is appropriate and entirely consistent with the intent of the
AIA. According to these comments, the intent of the AIA was to provide a
grace period with regard to inventor-originated disclosures, but not with
regard to independently created third-party disclosures (except in the
unlikely event of identity of disclosure). The comments stated that to
provide a grace period for non-identical subject matter would thwart the
intent to create a first inventor to file system, as well as the intent to
provide a system that moves toward harmonizing U.S. patent law with the
laws of other countries. Several comments suggested that the simplicity of
the Office's interpretation of the subparagraph (B) provision, i.e., not
permitting variations between the shielding disclosure and the cited prior
art disclosure in order for the exception to apply, was appropriate and
would reduce litigation costs.
Response: As discussed previously, the starting point for construction
of a statute is the language of the statute itself. 23 Subparagraph (B) of
each of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) provides that certain
disclosures shall not be prior art if "the subject matter disclosed had,
before such disclosure [or before such subject matter was effectively filed
under 102(a)(2)], been publicly disclosed by the inventor or a joint
inventor or another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor." Subparagraph (B) of each
of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) uses a single instance of the
phrase "the subject matter" to describe both the content of the prior art
disclosure and the content of the inventor's previous public disclosure. If
"the subject matter" disclosed in the prior art varies from "the subject
matter" that had been previously publicly disclosed by the inventor or a
joint inventor (or another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor), there are
two discrete subject matters. The single instance of the phrase "the
subject matter" in subparagraph (B) of each of AIA 35 U.S.C. 102(b)(1) and
102(b)(2) cannot reasonably be read as concurrently describing two discrete
subject matters. Therefore, the single instance of the phrase "the subject
matter" in subparagraph (B) of each of AIA 35 U.S.C. 102(b)(1) and
102(b)(2) cannot reasonably be interpreted as including variations within
its ambit.
Next, other provisions in title 35 (pre-AIA and as amended by the AIA),
help to inform the meaning of the phrase "the subject matter" in
subparagraph (B) as like words in the same statute are presumed to carry
the same meaning. 24 AIA 35 U.S.C. 100 defines inventor and joint inventor
or coinventor with respect to the individual or individuals "who invented
or discovered the subject matter of the invention," and defines "claimed
invention" as "the subject matter defined by a claim in a patent or an
application for a patent." 25 35 U.S.C. 112(b) provides that "[t]he
specification shall conclude with one or more claims particularly pointing
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out and distinctly claiming the subject matter which the inventor or a
joint inventor regards as the invention." 26 The phrase "the subject
matter" has never been read to permit the inclusion of variations within
its ambit in these provisions, or in any other provision in title 35. In
addition, pre-AIA title 35 and the AIA contain a modifier such as
"substantially" where variation between subject matter is contemplated
(e.g., pre-AIA 35 U.S.C. 135(b)(1), 27 AIA 35 U.S.C. 135(a), 28 35 U.S.C.
154(d)(2), 29 and 35 U.S.C. 252 30). The absence of the "substantially"
modifier or similar terminology in subparagraph (B) of each of AIA 35
U.S.C. 102(b)(1) and 102(b)(2) further supports the conclusion that this
provision does not contemplate variation in subject matter.
Additionally, the Office's interpretation of this provision is
consistent with the canon of statutory construction requiring effect to be
given to every clause and every word of a statute where possible. 31 The
Office's interpretation of the subparagraph provision (B) gives effect to
each clause and each word in the subparagraph (B) provision. To reach the
alternative interpretations proffered by the comments, the Office would
need to ignore or re-write the words of the subparagraph (B) provision.
Specifically, the Office would be required to re-draft the subparagraph (B)
provision to provide that a disclosure shall not be prior art if
"substantially the same subject matter disclosed had, before such
disclosure, or before such subject matter was effectively filed, been
publicly disclosed by the inventor or a joint inventor or another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor" to embrace variations of the subject matter,
and would be required to re-draft the subparagraph (B) provision to provide
that a disclosure shall not be prior art if, "the claimed invention had,
before such disclosure, or before such subject matter was effectively
filed, been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor," to embrace "any disclosure" or any
subject matter disclosed after a disclosure of the claimed invention. The
Office, however, has no authority to enforce concepts that simply do not
square with the express language of subparagraph (B) of each of 35 U.S.C.
102(b)(1) and 102(b)(2). 32 Further, the legislative history of
subparagraph (B) of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) is inconclusive
with respect to what is embraced by the phrase "the subject matter."
Committee Report 112-98 indicates that 35 U.S.C. 102(b) "preserves the
grace period, ensuring that during the year prior to filing, an invention
will not be rendered unpatentable based on any of the inventor's own
disclosures, or any disclosure made by any party after the inventor has
disclosed his invention to the public." 33 The legislative history of
subparagraph (B) of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) does not
definitively specify whether "any disclosure" means "any disclosure" of the
same subject matter, "any disclosure" of the same or substantially the same
subject matter, "any disclosure" of the subject matter of the claimed
invention, or "any disclosure" of any subject matter. 34
The Office has considered the alternative interpretations of the
subparagraph (B) provision submitted in the public comment. The Office has
clarified, in response to the public and SBA-Advocacy comment, that: (1)
There is no requirement that the mode of disclosure by an inventor or joint
inventor be the same as the mode of disclosure of an intervening disclosure
(e.g., inventor discloses his invention at a trade show and the intervening
disclosure is in a peer-reviewed journal); (2) there is no requirement that
the disclosure by the inventor or a joint inventor be a verbatim or
ipsissimis verbis disclosure of an intervening disclosure in order for the
exception based on a previous public disclosure of subject matter by the
inventor or a joint inventor to apply; and (3) the exception applies to
subject matter of the intervening disclosure that is simply a more general
description of the subject matter previously publicly disclosed by the
inventor or a joint inventor. The more expansive alternative
interpretations of the subparagraph (B) provision, however, are not
supported by the language of the subparagraph (B) provision for the reasons
stated in the responses to this comment and the comments that follow.
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Comment 31: One comment indicated a need for clarification on what
constitutes an insubstantial or trivial difference (and what constitutes
"same subject matter") and suggested that mere wording changes should not
be interpreted too strictly. Several comments suggested that slight
variations or differences in wording should be permitted when relying on
the subparagraph (B) provision of AIA 35 U.S.C. 102(b)(1) and 102(b)(2).
Another comment similarly suggested that the subparagraph (B) provision
should, to the extent the subject matter in the reference is within the
scope of the inventor's public disclosure, shield the inventor from
citation of the intervening prior art.
Response: The Office understands that not all inventors refer to the
same inventive concepts using the exact same language. The Office is
clarifying in these examination guidelines that the subparagraph (B)
provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) do not require that
the mode of disclosure by an inventor or joint inventor (e.g., publication,
public use, sale activity) be the same as the mode of disclosure of the
intervening disclosure, and also does not require that the disclosure by
the inventor or a joint inventor be a verbatim or ipsissimis verbis
disclosure of the intervening disclosure. In addition, the Office is also
clarifying that if subject matter of the intervening disclosure is simply a
more general description of the subject matter previously publicly
disclosed by the inventor or a joint inventor, the exception in AIA 35
U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening
disclosure.
Comment 32: Several comments suggested using approaches to the
subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) akin
to that of 37 CFR 1.131, in that an intervening disclosure would be
disqualified as prior art if the inventor's prior disclosure disclosed
either the entire invention as claimed, or as much of the invention as was
disclosed in the intervening disclosure. Several comments suggested that
the subparagraph (B) provisions should apply if the inventor's disclosure
discloses at least as much of the claimed invention as is disclosed in the
intervening disclosure. Another comment suggested that an acceptable
standard for determining whether claimed subject matter was described for
the purpose of the subparagraph (B) provisions is whether one of ordinary
skill in the art would have considered the claimed subject matter to have
been described in the disclosure.
Response: Pre-AIA 35 U.S.C. 102(a) provided that a person was not
entitled to a patent if "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" (emphasis added). Thus, under pre-AIA 35 U.S.C. 102(a), an
applicant could disqualify (or antedate) a grace period disclosure by
showing that the disclosure was the inventor's own work or that the
disclosure was after the applicant's date of invention. AIA 35 U.S.C.
102(b) retains the pre-AIA principle that an applicant may disqualify a
grace period disclosure by showing that the disclosure was the inventor's
or a joint inventor's own work (AIA 35 U.S.C. 102(b)(1)(A)), but does not
retain the principle that an inventor may antedate a grace period
disclosure by showing that the disclosure was after the applicant's date of
invention. Since the AIA does not retain the principle of pre-AIA 35 U.S.C.
102(a) that a grace period disclosure that does not represent the
inventor's own work may be antedated by showing prior invention by the
inventor, the pre-AIA 35 U.S.C. 102(a) case law and concepts pertaining to
the antedating of a grace period disclosure that does not represent the
inventor's own work by showing prior invention by the inventor is not
instructive with respect to the applicability of the subparagraph (B)
provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2). Instead, under the
subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2), the
question is whether the subject matter disclosed had, before such
disclosure was made or before such subject matter was effectively filed,
been publicly disclosed by the inventor or a joint inventor or another who
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obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. 35
The subparagraph (B) provisions do not provide for an analysis of what
subject matter is claimed in order to determine when the subparagraph (B)
provisions apply. An intervening grace period disclosure would be
disqualified under the subparagraph (B) provisions if the inventor's prior
public disclosure disclosed as much of the subject matter of the invention
as was disclosed in the intervening disclosure. This, however, is a
comparison of the subject matter of the inventor's prior public disclosure
and the subject matter of the intervening disclosure as provided for in the
subparagraph (B) provisions, and is not a comparison of the subject matter
of inventor's prior public disclosure with the claimed invention.
Additionally, any subject matter disclosed by the intervening disclosure
not also disclosed in the inventor's prior public disclosure would not be
disqualified under the subparagraph (B) provisions.
Comment 33: One comment stated that the identical disclosure approach to
the subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) is
not consistent with treating the inventor's disclosure as if it were a
patent application. The comment stated that a broad disclosure can support
broad claims, and that later disclosure of a species within the claimed
genus does not defeat patentability of the genus. Another comment suggested
that the Office treat inventor disclosures like provisional applications
under the subparagraph (B) provisions, such that any claimed feature that
had been disclosed by the inventor is insulated from attack by an
intervening disclosure.
Response: The subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and
102(b)(2) do not provide for an inventor's public disclosure prior to
filing a patent application to be treated as if it were the filing of a
patent application.
Comment 34: One comment suggested that there is "asymmetry" between
patent-defeating derivation proceedings under AIA 35 U.S.C. 135 and the
subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2), and
indicated that the Federal courts have set forth rules to achieve symmetry
in cases addressing pre-AIA 35 U.S.C. 102(g) and 37 CFR 1.131 practice.
One comment suggested that the term "subject matter" in the subparagraph
(B) provisions should be interpreted as it is when deciding to institute an
interference proceeding, and that the phrase need not require identical
disclosures in order for the exception to apply.
Response: There is "asymmetry" between patent defeating derivation
proceedings under AIA 35 U.S.C. 135 and the subparagraph (B) provisions of
AIA 35 U.S.C. 102(b)(1) and 102(b)(2) due to the express statutory language
differences between these provisions. AIA 35 U.S.C. 135 applies to a claim
to an invention that is the "same or substantially the same" as a claim of
an earlier application. As discussed previously, the subparagraph (B)
provisions do not modify "the subject matter" with the phrase
"substantially the same." Given this statutory language difference, it
would not be appropriate to interpret subparagraph (B) of AIA 35 U.S.C.
102(b)(1) and 102(b)(2) to provide symmetry with AIA 35 U.S.C. 135.
Comment 35: One comment requested clarification regarding what
constitutes a public disclosure as compared to a disclosure within the
meaning of the description of the prior art exception under AIA 35 U.S.C.
102(b)(1)(B). Another comment indicated that it is unclear what would
constitute an earlier "public disclosure" by the inventor in order to rely
on the AIA 35 U.S.C. 102(b)(1)(B) exception to shield the applicant from
prior art that is available before the effective filing date but after the
inventor's own public disclosure. The comment specifically questioned if a
public oral disclosure would be such a public disclosure.
Response: In order for an inventor to be able to rely on an earlier
disclosure under AIA 35 U.S.C. 102(b)(1)(B) (including an earlier oral
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disclosure), some evidence is necessary to show that the subject matter
relied upon for the rejection had been previously publicly disclosed by the
inventor. Whether a "disclosure" is a "public disclosure" such that it
constitutes prior art under AIA 35 U.S.C. 102(a)(1) is a case-by-case
analysis which is governed by the case law discussed in MPEP §§ 2126
through 2128.
Comment 36: One comment suggested that there is no justification for
requiring that an inventor's prior public disclosure to another be enabling
of anything.
Response: An affidavit or declaration under 37 CFR 1.130(a) or (b) need
not demonstrate that the disclosure by the inventor, a joint inventor, or
another who obtained the subject matter disclosed directly or indirectly
from an inventor or a joint inventor was an "enabling" disclosure of the
subject matter within the meaning of 35 U.S.C. 112(a). The question under
AIA 35 U.S.C. 102(b) is whether: (1) The disclosure in question was made by
the inventor or a joint inventor, or the subject matter disclosed was
obtained directly or indirectly from the inventor or a joint inventor (37
CFR 1.130(a)); 36 or (2) the subject matter disclosed had, before such
disclosure was made or before such subject matter was effectively filed,
been publicly disclosed by the inventor or a joint inventor or another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor (37 CFR 1.130(b)). 37
Comment 37: One comment requested clarification on how to show
communication so as to enable one of ordinary skill in the art to make and
use the invention when relying on the grace period inventor-originated
disclosure exception (AIA 35 U.S.C. 102(b)(1)(A)) to disqualify prior art.
Response: The Office has revised the guidance on the grace period
inventor-originated disclosure exception to indicate that what is required,
within one year prior to the effective filing date, is communication of the
subject matter by the inventor or a joint inventor prior to its disclosure
by a non-inventor. The level of communication in the inventor's or joint
inventor's disclosure need not be sufficient to teach one of ordinary skill
how to make and use so as to comply with 35 U.S.C. 112(a).
Comment 38: One comment questioned what action an applicant could take
when the applicant suspects that the prior art is derived from the
applicant's own work, but the deriver has not submitted an application. The
comment stated that the information necessary to show derivation is the
state of mind of the deriver, and that the applicant does not always have
access to the information to support a showing of derivation.
Response: Unless the other party (the suspected deriver) has submitted
his or her own application, the issue for the applicant is disqualifying
the prior art under AIA 35 U.S.C. 102(b) rather than showing derivation
under AIA 35 U.S.C. 135. If the prior art disclosure was made one year or
less before the effective filing date of the claimed invention, the
applicant may submit an affidavit or declaration under 37 CFR 1.130 to show
that the disclosure was by a party who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor and
thus disqualify the prior art under 35 U.S.C. 102(b)(1)(A). As discussed in
these examination guidelines, this does not require a showing of derivation
under AIA 35 U.S.C. 135.
Comment 39: One comment suggested that prior art that is disqualified
under AIA 35 U.S.C. 102(b)(2)(C) cannot be properly used to show the state
of the art for purposes of, e.g., a lack of enablement rejection. The
comment stated that the Office's position is in conflict with the MPEP.
Response: MPEP § 2124 indicates that documents published after the
effective filing date may be used to show factual evidence regarding the
factors needed to establish that undue experimentation would have been
needed to make and use the invention. A document under AIA 35 U.S.C.
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102(a)(2) by its very nature meets this criteria, i.e., it is a publication
after the critical date which can be used as evidence to support a lack of
enablement rejection by providing facts relevant to the weighing of the
Wands factors 38 to support a 35 U.S.C. 112(a) lack of enablement
rejection.
Comment 40: One comment suggested that the AIA 35 U.S.C. 102(b)(2)(C)
provisions apply to prior art that qualifies under both AIA 35 U.S.C.
102(a)(1) and 102(a)(2) because there is no language in the statute which
says that the AIA 35 U.S.C. 102(b)(2)(C) provision "only" applies to prior
art under AIA 35 U.S.C. 102(a)(2) art.
Response: The introductory language of AIA 35 U.S.C. 102(b)(2) provides
that: "[a] disclosure shall not be prior art to a claimed invention under
[AIA 35 U.S.C. 102(a)(2)] if * * * ." Thus, by the terms of AIA 35 U.S.C.
102(b)(2), the provisions of subparagraphs (A), (B), and (C) of 35 U.S.C.
102(b)(2) apply only to disclosures under AIA 35 U.S.C. 102(a)(2). If a
patent or published application qualifies as prior art under both AIA 35
U.S.C. 102(a)(1) and AIA 35 U.S.C. 102(a)(2), the disqualification under
AIA 35 U.S.C. 102(b)(2)(C) would remove the patent or published application
with respect to the patent or published application qualifying under AIA 35
U.S.C. 102(a)(2). Such a patent or published application would still
qualify as prior art under AIA 35 U.S.C. 102(a)(1). The proposed
examination guidelines indicated that AIA 35 U.S.C. 102(b)(2) provides an
exception only for prior art under AIA 35 U.S.C. 102(a)(2). The proposed
examination guidelines did not state that a disclosure must qualify as
prior art only under AIA 35 U.S.C. 102(a)(2) in order for the AIA 35 U.S.C.
102(b)(2) exception to apply.
Comment 41: One comment indicated that the description of Hazeltine 39
regarding interpretation of the AIA 35 U.S.C. 103 provisions is in conflict
with the statutory language, in that the AIA shifted the temporal focus
from the invention date to effective filing date.
Response: In Hazeltine, the U.S. Supreme Court held that a U.S. patent
that qualified as prior art only under pre-AIA 35 U.S.C. 102(e) may be used
in combination with other prior art to show that a claimed invention was
obvious under pre-AIA 35 U.S.C. 103, notwithstanding that the disclosure of
such U.S. patent may not have been known or available to the public on the
date of invention or the effective filing date of the claimed invention. 40
The Office agrees that the temporal focus has shifted from the invention
date to effective filing date. However, the principle in Hazeltine that
certain prior art under 35 U.S.C. 102 that may not be publicly available on
the critical date (i.e., prior art under pre-AIA 35 U.S.C. 102(e) or prior
art under AIA 35 U.S.C. 102(a)(2)) is also applicable under AIA 35 U.S.C.
103.
Comment 42: A comment stated that 35 U.S.C. 115, which requires an oath
or declaration by the inventor, is a more appropriate section than 35
U.S.C. 101 on which to base a rejection for failure to name the appropriate
inventor. Another comment indicated that the case law on 35 U.S.C. 101 is
not straightforward and hence might not be the appropriate avenue to
resolve disputes regarding the proper naming of inventors.
Response: In addition to requiring an inventor's oath or declaration
from each inventor, AIA 35 U.S.C. 115(a) provides that "[a]n application
for patent that is filed under section 111(a) or commences the national
stage under section 371 shall include, or be amended to include, the name
of the inventor for any invention claimed in the application." While
pre-AIA 35 U.S.C. 115 has not previously served as a statutory basis for
rejecting a claim for failure to name the proper inventorship, pre-AIA 35
U.S.C. 115 did not require that an application include, or be amended to
include, the name of the inventor for any invention claimed in the
application. Therefore, until the courts clarify which, if any, statute
forms the basis for rejecting a claim where the application fails to
include, or has not been amended to include, the name of the inventor(s),
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the Office considers a rejection under both 35 U.S.C. 101 41 and 115 the
best course of action. To the extent that there is a concern that the
recent case law surrounding 35 U.S.C. 101 is unclear, the Office notes that
this recent case law pertains only to subject matter eligibility, not to
the application of 35 U.S.C. 101 to the inventorship question, and thus
this case law would not aggravate the complexity of inventorship disputes.
Comment 43: One comment requested clarification from the Office
regarding the use of a derivation proceeding where improper inventors are
named in a patent.
Response: If a patent is issued to someone other than the inventor, a
patent applicant can file a petition for derivation with respect to the
issued patent pursuant to 35 U.S.C. 135. The Office has implemented the
patent derivation proceedings provided for in the AIA in a separate
rulemaking. See Changes To Implement Derivation Proceedings, 77 FR 56068
(Sept. 11, 2012). Additional information concerning patent derivation
proceedings is available on the AIA micro site (under Inter Partes
Disputes) on Office's Internet Web site at
http://www.uspto.gov/aia_implementation/bpai.jsp#heading-4.
Comment 44: One comment requested clarification on how a defense of
derivation could be used to invalidate a patent. The comment requested
clarification on how a minor variation derived from one inventor and
claimed by another could be invalidated under 35 U.S.C. 101.
Response: A patent applicant can use the provisions of 35 U.S.C. 135 to
resolve derivation issues with a patent owner. Similarly, a patent owner
can use the provisions of 35 U.S.C. 291 to resolve derivation issues with
another patent owner. If the issue is one of inventorship in a granted
patent, a party may raise the issue of compliance with 35 U.S.C. 101 before
the Patent Trial and Appeal Board in a post-grant proceeding or before a
Federal court involving patent infringement as a defense under 35 U.S.C.
282.
Comment 45: One comment took issue with the Office's interpretation of
the effective date provisions indicating application of pre-AIA 35 U.S.C.
102(g) provisions to applications examined under AIA 35 U.S.C. 102 and 103
where the application contains claims supported by a pre-AIA application.
Response: Section 3(n)(1) of the AIA provides that amendments made by
section 3 of the AIA "shall apply to any application for patent, and to any
patent issuing thereon" that contains or contained at any time: (1) A claim
to a claimed invention that has an effective filing date that is on or
after March 16, 2013; or (2) a specific reference under 35 U.S.C. 120, 121,
or 365(c) to any patent or application that contains or contained at any
time such a claim. Section 3(n)(2) of the AIA provides that the provisions
of 35 U.S.C. 102(g), 135, and 291 as in effect on March 15, 2013, "shall
apply to each claim of an application for patent, and any patent issued
thereon," for which the amendments made by section 3 of the AIA also apply,
if such application or patent contains or contained at any time: (1) A
claim to an invention having an effective filing date that occurs before
March 16, 2013; or (2) a specific reference under 35 U.S.C. 120, 121, or
365(c) to any patent or application that contains or contained at any time
such a claim. While the "shall apply to" language of sections 3(n)(1) and
3(n)(2) is not parallel, section 3(n)(2) does indicate that the provisions
of 35 U.S.C. 102(g), 135, and 291 as in effect on March 15, 2013, shall
apply to "each claim" of an application for patent, and not simply the
claim or claims having an effective filing date that occurs before March
16, 2013, if the condition specified in section 3(n)(2) occurs. Therefore,
"each claim" of an application presenting a claim to a claimed invention
that has an effective filing date before March 16, 2013, but also
presenting claims to a claimed invention that has an effective filing date
on or after March 16, 2013, is subject to AIA 35 U.S.C. 102 and 103 and is
also subject to the provisions of 35 U.S.C. 102(g), 135, and 291 as in
effect on March 15, 2013.
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Comment 46: Several comments opposed changing from a "first to invent"
system to a "first inventor to file" system, arguing that a "first inventor
to file" system favors large corporations and negatively impacts
independent inventors, small businesses, entrepreneurs, and technical
professionals, and will have a significant economic impact on a substantial
number of small entities. Several comments suggested that the examination
guidelines are an economically significant guidance document and must
comply with the requirements of the Good Guidance Bulletin 42 of the Office
of Management and Budget (OMB) for economically significant guidance
documents. One comment suggested that the examination guidelines are an
economically significant guidance document because the conversion of the
U.S. patent system from a "first to invent" to a "first inventor to file"
system is arguably one of the most comprehensive overhauls of the U.S.
patent system since its inception. Another comment cited statements by the
AIA's legislative sponsors and Administration officials and several
articles concerning the first inventor to file system, and argued that the
Office, in its implementation of the first inventor to file system, has
ignored a number of economic effects, such as: (1) Loss of access to
investment capital; (2) diversion of inventor time into patent
applications; (3) weaker patent protection due to hasty filing; (4) higher
patent prosecution costs due to a hastily prepared initial application; (5)
higher abandonment rates; and (6) changes in ways of doing business.
Several comments suggested that the Office's interpretation of certain
provisions of the AIA is an unwarranted extrapolation of the statute that
constitutes substantive rulemaking.
Response: The U.S. patent system is converted from a "first to invent"
to a "first inventor to file" system by operation of section 3 of the AIA
regardless of whether the Office issues or publishes examination
guidelines. The Office must revise its practices to be consistent with
the changes in "first inventor to file" provisions of section 3 of the AIA
to conform to the new patent laws. In doing so, these examination
guidelines do not modify the conditions of patentability specified in AIA
35 U.S.C. 102 and 103 and do not change the rights and obligations
specified in AIA 35 U.S.C. 102 and 103 based upon the Office's view of what
would be a better policy choice. Rather, these examination guidelines
simply set out examination guidelines for Office personnel in order to
explain AIA 35 U.S.C. 102 and 103 based upon the Office's understanding of
the provisions of AIA 35 U.S.C. 102 and 103 as written by Congress, and
place the public on notice of those examination guidelines. Therefore,
these examination guidelines do not amount to substantive rulemaking. 43
The discussion of the significance or impacts of section 3 of the AIA by
the AIA's legislative sponsors and Administration officials, in articles
concerning the first inventor to file system, and in the discussions in the
comments relating to the impacts of the adoption of a first inventor to
file system, pertains to the changes in section 3 of the AIA per se and not
to these examination guidelines. The examination guidelines have been
reviewed by OMB as a significant guidance document, but the examination
guidelines are not considered to be economically significant as that term
is defined in the Good Guidance Bulletin.
Comment 47: One comment suggested that the examination guidelines should
state their precise legal effect. The comment suggested that the Office
lacks the statutory authority to issue an interpretation of this statute,
and as such the examination guidelines should make clear that they are only
examination guidelines, not an interpretation. The comment further
suggested that the examination guidelines should indicate that they have no
binding effect on the public or on the courts and are not entitled to
Chevron 44 deference, but that under 35 U.S.C. 3(a) and the Good Guidance
Bulletin the examination guidelines are binding on Office employees and
should be reviewable by petition under 37 CFR 1.181.
Response: As discussed previously, these examination guidelines do not
constitute substantive rulemaking and do not have the force and effect of
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law. However, the Office has the authority to publish a notice setting out
its interpretation of substantive patent law under 35 U.S.C. 101, 102, 103,
112, or other section of title 35, regardless of whether such
interpretation has the force and effect of law. 45 These examination
guidelines have been developed as a matter of internal Office management
and (like the discussion of patentability in general in MPEP chapter 2100
and the Good Guidance Bulletin 46) do not create any right or benefit,
substantive or procedural, enforceable by any party against the Office.
These examination guidelines are not "binding" on the public or Office
personnel in that rejections will continue to be based upon the substantive
law, and it is these rejections that are appealable. Failure of Office
personnel to follow the guidelines is not, in itself, a proper basis for
either an appeal or a petition. The question of the level of deference to
which the examination guidelines are entitled is not a patent examination
issue.
Comment 48: One comment questioned whether the amendments to 35 U.S.C.
102 and 103 in the AIA applied to plant applications and patents. The
comment suggested that the Office make an exception for plant applications
and patents and also continue to apply the one year grace period to plant
applications and patents.
Response: 35 U.S.C. 161 provides that the provisions of 35 U.S.C.
relating to patents for inventions shall apply to patents for plants,
except as otherwise provided. There is nothing in section 3 of the AIA that
provides for an exception for plant applications and patents with respect
to any of the provisions of AIA 35 U.S.C. 102 and 103. Thus, the provisions
of AIA 35 U.S.C. 102 and 103 (including the one-year grace period in AIA 35
U.S.C. 102(b)(1)(A) for inventor disclosures) are applicable to plant
applications and patents.
Comment 49: Several comments requested that the Office provide examples,
or suggested hypothetical situations for the Office to use as examples.
Response: The Office will post examples on the AIA micro site on
Office's Internet Web site.
Comment 50: One comment requested clarification regarding the meaning of
"first inventor to file," specifically the terms "first," "inventor," and
"to file."
Response: The phrase "First Inventor to File" is simply the title of
section 3 of the AIA. The conditions for patentability based upon novelty
and nonobviousness are set forth in AIA 35 U.S.C. 102 and 103, which do not
always result in the first inventor to file an application being entitled
to a patent (e.g., AIA 35 U.S.C. 102(a)(1) precludes an inventor who is the
first person to file an application for patent, but who published an
article describing the claimed invention more than one year before the
application was filed, from being entitled to a patent). Thus, it is
appropriate for these examination guidelines to place the focus on the
provisions of AIA 35 U.S.C. 102 and 103, rather than on the meaning of the
terms "first," "inventor," and "to file."
Examination Guidelines for 35 U.S.C. 102 and 103 as
Amended by the First Inventor To File Provisions of the
Leahy-Smith America Invents Act
I. Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA
The AIA continues to employ 35 U.S.C. 102 to set forth the scope of
prior art that will preclude the grant of a patent on a claimed invention,
but adjusts what qualifies as such prior art. Specifically, the AIA sets
forth what qualifies as prior art in two paragraphs of 35 U.S.C. 102(a).
AIA 35 U.S.C. 102(a)(1) provides that a person is not entitled to a patent
if the claimed invention was patented, described in a printed publication,
or in public use, on sale, or otherwise available to the public before the
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effective filing date of the claimed invention. AIA 35 U.S.C. 102(a)(2)
provides that a person is not entitled to a patent if the claimed invention
was described in a patent issued under 35 U.S.C. 151, or in an application
for patent published or deemed published under 35 U.S.C. 122(b), in which
the patent or application, as the case may be, names another inventor, and
was effectively filed before the effective filing date of the claimed
invention. AIA 35 U.S.C. 102(b) sets forth exceptions to prior art
established in AIA 35 U.S.C. 102(a). Specifically, AIA 35 U.S.C. 102(b)(1)
sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a)(1),
and AIA 35 U.S.C. 102(b)(2) sets forth exceptions to prior art established
in AIA 35 U.S.C. 102(a)(2).
The AIA also provides definitions in 35 U.S.C. 100 of the meaning of the
terms "claimed invention," "effective filing date," "the inventor," and
"joint inventor" (or "coinventor"). The AIA defines the term "claimed
invention" in 35 U.S.C. 100(j) as the subject matter defined by a claim in
a patent or an application for a patent. The AIA defines the term
"effective filing date" for a claimed invention in a patent or application
for patent (other than a reissue application or reissued patent) in 35
U.S.C. 100(i)(1) as meaning the earliest of: (1) The actual filing date of
the patent or the application for the patent containing the claimed
invention; or (2) the filing date of the earliest provisional,
nonprovisional, international (PCT), or foreign patent application to which
the patent or application is entitled to benefit or priority as to such
claimed invention. The AIA defines the term "the inventor" as the
individual or if a joint invention, the individuals collectively who
invented or discovered the subject matter of the invention in 35 U.S.C.
100(f), and defines the term "joint inventor" and "co-inventor" to mean any
one of the individuals who invented or discovered the subject matter of a
joint invention in 35 U.S.C. 100(g).
As discussed previously, AIA 35 U.S.C. 102(a)(1) provides that a person
is not entitled to a patent if the claimed invention was patented,
described in a printed publication, or in public use, on sale, or otherwise
available to the public before the effective filing date of the claimed
invention. Under pre-AIA 35 U.S.C. 102(a) and (b), knowledge or use of the
invention (pre-AIA 35 U.S.C. 102(a)), or public use or sale of the
invention (pre-AIA 35 U.S.C. 102(b)), was required to be in the United
States to qualify as a prior art activity. Under the AIA, a prior public
use, sale activity, or other disclosure has no geographic requirement
(i.e., need not be in the United States) to qualify as prior art.
AIA 35 U.S.C. 102(b)(1) provides that a disclosure made one year or less
before the effective filing date of a claimed invention shall not be prior
art under 35 U.S.C. 102(a)(1) with respect to the claimed invention if: (1)
The disclosure was made by the inventor or joint inventor or by another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor; or (2) the subject matter disclosed had,
before such disclosure, been publicly disclosed by the inventor or a joint
inventor or by another who obtained the subject matter disclosed directly
or indirectly from the inventor or a joint inventor. Thus, AIA 35 U.S.C.
102(b)(1) provides a one-year grace period (grace period) after a first
disclosure of an invention within which the inventor, assignee, obligated
assignee, or other party having sufficient interest may file a patent
application. The one-year grace period in AIA 35 U.S.C. 102(b)(1) is
measured from the filing date of the earliest U.S. or foreign patent
application to which a proper benefit or priority claim as to such
invention has been asserted in the patent or application. Notably, the
one-year grace period in pre-AIA 35 U.S.C. 102(b) is measured from only the
filing date of the earliest application filed in the United States
(directly or through the PCT).
The date of invention is not relevant under AIA 35 U.S.C. 102. Thus, a
prior art disclosure could not be disqualified or antedated by showing that
the inventor invented the claimed invention prior to the effective date of
the prior art disclosure of the subject matter (e.g., under the provisions
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of 37 CFR 1.131).
As discussed previously, AIA 35 U.S.C. 102(a)(2) provides that a person
is not entitled to a patent if the claimed invention was described in a
U.S. patent, a U.S. patent application publication, or an application for
patent deemed published under 35 U.S.C. 122(b), that names another inventor
and was effectively filed before the effective filing date of the claimed
invention. Under 35 U.S.C. 374, a World Intellectual Property Organization
(WIPO) publication of a Patent Cooperation Treaty (PCT) international
application that designates the United States is an application for patent
deemed published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C.
102(a)(2). Thus, under the AIA, WIPO publications of PCT applications that
designate the United States are treated as U.S. patent application
publications for prior art purposes, regardless of the international filing
date, whether they are published in English, or whether the PCT
international application enters the national stage in the United States.
Accordingly, a U.S. patent, a U.S. patent application publication, or a
WIPO publication of a PCT application (WIPO published application) that
designates the United States, that names another inventor and was
effectively filed before the effective filing date of the claimed
invention, is prior art under AIA 35 U.S.C. 102(a)(2). Under pre-AIA 35
U.S.C. 102(e), a WIPO published application designating the United States
is treated as a U.S. patent application publication only if the PCT
application was filed on or after November 29, 2000, and published under
PCT Article 21(2) in the English language. 47 AIA 35 U.S.C. 102(d) defines
"effectively filed" for the purpose of determining whether a U.S. patent,
U.S. patent application publication, or WIPO published application is prior
art under AIA 35 U.S.C. 102(a)(2) to a claimed invention. A U.S. patent,
U.S. patent application publication, or WIPO published application is
considered to have been effectively filed for purposes of its prior art
effect under 35 U.S.C. 102(a)(2) with respect to any subject matter it
describes on the earliest of: (1) The actual filing date of the patent or
the application for patent; or (2) if the patent or application for patent
is entitled to claim the benefit of, or priority to, the filing date of an
earlier U.S. provisional, U.S. nonprovisional, international (PCT), or
foreign patent application, the filing date of the earliest such
application that describes the subject matter of the claimed invention.
Thus, a U.S. patent, a U.S. patent application publication, or WIPO
published application is effective as prior art as of the filing date of
the earliest application to which benefit or priority is claimed and which
the subject matter relied upon, regardless of whether the earliest such
application is a U.S. provisional or nonprovisional application, an
international (PCT) application, or a foreign patent application.
AIA 35 U.S.C. 102(b)(2)(A) and (B) provide that a disclosure shall not
be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if: (1) The
subject matter disclosed was obtained directly or indirectly from the
inventor or a joint inventor; or (2) the subject matter disclosed had,
before such subject matter was effectively filed under 35 U.S.C. 102(a)(2),
been publicly disclosed by the inventor or a joint inventor or another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. Thus, under the AIA, a U.S. patent, U.S.
patent application publication, or WIPO published application that was not
issued or published more than one year before the effective filing date of
the claimed invention is not prior art to the claimed invention if: (1) The
U.S. patent, U.S. patent application publication, or WIPO published
application was by another who obtained the subject matter disclosed from
the inventor or a joint inventor; or (2) the inventor or a joint inventor,
or another who obtained the subject matter disclosed from an inventor or
joint inventor, had publicly disclosed the subject matter before the
effective filing date of the U.S. patent, U.S. patent application
publication, or WIPO published application.
Additionally, AIA 35 U.S.C. 102(b)(2)(C) provides that a disclosure made
in a U.S. patent, U.S. patent application publication, or WIPO published
application shall not be prior art to a claimed invention under 35 U.S.C.
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102(a)(2) if, not later than the effective filing date of the claimed
invention, the subject matter disclosed and the claimed invention were
owned by the same person or subject to an obligation of assignment to the
same person. This provision replaces the exception in pre-AIA 35 U.S.C.
103(c) that applied only in the context of an obviousness analysis under 35
U.S.C. 103 to prior art that was commonly owned at the time the claimed
invention was made, and which qualified as prior art only under pre-AIA 35
U.S.C. 102(e), (f), and/or (g). Thus, the AIA provides that certain prior
patents and published patent applications of co-workers and collaborators
are not prior art either for purposes of determining novelty (35 U.S.C.
102) or nonobviousness (35 U.S.C. 103). This exception, however, applies
only to prior art under AIA 35 U.S.C. 102(a)(2), namely, U.S. patents, U.S.
patent application publications, or WIPO published applications effectively
filed, but not published, before the effective filing date of the claimed
invention. This exception does not apply to prior art that is available
under 35 U.S.C. 102(a)(1), that is, patents, printed publications, public
uses, sale activities, or other publicly available disclosures published or
occurring before the effective filing date of the claimed invention. A
prior disclosure, as defined in AIA 35 U.S.C. 102(a)(1), by a co-worker or
collaborator is prior art under AIA 35 U.S.C. 102(a)(1) unless it falls
within an exception under AIA 35 U.S.C. 102(b)(1), regardless of whether
the subject matter of the prior disclosure and the claimed invention was
commonly owned not later than the effective filing date of the claimed
invention.
The AIA eliminates the provisions in pre-AIA 35 U.S.C. 102(c)
(abandonment of the invention), 102(d) (premature foreign patenting),
102(f) (derivation), and 102(g) (prior invention by another). Under the
AIA, abandonment of the invention or premature foreign patenting is not
relevant to patentability. Prior invention by another is likewise not
relevant to patentability under the AIA unless there is a prior disclosure
or filing of an application by another. The situation in which an
application names a person who is not the actual inventor as the inventor
(pre-AIA 35 U.S.C. 102(f)) will be handled in a derivation proceeding under
35 U.S.C. 135, by a correction of inventorship under 37 CFR 1.48 to name
the actual inventor, or through a rejection under 35 U.S.C. 101 48 and 35
U.S.C. 115. 49
AIA 35 U.S.C. 102(c) provides for common ownership of subject matter
made pursuant to joint research agreements. Under 35 U.S.C. 100(h), the
term "joint research agreement" as used in AIA 35 U.S.C. 102(c) is defined
as a written contract, grant, or cooperative agreement entered into by two
or more persons or entities for the performance of experimental,
developmental, or research work in the field of the claimed invention. AIA
35 U.S.C. 102(c) specifically provides that subject matter disclosed and a
claimed invention shall be deemed to have been owned by the same person or
subject to an obligation of assignment to the same person in applying the
provisions of AIA 35 U.S.C. 102(b)(2)(C) if: (1) The subject matter
disclosed was developed and the claimed invention was made by, or on behalf
of, one or more parties to a joint research agreement that was in effect on
or before the effective filing date of the claimed invention; (2) the
claimed invention was made as a result of activities undertaken within the
scope of the joint research agreement; and (3) the application for patent
for the claimed invention discloses or is amended to disclose the names of
the parties to the joint research agreement.
AIA 35 U.S.C. 103 provides that a patent for a claimed invention may not
be obtained, notwithstanding that the claimed invention is not identically
disclosed as set forth in 35 U.S.C. 102, if the differences between the
claimed invention and the prior art are such that the claimed invention as
a whole would have been obvious before the effective filing date of the
claimed invention to a person having ordinary skill in the art to which the
claimed invention pertains. In addition, AIA 35 U.S.C. 103 provides that
patentability shall not be negated by the manner in which the invention was
made. This provision tracks pre-AIA 35 U.S.C. 103(a), except that the
temporal focus for the obviousness inquiry is before the effective filing
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date of the claimed invention, rather than at the time of the invention.
The provisions of pre-AIA 35 U.S.C. 103(c) have been replaced with AIA 35
U.S.C. 102(b)(2)(C) and (c), and the provisions of pre-AIA 35 U.S.C. 103(b)
pertaining to biotechnological processes have been eliminated.
AIA 35 U.S.C. 102 and 103 take effect on March 16, 2013. These new
provisions apply to any patent application that contains or contained at
any time: (1) A claim to a claimed invention that has an effective filing
date that is on or after March 16, 2013; or (2) a designation as a
continuation, divisional, or continuation-in-part of an application that
contains or contained at any time a claim to a claimed invention that has
an effective filing date that is on or after March 16, 2013. 50 AIA 35
U.S.C. 102 and 103 also apply to any patent resulting from an application
to which AIA 35 U.S.C. 102 and 103 were applied. 51
The AIA provides that the provisions of pre-AIA 35 U.S.C. 102(g) 52
apply to each claim of an application for patent if the patent application:
(1) Contains or contained at any time a claim to a claimed invention having
an effective filing date that occurs before March 16, 2013; or (2) is ever
designated as a continuation, divisional, or continuation-in-part of an
application that contains or contained at any time a claim to a claimed
invention that has an effective filing date before March 16, 2013. 53
Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an
application to which pre-AIA 35 U.S.C. 102(g) applied. 54
If an application (1) contains or contained at any time a claimed
invention having an effective filing date that is before March 16, 2013, or
ever claimed a right of priority or the benefit of an earlier filing date
under 35 U.S.C. 119, 120, 121, or 365 based upon an earlier application
that ever contained a claimed invention having an effective filing date
that is before March 16, 2013, and (2) also contains or contained at any
time any claimed invention having an effective filing date that is on or
after March 16, 2013, or ever claimed a right of priority or the benefit of
an earlier filing date under 35 U.S.C. 119, 120, 121, or 365 based upon an
earlier application that ever contained a claimed invention having an
effective filing date that is on or after March 16, 2013, then AIA 35
U.S.C. 102 and 103 apply to the application, and each claimed invention in
the application is also subject to pre-AIA 35 U.S.C. 102(g).
II. Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)
AIA 35 U.S.C. 102(a) defines the prior art that will preclude the grant
of a patent on a claimed invention unless an exception in AIA 35 U.S.C.
102(b) is applicable. Specifically, AIA 35 U.S.C. 102(a) provides that:
[a] person shall be entitled to a patent unless--
(1) the claimed invention was patented, described in a printed
publication, or in public use, on sale, or otherwise available to the
public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section
151, or in an application for patent published or deemed published under
section 122(b), in which the patent or application, as the case may be,
names another inventor and was effectively filed before the effective
filing date of the claimed invention. 55
As an initial matter, Office personnel should note that the introductory
phrase "[a] person shall be entitled to a patent unless" remains unchanged
from the pre-AIA version of 35 U.S.C. 102. Thus, 35 U.S.C. 102 continues to
provide that the Office bears the initial burden of explaining why the
applicable statutory or regulatory requirements have not been met if a
claim in an application is to be rejected. The AIA also does not change the
requirement that whenever a claim for a patent is rejected or an objection
or requirement is made, the Office shall notify the applicant thereof and
state the reasons for such rejection, objection, or requirement, and
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provide such information and references as may be useful to the applicant
in judging of the propriety of continuing the prosecution of the
application. 56
The categories of prior art documents and activities are set forth in
AIA 35 U.S.C. 102(a)(1) and (a)(2). These documents and activities are used
to determine whether a claimed invention is novel or nonobvious. The
documents upon which a prior art rejection may be based are an issued
patent, a published application, and a non-patent printed publication.
Evidence that the claimed invention was in public use, on sale, or
otherwise available to the public may also be used as the basis for a prior
art rejection. Note that a printed publication that does not have a
sufficiently early publication date to itself qualify as prior art under
AIA 35 U.S.C. 102(a)(1) may be competent evidence of a previous public use,
sale activity, or other availability of a claimed invention to the public
where the public use, sale activity, or other public availability does have
a sufficiently early date to qualify as prior art under AIA 35 U.S.C.
102(a)(1). 57
AIA 35 U.S.C. 102(b) sets out exceptions to AIA 35 U.S.C. 102(a), in
that prior art that otherwise would be included in AIA 35 U.S.C. 102(a)
shall not be prior art if it falls within an exception in AIA 35 U.S.C.
102(b).
Exceptions to the categories of prior art defined in AIA 35 U.S.C.
102(a)(1) are provided in AIA 35 U.S.C. 102(b)(1). Specifically, AIA 35
U.S.C. 102(b)(1) states that a disclosure made one year or less before the
effective filing date of a claimed invention shall not be prior art to the
claimed invention under subsection (a)(1) if--
[ssquf] The disclosure was made by the inventor or a joint inventor or
by another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor; or
[ssquf] The subject matter disclosed had, before such disclosure, been
publicly disclosed by the inventor or a joint inventor or another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor." 58
Exceptions to the categories of prior art defined in AIA 35 U.S.C.
102(a)(2) are provided in AIA 35 U.S.C. 102(b)(2). Specifically, AIA 35
U.S.C. 102(b)(2) states that a disclosure shall not be prior art to a
claimed invention under subsection (a)(2) if--
[ssquf] The subject matter disclosed was obtained directly or indirectly
from the inventor or a joint inventor;
[ssquf] The subject matter disclosed had, before such subject matter was
effectively filed under subsection (a)(2), been publicly disclosed by the
inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor; or
[ssquf] The subject matter disclosed and the claimed invention, not
later than the effective filing date of the claimed invention, were owned
by the same person or subject to an obligation of assignment to the same
person." 59
Although some of the prior art provisions of AIA 35 U.S.C. 102(a) and
(b) will seem familiar, especially in comparison to pre-AIA 35 U.S.C.
102(a), (b), and (e), the AIA has introduced a number of important changes
with respect to prior art documents and activities (collectively,
"disclosures"). First, the availability of a disclosure as prior art is
measured from the effective filing date of the claimed invention no matter
where that filing occurred. Second, the AIA adopts a global view of prior
art disclosures and thus does not require that a public use or sale
activity be "in this country" to be a prior art activity. Finally, a
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catch-all "otherwise available to the public" category of prior art is
added.
A. Effective Filing Date of the Claimed Invention
Pre-AIA 35 U.S.C. 102(a) and (e) reference patent-defeating activities
occurring before the applicant invented the claimed invention. AIA 35
U.S.C. 102(a)(1) and (a)(2) make no mention of the date of the invention,
but instead concern documents that existed or activities that occurred
"before the effective filing date of the claimed invention." As a result,
it is no longer possible to antedate or "swear behind" certain prior art
disclosures by making a showing under 37 CFR 1.131 that the applicant
invented the claimed subject matter prior to the effective date of the
prior art disclosure.
The AIA defines the term "effective filing date" for a claimed invention
in a patent or application for patent (other than a reissue application or
reissued patent) as the earliest of: (1) The actual filing date of the
patent or the application for the patent containing the claimed invention;
or (2) the filing date of the earliest application for which the patent or
application is entitled, as to such invention, to a right of priority or
the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, or
365. 60 Thus, the one-year grace period in AIA 35 U.S.C. 102(b)(1) is
measured from the filing date of any U.S. or foreign patent application to
which the patent or application is entitled to benefit or priority as to
such invention, whereas the one-year grace period in pre-AIA 35 U.S.C.
102(b) is measured from only the filing date of the earliest application
filed in the United States (directly or through the PCT).
As under pre-AIA law, the effective filing date of a claimed invention
is determined on a claim-by-claim basis and not an
application-by-application basis. That is, the principle that different
claims in the same application may be entitled to different effective
filing dates vis-[agrave]-vis the prior art remains unchanged by the
AIA. 61 However, it is important to note that although prior art is applied
on a claim-by-claim basis, the determination of whether pre-AIA 35 U.S.C.
102 and 103 or AIA 35 U.S.C. 102 and 103 apply is made on an
application-by-application basis. Section VI discusses the applicability
date provisions of section 3 of the AIA.
Finally, the AIA provides that the "effective filing date" for a claimed
invention in a reissued patent or application for a reissue patent shall be
determined by deeming the claim to the claimed invention to have been
contained in the patent for which reissue was sought. 62
B. Provisions Pertaining to Disclosures Before the Effective Filing Date of
the Claimed Invention
1. Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a
Printed Publication, or in Public Use, on Sale, or Otherwise Available to
the Public)
Prior art documents and activities which may preclude patentability are
set forth in AIA 35 U.S.C. 102(a)(1). Such documents and activities include
prior patenting of the claimed invention, descriptions of the claimed
invention in a printed publication, public use of the claimed invention,
placing the claimed invention on sale, and otherwise making the claimed
invention available to the public. These examination guidelines will
discuss each prior art document and activity that might preclude
patentability under AIA 35 U.S.C. 102(a)(1) in turn.
a. Patented. AIA 35 U.S.C. 102(a)(1) indicates that prior patenting of a
claimed invention precludes the grant of a patent on the claimed invention.
This means that if a claimed invention was patented in this or a foreign
country before the effective filing date of the claimed invention, AIA 35
U.S.C. 102(a)(1) precludes the grant of a patent on the claimed invention.
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The effective date of the patent for purposes of determining whether the
patent qualifies as prior art under AIA 35 U.S.C. 102(a)(1) is the grant
date of the patent. There is an exception to this rule if the patent is
secret as of the date the rights are awarded. 63 In such situations, the
patent is available as prior art as of the date the patent was made
available to the public by being laid open for public inspection or
disseminated in printed form. 64 The phrase "patented" in AIA 35 U.S.C.
102(a)(1) has the same meaning as "patented" in pre-AIA 35 U.S.C. 102(a)
and (b). For a discussion of "patented" as used in pre-AIA 35 U.S.C. 102(a)
and (b), see generally MPEP § 2126.
Although an invention may be described in a patent and not claimed
therein, the grant date would also be the applicable prior art date for
purposes of relying on the subject matter disclosed therein as "described
in a printed publication," provided that the patent was made available to
the public on its grant date. It is helpful to note that a U.S. patent that
issues after the effective filing date of a claimed invention under
examination is not available as prior art against that invention under AIA
35 U.S.C. 102(a)(1), but could be available as prior art under AIA 35
U.S.C. 102(a)(2).
b. Described in a printed publication. If a claimed invention is
described in a patent, published patent application, or printed
publication, such a document may be available as prior art under AIA 35
U.S.C. 102(a)(1). Both pre-AIA 35 U.S.C. 102(a) and (b) and AIA 35 U.S.C.
102(a)(1) use the term "described" with respect to an invention in a prior
art printed publication. Likewise, AIA 35 U.S.C. 102(a)(2) uses that term
with respect to U.S. patents, U.S. patent application publications, and
WIPO published applications. Thus, the Office does not view the AIA as
changing the extent to which a claimed invention must be described for a
prior art document to anticipate the claimed invention under 35 U.S.C. 102.
While the conditions for patentability of AIA 35 U.S.C. 112(a) require a
written description of the claimed invention that would have enabled a
person skilled in the art to make as well as use the invention, the prior
art provisions of AIA 35 U.S.C. 102(a)(1) and (a)(2) require only that the
claimed invention be "described" 65 in a prior art document (patent,
published patent application, or printed publication). The two basic
requirements that must be met by a prior art document in order to describe
a claimed invention such that it is anticipated under AIA 35 U.S.C. 102 are
the same as those under pre-AIA 35 U.S.C. 102. First, "each and every
element of the claimed invention" must be disclosed either explicitly or
inherently, and the elements must be "arranged or combined in the same way
as in the claim." 66 Second, a person of ordinary skill in the art must
have been enabled to make the invention without undue experimentation. 67
Thus, in order for a prior art document to describe a claimed invention
such that it is anticipated under AIA 35 U.S.C. 102(a)(1) or (a)(2), it
must disclose all elements of the claimed invention arranged as they are in
the claim, and also provide sufficient guidance to enable a person skilled
in the art to make the claimed invention. There is, however, no requirement
that a prior art document meet the "how to use" requirement of 35 U.S.C.
112(a) in order to qualify as prior art. 68 Furthermore, compliance with
the "how to make" requirement is judged from the viewpoint of a person of
ordinary skill in the art, and thus does not require that the prior art
document explicitly disclose information within the knowledge of such a
person. 69
There is an additional important distinction between the written
description that is necessary to support a claim under 35 U.S.C. 112(a) and
the description sufficient to anticipate the subject matter of the claim
under AIA 35 U.S.C. 102(a)(1) or (a)(2). 70 To provide support for a claim
under 35 U.S.C. 112(a), it is necessary that the specification describe and
enable the entire scope of the claimed invention. However, in order for a
prior art document to describe a claimed invention under AIA 35 U.S.C.
102(a)(1) or (a)(2), the prior art document need only describe and enable
one skilled in the art to make a single species or embodiment of the
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claimed invention. 71
An anticipatory description it is not required in order for a disclosure
to qualify as prior art, unless the disclosure is being used as the basis
for an anticipation rejection. In accordance with pre-AIA case law
concerning obviousness, a disclosure may be cited for all that it would
reasonably have made known to a person of ordinary skill in the art. Thus,
the description requirement of AIA 35 U.S.C. 102(a)(1) and (a)(2) does not
preclude an examiner from applying a disclosure in an obviousness rejection
under AIA 35 U.S.C. 103 simply because the disclosure is not adequate to
anticipate the claimed invention under AIA 35 U.S.C. 102(a)(1) or (a)(2).
c. In public use. Under pre-AIA 35 U.S.C. 102(b), that an invention was
"in public use" precluded the grant of a patent only if such public use
occurred "in this country."
Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on
where prior public use or public availability occurs. Furthermore, a public
use would need to occur before the effective filing date of the claimed
invention to constitute prior art under AIA 35 U.S.C. 102(a)(1).
The pre-AIA case law also indicates that a public use will bar
patentability if the public use occurs before the critical date 72 and the
invention is ready for patenting. 73 Under pre-AIA 35 U.S.C. 102(b), the
uses of an invention before the patent's critical date that constitute a
"public use" fall into two categories: The use either "(1) was accessible
to the public; or (2) was commercially exploited." 74 Whether a use is a
pre-AIA 35 U.S.C. 102(b) public use also depends on who is making the use
of the invention. "[W]hen an asserted prior use is not that of the
applicant, [pre-AIA 35 U.S.C.] 102(b) is not a bar when that prior use or
knowledge is not available to the public." 75 In other words, a use by a
third party who did not obtain the invention from the inventor named in the
application or patent is an invalidating use under pre-AIA 35 U.S.C. 102(b)
only if it falls into the first category: That the use was accessible to
the public. On the other hand, "an inventor's own prior commercial use,
albeit kept secret, may constitute a public use or sale under [pre-AIA 35
U.S.C.] 102(b), barring him from obtaining a patent." 76 Also, an inventor
creates a public use bar under pre-AIA 35 U.S.C. 102(b) when the inventor
shows the invention to, or allows it to be used by, another person who is
"under no limitation, restriction, or obligation of confidentiality" to the
inventor. 77
Further, under pre-AIA 35 U.S.C. 102(a), "in order to invalidate a
patent based on prior knowledge or use" by another in this country prior to
the patent's priority date, "that knowledge or use must have been available
to the public." 78 Patent-defeating "use," under pre-AIA 35 U.S.C. 102(a),
includes only that "use which is accessible to the public." 79
As discussed previously, public use under AIA 35 U.S.C. 102(a)(1) is
limited to those uses that are available to the public. The public use
provision of AIA 35 U.S.C. 102(a)(1) thus has the same substantive scope,
with respect to uses by either the inventor or a third party, as public
uses under pre-AIA 35 U.S.C. 102(b) by unrelated third parties or uses by
others under pre-AIA 35 U.S.C. 102(a).
As also discussed previously, once an examiner becomes aware that a
claimed invention has been the subject of a potentially public use, the
examiner may require the applicant to provide information showing that the
use did not make the claimed process accessible to the public.
d. On sale. The pre-AIA case law indicates that on sale activity will
bar patentability if the claimed invention was: (1) The subject of a
commercial sale or offer for sale, not primarily for experimental purposes;
and (2) ready for patenting.80 Contract law principles apply in order to
determine whether a commercial sale or offer for sale occurred. In
addition, the enablement inquiry is not applicable to the question of
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whether a claimed invention is "on sale" under pre-AIA 35 U.S.C.
102(b). 81 The phrase "on sale" in AIA 35 U.S.C. 102(a)(1) is treated as
having the same meaning as "on sale" in pre-AIA 35 U.S.C. 102(b), except
that the sale must make the invention available to the public. For a
discussion of "on sale" as used in pre-AIA 35 U.S.C. 102(b), see
generally MPEP § 2133.03(b) et seq.
Under pre-AIA 35 U.S.C. 102(b), if an invention was "on sale,"
patentability was precluded only if the invention was on sale "in this
country." Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation
on where the sale or offer for sale may occur. When formulating a
rejection, Office personnel should consider evidence of sales activity,
regardless of where the sale activity took place.
The pre-AIA 35 U.S.C. 102(b) "on sale" provision has been interpreted as
including commercial activity even if the activity is secret. AIA 35 U.S.C.
102(a)(1) uses the same "on sale" term as pre-AIA 35 U.S.C. 102(b). The "or
otherwise available to the public" residual clause of AIA 35 U.S.C.
102(a)(1), however, indicates that AIA 35 U.S.C. 102(a)(1) does not cover
secret sales or offers for sale. For example, an activity (such as a sale,
offer for sale, or other commercial activity) is secret (non-public) if it
is among individuals having an obligation of confidentiality to the
inventor. 82
e. Otherwise available to the public. AIA 35 U.S.C. 102(a)(1) provides a
"catch-all" provision, which defines a new additional category of potential
prior art not provided for in pre-AIA 35 U.S.C. 102. Specifically, a
claimed invention may not be patented if it was "otherwise available to the
public" before its effective filing date. This "catch-all" provision
permits decision makers to focus on whether the disclosure was "available
to the public," rather than on the means by which the claimed invention
became available to the public or on whether a disclosure constitutes a
"printed publication" or falls within another category of prior art as
defined in AIA 35 U.S.C. 102(a)(1). The availability of the subject matter
to the public may arise in situations such as a student thesis in a
university library, 83 a poster display or other information disseminated
at a scientific meeting,84 subject matter in a laid-open patent
application, 85 a document electronically posted on the Internet, 86 or a
commercial transaction that does not constitute a sale under the Uniform
Commercial Code. 87 Even if a document or other disclosure is not a printed
publication, or a transaction is not a sale, either may be prior art under
the "otherwise available to the public" provision of AIA 35 U.S.C.
102(a)(1), provided that the claimed invention is made sufficiently
available to the public.
f. No requirement of "by others." A key difference between pre-AIA 35
U.S.C. 102(a) and AIA 35 U.S.C. 102(a)(1) is the requirement in pre-AIA 35
U.S.C. 102(a) that the prior art relied on was "by others." Under AIA 35
U.S.C. 102(a)(1), there is no requirement that the prior art relied upon be
by others. Thus, any prior art which falls under AIA 35 U.S.C. 102(a)(1)
need not be by another to constitute potentially available prior art.
However, disclosures of the subject matter made one year or less before the
effective filing date of the claimed invention by the inventor or a joint
inventor or another who obtained the subject matter directly or indirectly
from the inventor or a joint inventor may fall within an exception under
AIA 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1).
g. Admissions. The Office will continue to treat admissions by the
applicant as prior art under the AIA. A statement by an applicant in the
specification or made during prosecution identifying the work of another as
"prior art" is an admission which can be relied upon for both anticipation
and obviousness determinations, regardless of whether the admitted prior
art would otherwise qualify as prior art under AIA 35 U.S.C. 102. 88 For a
discussion of admissions as prior art, see generally MPEP § 129.
h. The meaning of "disclosure." The AIA does not define the term
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"disclosure," and AIA 35 U.S.C. 102(a) does not use the term "disclosure."
AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under
which a "disclosure" that otherwise falls within AIA 35 U.S.C. 102(a)(1) or
102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2). 89
Thus, the Office is treating the term "disclosure" as a generic expression
intended to encompass the documents and activities enumerated in AIA 35
U.S.C. 102(a) (i.e., being patented, described in a printed publication, in
public use, on sale, or otherwise available to the public, or being
described in a U.S. patent, U.S. patent application publication, or WIPO
published application).
2. Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C.
102(a)(1)
a. Prior art exception under AIA 35 U.S.C. 102(b)(1)(A) to AIA 35 U.S.C.
102(a)(1) (grace period inventor or inventor-originated disclosure
exception). AIA 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior art
provisions of AIA 35 U.S.C. 102(a)(1). These exceptions limit the use of an
inventor's own work as prior art, when the inventor's own work has been
publicly disclosed by the inventor, a joint inventor, or another who
obtained the subject matter directly or indirectly from the inventor or
joint inventor. AIA 35 U.S.C. 102(b)(1)(A) provides that a disclosure which
would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not
prior art if the disclosure was made: (1) One year or less before the
effective filing date of the claimed invention; and (2) by the inventor or
a joint inventor, or by another who obtained the subject matter directly or
indirectly from the inventor or joint inventor. These guidelines will first
discuss issues pertaining to disclosures within the grace period by the
inventor or a joint inventor ("grace period inventor disclosures") and then
subsequently discuss issues pertaining to disclosures within the grace
period by another who obtained the subject matter directly or indirectly
from the inventor or joint inventor ("grace period inventor-originated
disclosures"). Section II.A. of these examination guidelines discusses the
"effective filing date" of a claimed invention.
i. Grace period inventor disclosure exception. AIA 35 U.S.C.
102(b)(1)(A) first provides that a disclosure which would otherwise qualify
as prior art under AIA 35 U.S.C. 102(a)(1) may be disqualified as prior art
if the disclosure is made: (1) One year or less before the effective filing
date of the claimed invention; and (2) by the inventor or a joint inventor.
Thus, a disclosure that would otherwise qualify as prior art under AIA 35
U.S.C. 102(a)(1) will not be treated as prior art by Office personnel if
the disclosure is made one year or less before the effective filing date of
the claimed invention, and the evidence shows that the disclosure is by the
inventor or a joint inventor. What evidence is necessary to show that the
disclosure is by the inventor or a joint inventor requires case-by-case
treatment, depending upon whether it is apparent from the disclosure itself
or the patent application specification that the disclosure is by the
inventor or a joint inventor.
Office personnel will not apply a disclosure as prior art under AIA 35
U.S.C. 102(a)(1) if it is apparent from the disclosure itself that it is by
the inventor or a joint inventor. Specifically, Office personnel will not
apply a disclosure as prior art under AIA 35 U.S.C. 102(a)(1) if the
disclosure: (1) Was made one year or less before the effective filing date
of the claimed invention; (2) names the inventor or a joint inventor as an
author or an inventor; and (3) does not name additional persons as authors
on a printed publication or inventors on a patent. This means that in
circumstances where an application names additional persons as inventors
relative to the persons named as authors in the publication (e.g., the
application names as inventors A, B, and C, and the publication names as
authors A and B), and the publication is one year or less before the
effective filing date, it is apparent that the disclosure is a grace period
inventor disclosure, and the publication would not be treated as prior art
under AIA 35 U.S.C. 102(a)(1). If, however, the application names fewer
inventors than a publication (e.g., the application names as inventors A
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and B, and the publication names as authors A, B and C), it would not be
readily apparent from the publication that it is by the inventor or a joint
inventor and the publication would be treated as prior art under AIA 35
U.S.C. 102(a)(1).
The Office is also revising the rules of practice in a separate action
(RIN 0651-AC77) to provide that applicants can include a statement of any
grace period inventor disclosures in the specification (37 CFR 1.77(b)(6)).
An applicant is not required to use the format specified in 37 CFR 1.77 or
identify any prior disclosures by the inventor or a joint inventor (unless
necessary to overcome a rejection), but identifying any prior disclosures
by the inventor or a joint inventor may expedite examination of the
application and save applicants (and the Office) the costs related to an
Office action and reply. If the patent application specification contains a
specific reference to a grace period inventor disclosure, the Office will
consider it apparent from the specification that the disclosure is by the
inventor or a joint inventor, provided that the disclosure does not name
additional authors or inventors and there is no other evidence to the
contrary. The applicant may also provide a copy of the disclosure (e.g.,
copy of a printed publication).
The Office is also revising the rules of practice in a separate action
(RIN 0651-AC77) to provide a mechanism for filing an affidavit or
declaration (under 37 CFR 1.130) to establish that a disclosure is not
prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C.
102(b). In the situations in which it is not apparent from the disclosure
or the patent application specification that the disclosure is by the
inventor or a joint inventor, the applicant may establish by way of an
affidavit or declaration that a grace period disclosure is not prior art
under AIA 35 U.S.C. 102(a)(1) because the disclosure was by the inventor or
a joint inventor. Section II.D.1. of these examination guidelines discusses
the use of affidavits or declarations to show that the disclosure was made
by the inventor or a joint inventor under the exception of AIA 35 U.S.C.
102(b)(1)(A) for a grace period inventor disclosure.
ii. Grace period inventor-originated disclosure exception. AIA 35 U.S.C.
102(b)(1)(A) also provides that a disclosure which would otherwise qualify
as prior art under AIA 35 U.S.C. 102(a)(1) may be disqualified as prior art
if the disclosure was made: (1) One year or less before the effective
filing date of the claimed invention; and (2) by another who obtained the
subject matter directly or indirectly from the inventor or a joint
inventor. Thus, if a disclosure upon which the rejection is based is by
someone who obtained the subject matter from the inventor or a joint
inventor, and was made one year or less before the effective filing date of
the claimed invention, the applicant may establish by way of an affidavit
or declaration that the disclosure is not prior art under AIA 35 U.S.C.
102(a)(1) because the disclosure was by another who obtained the subject
matter directly or indirectly from the inventor or a joint inventor.
Section II.D.3. of these examination guidelines discusses the use of
affidavits or declarations to show that a disclosure was by another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor under the exception of AIA 35 U.S.C.
102(b)(1)(A) for a grace period inventor-originated disclosure.
b. Prior art exception under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 U.S.C.
102(a)(1) (inventor or inventor-originated prior public disclosure
exception). AIA 35 U.S.C. 102(b)(1)(B) provides additional exceptions to
the prior art provisions of AIA 35 U.S.C. 102(a)(1). These exceptions
disqualify a disclosure of subject matter that occurs after the subject
matter had been publicly disclosed by the inventor, a joint inventor, or
another who obtained the subject matter directly or indirectly from the
inventor or joint inventor. Specifically, AIA 35 U.S.C. 102(b)(1)(B)
provides that a disclosure which would otherwise qualify as prior art under
AIA 35 U.S.C. 102(a)(1) (patent, printed publication, public use, sale, or
other means of public availability) may be disqualified as prior art if:
(1) The disclosure was made one year or less before the effective filing
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date of the claimed invention; and (2) the subject matter disclosed had
been previously publicly disclosed by the inventor, a joint inventor, or
another who obtained the subject matter directly or indirectly from the
inventor or joint inventor. The previous public disclosure of the subject
matter by the inventor, a joint inventor, or another who obtained the
subject matter directly or indirectly from the inventor or joint inventor
must itself be a disclosure within the one-year grace period (i.e., be
either a grace period inventor disclosure by the inventor or a joint
inventor or be a grace period inventor-originated disclosure by another who
obtained the subject matter directly or indirectly from the inventor or
joint inventor). Otherwise, the previous public disclosure of the subject
matter would qualify as prior art under AIA 35 U.S.C. 102(a)(1) that could
not be disqualified under AIA 35 U.S.C. 102(b)(1). Section II.A. of these
examination guidelines discusses the "effective filing date" of a claimed
invention. Section II.D.2. of these examination guidelines discusses the
use of affidavits or declarations to show that the subject matter disclosed
had, before such disclosure, been publicly disclosed by the inventor or a
joint inventor, and section II.D.3. of these examination guidelines
discusses the use of affidavits or declarations to show that another
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor.
The exception in AIA 35 U.S.C. 102(b)(1)(B) applies if the "subject
matter disclosed [in the intervening disclosure] had, before such
[intervening] disclosure, been publicly disclosed by the inventor or a
joint inventor * * * ." 90 The exception in AIA 35 U.S.C. 102(b)(1)(B)
focuses on the "subject matter" that had been publicly disclosed by the
inventor or a joint inventor. There is no requirement under AIA 35 U.S.C.
102(b)(1)(B) that the mode of disclosure by the inventor or a joint
inventor (e.g., patenting, publication, public use, sale activity) be the
same as the mode of disclosure of the intervening grace period disclosure.
There is also no requirement that the disclosure by the inventor or a joint
inventor be a verbatim or ipsissimis verbis disclosure of the intervening
grace period disclosure. 91 What is required for subject matter in an
intervening grace period disclosure to be excepted under AIA 35 U.S.C.
102(b)(1)(B) is that the subject matter of the disclosure to be
disqualified as prior art must have been previously publicly disclosed by
the inventor or a joint inventor.
The exception in AIA 35 U.S.C. 102(b)(1)(B) applies to the subject
matter in the disclosure being relied upon as prior art for a rejection
under AIA 35 U.S.C. 102(a)(1) (an intervening disclosure) that was also
publicly disclosed by the inventor or a joint inventor before such
intervening disclosure. The subject matter of an intervening grace period
disclosure that was not previously publicly disclosed by the inventor or a
joint inventor is available as prior art under AIA 35 U.S.C. 102(a)(1). For
example, the inventor or a joint inventor had publicly disclosed elements
A, B, and C, and a subsequent intervening grace period disclosure discloses
elements A, B, C, and D, then only element D of the intervening grace
period disclosure is available as prior art under AIA 35 U.S.C. 102(a)(1).
In addition, if subject matter of an intervening grace period disclosure
is simply a more general description of the subject matter previously
publicly disclosed by the inventor or a joint inventor, the exception in
AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter of the
intervening grace period disclosure. For example, if the inventor or a
joint inventor had publicly disclosed a species, and a subsequent
intervening grace period disclosure discloses a genus (i.e., provides a
more generic disclosure of the species), the intervening grace period
disclosure of the genus is not available as prior art under AIA 35 U.S.C.
102(a)(1). Conversely, if the inventor or a joint inventor had publicly
disclosed a genus, and a subsequent intervening grace period disclosure
discloses a species, the intervening grace period disclosure of the species
would be available as prior art under AIA 35 U.S.C. 102(a)(1). Likewise, if
the inventor or a joint inventor had publicly disclosed a species, and a
subsequent intervening grace period disclosure discloses an alternative
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species not also disclosed by the inventor or a joint inventor, the
intervening grace period disclosure of the alternative species would be
available as prior art under AIA 35 U.S.C. 102(a)(1).
Finally, AIA 35 U.S.C. 102(b)(1)(B) does not discuss "the claimed
invention" with respect to either the subject matter disclosed by the
inventor or a joint inventor, or the subject matter of the subsequent
intervening grace period disclosure. Any inquiry with respect to the
claimed invention is whether or not the subject matter in the prior art
disclosure being relied upon anticipates or renders obvious the claimed
invention. A determination of whether the exception in AIA 35 U.S.C.
102(b)(1)(B) is applicable to subject matter in an intervening grace period
disclosure does not involve a comparison of the subject matter of the
claimed invention to either the subject matter disclosed by the inventor or
a joint inventor, or to the subject matter of the subsequent intervening
grace period disclosure.
C. Provisions Pertaining to Subject Matter in a U.S. Patent or
Application for a U.S. Patent Effectively Filed Before the Effective Filing
Date of the Claimed Invention
1. Prior Art Under AIA 35 U.S.C. 102(a)(2) (U.S. Patents, U.S. Patent
Application Publications, and World Intellectual Property Organization
(WIPO) Publications of International Applications (WIPO Published
Applications))
AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that
are available as prior art as of the date they were effectively filed with
respect to the subject matter relied upon in the document if they name
another inventor: (1) U.S. patents; (2) U.S. patent application
publications; and (3) WIPO published applications. These documents may have
different prior art effects under pre-AIA 35 U.S.C. 102(e) than under AIA
35 U.S.C. 102(a)(2).
a. WIPO published applications. AIA 35 U.S.C. 102(a)(2) explicitly
references U.S. patents and U.S. patent application publications. Moreover,
the WIPO publication of a PCT international application that designates the
United States is an application for patent deemed published under 35 U.S.C.
122(b) for purposes of AIA 35 U.S.C. 102(a)(2) under 35 U.S.C. 374. Thus,
under the AIA, WIPO publications of PCT applications that designate the
United States are treated as U.S. patent application publications for prior
art purposes, regardless of the international filing date, whether they are
published in English, or whether the PCT international application enters
the national stage in the United States. Accordingly, a U.S. patent, a U.S.
patent application publication, or a WIPO published application that names
another inventor and was effectively filed before the effective filing date
of the claimed invention, is prior art under AIA 35 U.S.C. 102(a)(2). This
differs from the treatment of a WIPO published application under pre-AIA 35
U.S.C. 102(e), where a WIPO published application is treated as a U.S.
patent application publication only if the PCT application was filed on or
after November 29, 2000, and published under PCT Article 21(2) in the
English language.
A U.S. patent, U.S. patent application publication, or WIPO published
application is prior art under AIA 35 U.S.C. 102(a)(1) if its issue or
publication date is before the effective filing date of the claimed
invention in question. If the issue date of the U.S. patent or publication
date of the U.S. patent application publication or WIPO published
application is not before the effective filing date of the claimed
invention, it may still be applicable as prior art under AIA 35 U.S.C.
102(a)(2) if it was "effectively filed" before the effective filing date of
the claimed invention in question with respect to the subject matter relied
upon to reject the claim. Section II.A. of these examination guidelines
discusses the "effective filing date" of a claimed invention. AIA 35 U.S.C.
102(d) sets forth the criteria to determine when subject matter described
in a U.S. patent, U.S. patent application publication, or WIPO published
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application was "effectively filed" for purposes of AIA 35 U.S.C.
102(a)(2).
b. Determining when subject matter was effectively filed under AIA 35
U.S.C. 102(d). AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S.
patent application publication, or WIPO published application is prior art
under AIA 35 U.S.C. 102(a)(2) with respect to any subject matter described
in the patent or published application as of either its actual filing date
(AIA 35 U.S.C. 102(d)(1)), or the filing date of a prior application to
which there is a priority or benefit claim (AIA 35 U.S.C. 102(d)(2)). A
U.S. patent, U.S. patent application publication, or WIPO published
application "is entitled to claim" priority to, or the benefit of, a
prior-filed application if it fulfills the ministerial requirements of: (1)
Containing a priority or benefit claim to the prior-filed application; (2)
being filed within the applicable filing period requirement (copending with
or within twelve months of the earlier filing, as applicable); and (3)
having a common inventor or being by the same applicant. 92
The AIA draws a distinction between actually being entitled to priority
to, or the benefit of, a prior-filed application in the definition of
effective filing date of a claimed invention in AIA 35 U.S.C. 100(i)(1)(B),
and merely being entitled to claim priority to, or the benefit of, a
prior-filed application in the definition of effectively filed in AIA 35
U.S.C. 102(d). 93 As a result of this distinction, the question of whether
a patent or published application is actually entitled to priority or
benefit with respect to any of its claims is not at issue in determining
the date the patent or published application was "effectively filed" for
prior art purposes. 94 Thus, as was the case even prior to the AIA, 95
there is no need to evaluate whether any claim of a U.S. patent, U.S.
patent application publication, or WIPO published application is actually
entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365 when
applying such a document as prior art.
AIA 35 U.S.C. 102(d) requires that a prior-filed application to which a
priority or benefit claim is made must describe the subject matter from the
U.S. patent, U.S. patent application publication, or WIPO published
application relied upon in a rejection. However, AIA 35 U.S.C. 102(d) does
not require that this description meet the requirements of 35 U.S.C.
112(a). As discussed previously with respect to AIA 35 U.S.C. 102(a)(1),
the Office does not view the AIA as changing the extent to which a claimed
invention must be described for a prior art document to anticipate the
claimed invention under AIA 35 U.S.C. 102.
The AIA also eliminates the so-called Hilmer doctrine. 96 Under the
Hilmer doctrine, pre-AIA 35 U.S.C. 102(e) limited the effective filing date
for U.S. patents (and published applications) as prior art to their
earliest U.S. filing date. In contrast, AIA 35 U.S.C. 102(d) provides that
if the U.S. patent, U.S. patent application publication, or WIPO published
application claims priority to one or more prior-filed foreign or
international applications under 35 U.S.C. 119 or 365, the patent or
published application was effectively filed on the filing date of the
earliest such application that describes the subject matter. 97 Therefore,
if the subject matter relied upon is described in the application to which
there is a priority or benefit claim, a U.S. patent, a U.S. patent
application publication, or WIPO published application is effective as
prior art as of the filing date of the earliest such application,
regardless of where filed.
c. Requirement of "names another inventor." To qualify as prior art
under AIA 35 U.S.C. 102(a)(2), the prior art U.S. patent, U.S. patent
application publication, or WIPO published application must "name[s]
another inventor." This means that if there is any difference in inventive
entity between the prior art U.S. patent, U.S. patent application
publication, or WIPO published application and the application under
examination or patent under reexamination, the U.S. patent, U.S. patent
application publication, or WIPO published application satisfies the "names
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another inventor" requirement of AIA 35 U.S.C. 102(a)(2). Thus, in the case
of joint inventors, only one inventor needs to be different for the
inventive entities to be different. Even if there are some inventors in
common in a U.S. patent, a U.S. patent application publication, or WIPO
published application and in a later-filed application under examination or
patent under reexamination, the U.S. patent, a U.S. patent application
publication, or WIPO published application qualifies as prior art under AIA
35 U.S.C. 102(a)(2) unless an exception in AIA 35 U.S.C. 102(b)(2) is
applicable.
2. Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C.
102(a)(2)
a. Prior art exception under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C.
102(a)(2) (inventor-originated disclosure exception). AIA 35 U.S.C.
102(b)(2)(A) provides an exception to the prior art provisions of AIA 35
U.S.C. 102(a)(2). This exception limits the use of an inventor's own work
as prior art, when the inventor's own work is disclosed in a U.S. patent,
U.S. patent application publication, or WIPO published application by
another who obtained the subject matter directly or indirectly from the
inventor or joint inventor.
Specifically, AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure
which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2)
may be disqualified as prior art if the subject matter disclosed was
obtained directly or indirectly from the inventor or a joint inventor.
Thus, if the subject matter in a U.S. patent, U.S. patent application
publication, or WIPO published application upon which the rejection is
based is by another who obtained the subject matter from the inventor or a
joint inventor, the applicant may establish by way of an affidavit or
declaration that a disclosure is not prior art under AIA 35 U.S.C.
102(a)(2). Section II.D.3. of these examination guidelines discusses the
use of affidavits or declarations to show that the disclosure was by
another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor under the exception of AIA 35 U.S.C.
102(b)(2)(A) for an inventor-originated disclosure.
b. Prior art exception under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C.
102(a)(2) (inventor or inventor-originated prior public disclosure
exception). AIA 35 U.S.C. 102(b)(2)(B) provides additional exceptions to
the prior art provisions of AIA 35 U.S.C. 102(a)(2). These exceptions
disqualify subject matter that was effectively filed by another after the
subject matter had been publicly disclosed by the inventor, a joint
inventor, or another who obtained the subject matter directly or
indirectly from the inventor or joint inventor.
Specifically, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure
which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2)
(a U.S. patent, U.S. patent application publication, or WIPO published
application) may be disqualified as prior art if the subject matter
disclosed had been previously publicly disclosed by the inventor, a joint
inventor, or another who obtained the subject matter directly or indirectly
from the inventor or joint inventor. The previous public disclosure of the
subject matter by the inventor, a joint inventor, or another who obtained
the subject matter directly or indirectly from the inventor or joint
inventor must itself be a public disclosure (i.e., be either an inventor
disclosure by the inventor or a joint inventor or be an inventor-originated
disclosure by another who obtained the subject matter directly or
indirectly from the inventor or joint inventor). If a previous public
disclosure by the inventor or which originated with the inventor is not
within the grace period of AIA 35 U.S.C. 102(b)(1), it would qualify as
prior art under AIA 35 U.S.C. 102(a)(1), and could not be disqualified
under AIA 35 U.S.C. 102(b)(1). Section II.D.2. of these examination
guidelines discusses the use of affidavits or declarations to show that the
subject matter disclosed had, before such disclosure, been publicly
disclosed by the inventor or a joint inventor, and section II.D.3. of these
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examination guidelines discusses the use of affidavits or declarations to
show that another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor.
Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the
exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the "subject matter
disclosed [in the intervening disclosure] had, before such [intervening]
disclosure [was effectively filed], been publicly disclosed by the inventor
or a joint inventor * * *." 98 The exception in AIA 35 U.S.C. 102(b)(2)(B)
focuses on the "subject matter" that had been publicly disclosed by the
inventor or a joint inventor. There is no requirement under 35 U.S.C.
102(b)(2)(B) that the mode of disclosure by the inventor or a joint
inventor (e.g., patenting, publication, public use, sale activity) be the
same as the mode of disclosure of the intervening U.S. patent, U.S. patent
application publication, or WIPO published application. There is also no
requirement that the disclosure by the inventor or a joint inventor be a
verbatim or ipsissimis verbis disclosure of the intervening U.S. patent,
U.S. patent application publication, or WIPO published application. What is
required for subject matter in the intervening U.S. patent, U.S. patent
application publication, or WIPO published application to be excepted under
AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been
previously publicly disclosed by the inventor or a joint inventor or must
have originated with the inventor.
The exception in AIA 35 U.S.C. 102(b)(2)(B) applies to the subject
matter in the intervening U.S. patent, U.S. patent application publication,
or WIPO published application being relied upon for a rejection under AIA
35 U.S.C. 102(a)(2) that was also publicly disclosed by the inventor or a
joint inventor (or have originated with the inventor) before the date the
subject matter relied upon was effectively filed. The subject matter of an
intervening U.S. patent, U.S. patent application publication, or WIPO
published application that was not previously publicly disclosed by the
inventor or a joint inventor (or by another who obtained the subject matter
from the inventor or joint inventor) is available as prior art under AIA 35
U.S.C. 102(a)(2). For example, if the inventor or a joint inventor had
publicly disclosed elements A, B, and C, and a subsequent intervening U.S.
patent, U.S. patent application publication, or WIPO published application
discloses elements A, B, C, and D, then only element D of the intervening
U.S. patent, U.S. patent application publication, or WIPO published
application is available as prior art under AIA 35 U.S.C. 102(a)(2).
In addition, if subject matter of an intervening U.S. patent, U.S.
patent application publication, or WIPO published application is simply a
more general description of the subject matter previously publicly
disclosed by the inventor or a joint inventor, the exception in AIA 35
U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening U.S.
patent, U.S. patent application publication, or WIPO published application
disclosure. For example, if the inventor or a joint inventor had publicly
disclosed a species, and a subsequent intervening U.S. patent, U.S. patent
application publication, or WIPO published application discloses a genus
(i.e., provides a more generic disclosure of the species), the disclosure
of the genus in the intervening U.S. patent, U.S. patent application
publication, or WIPO published application is not available as prior art
under AIA 35 U.S.C. 102(a)(2). Conversely, if the inventor or a joint
inventor had publicly disclosed a genus, and a subsequent intervening U.S.
patent, U.S. patent application publication, or WIPO published application
discloses a species, the disclosure of the species in the subsequent
intervening U.S. patent, U.S. patent application publication, or WIPO
published application would be available as prior art under AIA 35 U.S.C.
102(a)(2). Likewise, if the inventor or a joint inventor had publicly
disclosed a species, and a subsequent intervening U.S. patent, U.S. patent
application publication, or WIPO published application discloses an
alternative species not also disclosed by the inventor or a joint
inventor, the disclosure of the alternative species in the intervening U.S.
patent, U.S. patent application publication, or WIPO published application
would be available as prior art under AIA 35 U.S.C. 102(a)(2).
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Finally, AIA 35 U.S.C. 102(b)(2)(B) does not discuss "the claimed
invention" with respect to either the subject matter disclosed by the
inventor or a joint inventor, or the subject matter of the subsequent
intervening U.S. patent, U.S. patent application publication, or WIPO
published application. Any inquiry with respect to the claimed invention is
whether or not the subject matter in the prior art disclosure being relied
upon anticipates or renders obvious the claimed invention. A determination
of whether the exception in AIA 35 U.S.C. 102(b)(2)(B) is applicable to
subject matter in an intervening U.S. patent, U.S. patent application
publication, or WIPO published application does not involve a comparison of
the subject matter of the claimed invention to either the subject matter
disclosed by the inventor or a joint inventor, or to the subject matter of
the subsequent intervening U.S. patent, U.S. patent application
publication, or WIPO published application.
c. Prior art exception under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C.
102(a)(2) (common ownership or obligation of assignment). AIA 35 U.S.C.
102(b)(2)(C) provides an additional exception to the prior art provisions
of AIA 35 U.S.C. 102(a)(2). The exception of AIA 35 U.S.C. 102(b)(2)(C)
disqualifies subject matter disclosed in a U.S. patent, U.S. patent
application publication, or WIPO published application from constituting
prior art under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed and
the claimed invention, not later than the effective filing date of the
claimed invention, "were owned by the same person or subject to an
obligation of assignment to the same person." AIA 35 U.S.C. 102(b)(2)(C)
resembles pre-AIA 35 U.S.C. 103(c) in that both concern common ownership,
and both offer an avenue by which an applicant may avoid certain prior art.
However, there are significant differences between AIA 35 U.S.C.
102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c).
If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, a U.S. patent,
U.S. patent application publication, or WIPO published application that
might otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) is not
available as prior art under either AIA 35 U.S.C. 102 or 103. Under pre-AIA
35 U.S.C. 103(c), such prior art could preclude patentability under pre-AIA
35 U.S.C. 102, even if the conditions of pre-AIA 35 U.S.C. 103(c) were met.
The consequence of this distinction is that a published application or an
issued patent that falls under the common ownership exception of AIA 35
U.S.C. 102(b)(2)(C) may not be applied in either an anticipation or an
obviousness rejection.
It is important to note the circumstances in which the AIA 35 U.S.C.
102(b)(2)(C) exception does not remove U.S. patents, U.S. patent
application publications, or WIPO published applications as a basis for any
rejection. Even if the U.S. patent or U.S. published application is not
prior art under AIA 35 U.S.C. 102 or 103 as a result of AIA 35 U.S.C.
102(b)(2)(C), a double patenting rejection (either statutory under 35
U.S.C. 101 or non-statutory, sometimes called obviousness-type) may still
be made on the basis of the U.S. patent or U.S. patent application
publication. Furthermore, the U.S. patent, U.S. patent application
publication, or WIPO published application that does not qualify as prior
art as a result of AIA 35 U.S.C. 102(b)(2)(C) may be cited, in appropriate
situations, to indicate the state of the art when making a lack of
enablement rejection under 35 U.S.C. 112(a). A document need not qualify as
prior art to be applied in the context of double patenting 99 or
enablement. 100 Also, the AIA 35 U.S.C. 102(b)(2)(C) exception does not
apply to a disclosure that qualifies as prior art under AIA 35 U.S.C.
102(a)(1) (disclosures made before the effective filing date of the claimed
invention). Thus, if the issue date of a U.S. patent or publication date of
a U.S. patent application publication or WIPO published application is
before the effective filing date of the claimed invention, it may be prior
art under AIA 35 U.S.C. 102(a)(1), regardless of common ownership or the
existence of an obligation to assign.
The Office is also revising the rules of practice in a separate action
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(RIN 0651-AC77) to include provisions that pertain to commonly owned or
joint research agreement subject matter (37 CFR 1.104(c)(4) and (c)(5)).
37 CFR 1.104(c)(4) applies to an application that is subject to AIA 35
U.S.C. 102 and 103, and 37 CFR 1.104(c)(5) applies to an application that
is subject to pre-AIA 35 U.S.C. 102 and 103. Commonly owned subject matter
under AIA 35 U.S.C. 102 and 103 is treated under 37 CFR 1.104(c)(4)(i), and
commonly owned subject matter under pre-AIA 35 U.S.C. 102 and 103 is
treated under 37 CFR 1.104(c)(5)(i).
A clear and conspicuous statement by the applicant (or the applicant's
representative of record) that the claimed invention of the application
under examination and the subject matter disclosed in the U.S. patent, U.S.
patent application publication, or WIPO published application (prior art)
to be excluded under AIA 35 U.S.C. 102(b)(2)(C) were owned by the same
person or subject to an obligation of assignment to the same person not
later than the effective filing date of the claimed invention will be
sufficient to establish that the AIA 35 U.S.C. 102(b)(2)(C) exception
applies. When relying on the provisions of pre-AIA 35 U.S.C. 103(c), the
applicant (or the applicant's representative) could provide a similar
statement required to disqualify the cited prior art. The applicant may
present supporting evidence such as copies of assignment documents, but is
not required to do so. Furthermore, the Office will not request
corroborating evidence in the absence of independent evidence which raises
doubt as to the veracity of such a statement. The statement under AIA 35
U.S.C. 102(b)(2)(C) will generally be treated by Office personnel
analogously to statements made under pre-AIA 35 U.S.C. 103(c). 101
D. Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome
Prior Art Rejections
The Office is also revising the rules of practice in a separate action
(RIN 0651-AC77) to provide a mechanism in 37 CFR 1.130 for filing an
affidavit or declaration to establish that a disclosure that was not made
more than one year before the effective filing date of the claimed
invention is not prior art under AIA 35 U.S.C. 102(a) due to an exception
in AIA 35 U.S.C. 102(b). Under 37 CFR 1.130(a), an affidavit or declaration
of attribution may be submitted to disqualify a disclosure as prior art
because it was made by the inventor or a joint inventor, or by one who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. Under 37 CFR 1.130(b), an affidavit or
declaration of prior public disclosure may be submitted to disqualify an
intervening disclosure as prior art if: (1) The subject matter disclosed
had been publicly disclosed by the inventor or a joint inventor before the
disclosure of the subject matter on which the rejection is based; or (2)
the subject matter disclosed had been publicly disclosed by the inventor or
a joint inventor before the date the subject matter in the U.S. patent,
U.S. patent application publication, or WIPO published application on which
the rejection is based was effectively filed.
1. Showing That the Disclosure Was Made by the Inventor or a Joint
Inventor
AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period disclosure shall
not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if
the disclosure was made by the inventor or a joint inventor. An applicant
may show that a disclosure was made by the inventor or a joint inventor by
way of an affidavit or declaration under 37 CFR 1.130(a) (an affidavit or
declaration of attribution). 102 Where the authorship of the prior art
disclosure includes the inventor or a joint inventor named in the
application, an "unequivocal" statement from the inventor or a joint
inventor that he/she (or some specific combination of named inventors)
invented the subject matter of the disclosure, accompanied by a reasonable
explanation of the presence of additional authors, may be acceptable in the
absence of evidence to the contrary. 103 However, a mere statement from the
inventor or a joint inventor without any accompanying reasonable
explanation may not be sufficient where there is evidence to the
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contrary. 104 This is similar to the current process for disqualifying a
publication as not being by "others" discussed in MPEP § 2132.01, except
that AIA 35 U.S.C. 102(b)(1)(A) requires only that the disclosure be by the
inventor or a joint inventor.
2. Showing That the Subject Matter Disclosed Had Been Previously
Publicly Disclosed by the Inventor or a Joint Inventor
AIA 35 U.S.C. 102(b)(1)(B) provides that a grace period disclosure shall
not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if
subject matter disclosed had, before such disclosure, been publicly
disclosed by the inventor or a joint inventor. Similarly, AIA 35 U.S.C.
102(b)(2)(B) provides that a disclosure shall not be prior art to a claimed
invention under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed
had, before such subject matter was effectively filed under AIA 35 U.S.C.
102(a)(2), been publicly disclosed by the inventor or a joint inventor. An
applicant may show that the subject matter disclosed had been publicly
disclosed by the inventor or a joint inventor before the disclosure or
effective filing date of the subject matter on which the rejection was
based by way of an affidavit or declaration under 37 CFR 1.130(b) (an
affidavit or declaration of prior public disclosure). Specifically, the
affidavit or declaration must identify the subject matter publicly
disclosed and establish the date and content of their earlier public
disclosure. If the earlier public disclosure was a printed publication, the
affidavit or declaration must be accompanied by a copy of the printed
publication in accordance with 37 CFR 1.130(b)(1). If the earlier
disclosure was not a printed publication, the affidavit or declaration must
describe the earlier disclosure with sufficient detail and particularity to
determine that the earlier disclosure is a public disclosure of the subject
matter, as required by 37 CFR 1.130(b)(2).
The manner of disclosure of subject matter referenced in an affidavit or
declaration under 37 CFR 1.130(b) is not critical. Just as the prior art
provision of AIA 35 U.S.C. 102(a)(1) encompasses any disclosure that
renders a claimed invention "available to the public," any manner of
disclosure may be evidenced in an affidavit or declaration under 37 CFR
1.130(b). That is, when using an affidavit or declaration under 37 CFR
1.130(b) to disqualify an intervening disclosure as prior art based on a
prior public disclosure by an inventor or a joint inventor, it is not
necessary for the subject matter to have been disclosed in the same manner
or using the same words. For example, the inventor or a joint inventor may
have publicly disclosed the subject matter in question via a slide
presentation at a scientific meeting, while the intervening disclosure of
the subject matter may have been made in a journal article. This difference
in the manner of disclosure or differences in the words used to describe
the subject matter will not preclude the inventor from submitting an
affidavit or declaration under 37 CFR 1.130(b) to disqualify the
intervening disclosure (e.g., a journal article) as prior art.
3. Showing That the Disclosure was Made, or That Subject Matter had Been
Previously Publicly Disclosed, by Another Who Obtained the Subject Matter
Disclosed Directly or Indirectly From the Inventor or a Joint Inventor
AIA 35 U.S.C. 102(b)(1)(A), 102(b)(1)(B), 102(b)(2)(A), and 102(b)(2)(B)
each provide similar treatment for disclosures of subject matter by another
who obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. Specifically, AIA 35 U.S.C. 102(b)(1)(A)
provides that a grace period disclosure shall not be prior art to a claimed
invention under AIA 35 U.S.C. 102(a)(1) if the disclosure was made by
another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor, and AIA 35 U.S.C. 102(b)(2)(A)
provides that a disclosure shall not be prior art to a claimed invention
under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed was obtained
directly or indirectly from the inventor or a joint inventor. In addition,
AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) provide that a grace period
disclosure shall not be prior art to a claimed invention under AIA 35
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U.S.C. 102(a)(1), and that a disclosure shall not be prior art to a claimed
invention under AIA 35 U.S.C. 102(a)(2), if the subject matter disclosed
had, before such disclosure, been publicly disclosed by another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. An applicant may also show that another
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor in an affidavit or declaration under 37 CFR
1.130(a) or (b). Thus, an applicant may make use of a prior public
disclosure by another during the grace period if the applicant can
establish that subject matter disclosed originated with the inventor or a
joint inventor and that the subject matter was communicated by the inventor
or a joint inventor, directly or indirectly. Any documentation which
provides evidence of the communication of the subject matter by the
inventor or a joint inventor to the entity that made the disclosure of the
subject matter should accompany the affidavit or declaration.
4. Enablement
An affidavit or declaration under 37 CFR 1.130(a) or (b) need not
demonstrate that the disclosure by the inventor, a joint inventor, or
another who obtained the subject matter disclosed directly or indirectly
from an inventor or a joint inventor was an "enabling" disclosure of the
subject matter within the meaning of 35 U.S.C. 112(a). Rather, an affidavit
or declaration under 37 CFR 1.130 must show that: (1) The disclosure in
question was made by the inventor or a joint inventor, or the subject
matter disclosed was obtained directly or indirectly from the inventor or a
joint inventor (37 CFR 1.130(a)); 105 or (2) the subject matter disclosed
had, before such disclosure was made or before such subject matter was
effectively filed, been publicly disclosed by the inventor or a joint
inventor or another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor (37 CFR 1.130(b)). 106
5. Who may File an Affidavit or Declaration Under 37 CFR 1.130
In accordance with 37 CFR 1.130, the applicant or patent owner may
submit an affidavit or declaration. When an assignee, obligated assignee,
or person showing sufficient proprietary interest is the applicant under 35
U.S.C. 118 rather than the inventor, the inventor may sign an affidavit or
declaration under 37 CFR 1.130 to disqualify a disclosure of the invention
as prior art, but the declaration must be filed by a party having authority
to take action in the application. Authority to file papers in an
application generally does not lie with the inventor if the inventor is not
the applicant.
6. Situations in Which an Affidavit or Declaration Is Not Available
The provisions of 37 CFR 1.130 are not available if the rejection is
based upon a disclosure made more than one year before the effective filing
date of the claimed invention. The AIA retains the principle of the
one-year statutory time bar of pre-AIA 35 U.S.C. 102(b) in that a
disclosure more than one year before the effective filing date of a claimed
invention is prior art under the AIA's 35 U.S.C. 102(a)(1) that cannot be
disqualified under 35 U.S.C. 102(b)(1).
Additionally, the provisions of 37 CFR 1.130 may not be available if the
rejection is based upon a U.S. patent or U.S. patent application
publication of a patented or pending application naming another inventor
if: (1) The patent or pending application claims an invention that is the
same or substantially the same as the applicant's or patent owner's claimed
invention; and (2) the affidavit or declaration contends that an inventor
named in the U.S. patent or U.S. patent application publication derived the
claimed invention from the inventor or a joint inventor named in the
application or patent. The provisions of 37 CFR 1.130 are not available if
it would result in the Office issuing or confirming two patents containing
patentably indistinct claims to two different parties. 107 In this
situation, an applicant or patent owner may file a petition for a
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derivation proceeding pursuant to 37 CFR 42.401 et seq. (37 CFR 1.130(c)).
III. Joint Research Agreements
AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in
order for subject matter disclosed which might otherwise qualify as prior
art, and a claimed invention, to be treated as having been owned by the
same person or subject to an obligation of assignment to the same person in
applying the joint research agreement provisions of AIA 35 U.S.C.
102(b)(2)(C). First, the subject matter disclosed must have been developed
and the claimed invention must have been made by, or on behalf of, one or
more parties to a joint research agreement that was in effect on or before
the effective filing date of the claimed invention. 108 The AIA defines the
term "joint research agreement" as a written contract, grant, or
cooperative agreement entered into by two or more persons or entities for
the performance of experimental, developmental, or research work in the
field of the claimed invention. 109 Second, the claimed invention must have
been made as a result of activities undertaken within the scope of the
joint research agreement. 110 Third, the application for patent for the
claimed invention must disclose, or be amended to disclose, the names of
the parties to the joint research agreement.111 Joint research agreement
subject matter under AIA 35 U.S.C. 102 and 103 is treated under 37 CFR
1.104(c)(4)(ii), joint research agreement subject matter under pre-AIA 35
U.S.C. 102 and 103 is treated under 37 CFR 1.104(c)(5)(ii). If these
conditions are met, the joint research agreement prior art is not available
as prior art under AIA 35 U.S.C. 102(a)(2).
The provisions of AIA 35 U.S.C. 102(c) generally track those of the
Cooperative Research and Technology Enhancement Act of 2004 (CREATE
Act). 112 The major differences between AIA 35 U.S.C. 102(c) and the CREATE
Act are that: (1) The new provision is keyed to the effective filing date
of the claimed invention, while the CREATE Act focused on the date that the
claimed invention was made; and (2) the CREATE Act provisions only applied
to obviousness rejections and not to anticipation rejections.
In order to invoke a joint research agreement to disqualify a disclosure
as prior art, the applicant (or the applicant's representative of record)
must provide a statement that the disclosure of the subject matter on which
the rejection is based and the claimed invention were made by or on behalf
of parties to a joint research agreement under AIA 35 U.S.C. 102(c). The
statement must also assert that the agreement was in effect on or before
the effective filing date of the claimed invention, and that the claimed
invention was made as a result of activities undertaken within the scope of
the joint research agreement. When relying on the provisions of pre-AIA 35
U.S.C. 103(c), the applicant or his attorney or agent of record could
provide a similar statement to disqualify the cited prior art as to the
issue of obviousness. If the names of the parties to the joint research
agreement are not already stated in the application, it is necessary to
amend the application to include the names of the parties to the joint
research agreement in accordance with 37 CFR 1.71(g).
As is the case with establishing common ownership, the applicant may,
but is not required to, present evidence supporting the existence of the
joint research agreement. Furthermore, the Office will not request
corroborating evidence in the absence of independent evidence which raises
doubt as to the existence of the joint research agreement.
As discussed previously, the AIA 35 U.S.C. 102(b)(2)(C) exception does
not apply to a disclosure that qualifies as prior art under AIA 35 U.S.C.
102(a)(1) (disclosures made before the effective filing date of the claimed
invention). Thus, if the issue date of a U.S. patent or publication date of
a U.S. patent application publication or WIPO published application is
before the effective filing date of the claimed invention, it may be prior
art under AIA 35 U.S.C. 102(a)(1), regardless of the fact that the subject
matter disclosed and the claimed invention resulted from a joint research
agreement.
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IV. Improper Naming of Inventors
Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws
still require the naming of the actual inventor or joint inventors of the
claimed subject matter. 113 The Office presumes that the named inventor or
joint inventors in the application are the actual inventor or joint
inventors be named on the patent. 114 Where an application names an
incorrect inventorship, the applicant should submit a request to correct
inventorship under 37 CFR 1.48. In the rare situation where it clear that
the application does not name the correct inventorship and the applicant
has not filed a request to correct inventorship under 37 CFR 1.48, Office
personnel should reject the claims under 35 U.S.C. 101 and 35 U.S.C.
115. 115
V. AIA 35 U.S.C. 103
AIA 35 U.S.C. 103 continues to set forth the nonobviousness requirement
for patentability. 116 There are, however, some important changes from
pre-AIA 35 U.S.C. 103.
The most significant difference between the AIA 35 U.S.C. 103 and
pre-AIA 35 U.S.C. 103(a) is that AIA 35 U.S.C. 103 determines obviousness
as of the effective filing date of the claimed invention, rather than as of
the time that the claimed invention was made. Under pre-AIA examination
practice, the Office uses the effective filing date as a proxy for the
invention date, unless there is evidence of record to establish an earlier
date of invention. Thus, as a practical matter during examination, this
distinction between the AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103 will
result in a difference in practice only when the case under examination is
subject to pre-AIA 35 U.S.C. 103, and there is evidence in the case
concerning a date of invention prior to the effective filing date. Such
evidence is ordinarily presented by way of an affidavit or declaration
under 37 CFR 1.131.
Next, AIA 35 U.S.C. 103 differs from that of pre-AIA 35 U.S.C. 103 in
that AIA 35 U.S.C. 103 requires consideration of "the differences between
the claimed invention and the prior art," while pre-AIA 35 U.S.C. 103
refers to "the differences between the subject matter sought to be patented
and the prior art." This difference in terminology does not indicate the
need for any difference in approach to the question of obviousness. 117
Further, AIA 35 U.S.C. 103 does not contain any provision similar to
pre-AIA 35 U.S.C. 103(b). Pre-AIA 35 U.S.C. 103(b) is narrowly drawn,
applying only to nonobviousness of biotechnological inventions, and even
then, only when specifically invoked by the patent applicant Pre-AIA 35
U.S.C. 103(b) provides that under certain conditions, "a biotechnological
process using or resulting in a composition of matter that is novel under
section 102 and nonobvious under subsection [103(a)] of this section shall
be considered nonobvious." In view of the case law since 1995, 118 the
need to invoke pre-AIA 35 U.S.C. 103(b) has been rare.
Finally, AIA 35 U.S.C. 103 eliminates pre-AIA 35 U.S.C. 103(c), but
corresponding provisions have been introduced in AIA 35 U.S.C. 102(b)(2)(C)
and 102(c). Pre-AIA 35 U.S.C. 103(c) applied if subject matter qualified as
prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g), and only in
the context of obviousness under pre-AIA 35 U.S.C. 103(a). If subject
matter developed by another person was commonly owned with the claimed
invention, or if the subject matter was subject to an obligation of
assignment to the same person, at the time the claimed invention was made,
then pre-AIA 35 U.S.C. 103(a) did not preclude patentability. Furthermore,
under the pre-AIA 35 U.S.C. 103(c), if a joint research agreement was in
place on or before the date that the claimed invention was made, the
claimed invention was made as a result of activities undertaken within the
scope of the joint research agreement, and the application for patent was
amended to disclose the names of the parties to the joint research
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agreement, common ownership or an obligation to assign was deemed to exist.
As discussed previously, AIA 35 U.S.C. 102(b)(2)(C) and 102(c) expand on
this concept. Under the AIA, the common ownership, the obligation to
assign, or the joint research agreement must exist on or before the
effective filing date of the claimed invention, rather than on or before
the date the invention was made. If the provisions of AIA 35 U.S.C.
102(b)(2)(C) are met, a disclosure is not prior art at all, whereas under
pre-AIA 35 U.S.C. 103(c), certain prior art merely was defined as not
precluding patentability. Finally, disclosures disqualified as prior art
under AIA 35 U.S.C. 102(b)(2)(C) and 102(c) may not be applied in either an
anticipation or an obviousness rejection. However, such disclosures could
be the basis for statutory double patenting or non-statutory (sometimes
referred to as obviousness-type) double patenting rejections.
Generally speaking, and with the exceptions noted herein, pre-AIA
notions of obviousness will continue to apply under the AIA. AIA 35 U.S.C.
102(a) defines what is prior art both for purposes of novelty under AIA 35
U.S.C. 102 as well as for purposes of obviousness under AIA 35 U.S.C.
103. 119 Thus, if a document qualifies as prior art under AIA 35 U.S.C.
102(a)(1) or (a)(2), and is not subject to an exception under AIA 35 U.S.C.
102(b), it may be applied for what it describes or teaches to those skilled
in the art in a rejection under AIA 35 U.S.C. 103.120 Office personnel
should continue to follow guidance for formulating an appropriate rationale
to support any conclusion of obviousness. See MPEP § 2141 et seq. and the
guidance documents available at
http://www.uspto.gov/patents/law/exam/ksr_training_materials.jsp.
VI. Applicability Date Provisions and Determining Whether an Application Is
Subject to the First Inventor To File Provisions of the AIA
Because the changes to 35 U.S.C. 102 and 103 in the AIA apply only to
specific applications filed on or after March 16, 2013, determining the
effective filing date of a claimed invention for purposes of applying AIA
35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 and 103
provisions is critical.
A. Applications Filed Before March 16, 2013
The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any
application filed before March 16, 2013. Thus, any application filed before
March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103 (i.e., the
application is a pre-AIA application). Note that neither the filing of a
request for continued examination, nor entry into the national stage under
35 U.S.C. 371, constitutes the filing of a new application. Accordingly,
even if a request for continued examination under 37 CFR 1.114 is filed
after March 16, 2013, in an application that was filed before March 16,
2013, the application remains subject to pre-AIA 35 U.S.C. 102 and 103.
Similarly, a PCT application filed under 35 U.S.C. 363 before March 16,
2013, is subject to pre-AIA 35 U.S.C. 102 and 103, regardless of whether
the application enters the national stage under 35 U.S.C. 371 before or
after March 16, 2013.
B. Applications Filed on or After March 16, 2013
AIA 35 U.S.C. 102 and 103 take effect on March 16, 2013. AIA 35 U.S.C.
102 and 103 apply to any patent application that contains or contained at
any time a claim to a claimed invention that has an effective filing date
that is on or after March 16, 2013. If a patent application contains or
contained at any time a claim to a claimed invention having an effective
filing date on or after March 16, 2013, AIA 35 U.S.C. 102 and 103 apply to
the application (i.e., the application is an AIA application). If there is
ever even a single claim to a claimed invention in the application having
an effective filing date on or after March 16, 2013, AIA 35 U.S.C. 102 and
103 apply in determining the patentability of every claimed invention in
the application. This is the situation even if the remaining claimed
inventions all have an effective filing date before March 16, 2013, and
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even if the claim to a claimed invention having an effective filing date on
or after March 16, 2013, is canceled.
If an application filed on or after March 16, 2013, that did not
previously contain any claim to a claimed invention having an effective
filing date on or after March 16, 2013, (a pre-AIA application) is amended
to contain a claim to a claimed invention having an effective filing date
on or after March 16, 2013, the application becomes an AIA application (AIA
35 U.S.C. 102 and 103 apply to the application), provided that the newly
added claimed invention has support under 35 U.S.C. 112(a) in the
application filed on or after March 16, 2013. The application also remains
subject to AIA 35 U.S.C. 102 and 103 even if the claim to a claimed
invention having an effective filing date on or after March 16, 2013, is
subsequently canceled. If an amendment after an Office action causes the
application to change from being governed by pre-AIA 35 U.S.C. 102 and 103
(from being a pre-AIA application) to being governed by AIA 35 U.S.C. 102
and 103 (to being a AIA application), any new ground of rejection
necessitated by the change in applicable law would be considered a new
ground of rejection necessitated by an amendment for purposes of
determining whether the next Office action may be made final. 121
As 35 U.S.C. 132(a) 122 prohibits the introduction of new matter into
the disclosure, an application may not contain a claim to a claimed
invention that does not have support under 35 U.S.C. 112(a) in the
application (that is directed to new matter). Thus, an application cannot
"contain" a claim to a claimed invention that is directed to new matter
for purposes of determining whether the application ever contained a claim
to a claimed invention having an effective filing date on or after March
16, 2013.123 Therefore, an amendment (other than a preliminary amendment
filed on the same day as such application) seeking to add a claim to a
claimed invention that is directed to new matter in an application filed on
or after March 16, 2013, that, as originally filed, discloses and claims
only subject matter also disclosed in a previously filed pre-AIA
application to which the application filed on or after March 16, 2013, is
entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365,
would not change the application from a pre-AIA application into an AIA
application.
C. Applications Subject to the AIA but Also Containing a Claimed
Invention Having an Effective Filing Date Before March 16, 2013
Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, pre-AIA
35 U.S.C. 102(g) also applies to every claim in the application if it: (1)
contains or contained at any time a claimed invention having an effective
filing date that occurs before March 16, 2013; or (2) is ever designated as
a continuation, divisional, or continuation-in-part of an application that
contains or contained at any time a claimed invention that has an effective
filing date that occurs before March 16, 2013. Pre-AIA 35 U.S.C. 102(g)
also applies to any patent resulting from an application to which pre-AIA
35 U.S.C. 102(g) applied.
Thus, if an application contains, or contained at any time, any claimed
invention having an effective filing date that occurs before March 16,
2013, and also contains, or contained at any time, any claimed invention
having an effective filing date that is on or after March 16, 2013, each
claim must be patentable under AIA 35 U.S.C. 102 and 103, as well as
pre-AIA 35 U.S.C. 102(g), for the applicant to be entitled to a patent.
However, an application will not otherwise be concurrently subject to both
pre-AIA 35 U.S.C. 102 and 103 and AIA 35 U.S.C. 102 and 103.
For these reasons, when subject matter is claimed in an application
having priority to or the benefit of a prior-filed application (e.g.,
under 35 U.S.C. 120, 121, or 365(c)), care must be taken to accurately
determine whether AIA or pre-AIA 35 U.S.C. 102 and 103 applies to the
application.
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D. Applicant Statement in Transition Applications Containing a Claimed
Invention Having an Effective Filing Date on or After March 16, 2013
The Office is revising 37 CFR 1.55 and 1.78 in a separate action (RIN
0651-AC77) to require that if a nonprovisional application filed on or
after March 16, 2013, claims the benefit of or priority to the filing date
of a foreign, U.S. provisional, U.S. nonprovisional, or international
application that was filed prior to March 16, 2013, and also contains or
contained at any time a claimed invention having an effective filing date
on or after March 16, 2013, the applicant must provide a statement to that
effect. This information will assist the Office in determining whether the
application is subject to AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C.
102 and 103.
February 11, 2013 TERESA STANEK REA
Acting Under Secretary of Commerce for Intellectual Property and
Acting Director of the United States Patent and Trademark Office
1 See Public Law 112-29, 125 Stat. 284 (2011).
2 All MPEP references are to MPEP (8th ed. 2001) (Rev. 9 Aug. 2012).
3 See D.L. Auld Co. v. Chroma Graphics, 714 F.2d 1144 (Fed. Cir. 1983) and
W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983).
4 Metallizing Engineering Co. v. Kenyon Bearing and Auto Parts, 153 F.2d
516 (2d Cir. 1946).
5 See United States v. Hohri, 482 U.S. 64, 69 (1987); Kelly v. Robinson,
479 U.S. 36, 43 (1986).
6 See Universal City Studios v. Reimerdes, 111 F.Supp. 2d. 294, 325
(S.D.N.Y. 2000) (the phrase "or otherwise traffic in" modifies the
preceding phrases "offer" and "provide"); Strom v. Goldman Sachs & Co., 202
F.3d 138, 146-47 (2nd. Cir. 1999) (the phrase "or any other equitable
relief" modifies at least the immediately preceding phrase "back pay"
demonstrating that Congress considered back pay a form of equitable
relief).
7 See 157 Cong. Rec. 1370 (Mar. 8, 2011) ("The Committee's understanding of
the effect of adding the words `or otherwise available to the public' is
confirmed by judicial construction of this phraseology. Courts have
consistently found that when the words `or otherwise' or `or other' when
used to add a modifier at the end of a string of clauses, the modifier thus
added restricts the meaning of the preceding clauses.").
8 157 Cong. Rec. S1496 (Mar. 9, 2011) ("[S]ubsection 102(a) was drafted in
part to do away with precedent under current law that private offers for
sale or private uses or secret processes practiced in the United States
that result in a product or service that is then made public may be deemed
patent-defeating prior art. That will no longer be the case. In effect, the
new paragraph 102(a)(1) imposes an overarching requirement for availability
to the public, that is a public disclosure, which will limit paragraph
102(a)(1) prior art to subject matter meeting the public accessibility
standard that is well-settled in current law, especially case law of the
Federal Circuit."); 157 Cong. Rec. H4429 (June 22, 2011) ("[C]ontrary to
current precedent, in order to trigger the bar in the new 102(a) in our
legislation, an action must make the patented subject matter `available to
the public' before the effective filing date"). One commenter suggested
that Senator Leahy's remarks cannot be considered to be legislative history
because they appeared in the Congressional Record on the day after the
Senate acted on S. 23, the Senate version of the AIA. However, the bill
that was eventually enacted into law, H.R. 1249, was considered in both
the House and Senate after Senator Leahy's statement was printed in the
record. Also, the committee report for the bill that became law cites to
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Senator Leahy's remarks in its discussion of AIA 35 U.S.C. 102. See H.R.
Rep. No. 112-98 at 43, n.20 (2011). The same commenter also suggested that
AIA 35 U.S.C. 102(a) should not be construed to impose an overarching
public availability requirement because a bill that was introduced in
Congress six years earlier more clearly imposed such a standard, even
eliminating sales and uses entirely as independent bars to patentability.
The Office's role, however, is not to determine whether Congress could have
enacted a statute that is clearer and more forceful, but rather it is to
determine the most likely meaning of the statute that Congress actually did
enact.
9 See In re Kollar, 286 F.3d 1326, 1330 n.3 (Fed. Cir. 2002).
10 See Elan Corp., PLC v. Andrx Pharmaceuticals, Inc., 366 F.3d 1336, 1341
(Fed. Cir. 2004).
11 See TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d
965, 971 (Fed. Cir. 1984) ("[I]f a prima facie case is made of public use,
the patent owner must be able to point to or must come forward with
convincing evidence to counter that showing."); Star Fruits S.N.C. v. U.S.,
393 F.3d 1277, 1284 (Fed. Cir. 2005) ("So long as the request from the
examiner for information is not arbitrary or capricious, the applicant
cannot impede the examiner's performance of his duty by refusing to comply
with an information requirement which proceeds from the examiner's view of
the scope of the law to be applied to the application at hand. To allow
such interference would have the effect of forcing the Office to make
patentability determinations on insufficient facts and information. Such
conduct inefficiently shifts the burden of obtaining information that the
applicant is in the best position to most cheaply provide onto the
shoulders of the Office and risks the systemic inefficiencies that attend
the issue of invalid patents.").
12 See In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) ("the question is
not whether the sale, even a third party sale, `discloses' the invention at
the time of the sale, but whether the sale relates to a device that
embodies the invention") (citing J.A. La Porte, Inc. v. Norfolk Dredging
Co., 787 F.2d 1577, 1583 (Fed. Cir. 1986)); see also Zenith Elecs. Corp. v.
PDI Commc'n Sys., Inc., 522 F.3d 1348, 1356 (Fed. Cir. 2008) (a public use
itself need not be enabling).
13 See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998)
14 See Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1048 (Fed. Cir.
2001), and Group One, Ltd. v.v. Hallmark Cards, Inc., 254 F.3d 1041, 1047
(Fed. Cir. 2001); see also MPEP 2133.03(b).
15 See Voter Verified, Inc. v. Premier Election Solutions, Inc., 687 F.3d
1374, 1380 (Fed. Cir. 2012) (quoting SRI Int'l, Inc. v. Internet § Sys.,
Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) and Bruckelmyer v. Ground
Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)) (indicating that
indexing is a relevant factor, but not a prerequisite, to public
availability).
16 See Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 936 (Fed.
Cir. 1990).
17 See In re Lister, 583 F.3d 1307, 1313 (Fed. Cir. 2009) (explaining the
distinction between access to materials being restricted to authorized
persons as in Northern Telecom, and a person needing to take steps to gain
access to the materials, noting that significant travel that would have
been necessary for a person to gain access to the dissertation in In re
Hall, 781 F.2d 897 (Fed. Cir. 1986)).
18 See In re Hilmer, 359 F.2d 859 (CCPA 1966).
19 See MPEP § 2136.02 II and 2136.03 IV.
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20 In re Donohue, 766 F.2d 531 (Fed. Cir. 1985).
21 See In re Katz, 687 F.2d 450, 455 (CCPA 1982) (stating that it is
incumbent upon the appellant to provide a satisfactory showing which would
lead to a reasonable conclusion that appellant is the sole inventor where
there is a grace period publication listing individuals in addition to
appellant).
22 See, e.g., In re DeBaun, 687 F.2d 459 (CCPA 1982), In re Katz, 687 F.2d
450 (CCPA 1982), and In re Mathews, 408 F.2d 1393 (CCPA 1969).
23 See United States v. Hohri, 482 U.S. 64, 69 (1987); Kelly v. Robinson,
479 U.S. 36, 43 (1986).
24 See Brown v. Gardner, 513 U.S. 115, 118 (1994) (presumption that a given
term is used to mean the same thing throughout a statute).
25 See 35 U.S.C. 100(f), (g), and (j).
26 See 35 U.S.C. 112(b).
27 Pre-AIA 35 U.S.C. 135(b)(2) provides that "[a] claim which is the same
as, or for the same or substantially the same subject matter as, a claim of
an application published under section 122(b) of this title may be made in
an application filed after the application is published only if the claim
is made before one year after the date on which the application is
published."
28 Pre-AIA 35 U.S.C. 135(a) provides that "[a]ny such petition may be filed
only within the 1-year period beginning on the date of the first
publication of a claim to an invention that is the same or substantially
the same as the earlier application's claim to the invention, shall be made
under oath, and shall be supported by substantial evidence."
29 Pre-AIA 35 U.S.C. 154(d)(2) provides that "[t]he "right under [35 U.S.C.
154(d)(1)] to obtain a reasonable royalty shall not be available under this
subsection unless the invention as claimed in the patent is substantially
identical to the invention as claimed in the published patent application."
30 Pre-AIA 35 U.S.C. 252 provides that "[t]he surrender of the original
patent shall take effect upon the issue of the reissued patent, and every
reissued patent shall have the same effect and operation in law, on the
trial of actions for causes thereafter arising, as if the same had been
originally granted in such amended form, but in so far as the claims of the
original and reissued patents are substantially identical, such surrender
shall not affect any action then pending nor abate any cause of action then
existing, and the reissued patent, to the extent that its claims are
substantially identical with the original patent, shall constitute a
continuation thereof and have effect continuously from the date of the
original patent."
31 See Duncan v. Walker, 533 U.S. 167, 174 (2001) (quoting United States v.
Menasche, 348 U.S. 528, 538-39 (1955)).
32 See Shannon v. United States, 512 U.S. 573, 584 (1994) (no authority to
enforce concepts gleaned solely from legislative history that have no
statutory reference point).
33 See H.R. Rep. No. 112-98 at 73 (2011).
34 There are floor statements that discuss what would be encompassed by the
term "the subject matter" in subparagraph (B) of 35 U.S.C. 102(b)(1) and
102(b)(2). One can find support for the "same subject matter" standard (157
Cong. Rec. 1496-97 (Mar. 9, 2011) ("An additional clarification we have
been asked about deals with subparagraph 102(b)(1)(B) * * * . The inventor
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is protected not only from the inventor's own disclosure being prior art
against the inventor's claimed invention, but also against the disclosures
of any of the same subject matter in disclosures made by others being prior
art against the inventor's claimed invention under section 102(a) or
section 103--so long as the prior art disclosures from others came after
the public disclosure by the inventor.")), as well as for the "the subject
matter of the claimed invention" standard (157 Cong. Rec. 1370 (Mar. 8,
2011) ("Under the first subparagraph (B), at section 102(b)(1)(B), if an
inventor publicly discloses his invention, no subsequent disclosure made by
anyone, regardless of whether the subsequent discloser obtained the subject
matter from the inventor, will constitute prior art against the inventor's
subsequent application for patent in the United States. The parallel
provision at section 102(b)(2)(B) applies the same rule to subsequent
applications: If the inventor discloses his invention, a subsequently filed
application by another will not constitute prior art against the inventor's
later-filed application for patent in the United States, even if the other
filer did not obtain the subject matter from the first-disclosing
inventor.")). See also H.R. Rep. No. 110-314 at 57 (2007) (the provision
disqualifying prior art if "the subject matter had, before such disclosure,
been publicly disclosed by the inventor or a joint inventor or others who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor" disqualifies any prior art under section
102(a)(1) if "the same subject matter" had already been publicly disclosed
by the inventor).
35 See 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B).
36 See 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A).
37 See 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B).
38 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). In Wands, the Federal
Circuit set forth the following factors to consider when determining
whether undue experimentation is needed: (1) The breadth of the claims; (2)
the nature of the invention; (3) the state of the prior art; (4) the level
of one of ordinary skill; (5) the level of predictability in the art; (6)
the amount of direction provided by the inventor; (7) the existence of
working examples; and (8) the quantity of experimentation needed to make or
use the invention based on the content of the disclosure.
39 See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252 (1965).
40 See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252, 256 (1965) (a
previously filed patent application to another pending in the Office, but
not patented or published, at the time an application is filed constitutes
part of the "prior art" within the meaning of 35 U.S.C. 103).
41 The Office is also treating such a situation under 35 U.S.C. 101 because
35 U.S.C. 282 makes a distinction between a failure to comply with 35 U.S.C.
112 and a failure to comply with 35 U.S.C. 115, in that a failure to comply
with any requirement of 35 U.S.C. 112 (except the failure to disclose the
best mode) is listed in 35 U.S.C. 282(b)(3)(A) as a defense in any action
involving the validity or infringement of a patent, whereas a failure to
comply with 35 U.S.C. 115 is not discussed in 35 U.S.C. 282(b). In
addition, 35 U.S.C. 115(i)(3) provides that a patent shall not be invalid
or unenforceable based upon the failure to comply with a requirement under
35 U.S.C. 115 if the failure is remedied as provided under 35 U.S.C.
115(i)(1).
42 See Final Bulletin for Agency Good Guidance Practices, 72 FR 3432 (Jan.
25, 2007).
43 See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336 (Fed. Cir. 2008)
(explaining that in distinguishing between substantive and interpretative
rules, a rule is substantive when it affects a change in existing law or
policy that affects individual rights and obligations, where a rule which
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merely clarifies or explains existing law or regulations is
interpretative). As these examination guidelines are not substantive
rulemaking, but merely examination guidelines that set out the Office's
interpretation of 35 U.S.C. 102 and 103 as amended by the AIA, these
examination guidelines are exempt from the notice-and-comment requirements
of 5 U.S.C. 553(b) (or any other law) and the thirty day advance
publication requirement of 5 U.S.C. 553(d). See Cooper Techs., 536 F.3d at
1336-37 (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not
require notice and comment rulemaking for "interpretative rules, general
statements of policy, or rules of agency organization, procedure, or
practice") (quoting 5 U.S.C. 553(b)(A)); see also Mikkilineni v. Stoll, 410
Fed. Appx. 311, 313 (Fed. Cir. 2010) (Office's 2009 guidelines concerning
35 U.S.C. 101 are interpretive, rather than substantive, and are thus
exempt from the notice and comment requirements of 5 U.S.C. 553). As prior
notice and an opportunity for public comment are not required pursuant to 5
U.S.C. 553 or any other law, neither a regulatory flexibility analysis nor
a certification under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.)
is required. See 5 U.S.C. 603.
44 Chevron v. Natural Res. Def. Council, 467 U.S. 837 (1984).
45 See Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 930-31 (Fed. Cir.
1991); see also 35 U.S.C. 3(a)(2)(A) ("[t]he Director shall be responsible
for providing policy direction and management supervision for the Office
and for the issuance of patents and the registration of trademarks" and
"shall perform these duties in a fair, impartial, and equitable manner").
46 See Final Bulletin for Agency Good Guidance Practices, 72 FR 3432, 3440
(Jan. 25, 2007).
47 Under 35 U.S.C. 102(e) as amended by the American Inventors Protection
Act of 1999 (AIPA) (Pub. L. 106-113, 113 Stat. 1501 (1999) and the
Intellectual Property and High Technology Technical Amendments Act of 2002
(Pub. L. 107-273), the international filing date of a PCT application is a
U.S. filing date for prior art purposes under 35 U.S.C. 102(e) if the
international application: (1) Has an international filing date on or after
November 29, 2000; (2) designated the United States; and (3) was published
under PCT Article 21(2) in English. See MPEP § 706.02(f)(1). The AIA amends
35 U.S.C. 102, 363, and 374 to provide simply that the publication under
the PCT of an international application designating the United States shall
be deemed a publication under 35 U.S.C. 122(b).
48 See 35 U.S.C. 101 ("[w]hoever invents or discovers * * *, may obtain a
patent therefor, subject to the conditions and requirements of this title);
see also P.J. Federico, Commentary on the New Patent Act, 75 J. Pat. &
Trademark Off. Soc'y 161, 179 (1993) (noting that pre-AIA 35 U.S.C. 102(f)
is perhaps unnecessary since 35 U.S.C. 101 provides that ("[w]hoever
invents or discovers * * *, may obtain a patent therefor, subject to the
conditions and requirements of this title").
49 See 35 U.S.C. 115 ("An application for patent that is filed under
section 111(a) or commences the national stage under section 371 shall
include, or be amended to include, the name of the inventor for any
invention claimed in the application.")
50 See Pub. L. 112-29, § 3(n)(1), 125 Stat. at 293.
51 See Pub. L. 112-29, § 3(n)(1), 125 Stat. at 293.
52 35 U.S.C. 102(g) precludes the grant of a patent if: (1) During the
course of an interference conducted under 35 U.S.C. 135 or 291, another
inventor involved therein establishes, to the extent permitted in 35 U.S.C.
104, that before such person's invention thereof the invention was made by
such other inventor and not abandoned, suppressed, or concealed, or (2)
before such person's invention thereof, the invention was made in this
country by another inventor who had not abandoned, suppressed, or concealed
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it.
53 See Pub. L. 112-29, § 3(n)(2), 125 Stat. at 293.
54 See Pub. L. 112-29, § 3(n)(2), 125 Stat. at 293.
55 See 35 U.S.C. 102(a).
56 See 35 U.S.C. 132(a).
57 See In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994).
58 See 35 U.S.C. 102(b)(1).
59 See 35 U.S.C. 102(b)(2).
60 See 35 U.S.C. 100(i)(1).
61 See MPEP § 706.02(VI).
62 See 35 U.S.C. 100(i)(2).
63 See In re Ekenstam, 256 F.2d 321, 323 (CCPA 1958); see also MPEP §
2126.01.
64 See In re Carlson, 983 F.2d 1032, 1037 (Fed. Cir. 1992); see also MPEP
§ 2126.
65 See Novo Nordisk Pharma., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347,
1355 (Fed. Cir. 2005) (discussing pre-AIA 35 U.S.C. 112, first paragraph,
and pre-AIA 35 U.S.C. 102).
66 See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), citing Eli Lilly
& Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 1375 (Fed. Cir.
2006); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir.
2008); In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990).
67 See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing Impax
Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008),
and In re LeGrice, 301 F.2d 929, 940-44 (CCPA 1962)).
68 See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); see also In re
Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992) (holding that a claimed
compound was anticipated even though the prior art reference did not
disclose a use for the compound); Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373, 1380-81 (Fed. Cir. 2003) (pointing out that actually
reducing the invention to practice is not necessary in order for a prior
art reference to anticipate); Impax Labs. Inc. v. Aventis Pharm. Inc., 468
F.3d 1366, 1382 (Fed. Cir. 2006) (stating that "proof of efficacy is not
required for a prior art reference to be enabling for purposes of
anticipation").
69 See In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985).
70 See Rasmussen v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. Cir.
2005).
71 See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991)
("As the court pointed out, `the description of a single embodiment of
broadly claimed subject matter constitutes a description of the invention
for anticipation purposes * * *, whereas the same information in a
specification might not alone be enough to provide a description of that
invention for purposes of adequate disclosure.' ") (quoting In re Lukach,
442 F.2d 967 (CCPA 1971)); see also In re Van Langenhoven, 458 F.2d 132
(CCPA 1972), and In re Ruscetta, 255 F.2d 687 (CCPA 1958).
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72 Under pre-AIA 35 U.S.C. 102(b), the critical date is the date that is
one year prior to the date of application for patent in the United States.
73 See Invitrogen Corp. v. Biocrest Mfg. L.P., 424 F.3d 1374, 1379-80 (Fed.
Cir. 2005).
74 See American Seating Co. v. USSC Group, Inc., 514 F.3d 1262, 1267 (Fed.
Cir. 2008).
75 See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371
(Fed. Cir. 1998).
76 See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370
(Fed. Cir. 1998).
77 See American Seating Co. v. USSC Group, Inc., 514 F.3d 1262, 1267 (Fed.
Cir. 2008).
78 See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370
(Fed. Cir. 1998).
79 See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370
(Fed. Cir. 1998) (quoting Carella v. Starlight Archery, 804 F.2d 135, 139
(Fed. Cir. 1986)).
80 See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).
81 See In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994).
82 Cf. Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1325 (Fed.
Cir. 2009) (an invention is in public use if it is shown to or used by an
individual other than the inventor under no limitation, restriction, or
obligation of confidentiality to the inventor).
83 See, e.g, In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989); In re Hall, 781
F.2d 897 (Fed. Cir. 1986); In re Bayer, 568 F.2d 1357 (CCPA 1978).
84 See, e.g, In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004),
Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104 (Fed.
Cir. 1985).
85 See, e.g, In re Wyer, 655 F.2d 221 (CCPA 1981); see also Bruckelmyer v.
Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006).
86 See, e.g, Voter Verified, Inc. v. Premier Election Solutions, Inc., 687
F.3d 1380-81 (Fed. Cir. 2012), In re Lister, 583 F.3d 1307 (Fed. Cir.
2009), and SRI Int'l, Inc. v. Internet Sec.Sys., Inc., 511 F.3d 1186 (Fed.
Cir. 2008).
87 See, e.g, Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed.
Cir. 2001).
88 See Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed.
Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570
(Fed. Cir.1988).
89 See 35 U.S.C. 102(b)(1) ("[a] disclosure made one year or less before
the effective filing date of a claimed invention shall not be prior art to
the claimed invention under [35 U.S.C. 102](a)(1)") and 102(b)(2) ("[a]
disclosure shall not be prior art to a claimed invention under [35 U.S.C.
102](a)(2)"); see also H.R. Rep. No. 112-98 at 43 (2011) (indicating that
the grace period provision of 35 U.S.C. 102(b) would apply to all patent
applicant actions during the grace period that would create prior art under
35 U.S.C. 102(a)).
90 See 35 U.S.C. 102(b)(1)(B).
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91 See In re Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011) (subject matter does
not change as a function of how one chooses to describe it).
92 See 157 Cong. Rec. 1370 (Mar. 8, 2011) (distinguishing between the core
requirement that the prior-filed application include an enabling disclosure
and the ministerial requirements that the applications be copendent and
specifically referenced); see also MPEP § 201.08 (permitting a claim to the
benefit of a prior-filed application in a continuation-in-part application
provided that the continuation-in-part application has a common inventor,
has copendency with the prior-filed application, and includes a specific
reference to the prior-filed application, regardless of whether the
prior-filed application contains support under 35 U.S.C. 112 for any claim
in the continuation-in-part application).
93 The legislative history of the AIA discusses an important distinction
between ministerial entitlement to make a priority or benefit claim, and
actual legal entitlement to the priority or benefit. In section 100(i),
which defines the effective filing date of the patent under review, the
patent must be entitled to the priority or benefit itself under the
relevant sections. In section 102(d), however, the application need only be
entitled to claim the benefit or priority under those sections. This
difference in language distinguishes between the core requirement of
section 120 et al.--that the application include an enabling disclosure--
and the ministerial requirements of that section--that the application be
copendent and specifically referenced. In effect, an application that meets
the ministerial requirements of copendency and specific reference is
entitled to claim the benefit or priority, but only an application that
also offers an enabling disclosure is actually entitled to the benefit or
priority itself. See 157 Cong. Rec. 1370 (Mar. 8, 2011).
94 See In re Wertheim, 646 F.2d 527 (CCPA 1981), which relies upon
Alexander Milburn Co. v. Davis-Bournonville, 270 U.S. 390 (1926), for its
conclusion that the patent must actually be entitled to the benefit of the
prior-application for any subject matter in the patent to have a prior art
date under 35 U.S.C. 102(e) as of the filing date of the prior application.
The legislative history of the AIA indicates that paragraph (2) of AIA
102(d) is intended to overrule what remained of In re Wertheim, 646 F.2d
527 (CCPA 1981), which appeared to hold that only an application that could
have become a patent on the day that it was filed can constitute prior art
against another application or patent. See 157 Cong. Rec. 1369-70 (Mar. 8,
2011). The Office has previously indicated that the reasoning of In re
Wertheim, 646 F.2d 527 (CCPA 1981), did not survive the amendment to 35
U.S.C. 102(e) in the American Inventor's Protection Act. See, e.g, Ex parte
Yamaguchi, 88 U.S.P.Q.2d 1606, 1610-12 (Bd. Pat. App. & Interf. 2008). In
In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010), the Federal Circuit held
that a patent was effective as prior art as of the filing date of a
provisional application claimed under 35 U.S.C. 119(e), so long as the
subject matter upon which the rejection was based was described in the
provisional application filing.
95 See MPEP § 2136.03 IV ("In other words, the subject matter used in the
rejection must be disclosed in the earlier-filed application in compliance
with 35 U.S.C. 112, first paragraph, in order for that subject matter to be
entitled to the earlier filing date under 35 U.S.C. 102(e)."); see also Ex
parte Yamaguchi, 88 U.S.P.Q.2d 1606, 1610-12 (Bd. Pat. App. & Interf. 2008)
(discussing the legislative displacement of In re Wertheim, 646 F.2d 527
(CCPA 1981), prior to enactment of the AIA by the provisional application
provisions of the Uruguay Round Agreements Act (URAA) (Pub. L. 103-465, 108
Stat. 4809 (1994)), and the eighteen-month publication provisions of the
American Inventor's Protection Act of 1999 (AIPA)).
96 As discussed previously, in In re Hilmer, 359 F.2d 859 (CCPA 1966), the
CCPA held that reliance on the foreign priority date of a reference applied
in a rejection under pre-AIA 35 U.S.C. 102(e) was improper.
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97 When examining an application to which the changes in 35 U.S.C. 102 and
103 do not apply, Office personnel will continue to apply the Hilmer
doctrine, and foreign priority dates may not be used in determining 35
U.S.C. 102(e) prior art dates. Note that the international filing date of a
published PCT application may be the 35 U.S.C. 102(e) prior art date under
pre-AIA law under certain circumstances. See MPEP § 706.02(f).
98 See 35 U.S.C. 102(b)(2)(B).
99 See MPEP § 804.03 (prior art disqualified under the CREATE Act may be
the basis for a double patenting rejection).
100 See MPEP § 2124 (publications after the critical date may be used to
show factual evidence that, as of an application's filing date, undue
experimentation would have been required to make or use the invention, that
a parameter absent from the claims was or was not critical, that a
statement in the specification was inaccurate, that the invention was
inoperative or lacked utility, that a claim was indefinite, or that
characteristics of prior art products were known).
101 See MPEP § 706.02(l)(2)(II).
102 See In re Katz, 687 F.2d 450, 455 (CCPA 1982).
103 See In re DeBaun, 687 F.2d 459, 463 (CCPA 1982).
104 See Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) (affirming rejection
notwithstanding declarations by the alleged actual inventors as to their
inventorship in view of a nonapplicant author submitting a letter declaring
the nonapplicant author's inventorship).
105 See 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A).
106 See 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B).
107 See In re Deckler, 977 F.2d 1449, 1451-52 (Fed. Cir. 1992) (35 U.S.C.
102, 103, and 135 "clearly contemplate--where different inventive entities
are concerned--only one patent should issue for inventions which are either
identical to or not patentably distinct from each other") (quoting Aelony
v. Arni, 547 F.2d 566, 570 (CCPA 1977)).
108 See 35 U.S.C. 102(c)(1).
109 See 35 U.S.C. 100(h).
110 See 35 U.S.C. 102(c)(2).
111 See 35 U.S.C. 102(c)(3).
112 See Public Law 108-453, 118 Stat. 3596 (2004), which was an amendment
to pre-AIA 35 U.S.C. 103(c). Congress has made it clear that the intent of
AIA 35 U.S.C. 102(c) is to continue the promotion of joint research
activities that was begun under the CREATE Act, stating in section 3(b) of
the AIA that "[t]he United States Patent and Trademark Office shall
administer section 102(c) of title 35, United States Code, in a manner
consistent with the legislative history of the CREATE Act that was relevant
to its administration by the United States Patent and Trademark Office."
See 125 Stat. at 287.
113 See 35 U.S.C. 115(a) ("[a]n application for patent that is filed under
[35 U.S.C.] 111(a) or commences the national stage under [35 U.S.C.] 371
shall include, or be amended to include, the name of the inventor for any
invention claimed in the application").
114 See MPEP § 2137.01.
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115 As discussed previously, 35 U.S.C. 101 provides that "[w]hoever invents
or discovers * * *, may obtain a patent therefor, subject to the conditions
and requirements of this title," while 35 U.S.C. 115 requires that "[a]n
application for patent that is filed under section 111(a) or commences the
national stage under section 371 shall include, or be amended to include,
the name of the inventor for any invention claimed in the application."
116 AIA 35 U.S.C. 103 provides: "A patent for a claimed invention may not
be obtained, notwithstanding that the claimed invention is not identically
disclosed as set forth in section 102, if the differences between the
claimed invention and the prior art are such that the claimed invention as
a whole would have been obvious before the effective filing date of the
claimed invention to a person having ordinary skill in the art to which the
claimed invention pertains. Patentability shall not be negated by the
manner in which the invention was made."
117 As pointed out by the Federal Circuit, "[t]he term `claims' has been
used in patent legislation since the Patent Act of 1836 to define the
invention that an applicant believes is patentable." Hoechst-Roussel
Pharms., Inc. v. Lehman, 109 F.3d 756, 758 (Fed. Cir. 1997) (citing Act of
July 4, 1836, ch. 357, § 6, 5 Stat. 117). Furthermore, in Graham v. John
Deere, 383 U.S. 1 (1966), the second of the Supreme Court's factual
inquiries (the "Graham factors") is that the "differences between the prior
art and the claims at issue are to be ascertained." Graham, 383 U.S. at 17.
Thus, in interpreting 35 U.S.C. 103 as enacted in the 1952 Patent
Act--language that remained unchanged until enactment of the AIA--the Court
equated "the subject matter sought to be patented" with the claims.
118 As stated in MPEP § 706.02(n), in view of the Federal Circuit's
decisions in In re Ochiai, 71 F.3d 1565 (Fed. Cir. 1995) and In re Brouwer,
77 F.3d 422 (Fed. Cir. 1996), the need to invoke pre-AIA 35 U.S.C. 103(b)
rarely arose. Those cases continue to retain their validity under the AIA.
119 See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252, 256 (1965) (a
previously filed patent application to another pending in the Office, but
not patented or published, at the time an application is filed constitutes
part of the "prior art" within the meaning of 35 U.S.C. 103).
120 This is in accordance with pre-AIA case law indicating that in making
determinations under 35 U.S.C. 103, "it must be known whether a patent or
publication is in the prior art under 35 U.S.C. 102." Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987). However, while a
disclosure must enable those skilled in the art to make the invention in
order to anticipate under 35 U.S.C. 102, a non-enabling disclosure is prior
art for all it teaches for purposes of determining obviousness under 35
U.S.C. 103. Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed.
Cir. 1991); Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551
(Fed. Cir. 1989) ("Even if a reference discloses an inoperative device, it
is prior art for all that it teaches.").
121 See MPEP § 706.07(a).
122 35 U.S.C. 132(a) provides that "[n]o amendment shall introduce new
matter into the disclosure of the invention."
123 The MPEP set forth the following process for treating amendments that
are believed to contain new matter: (1) A new drawing should not be entered
if the examiner discovers that the drawing contains new matter (MPEP §
608.02); and (2) amendments to the written description or claims involving
new matter are ordinarily entered, but the new matter is required to be
canceled from the written description and the claims directed to the new
matter are rejected under 35 U.S.C. 112(a) (MPEP § 608.04). This process
for treating amendments containing new matter is purely an administrative
process for handling an amendment seeking to introduce new matter into the
disclosure of the invention in violation of 35 U.S.C. 132(a), and for
resolving disputes between the applicant and an examiner as to whether a
new drawing or amendment to the written description or claims would
actually introduce new matter into the disclosure of the invention.
| Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act |
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2012-0015]
RIN 0651-AC77
Changes To Implement the First Inventor To File Provisions of the
Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The Leahy-Smith America Invents Act (AIA) amends the patent laws
pertaining to the conditions of patentability to convert the U.S. patent
system from a "first to invent" system to a "first inventor to file"
system; treats U.S. patents and U.S. patent application publications as
prior art as of their earliest effective U.S., foreign, or international
filing date; eliminates the requirement that a prior public use or sale be
"in this country" to be a prior art activity; and treats commonly owned or
joint research agreement patents and patent application publications as
being by the same inventive entity for purposes of novelty, as well as
nonobviousness. The AIA also repeals the provisions pertaining to statutory
invention registrations. The United States Patent and Trademark Office
(Office or USPTO) is revising the rules of practice in patent cases for
consistency with, and to address the examination issues raised by, the
changes in section 3 of the AIA.
DATES: Effective date: The changes in this final rule are effective on
March 16, 2013.
Applicability date: The changes to 37 CFR 1.55 and 1.78 apply to any
application filed under 35 U.S.C. 111 or 363 on or after March 16, 2013.
The provisions of 1.17 and 37 CFR 1.293 through 1.297 as in effect on March
15, 2013, apply to any request for a statutory invention registration filed
prior to March 16, 2013. New 37 CFR 1.109 applies to any application for
patent, and to any patent issuing thereon, that contains, or contained at
any time, a claim to a claimed invention that has an effective filing date
as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013, and to
any application for patent, and to any patent issuing thereon, that
contains, or contained at any time, a specific reference under 35 U.S.C.
120, 121, or 365(c) to any patent or application that contains, or
contained at any time, a claim to a claimed invention that has an effective
filing date as defined in 35 U.S.C. 100(i) that is on or after March 16,
2013.
FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Legal Advisor
(telephone (571) 272-7711; electronic mail message (susy.tsang-
foster@uspto.gov)) or Linda S. Therkorn, Patent Examination Policy Advisor
(telephone (571) 272-7837; electronic mail message
(linda.therkorn@uspto.gov)), of the Office of the Deputy Commissioner for
Patent Examination Policy.
SUPPLEMENTARY INFORMATION:
Executive Summary
Purpose: Section 3 of the AIA, inter alia, amends the patent laws to:
(1) Convert the U.S. patent system from a "first to invent" system to a
"first inventor to file" system; (2) treat U.S. patents and U.S. patent
application publications as prior art as of their earliest effective filing
date, regardless of whether the earliest effective filing date is based
upon an application filed in the United States or in another country; (3)
eliminate the requirement that a prior public use or sale be "in this
country" to be a prior art activity; and (4) treat commonly owned or joint
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research agreement patents and patent application publications as being by
the same inventive entity for purposes of 35 U.S.C. 102, as well as 35
U.S.C. 103. These changes in section 3 of the AIA are effective on March
16, 2013, but apply only to certain applications filed on or after March
16, 2013. This final rule revises the rules of practice in title 37 of the
Code of Federal Regulations (CFR) for consistency with, and to address the
examination issues raised by, the changes in section 3 of the AIA.
The Office sets out the conditions of patentability in 35 U.S.C. 102 and
103 as interpreted by the case law in the Manual of Patent Examining
Procedure (MPEP). See MPEP sections 2121 through 2146 (8th ed. 2001) (Rev.
9, Aug. 2012) (MPEP). The Office is also issuing guidelines and will be
training the Patent Examining Corps on how the changes to 35 U.S.C. 102
and 103 in section 3 of the AIA impact examination procedure and the
provisions of the MPEP pertaining to 35 U.S.C. 102 and 103.
Summary of Major Provisions: The Office is specifically adopting the
following changes:
The Office is adding definitions provided in the AIA to the rules of
practice.
The Office is providing for the submission of affidavits or declarations
showing that: (1) A disclosure upon which a claim rejection is based was by
the inventor or a joint inventor or by another who obtained the subject
matter disclosed directly or indirectly from the inventor or a joint
inventor; or (2) there was a prior public disclosure by the inventor or a
joint inventor or another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor. In response
to public comment, the Office has provided a more flexible approach for
submission of an affidavit or declaration with evidence of a prior public
disclosure. In response to similar comments regarding the prior public
disclosure exception provisions, the Office wants to highlight that there
is no requirement that the mode of disclosure by an inventor or joint
inventor be the same as the mode of disclosure of an intervening disclosure
(e.g., inventor discloses his invention at a trade show and the intervening
disclosure is in a peer-reviewed journal), as explained in more detail in
the examination guidelines. Additionally, there is no requirement that the
disclosure by the inventor or a joint inventor be a verbatim or ipsissimis
verbis disclosure of an intervening disclosure in order for the exception
based on a prior public disclosure of subject matter by the inventor or a
joint inventor to apply. The guidelines also clarify that the exception
applies to subject matter of the intervening disclosure that is simply a
more general description of the subject matter previously publicly
disclosed by the inventor or a joint inventor.
The Office is providing for the situation in which a U.S. patent or U.S.
patent application publication has a prior art effect as of the filing date
of a foreign priority application by requiring that the certified copy of
the foreign application or an interim copy of the foreign application be
filed within the later of four months from the actual filing date of the
application filed under 35 U.S.C. 111(a) or sixteen months from the filing
date of the prior foreign application. This requirement does not apply if:
(1) The foreign application was filed in a foreign intellectual property
office participating with the Office in a bilateral or multilateral
priority document exchange agreement (participating foreign intellectual
property office); or (2) a copy of the foreign application was filed in an
application subsequently filed in a participating foreign intellectual
property office that permits the Office to obtain such a copy, and the
applicant timely requests in a separate document that the Office retrieve
such copy from the participating intellectual property office. The priority
document exchange program provides for the electronic transmission of
priority documents to and from participating foreign Intellectual Property
Offices (if applicant files a request and an authorization) without payment
of a fee. The current participating offices are the European Patent Office
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(EPO), the Japan Patent Office (JPO), the Korean Intellectual Property
Office (KIPO), and the World Intellectual Property Organization (WIPO).
The Office is eliminating the provisions directed to statutory invention
registrations.
Finally, the Office is adopting additional requirements for
nonprovisional applications filed on or after March 16, 2013, that claim
priority to or the benefit of the filing date of an earlier application
(i.e., foreign, provisional, or nonprovisional application, or
international application designating the United States of America) that
was filed prior to March 16, 2013. If such a nonprovisional application
contains, or contained at any time, a claim to a claimed invention that
has an effective filing date on or after March 16, 2013, the applicant must
provide a statement to that effect within the later of four months from the
actual filing date of the later-filed application, four months from the
date of entry into the national stage in an international application,
sixteen months from the filing date of the prior-filed application, or the
date that a first claim to a claimed invention that has an effective filing
date on or after March 16, 2013, is presented in the application. This
procedure will permit the Office to readily determine whether the
nonprovisional application is subject to the changes to 35 U.S.C. 102 and
103 in the AIA.
Costs and Benefits: This rulemaking is not economically significant as
that term is defined in Executive Order 12866 (Sept. 30, 1993).
Specific Changes to Title 35, United States Code
The AIA was enacted into law on September 16, 2011. See Public Law
112-29, 125 Stat. 284 (2011). Section 3 of the AIA specifically amends 35
U.S.C. 102 to provide that a person shall be entitled to a patent unless:
(1) The claimed invention was patented, described in a printed publication,
or in public use, on sale, or otherwise available to the public before the
effective filing date of the claimed invention (35 U.S.C. 102(a)(1)); or
(2) the claimed invention was described in a patent issued under 35 U.S.C.
151, or in an application for patent published or deemed published under 35
U.S.C. 122(b), in which the patent or application, as the case may be,
names another inventor and was effectively filed before the effective
filing date of the claimed invention (35 U.S.C. 102(a)(2)). See 125 Stat.
at 285-86. The publication of an international application designating the
United States of America by the World Intellectual Property Organization
(WIPO) is deemed a publication under 35 U.S.C. 122(b) (except as provided
in 35 U.S.C. 154(d)). See 35 U.S.C. 374.
35 U.S.C. 102(b) as amended by section 3 of the AIA provides for
exceptions to the provisions of 35 U.S.C. 102(a). The exceptions in 35
U.S.C. 102(b)(1) provide that a disclosure made one year or less before
the effective filing date of a claimed invention shall not be prior art
to the claimed invention under 35 U.S.C. 102(a)(1) if: (A) The disclosure
was made by the inventor or joint inventor or by another who obtained the
subject matter disclosed directly or indirectly from the inventor or a
joint inventor (35 U.S.C. 102(b)(1)(A)); or (B) the subject matter
disclosed had, before such disclosure, been publicly disclosed by the
inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor (35
U.S.C. 102(b)(1)(B)). See 125 Stat. at 286. The exceptions in 35 U.S.C.
102(b)(2) provide that a disclosure shall not be prior art to a claimed
invention under 35 U.S.C. 102(a)(2) if: (A) The subject matter disclosed
was obtained directly or indirectly from the inventor or a joint inventor
(35 U.S.C. 102(b)(2)(A)); (B) the subject matter disclosed had, before such
subject matter was effectively filed under 35 U.S.C. 102(a)(2), been
publicly disclosed by the inventor or a joint inventor or another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor (35 U.S.C. 102(b)(2)(B)); or (C) the subject
matter disclosed and the claimed invention, not later than the effective
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filing date of the claimed invention, were owned by the same person or
subject to an obligation of assignment to the same person (35 U.S.C.
102(b)(2)(C)). See id.
35 U.S.C. 102(c) as amended by section 3 of the AIA provides for common
ownership under joint research agreements. 35 U.S.C. 102(c) specifically
provides that subject matter disclosed and a claimed invention shall be
deemed to have been owned by the same person or subject to an obligation of
assignment to the same person in applying the provisions of 35 U.S.C.
102(b)(2)(C) if: (1) The subject matter disclosed was developed and the
claimed invention was made by, or on behalf of, one or more parties to a
joint research agreement that was in effect on or before the effective
filing date of the claimed invention; (2) the claimed invention was made as
a result of activities undertaken within the scope of the joint research
agreement; and (3) the application for patent for the claimed invention
discloses or is amended to disclose the names of the parties to the joint
research agreement. See id. The AIA also provides that the enactment of 35
U.S.C. 102(c) is done with the same intent to promote joint research
activities that was expressed, including in the legislative history,
through the enactment of the Cooperative Research and Technology
Enhancement Act of 2004 (the "CREATE Act"; Pub. L. 108-453, 118 Stat. 3596
(2004)), and that the Office shall administer 35 U.S.C. 102(c) in a manner
consistent with the legislative history of the CREATE Act that was relevant
to its administration. See 125 Stat. at 287.
35 U.S.C. 102(d) as amended by section 3 of the AIA provides a
definition for "effectively filed" for purposes of determining whether a
patent or application for patent is prior art to a claimed invention under
35 U.S.C. 102(a)(2). 35 U.S.C. 102(d) provides that for purposes of
determining whether a patent or application for patent is prior art to a
claimed invention under 35 U.S.C. 102(a)(2), such patent or application
shall be considered to have been effectively filed, with respect to any
subject matter described in the patent or application, on the earliest of:
(1) The actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of
priority or the benefit of an earlier filing date under 35 U.S.C. 119, 120,
121, or 365 based upon one or more prior filed applications for patent, the
filing date of the earliest such application that describes the subject
matter. See 125 Stat. at 286-87.
The AIA provides a number of definitions for terms used in title 35 of
the United States Code. See 125 Stat. at 285. The term "inventor" means the
individual or, if a joint invention, the individuals collectively who
invented or discovered the subject matter of the invention, and the terms
"joint inventor" and "coinventor" mean any one of the individuals who
invented or discovered the subject matter of a joint invention. 35 U.S.C.
100(f) and (g). The term "joint research agreement" means a written
contract, grant, or cooperative agreement entered into by two or more
persons or entities for the performance of experimental, developmental, or
research work in the field of the claimed invention. 35 U.S.C. 100(h). The
term "effective filing date" for a claimed invention in a patent or
application for patent (other than a reissue application or a reissued
patent) means the earliest of: (1) The actual filing date of the patent or
the application for the patent containing a claim to the invention; or (2)
the filing date of the earliest application for which the patent or
application is entitled, as to such invention, to a right of priority or
the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, or
365. 35 U.S.C. 100(i)(1). The "effective filing date" for a claimed
invention in a reissued patent or an application for reissue shall be
determined by deeming the claim to the invention to have been contained in
the patent for which reissue was sought. 35 U.S.C. 100(i)(2). The term
"claimed invention" means the subject matter defined by a claim in a patent
or an application for a patent. 35 U.S.C. 100(j).
AIA 35 U.S.C. 103 provides that a patent for a claimed invention may not
be obtained, notwithstanding that the claimed invention is not identically
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disclosed as set forth in 35 U.S.C. 102, if the differences between the
claimed invention and the prior art are such that the claimed invention as
a whole would have been obvious before the effective filing date of the
claimed invention to a person having ordinary skill in the art to which the
claimed invention pertains. See 125 Stat. at 287. AIA 35 U.S.C. 103 also
provides that patentability shall not be negated by the manner in which the
invention was made. See id.
The AIA eliminates the provisions in 35 U.S.C. 135 for patent
interference proceedings and replaces them with patent derivation
proceedings. See 125 Stat. at 289-90. The Office has implemented the patent
derivation proceedings provided for in the AIA in a separate rulemaking.
See Changes To Implement Derivation Proceedings, 77 FR 56068 (Sept. 11,
2012). The AIA also replaces the interference provisions of 35 U.S.C. 291
with derivation provisions. See 125 Stat. at 288-89.
The AIA repeals the provisions of 35 U.S.C. 104 (special provisions for
inventions made abroad) and 157 (statutory invention registrations). See
125 Stat. at 287. The AIA also makes conforming changes to 35 U.S.C. 111,
119, 120, 134, 145, 146, 154, 172, 202(c), 287, 305, 363, 374, and 375(a).
See 125 Stat. at 287-88, and 290-91.
The AIA provides that the changes in section 3 that are being
implemented in this rulemaking take effect on March 16, 2013. See 125 Stat.
at 293. The AIA also provides that the changes (other than the repeal of 35
U.S.C. 157) in section 3 apply to any application for patent, and to any
patent issuing thereon, that contains, or contained at any time: (1) A
claim to a claimed invention that has an effective filing date as defined
in 35 U.S.C. 100(i) that is on or after March 16, 2013; or (2) a specific
reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application
that contains, or contained at any time, such a claim. See id.
The AIA also provides that the provisions of 35 U.S.C. 102(g), 135, and
291 as in effect on March 15, 2013, shall apply to each claim of an
application for patent, and any patent issued thereon, for which the
amendments made by this section also apply, if such application or patent
contains, or contained at any time: (1) A claim to an invention having an
effective filing date as defined in 35 U.S.C. 100(i) that occurs before
March 16, 2013; or (2) a specific reference under 35 U.S.C. 120, 121, or
365(c) to any patent or application that contains, or contained at any
time, such a claim. See id.
General Discussion of the Changes From Proposed Rules
The Office published a notice of proposed rulemaking and a notice of
proposed examination guidelines on July 26, 2012, to implement the first
inventor to file provisions of section 3 of the AIA. See Changes To
Implement the First Inventor To File Provisions of the Leahy-Smith America
Invents Act, 77 FR 43742 (July 26, 2012) (notice of proposed rulemaking),
and Examination Guidelines for Implementing the First Inventor To File
Provisions of the Leahy-Smith America Invents Act, 77 FR 43759 (July 26,
2012) (notice of proposed examination guidelines). The Office also
conducted a roundtable discussion with the public on September 6, 2012, to
obtain public input from organizations and individuals on issues relating
to the Office's proposed implementation of the first inventor to file
provisions of the AIA. See Notice of Roundtable on the Implementation of
the First Inventor To File Provisions of the Leahy-Smith America Invents
Act, 77 FR 49427 (Aug. 16, 2012). The Office also conducted a number of
roadshow presentations in September of 2012 that included a discussion of
the first inventor to file provisions of the AIA. In view of the input from
the public, the Office is making the following changes to the proposed
rules of practice pertaining to the first inventor to file provisions in
section 3 of the AIA in this final rule:
Changes to the Time Period for Submitting a Certified Copy of the
Foreign Priority Application: The Office proposed to require that the
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certified copy of the foreign application be filed within the later of four
months from the actual filing date of the application or sixteen months
from the filing date of the prior foreign application. See Changes To
Implement the First Inventor To File Provisions of the Leahy-Smith America
Invents Act, 77 FR at 43743, 43745, and 43754. The Office received a number
of comments indicating that the Office should consider alternative means of
ensuring that a copy of any priority application is available. The Office
is requiring in this final rule that a certified copy of the foreign
application be filed within the later of four months from the actual filing
date of the application or sixteen months from the filing date of the prior
foreign application, but is also providing that this requirement does not
apply if: (1) The priority application was filed in a participating foreign
intellectual property office, or if a copy of the foreign application was
filed in an application subsequently filed in a participating foreign
intellectual property office that permits the Office to obtain such a copy,
and the Office either receives a copy of the foreign application from the
participating foreign intellectual property office or a certified copy of
the foreign application within the pendency of the application and before
the patent is granted; or (2) the applicant provides an interim copy of the
original foreign application within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application, and files a certified copy of the
foreign application within the pendency of the application and before the
patent is granted. The Office is additionally providing a "good cause"
exception in the rule for a belated certified copy of the foreign
application.
Changes To the Statements Required For Nonprovisional Applications
Claiming Priority to or the Benefit of an Application filed Prior to March
16, 2013: The Office proposed two requirements for nonprovisional
applications filed on or after March 16, 2013, that claim priority to or
the benefit of the filing date of an earlier application (i.e., foreign,
provisional, nonprovisional application, or international application
designating the United States of America) that was filed prior to March 16,
2013 (transition application). First, the Office proposed to require that
if a transition application contains, or contained at any time, a claim to
a claimed invention that has an effective filing date on or after March 16,
2013, the applicant must provide a statement to that effect within the
later of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage in
an international application, sixteen months from the filing date of the
prior-filed application, or the date that a first claim to a claimed
invention that has an effective filing date on or after March 16, 2013, is
presented in the application. See Changes To Implement the First Inventor
To File Provisions of the Leahy-Smith America Invents Act, 77 FR at 43743,
43745, 43747-48, and 43755-57. Second, the Office proposed that if a
transition application does not contain a claim to a claimed invention that
has an effective filing date on or after March 16, 2013, but discloses
subject matter not also disclosed in the prior-filed foreign, provisional,
nonprovisional application, or international application designating the
United States of America, the applicant must provide a statement that the
later filed application includes subject matter not disclosed in the
prior-filed foreign, provisional, nonprovisional application, or
international application designating the United States of America within
the later of four months from the actual filing date of the later-filed
application, four months from the date of entry into the national stage in
an international application, or sixteen months from the filing date of the
prior-filed application. See id. The Office received a number of comments
expressing various concerns with a requirement that an applicant determine
the effective filing date of the claims in his or her application, and
questioning the need for any such statement in an application that never
contained a claim to a claimed invention that has an effective filing date
on or after March 16, 2013.
The Office is providing in this final rule that a statement is required
only if a transition application contains, or contained at any time, a
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claim to a claimed invention that has an effective filing date on or after
March 16, 2013. Thus, no statement is required if a transition application
discloses subject matter not also disclosed in the prior-filed foreign,
provisional, nonprovisional application, or international application
designating the United States of America but does not ever contain a claim
to a claimed invention that has an effective filing date on or after March
16, 2013. The Office is also providing that an applicant is not required to
provide such a statement if the applicant reasonably believes on the basis
of information already known to the individuals designated as having a duty
of disclosure with respect to the application that the transition
application does not, and did not at any time, contain a claim to a claimed
invention that has an effective filing date on or after March 16, 2013.
Thus, an applicant in this situation is not required to conduct any
additional investigation or analysis to determine the effective filing date
of the claims in their applications.
Changes To Affidavits or Declarations Showing a Prior Disclosure by an
Inventor or Another Who Obtained the Subject Matter From an Inventor: The
Office proposed setting out the standard for a successful affidavit or
declaration where the disclosure is the inventor's own work (i.e., a
satisfactory showing that the inventor or a joint inventor is in fact the
inventor of the subject matter of the disclosure) and where the disclosure
was by another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor (i.e., showing that the
inventor or a joint inventor is the inventor of the subject matter
disclosed and directly or indirectly communicated the subject matter
disclosed to another) in the rules of practice. See Changes To Implement
the First Inventor To File Provisions of the Leahy-Smith America Invents
Act, 77 FR at 43743, 43749-51, and 43758-59. The Office also proposed to
require the applicant to file a petition for a derivation proceeding if a
rejection is based upon a U.S. patent or U.S. patent application
publication of a patented or pending application naming another inventor
and the patent or pending application claims an invention that is the same
or substantially the same as the applicant's claimed invention. See Changes
To Implement the First Inventor To File Provisions of the Leahy-Smith
America Invents Act, 77 FR at 43751 and 43759. The Office received a number
of comments suggesting that a procedural provision should not set out the
standard for a successful affidavit or declaration and suggesting that the
Office should not require an applicant to file a petition for a derivation
proceeding. The Office is revising the provision in this final rule to
simply specify: (1) When an affidavit or declaration of attribution or
prior public disclosure may be used to disqualify a disclosure as prior
art; and (2) the procedural requirements for such an affidavit or
declaration. The Office is also replacing the provision that the Office may
require the applicant to file a petition for a derivation proceeding with a
provision indicating that such an affidavit or declaration may not be
available to overcome a rejection when the affidavit or declaration
contends that an inventor named in the U.S. patent or U.S. patent
application publication derived the claimed invention from the inventor or
a joint inventor named in the application or patent, and that in such a
case, an applicant or a patent owner may file a petition for a derivation
proceeding.
The Office has sought to address the concerns of its stakeholders as
expressed in the public comment, and plans to seek additional public
comment on the rules of practice pertaining to the first inventor to file
provisions of section 3 of the AIA after the Office and the public have
gained experience with the rules of practice pertaining to the first
inventor to file provisions in operation.
Discussion of Specific Rules
The following is a discussion of the amendments to Title 37 of the Code
of Federal Regulations, part 1, in this final rule.
Section 1.9: Section 1.9 is amended to add the definition of the terms
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used throughout the rules.
Section 1.9(d)(1) provides that the term "inventor" or "inventorship" as
used in this chapter means the individual or, if a joint invention, the
individuals collectively who invented or discovered the subject matter of
the invention. See 35 U.S.C. 100(f). While the term "inventorship" is not
used in 35 U.S.C. 100(f), the term "inventorship" is currently used
throughout the rules of practice to mean the individual or, if a joint
invention, the individuals collectively who invented or discovered the
subject matter of the invention. Section 1.9(d)(2) provides that the term
"joint inventor" or "coinventor" as used in this chapter means any one of
the individuals who invented or discovered the subject matter of a joint
invention. See 35 U.S.C. 100(g).
Section 1.9(e) provides that the term "joint research agreement" as used
in this chapter means a written contract, grant, or cooperative agreement
entered into by two or more persons or entities for the performance of
experimental, developmental, or research work in the field of the claimed
invention. See 35 U.S.C. 100(h).
Section 1.9(f) provides that the term "claimed invention" as used in
this chapter means the subject matter defined by a claim in a patent or an
application for a patent. See 35 U.S.C. 100(j).
Section 1.14: Section 1.14(f) is amended to correct the spelling of the
word "proprietary."
Section 1.17: Section 1.17 is amended to eliminate the provisions
pertaining to statutory invention registrations in § 1.17(g), (n), and (o).
See discussion of the provisions of §§ 1.293 through 1.297.
Sections 1.17(g) and (i) are also amended for consistency with the
changes to § 1.55. See discussion of § 1.55.
Section 1.53: Section 1.53(b) is amended for consistency with the
reorganization of § 1.78. See discussion of § 1.78.
Section 1.53(c) is amended to eliminate the provisions pertaining to
statutory invention registrations. See discussion of the provisions of §§
1.293 through 1.297.
Section 1.53(j) is removed as the provisions of § 1.53 pertain to
applications filed under 35 U.S.C. 111 and the discussion of former §
1.53(j) pertained to applications filed under the Patent Cooperation Treaty
(PCT).
Section 1.55: Section 1.55 is reorganized into paragraphs (a) through
(l) for clarity.
Section 1.55(a) provides generally that an applicant in a nonprovisional
application may claim priority to one or more prior foreign applications
under the conditions specified in 35 U.S.C. 119(a) through (d) and (f),
172, and 365(a) and (b) and § 1.55.
Section 1.55(b) provides that the nonprovisional application must be
filed not later than twelve months (six months in the case of a design
application) after the date on which the foreign application was filed, or
that the nonprovisional application is entitled to claim the benefit under
35 U.S.C. 120, 121, or 365(c) of an application that was filed not later
than twelve months (six months in the case of a design application) after
the date on which the foreign application was filed. See MPEP § 201.13.
While section 3(g)(1) of the AIA amended 35 U.S.C. 172 to eliminate the
reference to "the time specified in section 102(d)" in view of the
elimination of the premature foreign patenting provisions of pre-AIA 35
U.S.C. 102(d), the AIA did not otherwise change the provision in 35 U.S.C.
172 that the right of priority provided for by 35 U.S.C. 119(a) through (d)
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shall be six months in the case of designs. See MPEP § 1504.10. Section
1.55(b) also provides that this twelve-month period is subject to 35 U.S.C.
21(b) (and § 1.7(a)) and PCT Rule 80.5, and the six-month period is subject
to 35 U.S.C. 21(b) and § 1.7(a). 35 U.S.C. 21(b) and § 1.7(a) provide that
when the day, or the last day, for taking an action (e.g., filing a
nonprovisional application within twelve months of the date on which the
foreign application was filed) or paying a fee in the Office falls on
Saturday, Sunday, or a Federal holiday within the District of Columbia, the
action may be taken, or fee paid, on the next succeeding secular or
business day. PCT Rule 80.5 has similar provisions relating to the
expiration of any period during which any document or fee in an
international application must reach a national Office or intergovernmental
organization.
Section 1.55(c) pertains to the time for filing a priority claim and
certified copy of a foreign application in an international application
entering the national stage under 35 U.S.C., which corresponds to former §
1.55(a)(1)(ii). Section 1.55(c) provides that in an international
application entering the national stage under 35 U.S.C., the claim for
priority must be made and a certified copy of the foreign application must
be filed within the time limit set forth in the PCT and the Regulations
under the PCT. Note that it is permissible, but not required under §
1.55(c), to present the claim for priority in an application data sheet in
an international application entering the national stage under 35 U.S.C.
Section 1.55(d) pertains to the time for filing a priority claim in an
application filed under 35 U.S.C. 111(a).
Section 1.55(d) also requires the claim for priority to be presented in
an application data sheet. See Changes To Implement the Inventor's Oath or
Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR 48776,
48818 (Aug. 14, 2012). Section 1.55(d) does not include the requirement of
former § 1.55(a)(1)(i) for an identification of any foreign application for
the same subject matter having a filing date before that of the application
for which priority is claimed, but otherwise contains the provisions of
former § 1.55(a)(1)(i).
Section 1.55(d) does not provide for an application under 35 U.S.C.
111(b) because an application under 35 U.S.C. 111(b) may not claim priority
to or the benefit of an earlier filed application. See 35 U.S.C. 111(b)(7).
Section 1.55(e) pertains to a waiver of claims for priority and
acceptance of unintentionally delayed claims for priority under 35 U.S.C.
119(a) through (d) or (f), or 365(a) in an application filed under 35
U.S.C. 111(a). Section 1.55(e) also requires that a petition to accept a
delayed claim for priority be accompanied by a certified copy of the
foreign application if required by § 1.55(f), unless previously submitted.
Section 1.55(h)(4) permits applicants to request in a separate document
that the Office obtain a copy of the foreign application that was filed in
a nonparticipating intellectual property office from a participating
intellectual property office that permits the Office to obtain such a copy
to be filed with a petition under § 1.55(e), and § 1.55(i)(1) permits an
interim copy to be filed with a petition under § 1.55(e). Section 1.55(e)
otherwise contains the provisions of former § 1.55(c).
Section 1.55(f) pertains to the time for filing a certified copy of the
foreign application in an application filed under 35 U.S.C. 111(a). Section
1.55(f) provides that in an original application filed under 35 U.S.C.
111(a), a certified copy of the foreign application must be filed within
the later of four months from the actual filing date of the application or
sixteen months from the filing date of the prior foreign application,
except as provided in § 1.55(h) or (i). Section 1.55(f) also provides that
the time period in § 1.55(f) does not apply in a design application. Since
U.S. patent application publications (as well as U.S. patents) will have a
prior art effect as of the earliest priority date (for subject matter
disclosed in the priority application) with respect to applications subject
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to AIA 35 U.S.C. 102, the Office needs to ensure that it has a copy of the
priority application by the time of publication. The time period of four
months from the actual filing date of the application or sixteen months
from the filing date of the prior foreign application is consistent with
the international norm for when the certified copy of the foreign
application needs to be filed in an application. See PCT Rule 17.1(a).
Section 1.55(f) further provides that if a certified copy of the foreign
application is not filed within the later of four months from the actual
filing date of the application or sixteen months from the filing date of
the prior foreign application, and the exceptions in § 1.55(h) and (i) are
not applicable, the certified copy of the foreign application must be
accompanied by a petition including a showing of good and sufficient cause
for the delay and the petition fee set forth in § 1.17(g). The Office is
including a provision in § 1.55(f) to provide for the belated filing of a
certified copy of the foreign application to provide a lower standard (good
and sufficient cause versus an extraordinary situation) and lower fee ($200
petition fee set forth in § 1.17(g) versus the $400 petition fee set forth
in § 1.17(f)) than would otherwise be applicable for a petition under §
1.183 to waive or suspend a requirement of the regulations in such a
situation.
Section 1.55(g) provides requirements for filing a priority claim,
certified copy of foreign application, and translation that are applicable
in all applications.
Section 1.55(g)(1) corresponds to the provisions of former § 1.55(a)(2).
Section 1.55(g)(1) provides that the claim for priority and the certified
copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule
17 must, in any event, be filed in or received by the Office within the
pendency of the application and before the patent is granted. Section
1.55(g) does not in any way supersede the timing requirements of § 1.55(c)
through (f) for a claim for priority and the certified copy of the foreign
application. Section 1.55(g)(1) simply indicates that the claim for
priority and the certified copy of the foreign application must be filed in
or received by the Office within the pendency of the application and before
the patent is granted in all situations. For example, if a petition to
accept a delayed claim for priority is filed under § 1.55(e), the claim for
priority and the certified copy of the foreign application must still be
filed within the pendency of the application and before the patent is
granted. Section 1.55(g)(1) also provides that if the claim for priority or
the certified copy of the foreign application is filed after the date the
issue fee is paid, it must also be accompanied by the processing fee set
forth in § 1.17(i), but the patent will not include the priority claim
unless corrected by a certificate of correction under 35 U.S.C. 255 and §
1.323.
Section 1.55(g)(2) corresponds to the provisions of former § 1.55(a)(3).
Section 1.55(g)(2) provides that the Office may require that the claim for
priority and the certified copy of the foreign application be filed earlier
than otherwise provided in § 1.55: (1) When the application is involved in
an interference (see § 41.202 of this title) or derivation (see part 42 of
this title) proceeding; (2) when necessary to overcome the date of a
reference relied upon by the examiner; or (3) when deemed necessary by the
examiner. Notwithstanding the time period requirement of 1.55(f), this
provision is still needed to provide for situations where the Office is
examining an application within four months from the filing date of the
application such as an application examined under the Office's Track I
prioritized examination program. See Changes To Implement the Prioritized
Examination Track (Track I) of the Enhanced Examination Timing Control
Procedures Under the Leahy-Smith America Invents Act, 76 FR 59050 (Sept.
23, 2011), and Changes To Implement the Prioritized Examination for
Requests for Continued Examination, 76 FR 78566 (Dec. 19, 2011).
Section 1.55(g)(3) corresponds to the provisions of former §
1.55(a)(4)(i). Section 1.55(g)(3) provides that an English language
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translation of a non-English language foreign application is not required
except: (1) When the application is involved in an interference (see §
41.202 of this title) or derivation (see part 42 of this title) proceeding;
(2) when necessary to overcome the date of a reference relied upon by the
examiner; or (3) when specifically required by the examiner.
Section 1.55(g)(4) corresponds to the provisions of former §
1.55(a)(4)(ii). Section 1.55(g)(4) provides that if an English language
translation of a non-English language foreign application is required, it
must be filed together with a statement that the translation of the
certified copy is accurate.
Section 1.55(h) provides that the requirement in § 1.55(c), (f), and (g)
for a certified copy of the foreign application to be filed within the time
limit set forth in § 1.55(c), (f), and (g) will be considered satisfied if
the Office receives a copy of the priority document through the priority
document exchange program within the period specified in § 1.55(g)(1). See
Changes To Implement Priority Document Exchange Between Intellectual
Property Offices, 72 FR 1664 (Jan. 16, 2007). Section 1.55(h) specifically
provides that this requirement for a timely filed certified copy of the
foreign application will be considered satisfied if: (1) The foreign
application was filed in a foreign intellectual property office
participating with the Office in a bilateral or multilateral priority
document exchange agreement (participating foreign intellectual property
office); (2) the claim for priority is presented in an application data
sheet (§ 1.76(b)(6)), identifying the foreign application for which
priority is claimed, by specifying the application number, country (or
intellectual property authority), day, month, and year of its filing, and
including the information necessary for the participating foreign
intellectual property office to provide the Office with access to the
foreign application; and (3) the copy of the foreign application is
received by the Office from the participating foreign intellectual property
office, or a certified copy of the foreign application is filed, within the
pendency of the application and before the patent is granted (as set forth
in § 1.55(g)(1)).
Section 1.55 no longer requires that a request that the Office obtain a
copy of the foreign application be made within the later of four months from
the filing date of the application or sixteen months from the filing date of
the foreign application if the foreign application was filed in a
participating foreign intellectual property office. This is because the
Office treats a priority claim (presented in an application data sheet) to
an application filed in a participating foreign intellectual property
office as such a request, and any priority claim must be filed within the
later of four months from the filing date of the application filed under 35
U.S.C. 111(a) or sixteen months from the filing date of the foreign
application (except as provided in § 1.55(e)).
Section 1.55(h) also provides that if the foreign application was not
filed in a participating foreign intellectual property office, but a copy
of the foreign application was filed in an application subsequently filed
in a participating foreign intellectual property office that permits the
Office to obtain such a copy, the applicant must also file a request in a
separate document that the Office obtain a copy of the foreign application
from the participating intellectual property office. This request must
identify the participating intellectual property office and the application
number and filing date of the subsequent application in which a copy of the
foreign application was filed, and be filed within the later of sixteen
months from the filing date of the prior foreign application or four months
from the actual filing date of an application under 35 U.S.C. 111(a),
within four months from the later of the date of commencement (§ 1.491(a))
or the date of the initial submission under 35 U.S.C. 371 in an application
entering the national stage under 35 U.S.C. 371, or with a petition under
§ 1.55(e). Applicants can use Form PTO/SB/38 (Request to Retrieve
Electronic Priority Application(s)) to file such a request.
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The Office has provided information concerning the priority document
exchange program on its Internet Web site (www.uspto.gov). This information
includes the intellectual property offices that participate in the priority
document exchange program, as well as the information necessary for each
participating foreign intellectual property office to provide the Office
with access to the foreign application.
The Office appreciates that an applicant may discover that the Office
will not receive a copy of a foreign application through the priority
document exchange program until after the expiration of the time frame
specified in § 1.55(f). In this situation, an applicant who otherwise meets
the conditions of § 1.55(h) may satisfy the requirement of § 1.55(h)(3) by
filing a certified copy of the foreign application in the Office within the
pendency of the application and before the patent is granted.
Note that the Office cannot obtain a copy of a design application to
which priority is claimed, or a foreign application to which priority is
claimed in a design application, through the priority document exchange
program. In addition, note that the Office can obtain a PCT application to
which priority is claimed through the priority document exchange program
for PCT applications filed in a limited number of PCT Receiving Offices
(currently, RO/DK (Denmark), RO/FI (Finland), RO/IB (International Bureau),
and RO/SE (Sweden)).
Applicants continue to bear the ultimate responsibility for ensuring
that the priority document is filed by the time required under §
1.55(g)(1). Accordingly, applicants are encouraged to check as necessary to
confirm receipt by the Office of appropriate documents. Priority documents
retrieved from a participating foreign intellectual property office will
bear the document description: "Priority documents electronically retrieved
by USPTO from a participating IP Office."
Section 1.55(i) permits an applicant to provide an "interim copy" of the
original foreign application from the applicant's own records to provide
for the situation in which the applicant cannot obtain a certified copy of
the foreign application within the time limit set forth in § 1.55(f),
although there is no requirement that an applicant be unable to obtain a
certified copy of the foreign application within the time limit set forth
in § 1.55(f) to use § 1.55(i). Section 1.55(i) provides that the
requirement in § 1.55(f) for a certified copy of the foreign application to
be filed within the time limit set forth in § 1.55(f) will be considered
satisfied if the applicant files a copy of the original foreign application
clearly labeled as "Interim Copy," including the specification, and any
drawings or claims upon which it is based. Section 1.55(i) also provides
that the interim copy of the foreign application must be filed together
with a separate cover sheet identifying the foreign application by
specifying the application number, country (or intellectual property
authority), day, month, and year of its filing, and stating that the copy
filed in the Office is a true copy of the original application as filed in
the foreign country (or intellectual property authority). Section 1.55(i)
also provides that the interim copy of the foreign application and cover
sheet must be filed within the later of sixteen months from the filing date
of the prior foreign application or four months from the actual filing date
of an application under 35 U.S.C. 111(a), or with a petition under §
1.55(e). Section 1.55(i) finally provides that a certified copy of the
foreign application ultimately must be filed within the period specified in
§ 1.55(g)(1). Thus, providing an interim copy of a foreign application
under § 1.55(i) satisfies the requirement for a certified copy of the
foreign application to be filed within the time limit set forth in §
1.55(f), but a certified copy of the foreign application must still be
filed before a patent is granted.
Section 1.55(j) pertains to applications filed on or after March 16,
2013, that claim priority to a foreign application filed prior to March 16,
2013. Section 1.55(j) provides that if a nonprovisional application filed
on or after March 16, 2013, claims priority to a foreign application filed
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prior to March 16, 2013, and also contains, or contained at any time, a
claim to a claimed invention that has an effective filing date on or after
March 16, 2013, the applicant must provide a statement to that effect
within the later of four months from the actual filing date of the
nonprovisional application, four months from the date of entry into the
national stage as set forth in § 1.491 in an international application,
sixteen months from the filing date of the prior-filed foreign application,
or the date that a first claim to a claimed invention that has an effective
filing date on or after March 16, 2013, is presented in the nonprovisional
application. Section 1.55(j) further provides that an applicant is not
required to provide such a statement if the applicant reasonably believes
on the basis of information already known to the individuals designated in
§ 1.56(c) that the nonprovisional application does not, and did not at any
time, contain a claim to a claimed invention that has an effective filing
date on or after March 16, 2013.
This information is needed to assist the Office in determining whether
the nonprovisional application is subject to AIA 35 U.S.C. 102 and 103 or
pre-AIA 35 U.S.C. 102 and 103. If the Office must determine on its own the
effective filing date of every claim ever presented in a nonprovisional
application filed on or after March 16, 2013, that claims priority to or
the benefit of a foreign application filed prior to March 16, 2013, the
time required to examine an application will significantly increase. This
in turn would result in an inefficient examination process that leads to
increased examination costs, higher patent pendency, and/or reduced patent
quality. The applicant, on the other hand, should be far more familiar with
the contents of both the transition application and its priority or benefit
application(s) than the examiner. Therefore, the Office is requiring the
applicant, who is in the best position to know the effective filing date of
each claimed invention, to indicate whether application contains, or
contained at any time, a claimed invention that has an effective filing
date on or after March 16, 2013.
This provision is tailored to the transition to 35 U.S.C. 102 and 103
under the AIA. For a nonprovisional application filed on or after March 16,
2013, that claims priority to a foreign application, the applicant would
not be required to provide any statement if: (1) The nonprovisional
application claims only subject matter disclosed in a foreign application
filed prior to March 16, 2013; or (2) the nonprovisional application claims
only priority to a foreign application filed on or after March 16, 2013.
Section 1.55(j) also does not require that the applicant identify how many
or which claims in the nonprovisional application have an effective filing
date on or after March 16, 2013, or that the applicant identify the subject
matter in the nonprovisional application not also disclosed in the foreign
application. Section 1.55(j) requires only that the applicant state that
there is a claim in the nonprovisional application that has an effective
filing date on or after March 16, 2013.
The Office may issue a requirement for information under § 1.105 if an
applicant takes conflicting positions on whether an application contains,
or contained at any time, a claim to a claimed invention having an
effective filing date on or after March 16, 2013. For example, the Office
may require the applicant to identify where there is written description
support under 35 U.S.C. 112(a) in the pre-AIA application for each claim if
an applicant provides the statement under § 1.55(j) but later argues that
the application should have been examined as a pre-AIA application because
the application does not actually contain a claim to a claimed invention
having an effective filing date on or after March 16, 2013. The Office
would not issue a requirement for information under § 1.105 simply because
of a disagreement with the applicant's statement under § 1.55(j) or the
lack of such a statement.
Section 1.55(k) contains the provisions of former § 1.55(b).
Section 1.55(l) provides that the time periods set forth in § 1.55 are
not extendable. This is not a change from former practice, under which the
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time periods set forth in § 1.55 are not extendable. This provision simply
avoids the need to separately state that a time period is not extendable
with respect to each time period set forth in § 1.55.
As it is now more than a decade since the implementation of
eighteen-month publication in November of 2000, and as the changes in this
final rule to § 1.55 do not apply to applications filed before March 16,
2013, the language in former § 1.55 itself that certain time periods
therein do not apply to an application filed under 35 U.S.C. 111(a) before
November 29, 2000, or to an international application filed under 35 U.S.C.
363 before November 29, 2000, has been deleted.
Section 1.71: Section 1.71(g)(1) is amended to remove reference to
pre-AIA 35 U.S.C. 103(c)(2)(C) which provided for the names of the parties
to a joint research agreement in the application for patent and is replaced
by a reference to the definition of a joint research agreement (JRA) as set
forth in § 1.9(e) in order to provide for both pre-AIA and AIA applications
and patents.
Section 1.76: Sections 1.76(b)(5) and (b)(6) are amended for consistency
with the changes to and reorganization of §§ 1.55 and 1.78. See discussion
of §§ 1.55 and 1.78.
Section 1.77: Section 1.77(b) is amended to provide for any statement
regarding prior disclosures by the inventor or a joint inventor. Section
1.77(a) sets out a preferred arrangement for a patent application, and §
1.77(b) sets out a preferred arrangement of the specification of a patent
application. An applicant is not required to use the format specified in §
1.77 or identify in the specification any prior disclosures by the inventor
or a joint inventor, but identifying any prior disclosures by the inventor
or a joint inventor may save applicants (and the Office) the costs related
to an Office action and reply, and expedite examination of the application.
Section 1.77(b)(2) is amended to delete the parenthetical "(unless
included in the application data sheet)" for consistency with § 1.78(c)(5).
Section 1.78: Section 1.78 is reorganized as follows: (1) § 1.78(a)
contains provisions relating to claims under 35 U.S.C. 119(e) for the
benefit of a prior-filed provisional application; (2) § 1.78(b) contains
provisions relating to delayed claims under 35 U.S.C. 119(e) for the
benefit of a prior-filed provisional application; (3) § 1.78(c) contains
provisions relating to claims under 35 U.S.C. 120, 121, or 365(c) for the
benefit of a prior-filed nonprovisional or international application; (4)
§ 1.78(d) contains provisions relating to delayed claims under 35 U.S.C.
120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or
international application; (5) § 1.78(e) contains provisions relating to
applications containing patentably indistinct claims; (6) § 1.78(f)
contains provisions relating to applications or patents under reexamination
naming different inventors and containing patentably indistinct claims; and
(7) § 1.78(g) provides that the time periods set forth in § 1.78 are not
extendable. In addition, as it is now more than a decade since the
implementation of eighteen-month publication in November of 2000, and as
the changes in this final rule to § 1.78 do not apply to applications filed
before March 16, 2013, the language in former § 1.78 that certain time
periods therein do not apply to an application filed under 35 U.S.C. 111(a)
before November 29, 2000, or to an international application filed under 35
U.S.C. 363 before November 29, 2000, has been deleted.
Section 1.78(a) addresses claims under 35 U.S.C. 119(e) for the benefit
of one or more prior-filed provisional applications. Section 1.78(a)
contains the provisions of former § 1.78(a)(4) and (a)(5) except as
otherwise discussed in this final rule.
Under 35 U.S.C. 119(e)(1), a provisional application must disclose the
invention claimed in at least one claim of the later-filed application in
the manner provided by 35 U.S.C. 112(a) (except for the requirement to
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disclose the best mode) for the later-filed application to receive the
benefit of the filing date of the provisional application as to such
invention. See New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d
1290, 1294 (Fed. Cir. 2002) (for a nonprovisional application to actually
receive the benefit of the filing date of the provisional application, "the
specification of the provisional [application] must 'contain a written
description of the invention and the manner and process of making and using
it, in such full, clear, concise, and exact terms,' 35 U.S.C. 112 ] 1, to
enable an ordinarily skilled artisan to practice the invention claimed in
the nonprovisional application"). Section 1.78(a), however, does not
require (as did former § 1.78(a)(4)) that the provisional application must
disclose the invention claimed in at least one claim of the later-filed
application in the manner provided by 35 U.S.C. 112(a) (except for the
requirement to disclose the best mode) because § 1.78 pertains to claims to
the benefit of a prior-filed application. The AIA draws a distinction
between being entitled to the benefit of a prior-filed application and
being entitled to claim the benefit of a prior-filed application. See 157
Cong. Rec. S1370 (2011) (explaining the distinction between being entitled
to actual priority or benefit for purposes of 35 U.S.C. 100(i) and being
entitled only to claim priority or benefit for purposes of AIA 35 U.S.C.
102(d)). Nevertheless, the prior-filed application must disclose an
invention in the manner provided by 35 U.S.C. 112(a) (except for the
requirement to disclose the best mode) for the later-filed application to
receive the benefit of the filing date of the prior-filed application under
35 U.S.C. 119(e) (or 35 U.S.C. 120) as to such invention. In contrast, the
prior-filed application must describe the subject matter for the
later-filed application to be considered effectively filed under AIA 35
U.S.C. 102(d) on the filing date of the prior-filed application with
respect to that subject matter.
Section 1.78(a)(1) provides that a nonprovisional application (other
than a design application) or international application designating the
United States of America must be filed not later than twelve months after
the date on which the provisional application was filed, or that the
nonprovisional application or international application designating the
United States of America be entitled to claim the benefit under 35 U.S.C.
120, 121, or 365(c) of an application that was filed not later than twelve
months after the date on which the provisional application was filed.
Section 1.78(a)(1) also provides that this twelve-month period is subject
to 35 U.S.C. 21(b) (and § 1.7(a)). As discussed previously, 35 U.S.C. 21(b)
(and § 1.7(a)) provide that when the day, or the last day, for taking any
action (e.g., filing a nonprovisional application within twelve months of
the date on which the provisional application was filed) or paying any fee
in the Office falls on Saturday, Sunday, or a Federal holiday within the
District of Columbia, the action may be taken, or fee paid, on the next
succeeding secular or business day.
Section 1.78(a)(2) provides that each prior-filed provisional
application must name the inventor or a joint inventor named in the
later--filed application as the inventor or a joint inventor.
Section 1.78(a)(2) and (c)(2) require the reference to each prior-filed
application to be included in an application data sheet. See Changes To
Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith
America Invents Act, 77 FR at 48820.
Section 1.78(a)(6) requires that if a nonprovisional application filed
on or after March 16, 2013, claims the benefit of the filing date of a
provisional application filed prior to March 16, 2013, and also contains,
or contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013, the applicant must
provide a statement to that effect within the later of four months from the
actual filing date of the nonprovisional application, four months from the
date of entry into the national stage as set forth in § 1.491 in an
international application, sixteen months from the filing date of the
prior-filed provisional application, or the date that a first claim to a
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claimed invention that has an effective filing date on or after March 16,
2013, is presented in the nonprovisional application. Section 1.78(a)(6)
further provides that an applicant is not required to provide such a
statement if the applicant reasonably believes on the basis of information
already known to the individuals designated in § 1.56(c) that the
nonprovisional application does not, and did not at any time, contain a
claim to a claimed invention that has an effective filing date on or after
March 16, 2013.
This information is needed to assist the Office in determining whether
the nonprovisional application is subject to AIA 35 U.S.C. 102 and 103 or
pre-AIA 35 U.S.C. 102 and 103. As discussed previously, if the Office must
determine on its own the effective filing date of every claim ever
presented in a nonprovisional application filed on or after March 16, 2013,
that claims priority to or the benefit of a provisional application filed
prior to March 16, 2013, the time required to examine an application will
significantly increase. This in turn would result in an inefficient
examination process that leads to increased examination costs, higher
patent pendency, and/or reduced patent quality. The applicant, on the other
hand, should be far more familiar with the contents of both the transition
application and its priority or benefit application(s) than the examiner.
Therefore, the Office is requiring the applicant, who is in the best
position to know the effective filing date of each claimed invention, to
indicate whether application contains, or contained at any time, a claim to
a claimed invention that has an effective filing date on or after March 16,
2013.
This provision is tailored to the transition to 35 U.S.C. 102 and 103
under the AIA. Thus, for a nonprovisional application filed on or after
March 16, 2013, that claims the benefit of the filing date of a provisional
application, the applicant would not be required to provide any statement
if: (1) The nonprovisional application discloses only subject matter also
disclosed in a provisional application filed prior to March 16, 2013; or
(2) the nonprovisional application claims only the benefit of the filing
date of a provisional application filed on or after March 16, 2013. Section
1.78(a)(6) also does not require that the applicant identify how many or
which claims in the nonprovisional application have an effective filing
date on or after March 16, 2013, or that the applicant identify the subject
matter in the nonprovisional application not also disclosed in the
provisional application. Section 1.78(a)(6) requires only that the
applicant state that there is a claim in the nonprovisional application
that has an effective filing date on or after March 16, 2013.
The Office may issue a requirement for information under § 1.105 if an
applicant takes conflicting positions on whether an application contains,
or contained at any time, a claim to a claimed invention having an
effective filing date on or after March 16, 2013. For example, the Office
may require the applicant to identify where there is written description
support under 35 U.S.C. 112(a) in the pre-AIA application for each claim to
a claimed invention if an applicant provides the statement under §
1.78(a)(6), but later argues that the application should have been examined
as a pre-AIA application because the application does not actually contain
a claim to a claimed invention having an effective filing date on or after
March 16, 2013.
Section 1.78(b) contains provisions relating to delayed claims under 35
U.S.C. 119(e) for the benefit of prior-filed provisional applications.
Section 1.78(b) contains the provisions of former § 1.78(a)(6).
Section 1.78(c) contains provisions relating to claims under 35 U.S.C.
120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or
international application designating the United States of America.
Section 1.78(c)(1) provides that each prior-filed application must name the
inventor or a joint inventor named in the later-filed application as the
inventor or a joint inventor. In addition, each prior-filed application must
either be: (1) An international application entitled to a filing date in
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accordance with PCT Article 11 and designating the United States of
America; or (2) a nonprovisional application under 35 U.S.C. 111(a) that is
entitled to a filing date as set forth in § 1.53(b) or § 1.53(d) for which
the basic filing fee set forth in § 1.16 has been paid within the pendency
of the application (provisions from former § 1.78(a)(1)).
Section 1.78(c) does not contain a provision (as did former §
1.78(a)(1)) that the prior-filed application disclose the invention claimed
in at least one claim of the later-filed application in the manner provided
by 35 U.S.C. 112(a). For a later-filed application to receive the benefit
of the filing date of a prior-filed application, 35 U.S.C. 120 requires
that the prior-filed application disclose the invention claimed in at least
one claim of the later-filed application in the manner provided by 35
U.S.C. 112(a) (except for the requirement to disclose the best mode). As
discussed previously, § 1.78 pertains to claims to the benefit of a
prior-filed application, and the AIA draws a distinction between being
entitled to the benefit of a prior-filed application and being entitled to
claim the benefit of a prior-filed application.
Section 1.78(c)(2) is amended to clarify that identifying the
relationship of the applications means identifying whether the later-filed
application is a continuation, divisional, or continuation-in-part of the
prior-filed nonprovisional application or international application. See
MPEP section 201.11.
Section 1.78(c)(3) through (5) contain the provisions of former §
1.78(a)(2). Section 1.78(c)(5) also provides that cross-references to
applications for which a benefit is not claimed must not be included in an
application data sheet (§ 1.76(b)(5)). Including cross-references to
applications for which a benefit is not claimed in the application data
sheet may lead the Office to inadvertently schedule the application for
publication under 35 U.S.C. 122(b) and § 1.211 et seq. on the basis of the
cross-referenced applications having the earliest filing date.
Section 1.78(c)(6) requires that if a nonprovisional application filed
on or after March 16, 2013, claims the benefit of the filing date of a
nonprovisional application or an international application designating the
United States of America filed prior to March 16, 2013, and also contains,
or contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013, the applicant must
provide a statement to that effect within the later of four months from the
actual filing date of the later-filed application, four months from the
date of entry into the national stage as set forth in § 1.491 in an
international application, sixteen months from the filing date of the
prior-filed application, or the date that a first claim to a claimed
invention that has an effective filing date on or after March 16, 2013, is
presented in the later-filed application. Section 1.78(c)(6) further
provides that an applicant is not required to provide such a statement if
the application claims the benefit of a nonprovisional application in which
a statement under § 1.55(j), § 1.78(a)(6), or § 1.78(c)(6) that the
application contains, or contained at any time, a claim to a claimed
invention that has an effective filing date on or after March 16, 2013, has
been filed (as an application that contains, or contained at any time, a
specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or an
application that is subject to AIA 35 U.S.C. 102 and 103 is itself subject
to AIA 35 U.S.C. 102 and 103). Section 1.78(c)(6) also further provides
that an applicant is not required to provide such a statement if the
applicant reasonably believes on the basis of information already known to
the individuals designated in § 1.56(c) that the later filed application
does not, and did not at any time, contain a claim to a claimed invention
that has an effective filing date on or after March 16, 2013.
This information is needed to assist the Office in determining whether
the nonprovisional application is subject to AIA 35 U.S.C. 102 and 103 or
pre-AIA 35 U.S.C. 102 and 103. As discussed previously, if the Office must
determine on its own the effective filing date of every claim ever
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presented in a nonprovisional application filed on or after March 16, 2013,
that claims priority to or the benefit of a nonprovisional application or
an international application designating the United States of America filed
prior to March 16, 2013, the time required to examine an application will
significantly increase. This in turn would result in an inefficient
examination process that leads to increased examination costs, higher
patent pendency, and/or reduced patent quality. The applicant, on the other
hand, should be far more familiar with the contents of both the transition
application and its priority or benefit application(s) than the examiner.
Therefore, the Office is requiring the applicant, who is in the best
position to know the effective filing date of each claimed invention, to
indicate whether application contains, or contained at any time, a claim to
a claimed invention that has an effective filing date on or after March 16,
2013.
This provision is tailored to the transition to 35 U.S.C. 102 and 103
under the AIA. Thus, for a nonprovisional application filed on or after
March 16, 2013, that claims the benefit of the filing date of a
nonprovisional application or an international application designating the
United States of America, the applicant would not be required to provide
any statement if: (1) The nonprovisional application discloses only subject
matter also disclosed in a prior-filed nonprovisional application or
international application designating the United States of America filed
prior to March 16, 2013; or (2) the nonprovisional application claims only
the benefit of the filing date of a nonprovisional application or an
international application designating the United States of America filed on
or after March 16, 2013. Section 1.78(c)(6) also does not require that the
applicant identify how many or which claims in the later-filed
nonprovisional application have an effective filing date on or after March
16, 2013, or that the applicant identify the subject matter in the
later-filed nonprovisional application not also disclosed in the
prior-filed nonprovisional application or international application
designating the United States of America. Section 1.78(c)(6) requires only
that the applicant state that there is a claim in the later-filed
nonprovisional application that has an effective filing date on or after
March 16, 2013.
The Office may issue a requirement for information under § 1.105 if an
applicant takes conflicting positions on whether a nonprovisional
application contains, or contained at any time, a claim to a claimed
invention having an effective filing date on or after March 16, 2013. For
example, the Office may require the applicant to identify where there is
written description support under 35 U.S.C. 112(a) in the pre-AIA
application for each claim to a claimed invention if an applicant provides
the statement under § 1.78(c)(6) but later argues that the application
should have been examined as a pre-AIA application because the application
does not actually contain a claim to a claimed invention having an
effective filing date on or after March 16, 2013. The Office would not
issue a requirement for information under § 1.105 simply because of a
disagreement with the applicant's statement under § 1.78(c)(6) or the lack
of such a statement.
Section 1.78(d) contains provisions relating to delayed claims under 35
U.S.C. 120, 121, or 365(c) for the benefit of prior-filed nonprovisional or
international applications. Section 1.78(d) contains the provisions of
former § 1.78(a)(3).
Section 1.78(e) contains the provisions of former § 1.78(b) pertaining
to applications containing "conflicting" claims. Section 1.78(e), however,
uses the term "patentably indistinct" rather than "conflicting" for clarity
as the term "conflicting" is not otherwise employed in the rules of
practice. See Changes To Implement Derivation Proceedings, 77 FR at 56070,
56071-72, and 56090 (adding new § 42.401, which includes defining same or
substantially the same as meaning patentably indistinct).
Section 1.78(f) addresses applications or patents under reexamination
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that name different inventors and contain patentably indistinct claims. The
provisions are similar to the provisions of former § 1.78(c), but the
language has been amended to refer to "on its effective filing date (as
defined in § 1.109) or on its date of invention, as applicable" in place of
"at the time the later invention was made" to provide for both AIA
applications (under the "first inventor to file" system) and pre-AIA
applications. Section 1.78(f) likewise uses the term "patentably
indistinct" rather than "conflicting" for clarity.
Section 1.78(g) provides that the time periods set forth in § 1.78 are
not extendable.
Section 1.84: Section 1.84(a) is amended to eliminate the provisions
pertaining to statutory invention registrations. See discussion of the
provisions of §§ 1.293 through 1.297.
Section 1.103: Section 1.103(g) is removed to eliminate the provisions
pertaining to statutory invention registrations. See discussion of the
provisions of §§ 1.293 through 1.297.
Section 1.104: Section 1.104(c)(4) is amended to include the provisions
that pertain to commonly owned or joint research agreement subject matter
for applications and patents subject to AIA 35 U.S.C. 102 and 103.
Specifically, § 1.104(c)(4) implements the provisions of 35 U.S.C.
102(b)(2)(C) and 35 U.S.C. 102(c) in the AIA. Thus, § 1.104(c)(4) is
applicable to applications and patents that are subject to AIA 35 U.S.C.
102 and 103.
Section 1.104(c)(4)(i) provides that subject matter which would
otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) and a claimed
invention will be treated as commonly owned for purposes of AIA 35 U.S.C.
102(b)(2)(C) if the applicant or patent owner provides a statement to the
effect that the subject matter and the claimed invention, not later than
the effective filing date of the claimed invention, were owned by the same
person or subject to an obligation of assignment to the same person.
Section 1.104(c)(4)(ii) addresses joint research agreements and provides
that subject matter which would otherwise qualify as prior art under AIA 35
U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned
for purposes of AIA 35 U.S.C. 102(b)(2)(C) on the basis of a joint research
agreement under AIA 35 U.S.C. 102(c) if: (1) The applicant or patent owner
provides a statement to the effect that the subject matter was developed
and the claimed invention was made by or on behalf of one or more parties
to a joint research agreement, within the meaning of 35 U.S.C. 100(h) and
§ 1.9(e), that was in effect on or before the effective filing date of the
claimed invention, and the claimed invention was made as a result of
activities undertaken within the scope of the joint research agreement; and
(2) the application for patent for the claimed invention discloses or is
amended to disclose the names of the parties to the joint research
agreement.
Section 1.104(c)(5) is amended to include the provisions that pertain to
commonly owned or joint research agreement subject matter for applications
and patents subject to 35 U.S.C. 102 and 103 in effect prior to the
effective date of section 3 of the AIA. Thus, § 1.104(c)(5) is applicable
to applications and patents that are subject to 35 U.S.C. 102 and 103 in
effect prior to March 16, 2013.
Section 1.104(c)(5)(i) provides that subject matter which qualifies as
prior art under 35 U.S.C. 102(e), (f), or (g) in effect prior to March 16,
2013, and a claimed invention in an application filed on or after November
29, 1999, or any patent issuing thereon, in an application filed before
November 29, 1999, but pending on December 10, 2004, or any patent issuing
thereon, or in any patent granted on or after December 10, 2004, will be
treated as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior
to March 16, 2013, if the applicant or patent owner provides a statement to
the effect that the subject matter and the claimed invention, at the time
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the claimed invention was made, were owned by the same person or subject to
an obligation of assignment to the same person.
Section 1.104(c)(5)(ii) addresses joint research agreements and provides
that subject matter which qualifies as prior art under 35 U.S.C. 102(e),
(f), or (g) in effect prior to March 16, 2013, and a claimed invention in
an application pending on or after December 10, 2004, or in any patent
granted on or after December 10, 2004, will be treated as commonly owned
for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the
basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect
prior to March 16, 2013, if: (1) The applicant or patent owner provides a
statement to the effect that the subject matter and the claimed invention
were made by or on behalf of the parties to a joint research agreement,
within the meaning of 35 U.S.C. 100(h) and § 1.9(e), which was in effect on
or before the date the claimed invention was made, and that the claimed
invention was made as a result of activities undertaken within the scope of
the joint research agreement; and (2) the application for patent for the
claimed invention discloses or is amended to disclose the names of the
parties to the joint research agreement. Sections 1.104(c)(4)(ii) and
1.104(c)(5)(ii) make reference to the definition of joint research
agreement contained in 35 U.S.C. 100(h) and § 1.9(e). The AIA did not
change the definition of a joint research agreement, but merely moved the
definition from 35 U.S.C. 103(c)(3) to 35 U.S.C. 100(h). Thus, the Office
is referencing the definition of joint research agreement in 35 U.S.C.
100(h) in § 1.104(c)(4)(ii) and (c)(5)(ii) for simplicity.
Section 1.104(c)(6) is added to clarify that patents issued prior to
December 10, 2004, from applications filed prior to November 29, 1999, are
subject to 35 U.S.C. 103(c) in effect on November 28, 1999. See MPEP §
706.02(l).
The provisions of former § 1.104(c)(5) pertain to statutory invention
registrations and are thus removed. See discussion of the provisions of §§
1.293 through 1.297.
Section 1.109: Section 1.109 is added to specify the effective filing
date of a claimed invention under the AIA. Section 1.109(a) provides that
the effective filing date of a claimed invention in a patent or an
application for patent, other than in a reissue application or reissued
patent, is the earliest of: (1) The actual filing date of the patent or the
application for the patent containing a claim to the invention; or (2) the
filing date of the earliest application for which the patent or application
is entitled, as to such invention, to a right of priority or the benefit of
an earlier filing date under 35 U.S.C. 119, 120, 121, or 365. See 35 U.S.C.
100(i)(1). Section 1.109(b) provides that the effective filing date for a
claimed invention in a reissue application or a reissued patent is
determined by deeming the claim to the invention to have been contained in
the patent for which reissue was sought. See 35 U.S.C. 100(i)(2).
Section 1.109 applies to any application for patent, and to any patent
issuing thereon, that contains, or contained at any time, a claim to a
claimed invention that has an effective filing date as defined in 35 U.S.C.
100(i) that is on or after March 16, 2013, and to any application for
patent, and to any patent issuing thereon, that contains, or contained at
any time, a specific reference under 35 U.S.C. 120, 121, or 365(c) to any
patent or application that contains, or contained at any time, a claim to
a claimed invention that has an effective filing date as defined in 35
U.S.C. 100(i) that is on or after March 16, 2013.
Section 1.110: Section 1.110 is revised to provide for both AIA
applications and pre-AIA applications. Section 1.110 specifically provides
that when one or more joint inventors are named in an application or
patent, the Office may require an applicant or patentee to identify the
inventorship and ownership or obligation to assign ownership, of each
claimed invention on its effective filing date (as defined in § 1.109) or
on its date of invention, as applicable, when necessary for purposes of an
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Office proceeding. Section 1.110 is amended to change the ownership inquiry
to ownership: (1) On its effective filing date (as defined in § 1.109),
which would be applicable to AIA applications; or (2) on its date of
invention, which would be applicable to pre-AIA applications. Section 1.110
further provides that the Office may also require an applicant or patentee
to identify the invention dates of the subject matter of each claim when
necessary for purposes of an Office proceeding, which would be applicable
to pre-AIA applications.
Section 1.130: Section 1.130 is amended to implement the exceptions
provided under AIA 35 U.S.C. 102(b) by replacing its existing provisions
(which are relocated to § 1.131) with provisions for: (1) Disqualifying a
disclosure as prior art by establishing that the disclosure was by the
inventor or a joint inventor or is a disclosure of the inventor's or a
joint inventor's own work (affidavit or declaration of attribution); and
(2) disqualifying a disclosure as prior art by establishing that there was
a prior public disclosure of the subject matter disclosed by the inventor
or a joint inventor or that there was a prior public disclosure by another
of the inventor's or a joint inventor's own work (affidavit or declaration
of prior public disclosure). Thus, § 1.130 applies to applications for
patent (and patents issuing thereon) that are subject to AIA 35 U.S.C. 102
and 103, and § 1.131 would apply to applications for patent (and patents
issuing thereon) that are subject to pre-AIA 35 U.S.C. 102 and 103 (35
U.S.C. 102 and 103 as in effect on March 15, 2013, prior to the effective
date of section 3 of the AIA). In an application for patent to which the
provisions of § 1.130 apply, and to any patent issuing thereon, the
provisions of § 1.131 are applicable only with respect to a rejection under
35 U.S.C. 102(g) as in effect on March 15, 2013.
Section 1.130 provides a mechanism for filing an affidavit or
declaration to establish that a disclosure is not prior art in accordance
with AIA 35 U.S.C. 102(b). Section 1.130, like §§ 1.131 and 1.132, provides
a mechanism for the submission of evidence to disqualify a disclosure as
prior art or otherwise traverse a rejection. An applicant's or patent
owner's compliance with § 1.130 means that the applicant or patent owner is
entitled to have the evidence considered in determining the patentability
of the claim(s) at issue. It does not mean that the applicant or patent
owner is entitled as a matter of right to have the rejection of or
objection to the claim(s) withdrawn. See Changes To Implement the Patent
Business Goals, 65 FR 54604, 54640 (Sept. 8, 2000) (discussing procedural
nature of §§ 1.131 and 1.132). The examination guidelines will discuss the
standard for evaluating the sufficiency of an affidavit or declaration
attributing the disclosure or subject matter disclosed as the inventor's or
a joint inventor's own work and the sufficiency of an affidavit or
declaration of a prior public disclosure of the subject matter disclosed as
the inventor's or a joint inventor's own work.
Section 1.130(a) provides that when any claim of an application or a
patent under reexamination is rejected, the applicant or patent owner may
submit an appropriate affidavit or declaration to disqualify a disclosure
as prior art by establishing that the disclosure was made by the inventor
or a joint inventor, or the subject matter disclosed was obtained directly
or indirectly from the inventor or a joint inventor. Section 1.130(a)
pertains to the provisions of subparagraph (A) of AIA 35 U.S.C. 102(b)(1)
and (b)(2). AIA 35 U.S.C. 102(b)(1)(A) provides that a disclosure made one
year or less before the effective filing date of a claimed invention shall
not be prior art to the claimed invention under AIA 35 U.S.C. 102(a)(1) if
the disclosure was made by the inventor or joint inventor or by another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor, and AIA 35 U.S.C. 102(b)(2)(A) provides that
a disclosure shall not be prior art to a claimed invention under AIA 35
U.S.C. 102(a)(2) if the subject matter disclosed was obtained directly or
indirectly from the inventor or a joint inventor. In these situations, the
applicant or patent owner is attempting to show that: (1) The disclosure
was made by the inventor or a joint inventor; or (2) the subject matter
disclosed was obtained directly or indirectly from the inventor or a joint
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inventor.
Affidavits or declarations seeking to attribute an activity, a
reference, or part of a reference to the applicant to show that the
activity or reference is not available as prior art under pre-AIA 35 U.S.C.
102(a) have been treated as affidavits or declarations under § 1.132. See
MPEP § 716.10. Affidavits or declarations of attribution in pre-AIA
applications remain as affidavits or declarations under § 1.132. Thus, the
Office will treat affidavits or declarations of attribution in AIA
applications as affidavits or declarations under § 1.130, and affidavits or
declarations of attribution in pre-AIA applications as affidavits or
declarations under § 1.132, regardless of whether the affidavit or
declaration is designated as an affidavit or declaration under §§ 1.130,
1.131, or 1.132.
Section 1.130(b) provides that when any claim of an application or a
patent under reexamination is rejected, the applicant or patent owner may
submit an appropriate affidavit or declaration to disqualify a disclosure
as prior art by establishing that the subject matter disclosed had, before
such disclosure was made or before such subject matter was effectively
filed, been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor. Section 1.130(b) pertains to the
provisions of subparagraph (B) of AIA 35 U.S.C. 102(b)(1) and (b)(2). AIA
35 U.S.C. 102(b)(1)(B) provides that a disclosure made one year or less
before the effective filing date of a claimed invention shall not be prior
art to the claimed invention under AIA 35 U.S.C. 102(a)(1) if the subject
matter disclosed had, before such disclosure, been publicly disclosed by
the inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor. AIA
35 U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior art to
a claimed invention under AIA 35 U.S.C. 102(a)(2) if the subject matter
disclosed had, before such subject matter was effectively filed under AIA
35 U.S.C. 102(a)(2), been publicly disclosed by the inventor or a joint
inventor or another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor. In these situations, the
disclosure on which the rejection is based is not by the inventor or a
joint inventor, or by another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor, and the
applicant or patent owner is attempting to show that the subject matter
disclosed had, before such disclosure was made or before such subject
matter was effectively filed, been publicly disclosed by: (1) The inventor
or a joint inventor; or (2) another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor. As
pointed out in the examination guidelines, in response to public comments,
the Office is clarifying that there is no requirement that the mode of
disclosure by an inventor or joint inventor be the same as the mode of
disclosure of an intervening disclosure (e.g., inventor discloses his
invention at a trade show and the intervening disclosure is in a
peer-reviewed journal). Additionally, there is no requirement that the
disclosure by the inventor or a joint inventor be a verbatim or ipsissimis
verbis disclosure of an intervening disclosure in order for the exception
based on a previous public disclosure of subject matter by the inventor or
a joint inventor to apply. The examination guidelines also clarify that the
exception applies to subject matter of the intervening disclosure that is
simply a more general description of the subject matter previously publicly
disclosed by the inventor or a joint inventor.
Section 1.130(b) further provides that an affidavit or declaration under
§ 1.130(b) must identify the subject matter publicly disclosed and provide
the date of the public disclosure of such subject matter by the inventor or
a joint inventor or another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor. Section
1.130(b)(1) provides that if the subject matter publicly disclosed on the
earlier date by the inventor or a joint inventor, or by another who
obtained the subject matter disclosed directly or indirectly from the
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inventor or a joint inventor, was in a printed publication, the affidavit
or declaration must be accompanied by a copy of the printed publication.
Section 1.130(b)(2) provides that if the subject matter publicly disclosed
on the earlier date was not in a printed publication, the affidavit or
declaration must describe the subject matter with sufficient detail and
particularity to determine what subject matter had been publicly disclosed
on the earlier date by the inventor or a joint inventor or another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. The Office needs these details to determine
not only whether the inventor is entitled to disqualify the disclosure
under AIA 35 U.S.C. 102(b), but also because if the rejection is based on a
U.S. patent application publication or WIPO publication of an international
application to another and such application is also pending before the
Office, this prior disclosure may be prior art under AIA 35 U.S.C. 102(a)
to the other earlier filed application, and the Office may need this
information to avoid granting two patents on the same invention.
Section 1.130 does not contain a provision that "[o]riginal exhibits of
drawings or records, or photocopies thereof, must accompany and form part
of the affidavit or declaration or their absence must be satisfactorily
explained" in contrast to the requirement for such exhibits in § 1.131(b),
because in some situations an affidavit or declaration under § 1.130 does
not necessarily need to be accompanied by such exhibits (e.g., a statement
by the inventor or a joint inventor may be sufficient). However, in
situations where evidence is required, such exhibits must accompany an
affidavit or declaration under § 1.130. In addition, an affidavit or
declaration under § 1.130 must be accompanied by any exhibits that the
applicant or patent owner wishes to rely upon.
Section 1.130(c) provides that the provisions of § 1.130 are not
available if the rejection is based upon a disclosure made more than one
year before the effective filing date of the claimed invention. A
disclosure made more than one year before the effective filing date of the
claimed invention is prior art under AIA 35 U.S.C. 102(a)(1), and may not
be disqualified under AIA 35 U.S.C. 102(b)(1). Note that the provisions of
§ 1.130 are available to establish that a rejection under AIA 35 U.S.C.
102(a)(2) is based on an application or patent that was effectively filed
more than one year before the effective filing date of the claimed
invention under examination, but not publicly disclosed more than one year
before such effective filing date, where the subject matter disclosed was
obtained directly or indirectly from the inventor or a joint inventor.
Section 1.130(c) also provides that the provisions of § 1.130 may not be
available if the rejection is based upon a U.S. patent or U.S. patent
application publication of a patented or pending application naming another
inventor, the patent or pending application claims an invention that is the
same or substantially the same as the applicant's or patent owner's claimed
invention, and the affidavit or declaration contends that an inventor named
in the U.S. patent or U.S. patent application publication derived the
claimed invention from the inventor or a joint inventor named in the
application or patent, in which case an applicant or patent owner may file
a petition for a derivation proceeding pursuant to § 42.401 et seq. of this
title. Permitting two different applicants to each aver or declare that an
inventor named in the other application derived the claimed invention
without a derivation proceeding to resolve who the true inventor is could
result in the Office issuing two patents containing patentably indistinct
claims to two different parties. Thus, the Office needs to provide that the
provisions of § 1.130 are not available in certain situations to avoid the
issuance of two patents containing patentably indistinct claims to two
different parties. See In re Deckler, 977 F.2d 1449, 1451-52 (Fed. Cir.
1992) (35 U.S.C. 102, 103, and 135 "clearly contemplate--where different
inventive entities are concerned--that only one patent should issue for
inventions which are either identical to or not patentably distinct from
each other") (quoting Aelony v. Arni, 547 F.2d 566, 570 (CCPA 1977)). The
provisions of § 1.130, however, would be available if: (1) The rejection is
based upon a disclosure other than a U.S. patent or U.S. patent application
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publication (such as nonpatent literature or a foreign patent document);
(2) the rejection is based upon a U.S. patent or U.S. patent application
and the patent or pending application did not claim an invention that is
the same or substantially the same as the applicant's claimed invention; or
(3) the rejection is based upon a U.S. patent or U.S. patent application
and the patent or pending application that does claim an invention that is
the same or substantially the same as the applicant's claimed invention,
but the affidavit or declaration under § 1.130 does not contend that an
inventor named in the U.S. patent or U.S. patent application publication
derived the claimed invention from the inventor or a joint inventor named
in the application or patent (e.g., the affidavit or declaration under §
1.130 contends that the subject matter disclosed had, before such
disclosure was made or before such subject matter was effectively filed,
been publicly disclosed by the inventor or a joint inventor).
Section 1.130(d) provides that the provisions of § 1.130 apply to any
application for patent, and to any patent issuing thereon, that is subject
to AIA 35 U.S.C. 102 and 103.
Section 1.131: The title of § 1.131 is amended to include the provisions
of former § 1.130.
Section 1.131(a) is amended to refer to a party qualified under § 1.42
or § 1.46 for consistency with the changes to § 1.42 et seq. See Changes To
Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith
America Invents Act, 77 FR at 48778-79. Section 1.131(a) is amended to
refer to pre-AIA 35 U.S.C. 102(e) as 35 U.S.C. 102(e) as in effect on March
15, 2013. Section 1.131(a)(1) is amended to refer to an "application naming
another inventor which claims interfering subject matter as defined in §
41.203(a)" rather than an "application to another or others which claims
the same patentable invention as defined in § 41.203(a)" in view of the
changes to 35 U.S.C. 102 in the AIA and the current provisions of §
41.203(a).
Section 1.131(b) is amended to provide that the showing of facts
provided for in § 1.131(b) is applicable to an oath or declaration under §
1.131(a).
Section 1.131(c) is added to include the provisions of former § 1.130,
but is revised to refer to 35 U.S.C. 103 as 35 U.S.C. 103 as in effect on
March 15, 2013, to refer to pre-AIA 35 U.S.C. 102(b) as 35 U.S.C. 102(b) as
in effect on March 15, 2013, and to refer to 35 U.S.C. 104 as 35 U.S.C. 104
as in effect on March 15, 2013.
Section 1.131(d) is added to provide that the provisions of § 1.131
apply to any application for patent, and to any patent issuing thereon,
that contains, or contained at any time: (1) A claim to an invention that
has an effective filing date as defined in 35 U.S.C. 100(i) that is before
March 16, 2013; or (2) a specific reference under 35 U.S.C. 120, 121, or
365(c) to any patent or application that contains, or contained at any
time, a claim to an invention that has an effective filing date as defined
in 35 U.S.C. 100(i) that is before March 16, 2013.
Section 1.131(e) is added to provide that, in an application for patent
to which the provisions of § 1.130 apply, and to any patent issuing
thereon, the provisions of § 1.131 are applicable only with respect to a
rejection under 35 U.S.C. 102(g) as in effect on March 15, 2013. Section
1.130(d) provides that the provisions of § 1.130 apply to applications for
patent, and to any patent issuing thereon, that is subject to AIA 35 U.S.C.
102 and 103. The date of invention is not relevant under AIA 35 U.S.C. 102
and 103. Thus, in an application for patent to which the provisions of §
1.130 apply, and to any patent issuing thereon, a prior art disclosure
could not be antedated under AIA 35 U.S.C. 102 and 103 by way of an
affidavit or declaration under § 1.131(a) showing that the inventor
previously invented the claimed subject matter.
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Sections 1.293 through 1.297: The AIA repeals the provisions of 35
U.S.C. 157 pertaining to statutory invention registrations. Thus, the
statutory invention registration provisions of §§ 1.293 through 1.297 are
removed.
Section 1.321: Section 1.321(d) is amended to remove reference to 35
U.S.C. 103(c) and to provide a reference to the provisions of §
1.104(c)(4)(ii) and § 1.104(c)(5)(ii) in order provide for both AIA and
pre-AIA applications.
Comments and Responses to Comments
As discussed previously, the Office published a notice of proposed
rulemaking and a notice of proposed examination guidelines on July 26,
2012, to implement the first inventor to file provisions of section 3 of
the AIA, and conducted a roundtable on September 6, 2012, to obtain public
input from organizations and individuals on issues relating to the Office's
proposed implementation of the first inventor to file provisions of the
AIA. See Changes To Implement the First Inventor To File Provisions of the
Leahy-Smith America Invents Act, 77 FR at 43742-59, Examination Guidelines
for Implementing the First Inventor To File Provisions of the Leahy-Smith
America Invents Act, 77 FR at 43759-73, and Notice of Roundtable on the
Implementation of the First Inventor To File Provisions of the Leahy-Smith
America Invents Act, 77 FR at 49427-28. The Office received approximately
seventy written comments (from intellectual property organizations,
industry, law firms, individual patent practitioners, and the general
public) in response to these notices. The comments germane to the proposed
changes to the rules of practice and the Office's responses to the comments
follow.
A. Foreign Priority Claim and Certified Copy
Comment 1: Numerous comments either opposed or suggested revising the
requirement for submission of a certified copy of the foreign priority
document within the later of four months from the actual filing date of the
application or sixteen months from the filing of the prior foreign
application as set forth in proposed § 1.55. The majority of these comments
stated that such filing deadlines for the certified copy are unrealistic
because many delays can be beyond the control of the applicant, such as
delays by the foreign intellectual property office, mailing and courier
delays, and even delays by the Office in requesting delivery under the
priority document exchange program. One comment suggested revising the
timing requirement for filing the certified copy of the foreign priority
document to no later than payment of the issue fee.
Response: Section 1.55(f) as adopted in this final rule requires that a
certified copy of the foreign application must be filed within the later of
four months from the actual filing date of the application or sixteen
months from the filing date of the prior foreign application. Section
1.55(f) as adopted in this final rule, however, also provides that this
requirement does not apply if: (1) The priority application was filed in a
participating foreign intellectual property office, or if a copy of the
foreign application was filed in an application subsequently filed in a
participating foreign intellectual property office that permits the Office
to obtain such a copy, and the Office receives either a copy of the foreign
application from the participating foreign intellectual property office or
a certified copy of the foreign application within the pendency of the
application and before the patent is granted; or (2) the applicant provides
an interim copy of the original foreign application within the later of
four months from the actual filing date of the application or sixteen
months from the filing date of the prior foreign application, and files a
certified copy of the foreign application within the pendency of the
application and before issuance of the patent.
Comment 2: Several comments asserted that there is no need for a
certified copy of the foreign priority application because the Office can
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readily obtain priority documents through its exchange mechanisms (e.g.,
Digital Access Service (DAS) and Priority Document Exchange (PDX)) with
other intellectual property offices. The comments suggested that the Office
revise proposed § 1.55 to specifically exempt the time period for filing
the certified copy of the priority document if the applicant has timely
requested a certified copy or electronic transfer of that copy. One comment
suggested that in such circumstances, the rule should not include the
requirement for actual receipt of the foreign application by the Office.
Response: Section 1.55(h) as adopted in this final rule provides an
exception for filing a certified copy of the foreign priority application
when the priority application was filed in a participating foreign
intellectual property office, or if a copy of the foreign application was
filed in an application subsequently filed in a participating foreign
intellectual property office that permits the Office to obtain such a copy,
and the Office receives a copy of the foreign application from the
participating foreign intellectual property office within the pendency of
the application and before the patent is granted. Otherwise, the Office
continues to require a certified copy of a foreign priority application
pursuant to its authority in 35 U.S.C. 119(b). The requirement for a
certified copy where a copy was not received from a participating
intellectual property office is necessary to ensure that a true copy of the
earlier filed application is of record before the patent is granted. The
Office needs a copy of the foreign priority application for situations in
which a U.S. patent or U.S. patent application publication has a prior art
effect as of the filing date of a foreign priority application.
Comment 3: One comment noted that the electronic transmittal of priority
documents by participating foreign intellectual property offices is not
always available as an alternative to submitting a certified paper copy of
the priority application, and further observed that several large patent
offices (e.g., the German Patent and Trade Mark Office (DPMA)) do not
participate in electronic priority document exchange programs with the
Office.
Response: Section 1.55(i) as adopted in this final rule permits an
applicant to provide an "interim copy" of the original foreign application
from the applicant's own records to provide for the situation in which the
applicant cannot obtain a certified copy of the foreign application within
the time limit set forth in § 1.55(f). While providing an interim copy of a
foreign application under § 1.55(i) satisfies the requirement for a
certified copy of the foreign application to be filed within the time limit
set forth in § 1.55(f), a certified copy of the foreign application
ultimately must still be filed before a patent is granted as set forth in §
1.55(g).
Furthermore, § 1.55(h)(4) as adopted in this final rule provides that,
under specified conditions, if the foreign application was not filed in a
participating foreign intellectual property office, the applicant can file
a request in a separate document that the Office obtain a copy of the
foreign application from a participating intellectual property office that
permits the Office to obtain such a copy. Applicants can use Form PTO/SB/38
(Request to Retrieve Electronic Priority Application(s)) to file such a
request. If the Office receives a copy of the foreign application from the
participating foreign intellectual property office within the pendency of
the application and before the patent is granted, the applicant need not
file a certified paper copy of the foreign application. As a specific
example, an application filed in the DPMA (which is not currently a
participating foreign intellectual property office) may be retrieved via
the priority document exchange program if it is identified in the claim for
priority on the application data sheet, a subsequent application filed in
the European Patent Office (EPO) or the Japan Patent Office (JPO) contains
a certified copy of the DPMA application, and the applicant timely files a
separate request for the Office to obtain from the EPO (or JPO) a copy of
the certified copy of the DPMA application, wherein the request identifies
the DPMA application and the subsequent application by their application
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number, country (EPO, JPO, or DE), day, month, and year of their filing.
Comment 4: Several comments suggested that where a priority application
was published and available to the public by the time of publication of the
U.S. application there is no need for a certified copy of the foreign
application for the purpose of establishing an earlier effective prior art
date under AIA 35 U.S.C. 102(d). One comment suggested that the Office
waive the certified copy requirement for foreign priority applications
filed in foreign intellectual property offices that publish at eighteen
months. One comment argued that the requirement for the certified copy of
the foreign priority document is obsolete because a certified copy is not
required by statute. Another comment asserted that the filing of the
certified copy of the foreign application is burdensome, costly, and not
required unless an applicant relies on the foreign priority date to
eliminate a prior art rejection.
Response: AIA 35 U.S.C. 102(d) provides that for purposes of determining
whether a patent or application for patent is prior art to a claimed
invention under AIA 35 U.S.C. 102(a)(2), the patent or application shall be
considered to have been effectively filed, with respect to any subject
matter described in the patent or application, as of the earliest of the
actual filing date of the patent or the application for patent, or the
filing date of the earliest application for which the patent or application
for patent is entitled to claim a right of priority under 35 U.S.C. 119,
365(a), or 365(b), or to claim the benefit of an earlier filing date under
35 U.S.C. 120, 121, or 365(c), that describes the subject matter. It is
thus necessary for a copy of any foreign application to which a patent or
application for patent claims a right of priority under 35 U.S.C. 119 or
365(a) to be available for review in order to determine the date that the
patent or application for patent was effectively filed with respect to
subject matter described in the patent or application for patent. The
requirement in § 1.55 for a certified copy of the foreign application is
specifically authorized by 35 U.S.C. 119(b) and is consistent with
international requirements (see, e.g., PCT Rule 17).
Comment 5: Several comments requested that a provision be added to
proposed § 1.55 to allow for late submission of the certified copy of the
foreign priority application. One comment observed that if a remedy for
late submission of the certified copy is provided for in the rule, an
applicant would not need to file a petition for waiver of the applicable
rule for late filing of the certified copy of the foreign application that
is due to actions beyond the control of the applicant. The comment further
suggested that the Office consider following the approach set forth in PCT
Rule 17.1 to address delays attributable to the actions of the patent
offices.
Response: Section 1.55(f) as adopted in this final rule provides for the
belated filing of a certified copy of the foreign application. Section
1.55(f) specifically provides that a certified copy of the foreign
application filed after the time period set forth therein must be
accompanied by a petition including a showing of good and sufficient cause
for the delay and the petition fee set forth in § 1.17(g). As compared to a
petition to seek the suspension or waiver under § 1.183 of the requirement
to submit a certified copy of the foreign application within the specified
time frame, § 1.55(f) provides a lower standard (good and sufficient cause
versus an extraordinary situation) and fee ($200 petition fee set forth in
§ 1.17(g) versus the $400 petition fee set forth in § 1.17(f)).
Comment 6: Several comments questioned whether an applicant is required
to repeatedly check to see if the Office has received a copy of the foreign
application under the priority document exchange program. Two comments
questioned whether the Office will mail a notice setting a due date for
compliance to file the certified copy of the foreign application.
Response: The Office will not send a notice setting a time period for
filing a certified copy of the priority document. Upon receipt of a Notice
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of Allowance, applicants should check to see whether the Office has
received a copy of the foreign application under the priority document
exchange program. To be entitled to priority, the Office must receive a
copy of the foreign application from the participating foreign intellectual
property office within the pendency of the application and before the
patent is granted, or receive a certified copy of the foreign application
within that time period. If a certified copy of the foreign application is
filed after the date the issue fee is paid, it must be accompanied by the
processing fee set forth in § 1.17(i), but the patent will not include the
priority claim unless corrected by a certificate of correction under 35
U.S.C. 255 and § 1.323.
Comment 7: One comment noted that the Office automatically retrieves
foreign applications from participating foreign intellectual property
offices and questioned whether this practice will continue or whether an
applicant must file a separate document requesting that the Office retrieve
a copy of the foreign application. One comment suggested modifying proposed
§ 1.55(d)(2) to indicate that if the foreign application was not filed in a
participating foreign intellectual property office, the request that the
Office obtain a copy of the foreign application from a participating
intellectual property office may be provided in an application data sheet
instead of a separate request.
Response: The Office is continuing the practice of treating a priority
claim to an application filed in a participating foreign intellectual
property office as a request that the Office obtain a copy of the foreign
application from the participating intellectual property office. A separate
written request may be used when the applicant wishes the Office to
retrieve a foreign application from a foreign intellectual property office
that becomes a participating foreign intellectual property office after the
foreign priority has been claimed, so long as the time period set in §
1.55(f) has not expired. A separate written request is required in the
situation where the foreign application is not originally filed in a
participating office, but a certified copy of the foreign application was
filed in an application subsequently filed in a participating foreign
intellectual property office. The suggestion to include the request that
the Office obtain a copy of the foreign application from the participating
intellectual property office in the application data sheet is not adopted
in this final rule. Including information regarding the subsequent
application for which priority is not claimed in an application data sheet,
instead of in a separate request, could lead to incorrect processing of the
subsequent application as the foreign priority document.
Comment 8: One comment asserted that the late filing of a certified copy
of a priority document due to circumstances beyond the control of the
applicant should not result in a reduction of patent term adjustment.
Response: There are no provisions in the patent term adjustment
regulations (i.e., §§ 1.702 et seq.) for a reduction of patent term
adjustment due to the late filing of a certified priority document.
Comment 9: One comment suggested that proposed § 1.55 is unclear with
respect to the deadline for submission of certified copies and priority
claims for applications that claim priority to multiple prior filed foreign
applications. The comment suggested that either the rule specify that the
deadline is sixteen months from the earliest priority application to which
a claim for priority is made, or sixteen months from the filing date of any
priority application to which a claim of priority is made.
Response: Section 1.55(f) provides that in an original application filed
under 35 U.S.C. 111(a), a certified copy of the foreign application must be
filed within the later of four months from the actual filing date of the
application or sixteen months from the filing date of the prior foreign
application, except as provided in § 1.55(h) and (i). The sixteen-month
time frame in § 1.55 for filing a certified copy of a foreign priority
application is measured from the filing date of any foreign application for
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which priority is claimed.
Comment 10: One comment suggested that the Office clarify whether an
applicant who files a 35 U.S.C. 111(a) application claiming the benefit of
a PCT application (i.e., a "bypass" application) may establish compliance
with § 1.55 either by complying with § 1.55(a)(2) (applicable to "original
applications") or by establishing compliance with § 1.55(a)(3) (applicable
to PCT national stage applications) during the international phase of the
parent PCT application to provide applicants the greatest flexibility to
choose the path of entry into the U.S. for an application filed under the
PCT. The comment further requested clarification that the requirement in §
1.55 pertaining to 35 U.S.C. 371 applications refers to the filing of a
certified copy of the foreign priority document during the international
phase and not during the national phase.
Response: An application filed under 35 U.S.C. 111(a) (including a
"bypass" application claiming the benefit of a PCT application, which PCT
application claims priority to a foreign application) must comply with the
time for filing a priority claim and a certified copy of a priority
document set forth in § 1.55(d) and (f) as adopted in this final rule.
Section 1.55(d) requires that in an application under 35 U.S.C. 111(a), a
claim for priority must be filed within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application. Section 1.55(f) requires that in an
application under 35 U.S.C. 111(a), a certified copy of the foreign
application must be filed within the later of four months from the actual
filing date of the application or sixteen months from the filing date of
the prior foreign application, except as provided in § 1.55((h) and (i).
This timing differs from that for an international application entering the
national stage under 35 U.S.C. 371, wherein the claim for priority must be
made and a certified copy of the foreign application must be filed within
the time limit set forth in the PCT and the Regulations under the PCT.
With respect to the requirements of § 1.55 as they pertain to
applications entering the national stage under 35 U.S.C. 371, if the
applicant submitted a certified copy of the foreign priority document in
compliance with PCT Rule 17 during the international phase, the
International Bureau will forward a copy of the certified priority document
to each Designated Office that has requested a copy of the foreign priority
document and the copy received from the International Bureau is acceptable
to establish that applicant has filed a certified copy of the priority
document. See MPEP § 1893.03(c). If, however, the International Bureau is
unable to forward a copy of the certified priority document because the
applicant failed to submit a certified copy of the foreign priority
document during the international phase, the applicant will need to provide
a certified copy of the priority document or have the document furnished in
accordance with the priority document exchange program during the national
stage to fulfill the requirements of § 1.55. See id.
Comment 11: One comment asked whether the requirement for the certified
copy of the foreign application of proposed § 1.55(a)(2) would be met if a
certified copy of the foreign application is submitted in a U.S. parent
application within the time period specified in the proposed rule. The
comment further asked if it would be necessary for the applicant to
indicate that the certified copy of the foreign application was submitted
in the U.S. parent application.
Response: Consistent with current practice, it is not necessary to file
a certified copy of a foreign application in a later-filed application that
claims the benefit of an earlier nonprovisional application where: (1)
Priority to the foreign application is claimed in the later-filed
application (i.e., continuation, continuation-in-part, division) or in a
reissue application; and (2) a certified copy of the foreign application
has been filed in the earlier nonprovisional application. When making such
claim for priority, the applicant must identify the earlier nonprovisional
application containing the certified copy. See MPEP § 201.14(b).
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Comment 12: One comment requested clarification as to whether an
applicant may obtain an extension of time to file an English-language
translation when filing the English-language translation in response to an
Office action, notwithstanding that proposed § 1.55(f) indicates that time
periods under that section are not extendable.
Response: The time period for filing a translation is not set forth in §
1.55, which only sets time periods for filing a foreign priority claim and
a certified copy of the priority application. The provisions of § 1.55(l)
as adopted in this final rule apply to time periods actually set in § 1.55,
and not to time periods that are set in an Office action. Thus, an
applicant may obtain an extension of time to file an English-language
translation when filing the English-language translation in response to an
Office action, unless the Office action indicates that extensions of time
are not available.
Comment 13: One comment suggested that the Office should not require
applicants to file a translation of a non-English language provisional
application as currently required by § 1.78(a)(5) because applicants are
not required to file an English translation of foreign language priority
documents except in limited circumstances.
Response: The Office will take this suggestion under consideration. The
Office did not propose any change to this practice, and thus has not had
the benefit of public comment on the issue. Furthermore, the Office would
need to gain greater experience with examination under the AIA to determine
how often it is necessary to obtain translations of priority documents for
the purposes of examination under AIA 35 U.S.C. 102 and 103. As discussed
previously, the Office plans to seek additional public comment on the rules
of practice pertaining to the first inventor to file provisions of section
3 of the AIA after the Office and the public have gained experience with
the rules of practice pertaining to the first inventor to file provisions
in operation.
Comment 14: One comment requested that the Office provide a rationale or
statutory basis for the proposed requirement of a "statement that the
entire delay between the date the claim was due under paragraph (a) and the
date the claim was filed was unintentional" in a petition filed under
proposed § 1.55(c)(4) for late presentation of a priority claim. The
comment further asserted that requirement of proof of the subjective intent
of the applicant runs counter to many statutory changes in the AIA, and
suggested that the Office could impose the loss of patent term adjustment
to dissuade applicants from intentionally delaying the presentation of the
priority claim.
Response: The provisions for setting time periods for the filing of
priority and benefit claims, and for accepting unintentionally delayed
priority and benefit claims, were added by amendments to 35 U.S.C. 119(b),
119(e), and 120 in the American Inventors Protection Act of 1999 (AIPA).
See Public Law 106-113, 113 Stat. 1501, 1501A-563 and 1501A-564 (1999); see
also Changes To Implement Eighteen-Month Publication of Patent Applications,
65 FR 57024, 57024-25, 57030-31, 57054-55 (Sept. 20, 2000). The AIA did not
revise these provisions for setting time periods for the filing of priority
and benefit claims, and for accepting unintentionally delayed priority and
benefit claims in 35 U.S.C. 119(b), 119(e), and 120.
B. Required Statements in Transition Applications
Comment 15: A number of comments opposed or expressed concerns with the
statement requirements proposed in §§ 1.55 and 1.78 that an applicant must
provide one of two alternative statements to assist the Office's
determination of whether a nonprovisional application filed on or after
March 16, 2013 ("transition date") that claims priority/benefit to one or
more pre-transition patent filings is subject to AIA 35 U.S.C. 102 and 103
or pre-AIA 35 U.S.C. 102 and 103. Several comments opined that it is the
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examiner's burden to determine whether post-AIA provisions are applicable,
and that the statement requirements are inconsistent with the prima facie
case requirement of 35 U.S.C. 102, 131, and 132, as well as costly,
burdensome, unnecessary, and unjustified. One comment also stated that the
number of applicants who will file applications of different scope that
contain both pre-AIA and post-AIA disclosure will be miniscule.
One comment stated that the statement requirements were similar to an
examination support document requirement that was at issue in the Tafas
litigation. See Tafas v. Kappos, 586 F.3d 1369 (Fed. Cir. 2009) (Tafas IV);
Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009) (Tafas III); Tafas v. Dudas,
541 F. Supp. 2d 805 (E.D. Va. 2008) (Tafas II).
Response: Sections 1.55 and 1.78 as adopted in this final rule require a
statement from the applicant in a "transition" application (a
nonprovisional application filed on or after March 16, 2013, that claims
priority to, or the benefit of the filing date of an earlier application
(i.e., foreign, provisional, or nonprovisional application, or an
international application designating the United States) filed prior to
March 16, 2013) only if the application contains, or contained at any time,
a claim to a claimed invention that has an effective filing date on or
after March 16, 2013. As discussed in the notice of proposed rulemaking,
this statement is needed to assist the Office in determining whether the
application is subject to AIA 35 U.S.C. 102 and 103 (an AIA application) or
pre-AIA 35 U.S.C. 102 and 103 (a pre-AIA application). See Changes To
Implement the First Inventor To File Provisions of the Leahy-Smith America
Invents Act, 77 FR at 43745, 43747, and 43748. The Office is not requiring
the applicant to indicate which particular claim or claims have a post
March 16, 2013 effective filing date, or the effective filing date of each
claim, as the Office does not need this information to determine whether
the application is an AIA application or a pre-AIA application. See id. As
also discussed in the notice of proposed rulemaking, if the Office must
determine on its own the effective filing date of every claim ever
presented in an application filed on or after March 16, 2013, that claims
priority to or the benefit of an application filed prior to March 16, 2013,
examination costs will significantly increase. See id.
The changes to §§ 1.55 and 1.78 as adopted in this final rule do not
implicate the prima facie case requirement. The prima facie case
requirement pertains to the making of rejections and objections under 35
U.S.C. 131 and 132. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2012).
While 35 U.S.C. 131 provides that the "Director shall cause an examination
to be made of the application," it does not preclude the Office from
requiring the applicant to provide information that is reasonably necessary
to the examination of the application. See Star Fruits S.N.C. v. United
States, 393 F.3d 1277, 1283 (Fed. Cir. 2005). Sections 1.55 and 1.78 as
adopted in this final rule do not require an applicant to engage in a
"self-examination" of an application or make a prima facie case of
entitlement to a patent. Rather, the requirement for a statement for
certain transition applications in §§ 1.55 and 1.78 as adopted in this
final rule simply requires the applicant to provide information that will
be used by the Office as an aid in determining whether to examine the
application under AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and
103.
With respect to the suggestion that the changes proposed to §§ 1.55 and
1.78 would add costs and burdens to the patent application process, the
Office has revised §§ 1.55 and 1.78 in this final rule to: (1) Require the
statement in a transition application only if the application contains, or
contained at any time, a claim to a claimed invention that has an effective
filing date on or after March 16, 2013, (i.e., and not require a statement
simply because the transition application discloses subject matter not also
disclosed in the prior-filed application); and (2) indicate that no
statement is required if the applicant reasonably believes on the basis of
information already known to the individuals identified in § 1.56(c) that
the nonprovisional application does not, and did not at any time, contain a
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claim to a claimed invention that has an effective filing date on or after
March 16, 2013. Therefore, the changes to §§ 1.55 and 1.78 adopted in this
final rule should not require additional investigation on the part of the
applicant and thus should not be costly or burdensome. In any event, the
applicant will have prepared both the transition application and its
priority or benefit application(s) and thus should be far more familiar
with the contents thereof than an examiner who was not involved in the
preparation of any of the applications. Patent applicants would need to pay
higher filing fees to recover the significantly higher examination costs if
Office personnel were required to independently determine the effective
filing date of each claim ever presented in an application. As a result of
the statement requirement, the Office and the public will have greater
certainty as to whether any resulting patent is an AIA or pre-AIA patent.
See Star Fruits, 393 F.3d at 1284. Therefore, the patent examination
process will operate more effectively if this information (whether the
application ever contained a claim to a claimed invention that has an
effective filing date on or after March 16, 2013) is provided at the outset
by the party having the best access to the information.
The requirement for a statement for certain transition applications in
§§ 1.55 and 1.78 as adopted in this final rule bears no relationship to the
examination support document at issue in the Tafas litigation. The
requirement for a statement for certain transition applications in §§ 1.55
and 1.78 as adopted in this final rule involves a determination and
statement that is comparable to determinations and statements required
under pre-existing rules of practice regarding the absence of new matter.
See § 1.57(f) (requires amendment inserting material incorporated by
reference to be accompanied by a statement that the amendment contains no
new matter), § 1.125(b) (requires a substitute specification to be
accompanied by a statement that the substitute specification includes no
new matter), and former § 1.63(d)(1)(iii) (permits use of an oath or
declaration from a prior application in a continuation or divisional
application that contains no matter that would have been new matter in the
prior application). The concern with the examination support document in
the Tafas litigation, meanwhile, was that it required a prior art search by
the applicant and was viewed as shifting the burden of proving
patentability onto the applicant. See Tafas III, 559 F.3d at 1373-74
(dissent), and Tafas II, 541 F. Supp. 2d at 817. Sections 1.55 and 1.78 as
adopted in this final rule do not require an extensive investigation or
search of the prior art, but instead simply require a statement for certain
transition applications based upon information that is already in the
applicant's possession.
With respect to the suggestion that the number of applicants who will
file applications of different scope that contain both pre-AIA and post-AIA
disclosure will be miniscule, an applicant who avoids filing serial
applications of different scope that contain both pre-AIA and post-AIA
disclosure is not required to provide any statement under §§ 1.55 and 1.78
as adopted in this final rule. Thus, if the number of serial applications
of different scope that contain both pre-AIA and post-AIA disclosure is
miniscule as suggested by the comment, then only the few patent applicants
who engage in this atypical application filing practice will need to
provide a statement under § 1.55 or 1.78 as adopted in this final rule.
Comment 16: A number of comments suggested removing the requirement for
a statement when a transition application adds, but does not claim, subject
matter that is not supported in a benefit or priority application filed
before March 16, 2013. Several comments indicated that such a statement is
burdensome and of limited use, with one comment noting that the statutory
language makes clear that the determination of whether an application is
subject to AIA or pre-AIA 35 U.S.C. 102 and 103 is governed solely by
claims. Several comments stated that it is difficult to determine whether
certain changes to the disclosure would be considered "added" subject
matter. Several comments asked whether a statement would be required if
only editorial or other minor changes were made to an application before it
is filed.
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Response: Sections 1.55 and 1.78 as adopted in this final rule do not
require a statement if a transition application discloses, but does not
claim, subject matter that is not supported in a benefit or priority
application filed before March 16, 2013.
Comment 17: Several comments asserted that the required statements in
proposed § 1.55 and 1.78 are unnecessary since an examiner can address in a
rejection that certain subject matter or claims are not supported by the
priority application, giving an applicant the opportunity to respond to
either the prior art rejection or a rejection under 35 U.S.C. 112 for claim
amendments that add subject matter. Several comments suggested deferring
the determination of whether the application is an AIA application or a
pre-AIA application until and unless a rejection is addressed with a
pre-AIA § 1.131 affidavit or declaration. Several comments asserted that by
dealing with this issue in the context of a rejection, the dispute of
whether the application ever contained a claim having an effective filing
date that is on or after March 16, 2013, can be resolved through appeal.
Response: The suggested alternative of having the examiner address the
issue of entitlement to priority or the benefit of an earlier filing date,
and allowing the applicant to address the issue in a response to the Office
action, would entail the same examination costs that the Office would incur
to determine on its own whether an application is an AIA application or a
pre-AIA application prior to issuing an Office action. Moreover, a claim is
not subject to a rejection under AIA 35 U.S.C. 102 or 103 (unless there is
intervening prior art) or under 35 U.S.C. 112(a) simply because the claim
is to a claimed invention that has an effective filing date on or after
March 16, 2013. Lastly, the differences between AIA 35 U.S.C. 102 and 103
and pre-AIA 35 U.S.C. 102 and 103 are not limited to the ability to
antedate prior art by showing prior invention under § 1.131.
Comment 18: One comment questioned whether the statement requirement
under §§ 1.55 and 1.78 is part of the applicant's duty of disclosure.
Several comments were concerned that the requirement to make these
statements would increase the likelihood of charges of inequitable conduct.
Two comments requested clarification of the Office's suggestion to include
the "reasonable belief" language in the required statements. Another
comment suggested that the Office include in the rules that the required
statements made by applicant would not impact the validity of the patent.
Response: The Office is providing in this final rule that an applicant
is not required to provide such a statement if the applicant reasonably
believes on the basis of information already known to the individuals
designated as having a duty of disclosure with respect to the application
that the transition application does not, and did not at any time, contain
a claim to a claimed invention that has an effective filing date on or
after March 16, 2013. However, § 1.56 also includes a general duty of
candor and good faith in dealing with the Office, which could be implicated
if an applicant is aware that a transition application contains a claim to
a claimed invention that has an effective filing date on or after March 16,
2013, but nonetheless chooses not to provide the statement when required
under § 1.55 or 1.78.
Comment 19: One comment questioned how long the statement requirement
would be applicable, noting that an application may claim the benefit under
35 U.S.C. 120 and § 1.78 of an application filed many years earlier.
Response: The requirement for a statement for certain transition
applications in §§ 1.55 and 1.78 as adopted in this final rule is
implicated whenever an application filed on or after March 16, 2013, claims
a right of priority to or the benefit of the filing date of an application
filed prior to March 16, 2013. This requirement, however, should not affect
continuation or divisional applications because a continuation or
divisional application discloses and claims only subject matter also
disclosed in the prior-filed application. See MPEP § 201.06 (defines
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divisional application), and § 201.07 (defines continuation application).
In addition, an application claiming a right of priority to a foreign
application or the benefit of a provisional application must be filed
within one year of the filing date of the foreign or provisional
application. See 35 U.S.C. 119(a) and 119(e). In view of the one-year
filing period requirement in 35 U.S.C. 119(a) and 119(e), this requirement
should not affect applications filed after May 16, 2014, that claim only a
right of priority to one or more foreign applications, or that only claim
the benefit of one or more provisional applications (the critical date is
May 16, 2014, rather than March 16, 2014, in view of the changes to 35
U.S.C. 119 in section 201(c) of the the Patent Law Treaties Implementation
Act of 2012, Public Law 112-211 (2012)). Therefore, after March 16, 2014,
(or May 16, 2014, the statement required by §§ 1.55 and 1.78 as adopted in
this final rule for certain transition applications should be necessary
only in certain continuation-in-part applications.
Comment 20: One comment suggested that the Office extend the four-month
deadline for making the statements required under §§ 1.55 and 1.78 because
it is burdensome on applicants to identify the existence of claims having
an effective filing date after March 16, 2013, and missing the deadline
would trigger a requirement for information under § 1.105 that the
applicant identify where there is written description support for the
remaining claims in the nonprovisional application. One comment asserted
that this requirement for information under § 1.105 is punitive, arbitrary,
and capricious. One comment asserted that a request for admission (with
sanctions for failure to be accurate) is inappropriate, especially where it
is unclear whether a statement is necessary. One comment questioned whether
the Office would require a statement under §§ 1.55 or 1.78 if no statement
is made prior to examination, but it is later determined that a statement
should be made regarding either new subject matter or new claims not
supported by a pre-AIA application for which priority or benefit is
claimed. One comment raised concerns that a practitioner may be forced to
choose between violating state bar rules by making a statement adverse to a
client's interests or violating the Office's rules of practice.
Response: This final rule does not provide that the Office will issue a
requirement for information under § 1.105 as a sanction or penalty for
non-compliance with the statement requirement under §§ 1.55 and 1.78.
Rather, the Office is simply indicating that the Office may issue a
requirement for information under § 1.105 if an applicant takes conflicting
positions on whether an application contains, or contained at any time, a
claim to a claimed invention having an effective filing date on or after
March 16, 2013. For example, the Office may require the applicant to
identify where there is written description support under 35 U.S.C. 112(a)
in the pre-AIA application for each claim to a claimed invention if an
applicant provides a statement under § 1.55 or § 1.78, but later argues
that the application should have been examined as a pre-AIA application
because the application does not actually contain a claim to a claimed
invention having an effective filing date on or after March 16, 2013. The
Office would not issue a requirement for information under § 1.105 simply
because of a disagreement with the applicant's statement under § 1.55 or §
1.78 or the lack of such a statement.
Comment 21: Several comments suggested that the Office provide a
mechanism (e.g., a check box) on the application data sheet to enable
applicants to make the required statements. One comment stated that
stakeholders should be able to identify which law applies with ease and
transparency, and further suggested putting notice on the face of the
patent to indicate whether the patent was issued under pre-AIA law or AIA
law.
Response: The Office is revising the application data sheet to include a
check box to allow applicants to easily indicate whether a transition
application contains or ever contained a claim to a claimed invention
having an effective filing date that is on or after March 16, 2013. The
Office plans to indicate in the Office's Patent Application Locating and
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Monitoring (PALM) system whether the Office is treating an application as
subject to pre-AIA 35 U.S.C. 102 and 103 (a pre-AIA application) or AIA 35
U.S.C. 102 and 103 (an AIA application). Members of the public may access
this information via the Patent Application Information Retrieval (PAIR)
system. Furthermore, form paragraphs for use in Office actions will be
developed which will identify whether the provisions of pre-AIA 35 U.S.C.
102 and 103 or AIA 35 U.S.C. 102 and 103 apply if there is a rejection
based upon 35 U.S.C. 102 or 103.
Comment 22: Several comments proposed that the Office initially examine
all applications filed on or after March 16, 2013, as if they were subject
to the post-AIA provisions. Specifically, if an application is subject to a
prior art rejection based on post-AIA provisions, applicants would have the
opportunity to provide evidence that the application is subject to pre-AIA
provisions. One comment noted that a prior art search conducted under AIA
35 U.S.C. 102 and 103 is broader than a search conducted under pre-AIA 35
U.S.C. 102 and 103, and therefore would encompass substantially all prior
art under pre-AIA 35 U.S.C. 102 and 103, with two possible limited
exceptions for commonly owned or joint research agreement patents and
patent application publications and certain grace period disclosures
measured from the filing date of a foreign priority application (instead of
from the earliest effective U.S. filing). One comment noted that conducting
searches under a single standard would minimize the training burden on
examiners and the confusion that would arise if searches are conducted
under different standards for different applications.
Response: The suggested alternative of treating all applications filed
on or after March 16, 2013, as subject to AIA 35 U.S.C. 102 and 103 (e.g.,
as AIA applications) entails the risk of issuing patents containing
unpatentable claims. For example, the provision in pre-AIA 35 U.S.C. 103(c)
concerning the availability of commonly owned prior art applies only to
pre-AIA 35 U.S.C. 103 for a pre-AIA application, and thus a claimed
invention in a pre-AIA application examined under AIA 35 U.S.C. 102 and 103
could appear to be patentable where a rejection under pre-AIA 35 U.S.C.
102(e) on the basis of commonly owned prior art might be appropriate. In
addition, such a practice would also shift the burden of determining
whether an issued patent is really an AIA patent or a pre-AIA patent to the
public.
Comment 23: One comment requested clarification regarding whether a
continuation or a divisional application filed after March 16, 2013, and
having a claim not presented in the prior pre-AIA application, but not
containing new matter, would require a statement to that effect. Another
comment requested clarification as to whether subject matter not claimed,
but fully supported, in a pre-AIA application that is later claimed in a
continuation or divisional filed after March 16, 2013, would make the
application subject to AIA 35 U.S.C. 102 and 103.
Response: The addition of a claim in a transition application that is
directed to subject matter fully supported in a pre-AIA benefit or priority
application would not itself trigger the statement requirement under § 1.55
or § 1.78 and would not make the application subject to AIA 35 U.S.C. 102
and 103.
Comment 24: Several comments suggested that the Office should clarify
that an amendment to the claims that lacks support under 35 U.S.C. 112(a)
does not convert that application into an AIA application.
Response: For an application filed on or after March 16, 2013, that
discloses and claims only subject matter also disclosed in a previously
filed pre-AIA application to which the application filed on or after March
16, 2013, is entitled to priority or benefit under 35 U.S.C. 119, 120, 121,
or 365, an amendment (other than a preliminary amendment filed on the same
day as such application) seeking to add a claim to a claimed invention that
is directed to new matter would not convert the application into an AIA
application. 35 U.S.C. 132(a) prohibits the introduction of new matter into
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the disclosure and thus an application may not actually "contain" a claim
to a claimed invention that is directed to new matter. The Office notes
that the MPEP sets forth the following process for treating amendments that
are believed to contain new matter: (1) A new drawing should not be entered
if the examiner discovers that the drawing contains new matter (MPEP §
608.02); and (2) amendments to the written description or claims involving
new matter are ordinarily entered, but the new matter is required to be
cancelled from the written description and the claims directed to the new
matter are rejected under 35 U.S.C. 112(a) (MPEP § 608.04). This process
for treating amendments containing new matter is purely an administrative
process for handling an amendment seeking to introduce new matter into the
disclosure of the invention in violation of 35 U.S.C. 132(a) and resolving
disputes between the applicant and an examiner as to whether a new drawing
or amendment to the written description or claims would actually introduce
new matter.
Comment 25: One comment suggested that the rules should provide recourse
in the situation where there has been an inadvertent addition of a claim,
or a specific reference to a prior-filed application, that causes the
application to be subject to AIA 35 U.S.C. 102 and 103. The comment
suggested that the applicant be permitted to file an oath or declaration
asserting such inadvertence, such that the application may be examined
under pre-AIA 35 U.S.C. 102 and 103.
Response: There is no provision in the AIA for an application (or any
patent issuing thereon) that contains, or contained at any time, such a
claim or specific reference to be subject to pre-AIA 35 U.S.C. 102 and 103
instead of AIA 35 U.S.C. 102 and 103 on the basis of the claim or specific
reference being submitted by inadvertence or on the basis of an oath or
declaration asserting that the claim or specific reference was submitted by
inadvertence. As discussed previously, however, for an application filed on
or after March 16, 2013, that discloses and claims only subject matter also
disclosed in a previously filed pre-AIA application to which the
application filed on or after March 16, 2013, is entitled to priority or
benefit under 35 U.S.C. 119, 120, 121, or 365, an amendment (other than a
preliminary amendment filed on the same day as such application) seeking to
add a claim to a claimed invention that is directed to new matter would not
convert the application into an AIA application.
Comment 26: One comment suggested that the Office provide an applicant
with the opportunity to: (1) Cancel any claims to a claimed invention
having an effective filing date before March 16, 2013, from the
application; and/or (2) file a divisional application directed to the
cancelled subject matter to enable applicants to have the claims in the
divisional application examined under pre-AIA 35 U.S.C 102 and 103.
Response: If an application on filing contains at least one claim having
an effective filing date before March 16, 2013, and at least one claim
having an effective filing date on or after March 16, 2013, the application
will be examined under AIA even if the latter claims are cancelled.
However, if a pre-AIA parent application is pending and an applicant
inadvertently files a continuing application with claims having an
effective filing date on or after March 16, 2013, the applicant could file
a continuation or divisional application from the pre-AIA parent
application without any claim to the benefit of the AIA application and
without any claim to a claimed invention having an effective filing date on
or after March 16, 2013. In this situation, the continuation or divisional
application would be examined as a pre-AIA application under pre-AIA 35
U.S.C. 102 and 103.
Comment 27: One comment suggested that the statements required under §
1.55 or § 1.78 for transition applications containing a claim having an
effective filing date that is on or after March 16, 2013, that was first
presented after the four-month deadline could be made in an amendment or
response during prosecution. One comment questioned whether the statement
could be submitted during the period set in § 1.53 for reply to a notice to
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file missing parts of an application.
Response: Sections 1.55(j), 1.78(a)(6), and (c)(6) set out the time
period within which such a statement (when required) must be submitted.
Such a statement (when required) must be submitted within the later of four
months from the actual filing date of the nonprovisional application, four
months from the date of entry into the national stage as set forth in §
1.491 in an international application, sixteen months from the filing date
of the prior-filed foreign application, or the date that a first claim to a
claimed invention that has an effective filing date on or after March 16,
2013, is presented in the nonprovisional application. The time frame
specified in § 1.55 or § 1.78 is not affected by the issuance of a notice
to file missing parts of an application under § 1.53. In addition, the
Office has enlarged the time period for filing the inventor's oath or
declaration, which should reduce the situations in which it is necessary to
issue a notice to file missing parts of an application under § 1.53. See
Changes To Implement the Inventor's Oath or Declaration Provisions of the
Leahy-Smith America Invents Act, 77 FR 48776, 48779-80 (Aug. 14, 2012).
Permitting the statement required by § 1.55 or § 1.78 for certain
transition applications to be submitted during the period set in § 1.53 for
reply to a notice to file missing parts of an application would encourage
applicants to file applications that are not in condition for examination.
C. Prior Inventor Disclosures (Sections 1.130 and 1.77)
Comment 28: One comment suggested that the organization of § 1.130 be
improved to clarify the different requirements for a declaration depending
on the applicable circumstances. One comment suggested that proposed §
1.130 should be revised to remove the requirement that the "subject matter
disclosed" be shown to have been "invented" by one of the coinventors of
the application because such subject matter may not necessarily correspond
to the claimed invention. The comment further suggested that the rule be
revised to conform to the statute and require instead that the declaration
establish that the subject matter that is disclosed was obtained directly
or indirectly from an inventor of the invention that is claimed. One
comment expressed concern that the language "subject matter of the
disclosure" used in proposed § 1.130 did not track the statutory language
of "subject matter disclosed." Another comment suggested that the Office
take a general approach, similar to that taken in current affidavit
practice under §§ 1.131 and 1.132 regarding the submission of evidence
under proposed § 1.130, leaving out the details regarding the sufficiency
of the evidence which will develop on a case-by-case basis.
Response: Section 1.130 as adopted in this final rule has been revised
to more closely track the language of the statute and has been streamlined
to set forth only the procedural requirements for submitting a declaration
or affidavit of attribution under § 1.130(a) and a declaration or affidavit
of prior public disclosure by the inventor or a joint inventor under §
1.130(b). The rule only requires the information necessary for the Office
to make a decision (i.e., a copy or description of the prior disclosure
where applicable). The showing required for establishing sufficiency of a
declaration or affidavit under § 1.130 is discussed in the Examination
Guidelines for Implementing the First Inventor To File Provisions of the
Leahy-Smith America Invents Act.
Comment 29: One comment suggested that proposed § 1.130 reallocates the
burden of proof to show derivation to the inventor and is thus substantive.
Response: As discussed above, § 1.130 as adopted in this final rule
simply sets forth the procedural requirements for an affidavit or
declaration under § 1.130.
Comment 30: One comment questioned the requirement in proposed § 1.130
that a declaration be accompanied by evidence and requested that the Office
clarify whether a later submission of evidence which supports, but does not
initially accompany, a § 1.130 affidavit or declaration would be rejected.
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Response: The submission of evidence with a declaration must be timely
or seasonably filed to be entered and entitled to consideration. This is
the current standard for declaration/affidavit practice under pre-existing
§§ 1.131 and 1.132 as set forth in MPEP §§ 715.09 and 716.01, respectively.
Specifically, affidavits and declarations and other evidence traversing
rejections are considered timely if submitted: (1) Prior to a final
rejection; (2) before appeal in an application not having a final
rejection; (3) after final rejection, but before or on the same date of
filing an appeal, upon a showing of good and sufficient reasons why the
affidavit or other evidence is necessary and was not earlier presented in
compliance with § 1.116(e); or (4) after the prosecution is closed (e.g.,
after a final rejection, after appeal, or after allowance) if applicant
files the affidavit or other evidence with a request for continued
examination (RCE) under § 1.114 in a utility or plant application filed on
or after June 8, 1995, or a continued prosecution application (CPA) under §
1.53(d) in a design application. See MPEP section 715.09 and 716.01.
Comment 31: One comment requested that declarations submitted under
proposed § 1.130(b) for a Katz-type declaration (an affidavit or
declaration of attribution as discussed in MPEP § 716.10) and under
proposed § 1.130(d) for a showing of derivation be permitted to be filed
confidentially.
Response: Declarations or affidavits filed by an applicant or patent
owner to overcome a rejection or an objection cannot be filed
confidentially because the public needs to know what evidence the examiner
relied upon in determining the patentability of the claims. Current
practice does not provide for the confidential filing of an affidavit or
declaration of attribution or an affidavit or declaration to show
derivation. However, applicants may submit proprietary information with a
petition to expunge under limited circumstances as explained in MPEP § 724.
Comment 32: One comment suggested that the Office instruct patent
applicants to come forward with any disclosures of which they are aware
that may qualify as a prior art exception under AIA 35 U.S.C. 102(b).
Another comment suggested that the final rules require an applicant's
disclosure of prior secret commercial use of the claimed invention for more
than one year prior to the original filing date given the ambiguities in
the statute.
Response: Section 1.77 permits, but does not require, an applicant to
provide a statement regarding prior disclosures by the inventor or a joint
inventor. An applicant is not "required" to identify any prior disclosures
by the inventor or a joint inventor unless the prior disclosure is not a
grace period disclosure and is "material to patentability" or the prior
disclosure is a grace period disclosure and the applicant is seeking to
rely upon the prior disclosure to overcome a rejection. However,
identifying any prior disclosures by the inventor or a joint inventor may
save applicants (and the Office) the costs related to an Office action and
reply and expedite examination of the application.
Comment 33: One comment suggested that the Office should not permit the
mere listing of prior disclosures in an application under proposed § 1.77
but rather by way of affidavit or declaration, unless it is readily
apparent that these prior disclosures originated with the inventor because
the inventor's oath or declaration only attests to the claims of the
application and not to the origin of the prior disclosures listed in the
application.
Response: Sections 1.63(c) and 1.64(c) state that a person may not
execute an inventor's oath or declaration for an application unless that
person has reviewed and understands the contents of the application,
including the claims, and is aware of the duty to disclose to the Office
all information known to the person to be material to patentability as
defined in § 1.56. See Changes To Implement the Inventor's Oath or
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Declaration Provisions of the Leahy-Smith America Invents Act, 77 FR at
48818-19. Therefore, it is not necessary to have a person executing an
inventor's oath or declaration under § 1.63 or 1.64 provide a separate
affidavit or declaration attesting to the statements in the application as
filed.
Comment 34: One comment suggested that the Office add a corroboration
requirement to proposed §§ 1.130 and 1.131.
Response: The Office does not consider a per se requirement for
corroboration to be necessary in ex parte examination (i.e., application
examination or ex parte patent reexamination) proceedings. The need for
corroboration in ex parte proceedings is a case-by-case determination based
upon the specific facts of the case.
Comment 35: One comment asserted that there is a difference between a
"disclosure" and a "public disclosure" from the provision set forth in
proposed § 1.130(c) (which stated that if an earlier disclosure was not a
printed publication, the affidavit or declaration must describe the
disclosure with sufficient detail and particularity to determine that the
disclosure is a public disclosure of the subject matter on which the
rejection is based) and requested clarification in the MPEP or other
materials on what facts are needed to establish a public disclosure.
Response: The term "disclosure" includes disclosures that are not
public. For example, prior filed, later published U.S. patent applications
are considered disclosures on their earliest effective filing dates, which
is not the date on which the disclosure was made publicly available. The
showing required to establish a public disclosure is discussed in the
Examination Guidelines for Implementing the First Inventor To File
Provisions of the Leahy-Smith America Invents Act.
Comment 36: One comment suggested revising the last sentences of
proposed § 1.130(c) and (e) to make the standard for evaluating both
non-publications and publications the same and to eliminate the potentially
confusing reference to the language "the subject matter on which the
rejection is based."
Response: Section 1.130 as adopted in this final rule does not include
the standard for evaluating the sufficiency of a declaration or attribution
or refer to "the subject matter on which the rejection is based." The
details regarding the showing needed to establish a successful declaration
or affidavit under § 1.130 are discussed in the Examination Guidelines for
Implementing the First Inventor To File Provisions of the Leahy-Smith
America Invents Act.
Comment 37: One comment suggested amending proposed §§ 1.130 and 1.131
to indicate that a disclosure on which the rejection is based is not prior
art when the disclosure is based on the public disclosure or subject matter
published by the inventor or joint inventor.
Response: As discussed previously, § 1.130 has been streamlined to set
forth only the procedural requirements for submitting a declaration or
affidavit of attribution under this section. The showing required for
establishing sufficiency of a declaration or affidavit under § 1.130 as
adopted in this final rule is discussed in the Examination Guidelines for
Implementing the First Inventor To File Provisions of the Leahy-Smith
America Invents Act.
Comment 38: One comment requested an explanation of how the Office would
use statements made in a declaration under proposed § 1.130 in the
examination of other applications. The comment further asked whether the
Office would provide a way for the examiners and the public to search the
contents of the declarations.
Response: The Office plans to include information on the cover sheet of
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U.S. patents if an affidavit or declaration containing evidence of a prior
public disclosure under § 1.130(b) was filed during the prosecution of the
application for that patent in order to facilitate search by examiners and
the public of prior public disclosures brought to the Office's attention
under § 1.130(b).
D. Proposed Requirement in § 1.130 To Initiate Derivation Proceedings
Comment 39: Several comments opposed the Office requiring a petition for
a derivation proceeding in proposed § 1.130(f). One comment asserted that
such a requirement would be unduly burdensome and premature if based on the
published claims of an unexamined application which may not be patentable
to the earlier applicant. One comment stated that there was no basis for
requiring the filing of a derivation petition when an applicant may avoid a
rejection in another way such as by amending the claims. One comment
asserted that since derivation requests are statutorily permissive, the
Office should suggest or recommend, but not require a derivation
proceeding. One comment stated that applicants, not the Office, are in the
best position to decide if a derivation proceeding should be instituted.
One comment requested that the Office establish standards for determining
whether an applicant is required to file a petition for a derivation
proceeding.
Response: Section 1.130 as adopted in this final rule does not include a
requirement to file a petition for a derivation proceeding and instead
provides that an applicant or patent owner may file a petition for a
derivation proceeding if the patent or pending application naming another
inventor claims an invention that is the same or substantially the same as
the applicant's or patent owner's claimed invention.
Comment 40: One comment suggested that instead of requiring the
initiation of a derivation proceeding, the Office should implement a rule
that would allow an AIA 35 U.S.C. 102(b)(2)(A) exception from prior art to
extend only to disclosed but unclaimed subject matter in an earlier patent
filing, and that a patent be permitted to issue on a claimed invention only
if the claims with the earlier effective filing date are cancelled via a
derivation proceeding or post-grant review proceeding. Another comment
questioned whether there are any cases where the Office would not require
the applicant to file a petition for a derivation proceeding even if the
claims are the same and the inventors are different.
Response: Section 1.130 as adopted in this final rule does not include a
requirement to file a petition for a derivation proceeding. An applicant or
patent owner has the discretion to file a petition for a derivation
proceeding pursuant to § 42.401 et seq. of this title. In the event that a
patent is issued on a later filed application claiming subject matter
disclosed in an earlier filed application, the applicant in the earlier
filed application may request early publication of the application under §
1.219 and may cite the resulting patent application publication in the file
of the patent on the later filed application under 35 U.S.C. 301 and §
1.501.
E. Miscellaneous
Comment 41: One comment suggested that the Office implement a rule
wherein claiming in a U.S. application priority to, or the benefit of, an
earlier application is considered an express consent by the applicant to
provide anyone the right to obtain a copy of the priority document from the
applicable patent office upon providing evidence of the U.S. application
and the priority claim to the earlier application at issue.
Response: The Office does not have jurisdiction to grant or deny access
to patent applications filed in other intellectual property offices. Access
to any patent application is determined by the national law of each country
and cannot be governed by the regulations of another intellectual property
office.
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Comment 42: One comment suggested that the proposed rules would be
clearer if the Office consistently used the terms "benefit claim" or
"priority claim" when using the term "claim" in the context of the
applicant asserting the benefit of an earlier priority date for a given
claimed invention in order to differentiate the exact same term for two
different purposes.
Response: The Office will endeavor to be consistent with the use of the
terms benefit claim and priority claim where it is necessary for clarity in
the rule.
Comment 43: One comment suggested retaining the provisions pertaining to
pre-AIA applications in the regulations so that the public is not required
to keep old copies of title 37 CFR for the next twenty years. The comment
also suggested changes to the structure of § 1.55 and § 1.78.
Response: The Office is retaining in the regulations the provisions
pertaining to pre-AIA applications (e.g., § 1.131) or modifying provisions
in the regulations such that they pertain to both or either AIA or pre-AIA
applications (e.g., §§ 1.104 and 1.110). Certain provisions apply to any
application filed on or after March 16, 2013, regardless of whether the
application is an AIA or pre-AIA application (e.g., §§ 1.55 and 1.78 apply
to any application filed on or after March 16, 2013). In this situation,
the regulations generally do not include provisions that apply only to
applications filed prior to March 16, 2013. The Office has simplified the
structure of §§ 1.55 and 1.78 and included paragraph headings for clarity.
Comment 44: Two comments requested that the Office take the opportunity
to clarify what is meant by "conflicting claims" in proposed § 1.78(e) as
the rule does not explicitly recite the standard. One comment suggested
that the standard should be that the claims are drawn to the same or
substantially the same invention (as required in a derivation proceeding
under the AIA or the pre-AIA interference provisions).
Response: The term "conflicting claims" in § 1.78 has been changed to
"patentably indistinct claims" in this final rule for clarity.
Comment 45: One comment suggested deleting the requirement set forth in
proposed § 1.55 to "identify foreign applications with the same subject
matter having a filing date before that of the application for which
priority is claimed" because this requirement appears unnecessarily
burdensome and there does not appear to be a need for this information to
determine foreign priority. One comment asserted that there is an
inconsistency between proposed § 1.78(c)(5), which does not permit cross
references to applications for which benefit is not claimed in an
application data sheet, and proposed § 1.55(a)(3), which permits the
identification of foreign application for which priority is claimed, as
well as any foreign application for the same subject matter having a filing
date before that of the application for which priority is claimed.
Response: The requirement to "identify foreign applications with the
same subject matter having a filing date before that of the application for
which priority is claimed" has been removed from § 1.55 in this final rule.
The Office also revised § 1.77 to indicate that cross-references to related
applications should appear in the specification (rather than in an
application data sheet).
Comment 46: One comment requested that the Office exercise its
regulatory authority to clarify what kind of grant qualifies as a joint
research agreement and what type of cooperative agreement which is not a
written contract qualifies as a joint research agreement for the purpose of
disqualifying prior art under AIA 35 U.S.C. 102(b)(2)(C) and (c). Another
comment suggested that the Office confirm an expansive or liberal
interpretation of what constitutes a joint research agreement, so that
entities who enter into collaborative agreements without formal written
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contracts drafted by legal experts can still rely on the provisions of AIA
35 U.S.C. 102(b)(2)(C).
Response: AIA 35 U.S.C. 100(h) defines what constitutes a joint research
agreement for purposes of AIA 35 U.S.C. 102. There was no substantive
change to the definition of joint research agreement under the AIA.
Comment 47: One comment requested that the Office provide a means for an
applicant to confidentially make of record any joint research agreement,
and require that only minimal disclosure of the parties involved in the
joint research agreement in the specification in accordance with proposed §
1.104. The comment further requested that the Office permit the amendment
of the specification pursuant to § 1.71(g)(1) regarding the parties
involved in the joint research agreement throughout examination and without
a fee because inventorship is necessarily an on-going determination
throughout examination.
Response: AIA 35 U.S.C. 102(c) does not require that a joint research
agreement be made of record in the application, but does require the
application to disclose or be amended to disclose the names of the parties
to the joint research agreement. The Office will not enter an amendment to
the specification regarding the parties involved in the joint research
agreement throughout examination without a fee because the fee simply
recovers the Office's costs of updating the record of the application.
Comment 48: One comment suggested that a listing of parties to a joint
research agreement be provided for in § 1.77, which concerns arrangement of
application elements.
Response: Section 1.77(b)(4) provides for the disclosure of names of
parties to a joint research agreement.
Comment 49: One comment requested that proposed § 1.104(c)(5)(i) and
(ii) specify that those sections apply to a claimed invention in an
application "pending" on or after December 10, 2004.
Response: Section 1.104 has been revised in this final rule to clearly
specify which applications and patents are entitled to the provisions of §
1.104(c)(5)(i) and (ii).
Comment 50: One comment suggested that references to a joint inventor be
added in proposed §§ 1.78(a)(2) and 1.110 when the term inventor is not
intended to apply to the entire inventive entity.
Response: Sections 1.78 and 1.110 as adopted in this final rule refer to
the inventor or a joint inventor as appropriate.
Comment 51: One comment requested that the Office explain why the
request for information regarding inventorship and ownership of the subject
matter of individual claims set forth in proposed § 1.110 is not provided
for in current § 1.105 (Requirements for Information).
Response: This specific provision was provided for in § 1.110 before §
1.105 was implemented and was retained for examination purposes.
Comment 52: One comment suggested that proposed § 1.78(e) would give the
Office the authority to require cancellation of claims and that the
cancellation of claims is substantive.
Response: Section 1.78(e) as adopted in this final rule does not
represent a change in Office practice. See former § 1.78(b) ("Where two or
more applications filed by the same applicant contain conflicting claims,
elimination of such claims from all but one application may be required in
the absence of good and sufficient reason for their retention during
pendency in more than one application").
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Comment 53: One comment suggested amending proposed § 1.131(b) to
provide an appropriate example to show conception of an invention with due
diligence.
Response: MPEP § 715 et seq. and the case law cited therein provide
guidance regarding conception of an invention and due diligence.
Comment 54: One comment suggested that the Office take the opportunity
to revise § 1.77(b) to separate out those items of information currently
required under separate headings in a patent application that are now going
to be tracked by the application data sheet (such as name, citizenship and
residence of applicant, related applications, federally sponsored joint
research, joint research agreements, and the proposed rule for prior
disclosures by or for an inventor under § 1.130). The comment further
suggested that since the timeline for filing the information required by
proposed § 1.77(b)(6) is not coextensive with the filing of the
application, the requirement to include this information in the patent
application seems out of place. The comment also suggested that keeping all
of this information tracked and published as part of the application data
sheet available on PAIR, or as part of the cover page of a patent or
published application, would keep the public informed in a more efficient
manner.
Response: The arrangement of the specification as set out in § 1.77 is a
suggested and preferred arrangement, but is not an arrangement that an
applicant is required to follow. In addition, information such as related
applications, federally sponsored joint research, joint research
agreements, and prior inventor disclosures are not provided for in an
application data sheet.
Comment 55: One comment suggested that the Office should avoid using old
rule numbers for new rules.
Response: In general, the Office avoids using old rule numbers. The
Office also prefers to group related rules together. In this instance,
there are no rule numbers available in the vicinity of §§ 1.130, 1.131, and
1.132. Furthermore, former § 1.130 has been rarely invoked. Thus, the
potential confusion from relocating the provisions of former § 1.130 to §
1.131 and using § 1.130 for AIA applications is minimal.
Comment 56: One comment requested that the Office provide a clear
definition in § 1.9 regarding what constitutes a divisional application.
Response: MPEP § 201.06 indicates that a divisional application is an
application for an independent or distinct invention, carved out of a
pending application and disclosing and claiming only subject matter
disclosed in the earlier or parent application. This definition of
divisional application located in the MPEP is adequate for current Office
proceedings.
Comment 57: One comment suggested that § 1.110 be revised to include the
phrase "or obligation to assign ownership" for completeness.
Response: Section 1.110 as adopted in this final rule includes the
phrase "or obligation to assign ownership."
Rulemaking Considerations
A. Administrative Procedure Act
The changes in this final rule do not change the substantive criteria of
patentability. These changes in this final rule involve rules of agency
practice and procedure and/or interpretive rules. See Bachow Commc'ns Inc.
v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application
process are procedural under the Administrative Procedure Act); Inova
Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for
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handling appeals were procedural where they did not change the substantive
standard for reviewing claims); Nat'l Org. of Veterans' Advocates v. Sec'y
of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that
clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See Cooper
Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that
5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require notice and
comment rulemaking for "interpretative rules, general statements of policy,
or rules of agency organization, procedure, or practice") (quoting 5 U.S.C.
553(b)(A)). The Office, however, published proposed changes and a
Regulatory Flexibility Act certification as it sought the benefit of the
public's views on the Office's proposed implementation of this provision of
the AIA.
One comment suggested that the Office's reliance upon Cooper
Technologies is misplaced and that the Federal Circuit's decision in Tafas
v. Kappos, 586 F.3d 1369 (Fed. Cir. 2009) (Tafas IV) requires notice and
comment for all Office rulemakings. The Federal Circuit in Tafas IV granted
the parties' request to dismiss the appeal in the Tafas litigation as moot
and denied GlaxoSmithKline's and the Office's request to vacate the
district court's decision in Tafas v. Dudas, 541 F. Supp. 2d 805 (E.D. Va.
2008) (Tafas II). The Federal Circuit in Tafas IV did not reach the merits
of the district court's decision in Tafas II and thus is not an
"affirmance" of that decision. Moreover, the Federal Circuit in Tafas IV
did not discuss its previous decision in Cooper Technologies. Thus, the
Federal Circuit's decision in Tafas IV cannot reasonably be viewed as
casting doubt on its prior statement in Cooper Technologies that 5 U.S.C.
553, and thus 35 U.S.C. 2(b)(2)(B), does not require notice and comment
rulemaking for "interpretative rules, general statements of policy, or
rules of agency organization, procedure, or practice." See Cooper Techs.,
536 F.3d at 1336-37; see also Mikkilineni v. Stoll, 410 Fed. Appx. 311, 313
(Fed. Cir. 2010) (Office's 2009 guidelines concerning 35 U.S.C. 101 are
interpretive, rather than substantive, and are thus exempt from the notice
and comment requirements of 5 U.S.C. 553). However, as discussed
previously, the Office published the proposed changes for comment as it
sought the benefit of the public's views on the Office's proposed
implementation of this provision of the AIA.
The comment also stated that the Office did not make the data
(statistics, mathematical or computer models, and assumptions, including
spreadsheets or other models that the Office uses to project growth and
future filing rates) relied upon in the notice of proposed rulemaking
publicly available in a rulemaking docket at the time of the notice of
proposed rulemaking so that the public had fair notice and a meaningful
opportunity to comment and challenge the data forming the basis for the
proposed changes in the notice of proposed rulemaking. The notice of
proposed rulemaking specified the legal authority under which the changes
were proposed, the basis and purpose of the proposed changes, the terms and
substance of the proposed rule changes, and a description of the subjects
and issues involved in the proposed changes. See Changes To Implement the
First Inventor To File Provisions of the Leahy-Smith America Invents Act,
77 FR at 43742-51. The Office relied upon the changes to the patent laws in
section 3 of the AIA as opposed to scientific or technical information or
data as the basis or reason for the proposed rule changes. The data
pertaining to the Regulatory Flexibility Act and Paperwork Reduction Act
discussion were from the Office's PALM system and the basis for the Office
estimates was stated in the Regulatory Flexibility Act and the Information
Collection Review submission to OMB (which was made available to the
public). See Changes To Implement the First Inventor To File Provisions of
the Leahy-Smith America Invents Act, 77 FR at 43752, and the proposed
information collection posted on OMB's Information Collection Review Web
page on July 27, 2012, at
http://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=201207-0651-008. The
Office relied predominately upon the changes to the patent laws in section
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3 of the AIA, and not these data and estimates published pursuant to the
Regulatory Flexibility Act and Paperwork Reduction Act, as the basis or
reason for the proposed changes or changes being adopted in this final
rule. The public was not deprived of fair notice or a meaningful
opportunity to comment and challenge any data forming the basis for the
proposed changes. Also, the issue of a meaningful opportunity to comment
and challenge data forming the basis for the proposed changes is relevant
only where there is a requirement for prior notice and opportunity for
public comment. As discussed previously, prior notice and opportunity for
public comment are not required pursuant to 5 U.S.C. 553(b) or (c) (or any
other law).
B. Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not required
pursuant to 5 U.S.C. 553 or any other law, neither a regulatory flexibility
analysis nor a certification under the Regulatory Flexibility Act (5 U.S.C.
601 et seq.) is required. See 5 U.S.C. 603.
Nevertheless, for the reasons set forth herein, the Deputy General
Counsel for General Law of the United States Patent and Trademark Office
has certified to the Chief Counsel for Advocacy of the Small Business
Administration that the changes in this final rule will not have a
significant economic impact on a substantial number of small entities. See
5 U.S.C. 605(b). As discussed previously, the Office is adopting the
following changes to address the examination issues raised by the changes
in section 3 of the AIA.
The Office is providing for the submission of affidavits or declarations
showing that: (1) A disclosure upon which a claim rejection is based was by
the inventor or joint inventor or by another who obtained the subject
matter disclosed directly or indirectly from the inventor or a joint
inventor; or (2) there was a prior public disclosure by the inventor or a
joint inventor or another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor of an
application. The requirements of these provisions are comparable to
requirements for affidavits and declarations under 37 CFR 1.132 for an
applicant to show that a prior art disclosure is the applicant's own work
(see case law cited in MPEP sections 716.10 and 2132.01) or that a
disclosure was derived from the applicant (see case law cited in MPEP
section 2137). The changes in this final rule will not result in additional
small entities being subject to the need to submit such an affidavit or
declaration.
The Office is also requiring that the certified copy of the foreign
application be filed within the later of four months from the actual filing
date of the application or sixteen months from the filing date of the prior
foreign application, except if: (1) The priority application was filed in a
participating foreign intellectual property office (or a copy of the
foreign application was filed in an application subsequently filed in a
participating foreign intellectual property office) and the Office either
receives a copy of the foreign application from the participating foreign
intellectual property office or a certified copy of the foreign application
within the pendency of the application and before the patent is granted; or
(2) the applicant provides an interim copy of the original foreign
application within the later of four months from the actual filing date of
the application or sixteen months from the filing date of the prior foreign
application, and files a certified copy of the foreign application within
the pendency of the application and before the patent is granted.
An applicant is currently required to file the certified copy of the
foreign application when deemed necessary by the examiner, but no later
than the date the patent is granted (see former 37 CFR 1.55(a)). The time
period of four months from the actual filing date of the application or
sixteen months from the filing date of the prior foreign application should
not have a significant economic impact as sixteen months from the filing
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date of the prior foreign application is the international norm for when
the certified copy of the foreign application needs to be filed in an
application (PCT Rule 17). In addition, this final rule permits applicants
to provide an interim copy of the original foreign application in the event
that the applicant cannot obtain a certified copy of the foreign
application from the foreign patent authority in time to file it within
four months from the actual filing date of the application or sixteen
months from the filing date of the prior foreign application. Based upon
the data in the Office's PALM system, 375,484 (103,976 small entity)
nonprovisional applications were filed in fiscal year (FY) 2012. Of these,
67,790 (8,371 small entity) nonprovisional applications claimed priority to
a foreign priority application, and 68,769 (15,541 small entity)
nonprovisional applications resulted from the entry of an international
application into the national stage.
The Office is also adopting the following requirement for a
nonprovisional application filed on or after March 16, 2013, that claims
priority to or the benefit of the filing date of an earlier application
(i.e., foreign, provisional, or nonprovisional application, or
international application designating the United States) filed prior to
March 16, 2013 (a transition application): If a transition application
contains, or contained at any time, a claim to a claimed invention that
has an effective filing date on or after March 16, 2013, the applicant must
provide a statement to that effect within the later of four months from the
actual filing date of the later-filed application, four months from the
date of entry into the national stage in an international application,
sixteen months from the filing date of the prior-filed application, or the
date that a first claim to a claimed invention that has an effective filing
date on or after March 16, 2013, is presented in the application. The
Office, however, is also providing that an applicant is not required to
provide such a statement if the applicant reasonably believes on the basis
of information already known to the individuals designated as having a duty
of disclosure with respect to the application that the transition
application does not, and did not at any time, contain a claim to a claimed
invention that has an effective filing date on or after March 16, 2013.
Thus, an applicant is not required to conduct any additional investigation
or analysis to determine the effective filing date of the claims in their
applications.
Based upon the data in the Office's PALM system, of the 375,484 (103,976
small entity) nonprovisional applications filed in FY 2012, 12,246 (7,079
small entity) nonprovisional applications were identified as
continuation-in-part applications; 59,819 (15,024 small entity)
nonprovisional applications were identified as continuation applications;
22,162 (5,246 small entity) nonprovisional applications were identified as
divisional applications; and 57,591 (28,200 small entity) nonprovisional
applications claimed the benefit of provisional application. As discussed
above, 67,790 (8,371 small entity) nonprovisional applications claimed
priority to a foreign priority application, and 68,769 (15,541 small
entity) nonprovisional applications resulted from the entry of an
international application into the national stage. The Office's experience
is that the majority of nonprovisional applications that claim priority to
or the benefit of the filing date of an earlier application do not disclose
or claim subject matter not also disclosed in the earlier application, but
the Office generally makes such determinations only when necessary to the
examination of the nonprovisional application. See, e.g., MPEP § 201.08
("Unless the filing date of the earlier nonprovisional application is
actually needed, for example, in the case of an interference or to overcome
a reference, there is no need for the Office to make a determination as to
whether the requirement of 35 U.S.C. 120, that the earlier nonprovisional
application discloses the invention of the second application in the manner
provided by the first paragraph of 35 U.S.C. 112, is met and whether a
substantial portion of all of the earlier nonprovisional application is
repeated in the second application in a continuation-in-part situation").
In addition, one comment indicated that the number of applicants who file
applications with claims directed to both pre-AIA and AIA subject matter
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would be miniscule. In any event, Office staff with experience and
expertise in a wide range of patent prosecution matters as patent
practitioners estimate that this will require, on average, an additional
two hours for a practitioner who drafted the later-filed application
(including the claims) and is familiar with the prior foreign, provisional,
or nonprovisional application.
Several comments questioned the statement in the notice of proposed
rulemaking that the changes proposed in the rulemaking will not have a
significant economic impact on a substantial number of small entities. One
comment questioned this statement on the basis that the conversion of the
U.S. patent system from a "first to invent" to a "first inventor to file"
system is arguably one of the most comprehensive overhauls of the U.S.
patent system since its inception. Another comment also cited statements by
the AIA's legislative sponsors and Administration officials and several
articles concerning the first inventor to file system, and argued that the
Office in its implementation of the first inventor to file system has
ignored a number of economic effects, such as: (1) Loss of access to
investment capital; (2) diversion of inventor time into patent
applications; (3) weaker patent protection due to hasty filing; (4) higher
patent prosecution costs due to a hastily-prepared initial application; (5)
higher abandonment rates; and (6) changes in ways of doing business. One
comment questioned this statement on the basis of the translation costs
that will result from the statement required by 37 CFR 1.55.
Section 3 of the AIA amends the patent laws pertaining to the conditions
of patentability to convert the U.S. patent system from a "first to invent"
system to a "first inventor to file" system. This final rule does not
convert the U.S. patent system from a "first to invent" to a "first
inventor to file" system (i.e., the U.S. patent system converts from a
"first to invent" to a "first inventor to file" system by operation of
section 3 of the AIA, regardless of the changes that are adopted in this
final rule) or even introduce the conditions of patentability as provided
for in section 3 of the AIA into the rules of practice. This final rule
merely revises the rules of practice in patent cases for consistency with,
and to address the examination issues raised by, the changes in section 3
of the AIA. Thus, the discussions of the significance or impacts of section
3 of the AIA by the AIA's legislative sponsors and Administration
officials, in articles concerning the first inventor to file system, and in
the discussions in the comment relating to the impacts of the adoption of a
first inventor to file system pertain to the changes to the conditions of
patentability provided for in section 3 of the AIA and are not pertinent to
the changes being adopted in this final rule. This final rule: (1) Requires
applicants to provide a statement if a nonprovisional application filed on
or after March 16, 2013, claims priority to or the benefit of the filing
date of an earlier application (i.e., foreign, provisional, or
nonprovisional application, or an international application designating the
United States of America), filed prior to March 16, 2013, and also
contains, or contained at any time, a claim to a claimed invention that has
an effective filing date on or after March 16, 2013; (2) provides that an
applicant may be required to identify the inventorship and ownership or
obligation to assign ownership, of each claimed invention on its effective
filing date or on its date of invention, as applicable, in an application
or patent with more than one named joint inventor, when necessary for
purposes of an Office proceeding; and (3) provides a mechanism for an
applicant to show that a disclosure was by the inventor or joint inventor,
or was by another who obtained the subject matter from the inventor or a
joint inventor, or that there was a prior public disclosure by the inventor
or a joint inventor, or by another who obtained the subject matter from the
inventor or a joint inventor. For the reasons discussed previously, the
changes that are being adopted in this final rule will not have a
significant economic impact on a substantial number of small entities.
The change to 37 CFR 1.55 will not result in translation costs for
applicants that would not otherwise exist for applicants claiming priority
to a non-English-language application. Initially, a nonprovisional
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application claiming priority to a foreign application could not be
competently prepared without an understanding of the subject matter
disclosed in the foreign application, as a claim in a nonprovisional is
entitled to the benefit of a foreign priority date only if the foreign
application supports the claims in the manner required by 35 U.S.C. 112(a).
See In re Gosteli, 872 F.2d 1008 (Fed. Cir. 1989). Thus, it is not clear
how this requirement would result in the need for translations not
otherwise necessary to competently prepare a nonprovisional application
that claims priority to a foreign application. Nevertheless, the changes to
37 CFR 1.55 will not increase translation costs over what these costs would
be in the absence of such a requirement. Pre-existing 35 U.S.C. 119(b)(3)
and 37 CFR 1.55 provide that the Office may require a translation of any
non-English-language priority application when deemed necessary by the
examiner. The examiner would need to require a translation in all
nonprovisional applications filed on or after March 16, 2013, that claim
priority to a non-English-language application that was filed prior to
March 16, 2013, to determine whether AIA or pre-AIA 35 U.S.C. 102 and 103
apply to the application in the absence of information from the applicant.
In addition, it should be noted that a small business concern for
purposes of Regulatory Flexibility Act analysis is a business or other
concern that: (1) Meets the SBA's definition of a "business concern or
concern" set forth in 13 CFR 121.105; and (2) meets the size standards set
forth in 13 CFR 121.802 for the purpose of paying reduced patent fees. See
Business Size Standard for Purposes of United States Patent and Trademark
Office Regulatory Flexibility Analysis for Patent-Related Regulations, 71
FR 67109, 67112 (Nov. 20, 2006). 13 CFR 121.105 defines a business or other
concern as a business entity organized for profit, with a place of business
located in the United States, and which operates primarily within the
United States or which makes a significant contribution to the U.S. economy
through payment of taxes or use of American products, materials, or labor.
See 37 CFR 121.105(a)(1).
Accordingly, the changes in this final rule will not have a significant
economic impact on a substantial number of small entities.
C. Executive Order 12866 (Regulatory Planning and Review
This rulemaking has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993). Several comments suggested that
this rulemaking should be designated as "economically significant" under
Executive Order 12866. The comments argued that the notice of proposed
rulemaking indicates that the paperwork burden alone would be over
$100,000,000 per year. One comment (discussed previously) also cited
statements by the AIA's legislative sponsors and Administration officials
and several articles concerning the first inventor to file system, and
argued that the first inventor to file system will result in: (1) Loss of
access to investment capital; (2) diversion of inventor time into patent
applications; (3) weaker patent protection due to hasty filing; (4) higher
patent prosecution costs due to a hastily prepared initial application; (5)
higher abandonment rates; and (6) changes in ways of doing business.
The notice of proposed rulemaking indicated that this rulemaking has
been determined to be significant for purposes of Executive Order 12866,
but that this rulemaking is not economically significant as that term is
defined in Executive Order 12866. See Changes To Implement the First
Inventor To File Provisions of the Leahy-Smith America Invents Act, 77 FR
at 43743 ("This rulemaking is not economically significant as that term is
defined in Executive Order 12866"), and 43752 ("This rulemaking has been
determined to be significant for purposes of Executive Order 12866").
The Paperwork Reduction Act information provided with the notice of
proposed rulemaking indicated that the majority of the burden hour costs
pertain to affidavits and declarations under 37 CFR 1.131 and 1.132, which
are provided for in pre-existing regulations to overcome rejections under
pre-AIA 35 U.S.C. 102 and 103. See Changes To Implement the First Inventor
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To File Provisions of the Leahy-Smith America Invents Act, 77 FR at 43753
("[t]he collection of information submitted to OMB under OMB control number
0651-00xx also includes information collections (e.g., affidavits and
declarations under 37 CFR 1.130, 1.131, and 1.132) previously approved and
currently being reviewed under OMB control number 0651-0031"). While the
Office is providing for the filing of affidavits and declarations under AIA
35 U.S.C. 102(b) in new 37 CFR 1.130, the change from pre-AIA 35 U.S.C. 102
to AIA 35 U.S.C. 102 will not result in an increase in affidavits and
declarations under 37 CFR 1.130, 1.131 and 1.132. Rather, the change from
pre-AIA 35 U.S.C. 102 to AIA 35 U.S.C. 102 should result in a decrease in
such affidavits and declarations as well as a decrease in the burden hours
associated with such affidavits and declarations. In any event, there are
no instances in which an applicant needs to file an affidavit and
declaration under 37 CFR 1.130 in an AIA application where the applicant
would not have needed to file an affidavit and declaration under 37 CFR
1.131 or under 37 CFR 1.132 in the same situation in a pre-AIA application.
Moreover, the information required for an affidavit and declaration under
37 CFR 1.130 in an AIA application to show that a disclosure is the
inventor's own work or a prior disclosure of inventor's own work is
significantly less than the proofs required to show prior invention in a
pre-AIA application. Also, the requirement for a statement in certain
applications claiming priority to or the benefit of a prior foreign,
provisional, or nonprovisional application, or international application
designating the United States of America, will not be an "annual" impact. A
nonprovisional application claiming priority to or the benefit of a foreign
or provisional application must be filed not later than twelve months from
the filing date of the foreign or provisional application. See 35 U.S.C.
119(a) and (e). Thus, a statement should not be required in any application
filed after March 16, 2014, unless the application is itself a
continuation-in-part application. In any event, to avoid underestimating
the respondent estimate for this requirement, the Paperwork Reduction Act
estimate is based upon all applications filed in a fiscal year that claim
priority to or the benefit of a prior foreign, provisional, or
nonprovisional application, or international application designating the
United States of America. The statement, however, is not required unless
the application actually claims an invention with an effective filing date
on or after March 16, 2013. Thus, the Paperwork Reduction Act burden hour
cost estimates pertaining to these statements overestimate the actual
impact of this requirement.
Finally, as discussed previously, this final rule does not convert the
U.S. patent system from a "first to invent" to a "first inventor to file"
system. The U.S. patent system converts from a "first to invent" to a
"first inventor to file" system by operation of section 3 of the AIA
regardless of the changes that are adopted in this final rule. This final
rule merely revises the rules of practice in patent cases for consistency
with, and to address the examination issues raised by, the changes in
section 3 of the AIA. Thus, the discussions of the significance or impact
of section 3 of the AIA by the AIA's legislative sponsors and
Administration officials, in articles concerning the first inventor to file
system, and in the discussion in the comment relating to the impacts of the
adoption of a first inventor to file system pertain to the changes in
section 3 of the AIA per se and not to the changes being adopted in this
final rule.
D. Executive Order 13563 (Improving Regulation and Regulatory Review)
The Office has complied with Executive Order 13563. Specifically, the
Office has, to the extent feasible and applicable: (1) Made a reasoned
determination that the benefits justify the costs of the rule; (2) tailored
the rule to impose the least burden on society consistent with obtaining
the regulatory objectives; (3) selected a regulatory approach that
maximizes net benefits; (4) specified performance objectives; (5)
identified and assessed available alternatives; (6) involved the public in
an open exchange of information and perspectives among experts in relevant
disciplines, affected stakeholders in the private sector, and the public as
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a whole, and provided on-line access to the rulemaking docket; (7)
attempted to promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote innovation;
(8) considered approaches that reduce burdens and maintain flexibility and
freedom of choice for the public; and (9) ensured the objectivity of
scientific and technological information and processes.
E. Executive Order 13132 (Federalism)
This rulemaking does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 13132 (Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation)
This rulemaking will not: (1) Have substantial direct effects on one or
more Indian tribes; (2) impose substantial direct compliance costs on
Indian tribal governments; or (3) preempt tribal law. Therefore, a tribal
summary impact statement is not required under Executive Order 13175 (Nov.
6, 2000).
G. Executive Order 13211 (Energy Effects)
This rulemaking is not a significant energy action under Executive Order
13211 because this rulemaking is not likely to have a significant adverse
effect on the supply, distribution, or use of energy. Therefore, a
Statement of Energy Effects is not required under Executive Order 13211
(May 18, 2001).
H. Executive Order 12988 (Civil Justice Reform)
This rulemaking meets applicable standards to minimize litigation,
eliminate ambiguity, and reduce burden as set forth in sections 3(a) and
3(b)(2) of Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children)
This rulemaking does not concern an environmental risk to health or
safety that may disproportionately affect children under Executive Order
13045 (Apr. 21, 1997).
J. Executive Order 12630 (Taking of Private Property)
This rulemaking will not effect a taking of private property or
otherwise have taking implications under Executive Order 12630 (Mar. 15,
1988).
K. Congressional Review Act
Under the Congressional Review Act provisions of the Small Business
Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801 et seq.), prior
to issuing any final rule, the United States Patent and Trademark Office
will submit a report containing the final rule and other required
information to the United States Senate, the United States House of
Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this notice are not expected to
result in an annual effect on the economy of 100 million dollars or more, a
major increase in costs or prices, or significant adverse effects on
competition, employment, investment, productivity, innovation, or the
ability of United States-based enterprises to compete with foreign-based
enterprises in domestic and export markets. Therefore, this notice is not
expected to result in a "major rule" as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995
The changes set forth in this notice do not involve a Federal
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intergovernmental mandate that will result in the expenditure by State,
local, and tribal governments, in the aggregate, of 100 million dollars (as
adjusted) or more in any one year, or a Federal private sector mandate that
will result in the expenditure by the private sector of 100 million dollars
(as adjusted) or more in any one year, and will not significantly or
uniquely affect small governments. Therefore, no actions are necessary
under the provisions of the Unfunded Mandates Reform Act of 1995. See 2
U.S.C. 1501 et seq.
M. National Environmental Policy Act
This rulemaking will not have any effect on the quality of the
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act
The requirements of section 12(d) of the National Technology Transfer
and Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act
The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.) requires
that the Office consider the impact of paperwork and other information
collection burdens imposed on the public. This rulemaking involves
information collection requirements which are subject to review by the
Office of Management and Budget (OMB) under the Paperwork Reduction Act of
1995 (44 U.S.C. 3501-3549). The collection of information involved in this
notice was submitted to OMB for its review and approval when the notice of
proposed rulemaking was published, and was reviewed and preapproved by OMB
under OMB control number 0651-0071 on September 12, 2012. The collection of
information submitted to OMB also included an information collection (i.e.,
affidavits and declarations under 37 CFR 1.130, 1.131, and 1.132)
previously approved and currently being reviewed under OMB control number
0651-0031. The proposed collection is available at OMB's Information
Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
The Office also published the title, description, and respondent
description of the information collection, with an estimate of the annual
reporting burdens, in the notice of proposed rulemaking, and indicated that
any comments on this information must be submitted by September 24, 2012.
See Changes To Implement the First Inventor To File Provisions of the
Leahy-Smith America Invents Act, 77 FR at 43753-54. The Office received a
comment on the proposed information collection suggesting that the notice
of proposed rulemaking fails to comply with numerous provisions of the
Paperwork Reduction Act. The comment specifically suggested that: (1) The
Office did not submit a proposed information collection for the notice of
proposed rulemaking and the information provided in the notice of proposed
rulemaking does not supply transparent specific burden estimates (e.g.,
number of responses, hours per response, hourly rate, and the underlying
objective support), to permit public comment; (2) the notice of proposed
rulemaking has immense ripple effects in the information to be collected
under OMB control numbers 0651-0031 (patent processing, updating) and
0651-0032 (initial applications) as the number of newly filed patent
applications is almost certain to increase due to the ripple effects of
the AIA, and requires "extensive" "adjusting [of] the existing ways to
comply with any previously applicable instructions and requirements;" and
(3) the Office is creating new collections of information rather than
updating existing OMB information collections under control numbers OMB
0651-0031 and 0651-0032.
The Office submitted a proposed information collection for the notice of
proposed rulemaking providing the specific burden estimates (e.g., number
of responses, hours per response, hourly rate) for each individual
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information collection item and the Office's basis for these estimates. The
proposed information collection was posted on OMB's Information Collection
Review Web page on July 27, 2012 (at
http://www.reginfo.gov/public/do/PRAViewICR?ref_nbr=201207-0651-008).
The collection of information submitted to OMB with the notice of
proposed rulemaking pertains to the impact resulting from the changes being
proposed by the Office in this rulemaking. The changes in this rulemaking
have no impact on the information to be collected under OMB control numbers
0651-0031 (patent processing, updating) and 0651-0032 (initial
applications). As discussed previously, this final rule does not convert
the U.S. patent system from a "first to invent" to a "first inventor to
file" system. The U.S. patent system converts from a "first to invent" to a
"first inventor to file" system by operation of section 3 of the AIA
regardless of the changes that are adopted in this final rule. Section 3 of
the AIA amends the patent laws pertaining to the conditions of
patentability to convert the U.S. patent system from a "first to invent"
system to a "first inventor to file" system. This final rule merely revises
the rules of practice in patent cases for consistency with, and to address
the examination issues raised by, the changes in section 3 of the AIA. The
changes being adopted in this final rule do not require any "extensive"
"adjusting [of] the existing ways to comply with any previously applicable
instructions and requirements."
Finally, the Paperwork Reduction Act does not prohibit the creation of a
new collection of information (rather than updating existing OMB
information collections) to implement a new program. Creation of a new
collection of information for review and approval by OMB when implementing
a new program having Paperwork Reduction Act implications is an option for
agencies to use at their discretion.
This final rule contains provisions for applicants to: (1) Provide a
statement if a nonprovisional application filed on or after March 16, 2013,
claims priority to or the benefit of the filing date of an earlier
application (i.e., foreign, provisional, or nonprovisional application, or
an international application designating the United States of America),
filed prior to March 16, 2013, and also contains, or contained at any time,
a claim to a claimed invention that has an effective filing date on or
after March 16, 2013; (2) identify the inventorship and ownership or
obligation to assign ownership, of each claimed invention on its effective
filing date or on its date of invention, as applicable, in an application
or patent with more than one named joint inventor, when necessary for
purposes of an Office proceeding; and (3) show that a disclosure was by the
inventor or joint inventor, or was by another who obtained the subject
matter from the inventor or a joint inventor, or that there was a prior
public disclosure by the inventor or a joint inventor, or by another who
obtained the subject matter from the inventor or a joint inventor.
The Office will use the statement that a nonprovisional application
filed on or after March 16, 2013, that claims priority to or the benefit of
the filing date of an earlier application (i.e., foreign, provisional, or
nonprovisional application, or international application designating the
United States of America), filed prior to March 16, 2013, contains, or
contained at any time, a claim to a claimed invention that has an effective
filing date on or after March 16, 2013, to readily determine whether the
nonprovisional application is subject to the changes to 35 U.S.C. 102 and
103 in the AIA. The Office will use the identification of the inventorship
and ownership or obligation to assign ownership, of each claimed invention
on its effective filing date (as defined in 37 CFR 1.109), or on its date
of invention, as applicable, when it is necessary to determine whether a
U.S. patent or U.S. patent application publication resulting from another
nonprovisional application qualifies as prior art under AIA 35 U.S.C.
102(a)(2) or pre-AIA 35 U.S.C. 102(e). The Office will use information
concerning whether a disclosure was by the inventor or joint inventor, or
was by another who obtained the subject matter from the inventor or a joint
inventor, or that there was a prior public disclosure by the inventor or a
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joint inventor, or by another who obtained the subject matter from the
inventor or a joint inventor, to determine whether the disclosure qualifies
as prior art under AIA 35 U.S.C. 102(a)(1) or (a)(2).
The Office is not resubmitting the proposed information collection
requirements under 0651-0071 to OMB. The Office will accept OMB's September
12, 2012 preapproval. The proposed information collection requirements
under 0651-0071 remain available at the OMB's Information Collection Review
Web site (www.reginfo.gov/public/do/PRAMain).
Notwithstanding any other provision of law, no person is required to
respond to, nor shall a person be subject to a penalty for failure to
comply with, a collection of information subject to the requirements of the
Paperwork Reduction Act, unless that collection of information displays a
currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of information,
Inventions and patents, Reporting and recordkeeping requirements, Small
businesses.
For the reasons stated in the preamble, the 37 CFR part 1 is amended as
follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR part 1 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.9 is amended by adding paragraphs (d), (e), and (f) to read as
follows:
§ 1.9 Definitions.
* * * * *
(d)(1) The term inventor or inventorship as used in this chapter means
the individual or, if a joint invention, the individuals collectively who
invented or discovered the subject matter of the invention.
(2) The term joint inventor or coinventor as used in this chapter means
any one of the individuals who invented or discovered the subject matter of
a joint invention.
(e) The term joint research agreement as used in this chapter means a
written contract, grant, or cooperative agreement entered into by two or
more persons or entities for the performance of experimental,
developmental, or research work in the field of the claimed invention.
(f) The term claimed invention as used in this chapter means the subject
matter defined by a claim in a patent or an application for a patent.
* * * * *
3. Section 1.14 is amended by revising paragraph (f) to read as follows:
§ 1.14 Patent applications preserved in confidence.
* * * * *
(f) Notice to inventor of the filing of an application. The Office may
publish notice in the Official Gazette as to the filing of an application
on behalf of an inventor by a person who otherwise shows sufficient
proprietary interest in the matter.
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* * * * *
4. Section 1.17 is amended by revising paragraphs (g) and (i) and removing
and reserving paragraphs (n) and (o).
The revisions read as follows:
§ 1.17 Patent application and reexamination processing fees.
* * * * *
(g) For filing a petition under one of the following sections which
refers to this paragraph: $200.00
§ 1.12--for access to an assignment record.
§ 1.14--for access to an application.
§ 1.46--for filing an application on behalf of an inventor by a person
who otherwise shows sufficient proprietary interest in the matter.
§ 1.55(f)--for filing a belated certified copy of a foreign application.
§ 1.59--for expungement of information.
§ 1.103(a)--to suspend action in an application.
§ 1.136(b)--for review of a request for extension of time when the
provisions of § 1.136(a) are not available.
§ 1.377--for review of decision refusing to accept and record payment of
a maintenance fee filed prior to expiration of a patent.
§ 1.550(c)--for patent owner requests for extension of time in ex parte
reexamination proceedings.
§ 1.956--for patent owner requests for extension of time in inter partes
reexamination proceedings.
§ 5.12--for expedited handling of a foreign filing license.
§ 5.15--for changing the scope of a license.
§ 5.25--for retroactive license.
* * * * *
(i) Processing fee for taking action under one of the following sections
which refers to this paragraph: $130.00
§ 1.28(c)(3)--for processing a non-itemized fee deficiency based on an
error in small entity status.
§ 1.41(b)--for supplying the name or names of the inventor or joint
inventors in an application without either an application data sheet or the
inventor's oath or declaration, except in provisional applications.
§ 1.48--for correcting inventorship, except in provisional applications.
§ 1.52(d)--for processing a nonprovisional application filed with a
specification in a language other than English.
§ 1.53(c)(3)--to convert a provisional application filed under § 1.53(c)
into a nonprovisional application under § 1.53(b).
§ 1.55--for entry of a priority claim or certified copy of a foreign
application after payment of the issue fee.
§ 1.71(g)(2)--for processing a belated amendment under § 1.71(g).
§ 1.103(b)--for requesting limited suspension of action, prosecution
application for a design patent (§ 1.53(d)).
§ 1.103(c)--for requesting limited suspension of action, request for
continued examination (§ 1.114).
§ 1.103(d)--for requesting deferred examination of an application.
§ 1.217--for processing a redacted copy of a paper submitted in the file
of an application in which a redacted copy was submitted for the patent
application publication.
§ 1.221--for requesting voluntary publication or republication of an
application.
§ 1.291(c)(5)--for processing a second or subsequent protest by the same
real party in interest.
§ 3.81--for a patent to issue to assignee, assignment submitted after
payment of the issue fee.
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* * * * *
5. Section 1.53 is amended by:
a. Revising paragraphs (b) introductory text and (c)(2)(ii) and (iii);
b. Removing paragraph (c)(2)(iv);
c. Revising paragraph (c)(4); and]
d. Removing paragraph (j).
The revisions read as follows:
§ 1.53 Application number, filing date, and completion of application.
* * * * *
(b) Application filing requirements--Nonprovisional application. The
filing date of an application for patent filed under this section, except
for a provisional application under paragraph (c) of this section or a
continued prosecution application under paragraph (d) of this section, is
the date on which a specification as prescribed by 35 U.S.C. 112 containing
a description pursuant to § 1.71 and at least one claim pursuant to § 1.75,
and any drawing required by § 1.81(a) are filed in the Patent and Trademark
Office. No new matter may be introduced into an application after its
filing date. A continuing application, which may be a continuation,
divisional, or continuation-in-part application, may be filed under the
conditions specified in 35 U.S.C. 120, 121, or 365(c) and § 1.78(c) and
(d).
* * * * *
(c) * * *
(2) * * *
(ii) Payment of the issue fee on the application filed under paragraph
(b) of this section; or
(iii) Expiration of twelve months after the filing date of the
application filed under paragraph (b) of this section.
* * * * *
(4) A provisional application is not entitled to the right of priority
under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier
filing date under 35 U.S.C. 120, 121, or 365(c) or § 1.78 of any other
application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a) may
be made in a design application based on a provisional application. The
requirements of §§ 1.821 through 1.825 regarding application disclosures
containing nucleotide and/or amino acid sequences are not mandatory for
provisional applications.
* * * * *
6. Section 1.55 is revised to read as follows:
§ 1.55 Claim for foreign priority.
(a) In general. An applicant in a nonprovisional application may claim
priority to one or more prior foreign applications under the conditions
specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b)
and this section.
(b) Time for filing subsequent application. The nonprovisional
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application must be filed not later than twelve months (six months in the
case of a design application) after the date on which the foreign
application was filed, or be entitled to claim the benefit under 35 U.S.C.
120, 121, or 365(c) of an application that was filed not later than twelve
months (six months in the case of a design application) after the date on
which the foreign application was filed. The twelve-month period is subject
to 35 U.S.C. 21(b) (and § 1.7(a)) and PCT Rule 80.5, and the six-month
period is subject to 35 U.S.C. 21(b) (and § 1.7(a)).
(c) Time for filing priority claim and certified copy of foreign
application in an application entering the national stage under 35 U.S.C.
371. In an international application entering the national stage under 35
U.S.C., the claim for priority must be made and a certified copy of the
foreign application must be filed within the time limit set forth in the
PCT and the Regulations under the PCT.
(d) Time for filing priority claim in an application filed under 35
U.S.C. 111(a). In an original application filed under 35 U.S.C. 111(a), the
claim for priority must be filed within the later of four months from the
actual filing date of the application or sixteen months from the filing
date of the prior foreign application. The claim for priority must be
presented in an application data sheet (§ 1.76(b)(6)), and must identify
the foreign application for which priority is claimed, by specifying the
application number, country (or intellectual property authority), day,
month, and year of its filing. The time period in this paragraph does not
apply in a design application.
(e) Delayed priority claim in an application filed under 35 U.S.C.
111(a). Unless such claim is accepted in accordance with the provisions of
this paragraph, any claim for priority under 35 U.S.C. 119(a) through (d)
or (f) or 365(a) in an original application filed under 35 U.S.C. 111(a)
not presented in an application data sheet (§ 1.76(b)(6)) within the time
period provided by paragraph (d) of this section is considered to have been
waived. If a claim for priority is presented after the time period provided
by paragraph (d) of this section, the claim may be accepted if the priority
claim was unintentionally delayed. A petition to accept a delayed claim for
priority under 35 U.S.C. 119(a) through (d) or (f) or 365(a) must be
accompanied by:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f) or
365(a) in an application data sheet (§ 1.76(b)(6)), identifying the
foreign application for which priority is claimed, by specifying the
application number, country (or intellectual property authority), day,
month, and year of its filing, unless previously submitted;
(2) A certified copy of the foreign application if required by
paragraph (f) of this section, unless previously submitted;
(3) The surcharge set forth in § 1.17(t); and
(4) A statement that the entire delay between the date the priority
claim was due under paragraph (d) of this section and the date the
priority claim was filed was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional.
(f) Time for filing certified copy of foreign application in an
application filed under 35 U.S.C. 111(a). In an original application filed
under 35 U.S.C. 111(a), a certified copy of the foreign application must be
filed within the later of four months from the actual filing date of the
application or sixteen months from the filing date of the prior foreign
application, except as provided in paragraphs (h) and (i) of this section.
If a certified copy of the foreign application is not filed within the
later of four months from the actual filing date of the application or
sixteen months from the filing date of the prior foreign application, and
the exceptions in paragraphs (h) and (i) of this section are not
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applicable, the certified copy of the foreign application must be
accompanied by a petition including a showing of good and sufficient cause
for the delay and the petition fee set forth in § 1.17(g). The time period
in this paragraph does not apply in a design application.
(g) Requirement for filing priority claim, certified copy of foreign
application, and translation in any application. (1) The claim for priority
and the certified copy of the foreign application specified in 35 U.S.C.
119(b) or PCT Rule 17 must, in any event, be filed within the pendency of
the application and before the patent is granted. If the claim for priority
or the certified copy of the foreign application is filed after the date
the issue fee is paid, it must also be accompanied by the processing fee
set forth in § 1.17(i), but the patent will not include the priority claim
unless corrected by a certificate of correction under 35 U.S.C. 255 and §
1.323.
(2) The Office may require that the claim for priority and the certified
copy of the foreign application be filed earlier than otherwise provided in
this section:
(i) When the application is involved in an interference (see § 41.202
of this title) or derivation (see part 42 of this title) proceeding;
(ii) When necessary to overcome the date of a reference relied upon
by the examiner; or
(iii) When deemed necessary by the examiner.
(3) An English language translation of a non-English language foreign
application is not required except:
(i) When the application is involved in an interference (see § 41.202
of this title) or derivation (see part 42 of this title) proceeding;
(ii) When necessary to overcome the date of a reference relied upon
by the examiner; or
(iii) When specifically required by the examiner.
(4) If an English language translation of a non-English language foreign
application is required, it must be filed together with a statement that
the translation of the certified copy is accurate.
(h) Foreign intellectual property office participating in a priority
document exchange agreement. The requirement in paragraphs (c), (f), and
(g) for a certified copy of the foreign application to be filed within the
time limit set forth therein will be considered satisfied if:
(1) The foreign application was filed in a foreign intellectual property
office participating with the Office in a bilateral or multilateral
priority document exchange agreement (participating foreign intellectual
property office), or a copy of the foreign application was filed in an
application subsequently filed in a participating foreign intellectual
property office that permits the Office to obtain such a copy;
(2) The claim for priority is presented in an application data sheet (§
1.76(b)(6)), identifying the foreign application for which priority is
claimed, by specifying the application number, country (or intellectual
property authority), day, month, and year of its filing, and the applicant
provides the information necessary for the participating foreign
intellectual property office to provide the Office with access to the
foreign application;
(3) The copy of the foreign application is received by the Office from
the participating foreign intellectual property office, or a certified copy
of the foreign application is filed, within the period specified in
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paragraph (g)(1) of this section; and
(4) The applicant files a request in a separate document that the Office
obtain a copy of the foreign application from a participating intellectual
property office that permits the Office to obtain such a copy if the
foreign application was not filed in a participating foreign intellectual
property office but a copy of the foreign application was filed in an
application subsequently filed in a participating foreign intellectual
property office that permits the Office to obtain such a copy. The request
must identify the participating intellectual property office and the
subsequent application by the application number, day, month, and year of
its filing in which a copy of the foreign application was filed. The
request must be filed within the later of sixteen months from the filing
date of the prior foreign application or four months from the actual filing
date of an application under 35 U.S.C. 111(a), within four months from the
later of the date of commencement (§ 1.491(a)) or the date of the initial
submission under 35 U.S.C. 371 in an application entering the national
stage under 35 U.S.C. 371, or with a petition under paragraph (e) of this
section.
(i) Interim copy. The requirement in paragraph (f) for a certified copy
of the foreign application to be filed within the time limit set forth
therein will be considered satisfied if:
(1) A copy of the original foreign application clearly labeled as
"Interim Copy," including the specification, and any drawings or claims
upon which it is based, is filed in the Office together with a separate
cover sheet identifying the foreign application by specifying the
application number, country (or intellectual property authority), day,
month, and year of its filing, and stating that the copy filed in the
Office is a true copy of the original application as filed in the foreign
country (or intellectual property authority);
(2) The copy of the foreign application and separate cover sheet is
filed within the later of sixteen months from the filing date of the prior
foreign application or four months from the actual filing date of an
application under 35 U.S.C. 111(a), or with a petition under paragraph (e)
of this section; and
(3) A certified copy of the foreign application is filed within the
period specified in paragraph (g)(1) of this section.
(j) Requirements for certain applications filed on or after March 16,
2013. If a nonprovisional application filed on or after March 16, 2013,
claims priority to a foreign application filed prior to March 16, 2013, and
also contains, or contained at any time, a claim to a claimed invention
that has an effective filing date on or after March 16, 2013, the applicant
must provide a statement to that effect within the later of four months
from the actual filing date of the nonprovisional application, four months
from the date of entry into the national stage as set forth in § 1.491 in
an international application, sixteen months from the filing date of the
prior-filed foreign application, or the date that a first claim to a
claimed invention that has an effective filing date on or after March 16,
2013, is presented in the nonprovisional application. An applicant is not
required to provide such a statement if the applicant reasonably believes
on the basis of information already known to the individuals designated in
§ 1.56(c) that the nonprovisional application does not, and did not at any
time, contain a claim to a claimed invention that has an effective filing
date on or after March 16, 2013.
(k) Inventor's certificates. An applicant in a nonprovisional
application may under certain circumstances claim priority on the basis of
one or more applications for an inventor's certificate in a country
granting both inventor's certificates and patents. To claim the right of
priority on the basis of an application for an inventor's certificate in
such a country under 35 U.S.C. 119(d), the applicant when submitting a
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claim for such right as specified in this section, must include an
affidavit or declaration. The affidavit or declaration must include a
specific statement that, upon an investigation, he or she is satisfied that
to the best of his or her knowledge, the applicant, when filing the
application for the inventor's certificate, had the option to file an
application for either a patent or an inventor's certificate as to the
subject matter of the identified claim or claims forming the basis for the
claim of priority.
(l) Time periods not extendable. The time periods set forth in this
section are not extendable.
7. Section 1.71 is amended by revising paragraph (g)(1) to read as
follows:
§ 1.71 Detailed description and specification of the invention.
* * * * *
(g)(1) The specification may disclose or be amended to disclose the
names of the parties to a joint research agreement as defined in § 1.9(e).
* * * * *
8. Section 1.76 is amended by revising paragraphs (b)(5) and (6) to read as
follows:
§ 1.76 Application data sheet.
* * * * *
(b) * * *
(5) Domestic benefit information. This information includes the
application number, the filing date, the status (including patent number if
available), and relationship of each application for which a benefit is
claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). Providing this
information in the application data sheet constitutes the specific reference
required by 35 U.S.C. 119(e) or 120, and § 1.78.
(6) Foreign priority information. This information includes the
application number, country, and filing date of each foreign application
for which priority is claimed. Providing this information in the
application data sheet constitutes the claim for priority as required by 35
U.S.C. 119(b) and § 1.55.
* * * * *
9. Section 1.77 is amended by revising paragraph (b)(2), redesignating
paragraphs (b)(6) through (12) as paragraphs (b)(7) through (13), and
adding a new paragraph (b)(6) to read as follows:
§ 1.77 Arrangement of application elements.
* * * * *
(b) * * *
(2) Cross-reference to related applications.
* * * * *
(6) Statement regarding prior disclosures by the inventor or a joint
inventor.
* * * * *
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10. Section 1.78 is revised to read as follows:
§ 1.78 Claiming benefit of earlier filing date and cross-references to
other applications.
(a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application. An applicant in a nonprovisional application,
other than for a design patent, or an international application designating
the United States of America may claim the benefit of one or more
prior-filed provisional applications under the conditions set forth in 35
U.S.C. 119(e) and this section.
(1) The nonprovisional application or international application
designating the United States of America must be filed not later than
twelve months after the date on which the provisional application was
filed, or be entitled to claim the benefit under 35 U.S.C. 120, 121, or
365(c) of an application that was filed not later than twelve months after
the date on which the provisional application was filed. This twelve-month
period is subject to 35 U.S.C. 21(b) (and § 1.7(a)).
(2) Each prior-filed provisional application must name the inventor or a
joint inventor named in the later--filed application as the inventor or a
joint inventor. In addition, each prior-filed provisional application must
be entitled to a filing date as set forth in § 1.53(c), and the basic
filing fee set forth in § 1.16(d) must have been paid for such provisional
application within the time period set forth in § 1.53(g).
(3) Any nonprovisional application or international application
designating the United States of America that claims the benefit of one or
more prior-filed provisional applications must contain, or be amended to
contain, a reference to each such prior-filed provisional application,
identifying it by the provisional application number (consisting of series
code and serial number). If the later-filed application is a nonprovisional
application, the reference required by this paragraph must be included in
an application data sheet (§ 1.76(b)(5)).
(4) The reference required by paragraph (a)(3) of this section must be
submitted during the pendency of the later-filed application. If the
later-filed application is an application filed under 35 U.S.C. 111(a),
this reference must also be submitted within the later of four months from
the actual filing date of the later-filed application or sixteen months
from the filing date of the prior-filed provisional application. If the
later-filed application is a nonprovisional application entering the
national stage from an international application under 35 U.S.C. 371, this
reference must also be submitted within the later of four months from the
date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in
the later-filed international application or sixteen months from the filing
date of the prior-filed provisional application. Except as provided in
paragraph (b) of this section, failure to timely submit the reference is
considered a waiver of any benefit under 35 U.S.C. 119(e) of the
prior-filed provisional application.
(5) If the prior-filed provisional application was filed in a language
other than English and both an English-language translation of the
prior-filed provisional application and a statement that the translation is
accurate were not previously filed in the prior-filed provisional
application, the applicant will be notified and given a period of time
within which to file, in the prior-filed provisional application, the
translation and the statement. If the notice is mailed in a pending
nonprovisional application, a timely reply to such a notice must include
the filing in the nonprovisional application of either a confirmation that
the translation and statement were filed in the provisional application, or
an application data sheet eliminating the reference under paragraph (a)(3)
of this section to the prior-filed provisional application, or the
nonprovisional application will be abandoned. The translation and statement
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may be filed in the provisional application, even if the provisional
application has become abandoned.
(6) If a nonprovisional application filed on or after March 16, 2013,
claims the benefit of the filing date of a provisional application filed
prior to March 16, 2013, and also contains, or contained at any time,
a claim to a claimed invention that has an effective filing date on or
after March 16, 2013, the applicant must provide a statement to that effect
within the later of four months from the actual filing date of the
nonprovisional application, four months from the date of entry into the
national stage as set forth in § 1.491 in an international application,
sixteen months from the filing date of the prior-filed provisional
application, or the date that a first claim to a claimed invention that has
an effective filing date on or after March 16, 2013, is presented in the
nonprovisional application. An applicant is not required to provide such a
statement if the applicant reasonably believes on the basis of information
already known to the individuals designated in § 1.56(c) that the
nonprovisional application does not, and did not at any time, contain a
claim to a claimed invention that has an effective filing date on or after
March 16, 2013.
(b) Delayed claims under 35 U.S.C. 119(e) for the benefit of a
prior-filed provisional application. If the reference required by 35 U.S.C.
119(e) and paragraph (a)(3) of this section is presented in a
nonprovisional application after the time period provided by paragraph
(a)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit of
a prior-filed provisional application may be accepted if submitted during
the pendency of the later-filed application and if the reference
identifying the prior-filed application by provisional application number
was unintentionally delayed. A petition to accept an unintentionally
delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application must be accompanied by:
(1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of
this section to the prior-filed provisional application, unless previously
submitted;
(2) The surcharge set forth in § 1.17(t); and
(3) A statement that the entire delay between the date the benefit claim
was due under paragraph (a)(4) of this section and the date the benefit
claim was filed was unintentional. The Director may require additional
information where there is a question whether the delay was unintentional.
(c) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a
prior-filed nonprovisional or international application. An applicant in a
nonprovisional application (including an international application entering
the national stage under 35 U.S.C. 371) or an international application
designating the United States of America may claim the benefit of one or
more prior-filed copending nonprovisional applications or international
applications designating the United States of America under the conditions
set forth in 35 U.S.C. 120, 121, or 365(c) and this section.
(1) Each prior-filed application must name the inventor or a joint
inventor named in the later-filed application as the inventor or a joint
inventor. In addition, each prior-filed application must either be:
(i) An international application entitled to a filing date in accordance
with PCT Article 11 and designating the United States of America; or
(ii) A nonprovisional application under 35 U.S.C. 111(a) that is
entitled to a filing date as set forth in § 1.53(b) or (d) for which the
basic filing fee set forth in § 1.16 has been paid within the pendency of
the application.
(2) Except for a continued prosecution application filed under §
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1.53(d), any nonprovisional application, or international application
designating the United States of America, that claims the benefit of one or
more prior-filed nonprovisional applications or international applications
designating the United States of America must contain or be amended to
contain a reference to each such prior-filed application, identifying it by
application number (consisting of the series code and serial number) or
international application number and international filing date. If the
later-filed application is a nonprovisional application, the reference
required by this paragraph must be included in an application data sheet (§
1.76(b)(5)). The reference also must identify the relationship of the
applications, namely, whether the later-filed application is a
continuation, divisional, or continuation-in-part of the prior-filed
nonprovisional application or international application.
(3) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of this
section must be submitted during the pendency of the later-filed
application. If the later-filed application is an application filed under
35 U.S.C. 111(a), this reference must also be submitted within the later of
four months from the actual filing date of the later-filed application or
sixteen months from the filing date of the prior-filed application. If the
later-filed application is a nonprovisional application entering the
national stage from an international application under 35 U.S.C. 371, this
reference must also be submitted within the later of four months from the
date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in
the later-filed international application or sixteen months from the filing
date of the prior-filed application. Except as provided in paragraph (d) of
this section, failure to timely submit the reference required by 35 U.S.C.
120 and paragraph (c)(2) of this section is considered a waiver of any
benefit under 35 U.S.C. 120, 121, or 365(c) to the prior-filed application.
The time periods in this paragraph do not apply in a design application.
(4) The request for a continued prosecution application under § 1.53(d)
is the specific reference required by 35 U.S.C. 120 to the prior-filed
application. The identification of an application by application number
under this §ion is the identification of every application assigned that
application number necessary for a specific reference required by 35 U.S.C.
120 to every such application assigned that application number.
(5) Cross-references to other related applications may be made when
appropriate (see § 1.14), but cross-references to applications for which a
benefit is not claimed under title 35, United States Code, must not be
included in an application data sheet (§ 1.76(b)(5)).
(6) If a nonprovisional application filed on or after March 16, 2013,
claims the benefit of the filing date of a nonprovisional application or an
international application designating the United States of America filed
prior to March 16, 2013, and also contains, or contained at any time, a
claim to a claimed invention that has an effective filing date on or after
March 16, 2013, the applicant must provide a statement to that effect
within the later of four months from the actual filing date of the
later-filed application, four months from the date of entry into the
national stage as set forth in § 1.491 in an international application,
sixteen months from the filing date of the prior-filed application, or the
date that a first claim to a claimed invention that has an effective filing
date on or after March 16, 2013, is presented in the later-filed
application. An applicant is not required to provide such a statement if
either:
(i) The application claims the benefit of a nonprovisional application
in which a statement under § 1.55(j), paragraph (a)(6) of this section, or
this paragraph that the application contains, or contained at any time, a
claim to a claimed invention that has an effective filing date on or after
March 16, 2013 has been filed; or
(ii) The applicant reasonably believes on the basis of information
already known to the individuals designated in § 1.56(c) that the later
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filed application does not, and did not at any time, contain a claim to a
claimed invention that has an effective filing date on or after March 16,
2013.
(d) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the benefit
of a prior-filed nonprovisional application or international application.
If the reference required by 35 U.S.C. 120 and paragraph (c)(2) of this
section is presented after the time period provided by paragraph (c)(3) of
this section, the claim under 35 U.S.C. 120, 121, or 365(c) for the benefit
of a prior-filed copending nonprovisional application or international
application designating the United States of America may be accepted if the
reference identifying the prior-filed application by application number or
international application number and international filing date was
unintentionally delayed. A petition to accept an unintentionally delayed
claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed
application must be accompanied by:
(1) The reference required by 35 U.S.C. 120 and paragraph (c)(2) of this
section to the prior-filed application, unless previously submitted;
(2) The surcharge set forth in § 1.17(t); and
(3) A statement that the entire delay between the date the benefit claim
was due under paragraph (c)(3) of this section and the date the benefit
claim was filed was unintentional. The Director may require additional
information where there is a question whether the delay was unintentional.
(e) Applications containing patentably indistinct claims. Where two or
more applications filed by the same applicant contain patentably indistinct
claims, elimination of such claims from all but one application may be
required in the absence of good and sufficient reason for their retention
during pendency in more than one application.
(f) Applications or patents under reexamination naming different
inventors and containing patentably indistinct claims. If an application or
a patent under reexamination and at least one other application naming
different inventors are owned by the same person and contain patentably
indistinct claims, and there is no statement of record indicating that the
claimed inventions were commonly owned or subject to an obligation of
assignment to the same person on the effective filing date (as defined in §
1.109), or on the date of the invention, as applicable, of the later
claimed invention, the Office may require the applicant to state whether
the claimed inventions were commonly owned or subject to an obligation of
assignment to the same person on such date. Even if the claimed inventions
were commonly owned, or subject to an obligation of assignment to the same
person on the effective filing date (as defined in § 1.109), or on the date
of the invention, as applicable, of the later claimed invention, the
patentably indistinct claims may be rejected under the doctrine of double
patenting in view of such commonly owned or assigned applications or
patents under reexamination.
(g) Time periods not extendable. The time periods set forth in this
section are not extendable.
11. Section 1.84 is amended by revising paragraph (a)(2) introductory text
to read as follows.
§ 1.84 Standards for drawings.
(a) * * *
(2) Color. On rare occasions, color drawings may be necessary as the
only practical medium by which to disclose the subject matter sought to be
patented in a utility or design patent application. The color drawings must
be of sufficient quality such that all details in the drawings are
reproducible in black and white in the printed patent. Color drawings are
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not permitted in international applications (see PCT Rule 11.13), or in an
application, or copy thereof, submitted under the Office electronic filing
system. The Office will accept color drawings in utility or design patent
applications only after granting a petition filed under this paragraph
explaining why the color drawings are necessary. Any such petition must
include the following:
* * * * *
§ 1.103 [Amended]
12. Section 1.103 is amended by removing paragraph (g).
13. Section 1.104 is amended by revising paragraphs (c)(4) and (5) and
adding paragraph (c)(6) to read as follows:
§ 1.104 Nature of examination.
(c) * * *
(4)(i) Subject matter which would otherwise qualify as prior art under
35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly
owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant or patent
owner provides a statement to the effect that the subject matter and the
claimed invention, not later than the effective filing date of the claimed
invention, were owned by the same person or subject to an obligation of
assignment to the same person.
(ii) Subject matter which would otherwise qualify as prior art under 35
U.S.C. 102(a)(2) and a claimed invention will be treated as commonly owned
for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint research
agreement under 35 U.S.C. 102(c) if:
(A) The applicant or patent owner provides a statement to the effect
that the subject matter was developed and the claimed invention was made by
or on behalf of one or more parties to a joint research agreement, within
the meaning of 35 U.S.C. 100(h) and § 1.9(e), that was in effect on or
before the effective filing date of the claimed invention, and the claimed
invention was made as a result of activities undertaken within the scope of
the joint research agreement; and
(B) The application for patent for the claimed invention discloses or is
amended to disclose the names of the parties to the joint research
agreement.
(5)(i) Subject matter which qualifies as prior art under 35 U.S.C.
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed
invention in an application filed on or after November 29, 1999, or any
patent issuing thereon, in an application filed before November 29, 1999,
but pending on December 10, 2004, or any patent issuing thereon, or in any
patent granted on or after December 10, 2004, will be treated as commonly
owned for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013,
if the applicant or patent owner provides a statement to the effect that
the subject matter and the claimed invention, at the time the claimed
invention was made, were owned by the same person or subject to an
obligation of assignment to the same person.
(ii) Subject matter which qualifies as prior art under 35 U.S.C. 102(e),
(f), or (g) in effect prior to March 16, 2013, and a claimed invention in
an application pending on or after December 10, 2004, or in any patent
granted on or after December 10, 2004, will be treated as commonly owned
for purposes of 35 U.S.C. 103(c) in effect prior to March 16, 2013, on the
basis of a joint research agreement under 35 U.S.C. 103(c)(2) in effect
prior to March 16, 2013, if:
(A) The applicant or patent owner provides a statement to the effect
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that the subject matter and the claimed invention were made by or on behalf
of the parties to a joint research agreement, within the meaning of 35
U.S.C. 100(h) and § 1.9(e), which was in effect on or before the date the
claimed invention was made, and that the claimed invention was made as a
result of activities undertaken within the scope of the joint research
agreement; and
(B) The application for patent for the claimed invention discloses or is
amended to disclose the names of the parties to the joint research
agreement.
(6) Patents issued prior to December 10, 2004, from applications filed
prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in effect on
November 28, 1999.
* * * * *
14. Section 1.109 is added to read as follows:
§ 1.109 Effective filing date of a claimed invention under the Leahy-Smith
America Invents Act.
(a) The effective filing date for a claimed invention in a patent or
application for patent, other than in a reissue application or reissued
patent, is the earliest of:
(1) The actual filing date of the patent or the application for the
patent containing a claim to the invention; or
(2) The filing date of the earliest application for which the patent or
application is entitled, as to such invention, to a right of priority or
the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, or
365.
(b) The effective filing date for a claimed invention in a reissue
application or a reissued patent is determined by deeming the claim to the
invention to have been contained in the patent for which reissue was
sought.
15. Section 1.110 is revised to read as follows:
§ 1.110 Inventorship and ownership of the subject matter of individual
claims.
When one or more joint inventors are named in an application or patent,
the Office may require an applicant or patentee to identify the
inventorship and ownership or obligation to assign ownership, of each
claimed invention on its effective filing date (as defined in § 1.109) or
on its date of invention, as applicable, when necessary for purposes of an
Office proceeding. The Office may also require an applicant or patentee to
identify the invention dates of the subject matter of each claim when
necessary for purposes of an Office proceeding.
16. Section 1.130 is revised to read as follows:
§ 1.130 Affidavit or declaration of attribution or prior public disclosure
under the Leahy-Smith America Invents Act.
(a) Affidavit or declaration of attribution. When any claim of an
application or a patent under reexamination is rejected, the applicant or
patent owner may submit an appropriate affidavit or declaration to
disqualify a disclosure as prior art by establishing that the disclosure
was made by the inventor or a joint inventor, or the subject matter
disclosed was obtained directly or indirectly from the inventor or a joint
inventor.
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(b) Affidavit or declaration of prior public disclosure. When any claim
of an application or a patent under reexamination is rejected, the
applicant or patent owner may submit an appropriate affidavit or
declaration to disqualify a disclosure as prior art by establishing that
the subject matter disclosed had, before such disclosure was made or before
such subject matter was effectively filed, been publicly disclosed by the
inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor. An
affidavit or declaration under this paragraph must identify the subject
matter publicly disclosed and provide the date such subject matter was
publicly disclosed by the inventor or a joint inventor or another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor.
(1) If the subject matter publicly disclosed on that date was in a
printed publication, the affidavit or declaration must be accompanied by a
copy of the printed publication.
(2) If the subject matter publicly disclosed on that date was not in a
printed publication, the affidavit or declaration must describe the subject
matter with sufficient detail and particularity to determine what subject
matter had been publicly disclosed on that date by the inventor or a joint
inventor or another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor.
(c) When this section is not available. The provisions of this section
are not available if the rejection is based upon a disclosure made more
than one year before the effective filing date of the claimed invention.
The provisions of this section may not be available if the rejection is
based upon a U.S. patent or U.S. patent application publication of a
patented or pending application naming another inventor, the patent or
pending application claims an invention that is the same or substantially
the same as the applicant's or patent owner's claimed invention, and the
affidavit or declaration contends that an inventor named in the U.S. patent
or U.S. patent application publication derived the claimed invention from
the inventor or a joint inventor named in the application or patent, in
which case an applicant or a patent owner may file a petition for a
derivation proceeding pursuant to § 42.401 et seq. of this title.
(d) Applications and patents to which this section is applicable. The
provisions of this section apply to any application for patent, and to any
patent issuing thereon, that contains, or contained at any time:
(1) A claim to a claimed invention that has an effective filing date as
defined in 35 U.S.C. 100(i) that is on or after March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any
patent or application that contains, or contained at any time, a claim to a
claimed invention that has an effective filing date as defined in 35 U.S.C.
100(i) that is on or after March 16, 2013.
17. Section 1.131 is revised to read as follows:
§ 1.131 Affidavit or declaration of prior invention or to disqualify
commonly owned patent or published application as prior art.
(a) When any claim of an application or a patent under reexamination is
rejected, the inventor of the subject matter of the rejected claim, the
owner of the patent under reexamination, or the party qualified under §
1.42 or § 1.46, may submit an appropriate oath or declaration to establish
invention of the subject matter of the rejected claim prior to the
effective date of the reference or activity on which the rejection is
based. The effective date of a U.S. patent, U.S. patent application
publication, or international application publication under PCT Article
21(2) is the earlier of its publication date or the date that it is
effective as a reference under 35 U.S.C. 102(e) as in effect on March 15,
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2013. Prior invention may not be established under this section in any
country other than the United States, a NAFTA country, or a WTO member
country. Prior invention may not be established under this section before
December 8, 1993, in a NAFTA country other than the United States, or
before January 1, 1996, in a WTO member country other than a NAFTA country.
Prior invention may not be established under this section if either:
(1) The rejection is based upon a U.S. patent or U.S. patent application
publication of a pending or patented application naming another inventor
which claims interfering subject matter as defined in § 41.203(a) of this
title, in which case an applicant may suggest an interference pursuant to §
41.202(a) of this title; or
(2) The rejection is based upon a statutory bar.
(b) The showing of facts for an oath or declaration under paragraph (a)
of this section shall be such, in character and weight, as to establish
reduction to practice prior to the effective date of the reference, or
conception of the invention prior to the effective date of the reference
coupled with due diligence from prior to said date to a subsequent
reduction to practice or to the filing of the application. Original
exhibits of drawings or records, or photocopies thereof, must accompany and
form part of the affidavit or declaration or their absence must be
satisfactorily explained.
(c) When any claim of an application or a patent under reexamination is
rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a U.S.
patent or U.S. patent application publication which is not prior art under
35 U.S.C. 102(b) as in effect on March 15, 2013, and the inventions defined
by the claims in the application or patent under reexamination and by the
claims in the patent or published application are not identical but are not
patentably distinct, and the inventions are owned by the same party, the
applicant or owner of the patent under reexamination may disqualify the
patent or patent application publication as prior art. The patent or patent
application publication can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with § 1.321(c); and
(2) An oath or declaration stating that the application or patent under
reexamination and patent or published application are currently owned by
the same party, and that the inventor named in the application or patent
under reexamination is the prior inventor under 35 U.S.C. 104 as in effect
on March 15, 2013.
(d) The provisions of this section apply to any application for patent,
and to any patent issuing thereon, that contains, or contained at any time:
(1) A claim to an invention that has an effective filing date as defined
in 35 U.S.C. 100(i) that is before March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, or 365(c) to any
patent or application that contains, or contained at any time, a claim to
an invention that has an effective filing date as defined in 35 U.S.C.
100(i) that is before March 16, 2013.
(e) In an application for patent to which the provisions of § 1.130
apply, and to any patent issuing thereon, the provisions of this section
are applicable only with respect to a rejection under 35 U.S.C. 102(g) as
in effect on March 15, 2013.
§§ 1.293 through 1.297 [Removed and Reserved]
18. Sections 1.293 through 1.297 are removed and reserved.
19. Section 1.321 is amended by revising paragraph (d) introductory text to
read as follows:
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§ 1.321 Statutory disclaimers, including terminal disclaimers.
* * * * *
(d) A terminal disclaimer, when filed in a patent application or in a
reexamination proceeding to obviate double patenting based upon a patent or
application that is not commonly owned but was disqualified as prior art as
set forth in either § 1.104(c)(4)(ii) or (c)(5)(ii) as the result of
activities undertaken within the scope of a joint research agreement, must:
* * * * *
February 11, 2013 TERESA STANEK REA
Acting Under Secretary of Commerce for Intellectual Property and
Acting Director of the United States Patent and Trademark Office
| Requirements for the Patent Prosecution Highway (PPH) Program to Implement PPH 2.0 with the Korea National Institute of Industrial Property |
Revised Requirements for the Patent Prosecution Highway (PPH) Program to Implement PPH 2.0 with the
Korean Intellectual Property Office
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I. Background
Since July 15, 2011, the United States Patent and Trademark Office (USPTO) and seven other offices (i.e., IP Australia (IPAU), Canada (CIPO), Finland (NBPR), Japan (JPO), Russia (ROSPATENT), Spain (SPTO) and United Kingdom (UKIPO)) have participated in an enhanced PPH pilot program called “MOTTAINAI”. Under MOTTAINAI, participation in the PPH may be requested on the basis of search and examination results from any patent family application from any participating office, regardless of whether the participating office was the office of first filing. To implement the MOTTAINAI pilot, the USPTO revised its PPH requirements. See, for example, the notice available at http://www.uspto.gov/web/offices/com/sol/og/2011/week33/TOC.htm#ref13.
On January 29, 2012, the USPTO implemented PPH 2.0 with respect to the seven MOTTAINAI participating offices and the European Patent Office (EPO) to further enhance the PPH program and to encourage greater usage of, and participation in, the PPH program. PPH 2.0 simplifies the PPH requirements and procedures in a consolidated and user-friendly framework, while ensuring that work sharing benefits to the offices are not diminished.
Following discussions between the USPTO and the Korean Intellectual Property Office (KIPO), the USPTO is implementing PPH 2.0 with respect to the KIPO. The revised requirements for PPH 2.0 and the trial period are set forth below and supersede the PPH notices to implement the prior PPH program between the USPTO and the KIPO. The permanent PCT-PPH program with the KIPO is not affected by the current notice and remains available to applicants under the existing guidelines. See, for example, the notice available at http://www.uspto.gov/web/offices/com/sol/og/2012/week30/TOC.htm#ref11.
II. Trial Period for the PPH 2.0 Program
The PPH 2.0 program commenced with respect to the KIPO on January 29, 2013, and will terminate on January 28, 2014. The revised requirements will apply to PPH requests filed at the USPTO on or after January 29, 2013, based on claims that have been determined allowable in a corresponding application filed in the KIPO. The trial period may be extended if necessary to adequately assess the feasibility of the PPH 2.0 program. The USPTO and the KIPO will evaluate the results of the PPH 2.0 program to determine whether and how the program should be implemented after the trial period. The offices may also terminate the PPH 2.0 program early if the volume of participation exceeds a manageable level or for any other reason. Notice will be published if the PPH 2.0 program will be terminated with respect to the KIPO before January 28, 2014. As of January 29, 2013, the PPH 2.0 participating offices are IPAU, CIPO, EPO, NBPR, JPO, ROSPATENT, SPTO, UKIPO, the Portugal National Institute of Industrial Property (INPI-PT), and KIPO with respect to applications filed in the USPTO.
III. Revised Requirements for Requesting Participation in the PPH 2.0 Program in the USPTO
In order to be eligible to participate in the PPH 2.0 program at the USPTO, the following conditions must be met:
(1) At least one claim was determined by the PPH 2.0 participating office to be allowable/patentable. The applicant will no longer need to submit a copy of the allowed claims from the application filed in the PPH 2.0 participating office or any English translation thereof.
(2) The U.S. application for which participation in the PPH 2.0 program is requested and the corresponding application filed in the PPH 2.0 participating office (with the allowable/patentable claim(s)) must have the same priority/filing date. In particular, the U.S. application (including national stage entry of a PCT application and a so-called “bypass application” filed under 35 U.S.C. § 111(a) which validly claims benefit under 35 U.S.C. § 120 to a PCT application):
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Case I – is an application that validly claims priority under 35 U.S.C. § 119(a) and 37 CFR 1.55 to one or more applications filed with the PPH 2.0 participating office (examples are provided in the ANNEX, Figures A, B, C and D),
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or
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Case II – is an application which is the basis of a valid priority claim under the Paris Convention for the application filed in the PPH 2.0 participating office (examples are provided in the ANNEX, Figures E, F and G),
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or
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Case III – is an application which shares a common priority document with the application filed in the PPH 2.0 participating office (examples are provided in the ANNEX, Figures H, I, J, K, L, M and N),
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or
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Case IV – and the application filed in the PPH 2.0 participating office are derived from/related to a PCT application having no priority claim (example is provided in the ANNEX, Figure O).
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Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded and not subject to participation in the PPH 2.0 program.
(3) All claims on file, as originally filed or as amended, for examination under the PPH 2.0 program in the U.S. application must sufficiently correspond to one or more of those claims indicated as allowable in the application filed in the PPH 2.0 participating office. A claim is considered to "sufficiently correspond" where, accounting for differences due to translations and claim format, the claim in the U.S. application is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office. A claim in the U.S. application which is narrower in scope than the claims indicated as allowable in the application filed in the PPH 2.0 participating office will also sufficiently correspond if presented as a claim dependent upon a claim which is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office. The additional limitation that makes the claim in the U.S. application narrower in scope than the allowable or patentable claims in the application filed in the PPH 2.0 participating office must have support in the written description of the U.S. application.
A claim in the U.S. application which introduces a new or different category of claims to those claims indicated as allowable in the application filed in the PPH 2.0 participating office is not considered to sufficiently correspond. For example, if the only allowable or patentable claims in the application filed in the PPH 2.0 participating office are claims to a process of manufacturing a product, then any product claims in the U.S. application are not considered to sufficiently correspond, even if the product claims are dependent on process claims which sufficiently correspond to allowable or patentable claims in the application filed in the PPH 2.0 participating office.
The applicant is required to submit a claims correspondence table in English. The claims correspondence table must indicate how all the claims in the U.S. application correspond to the allowable or patentable claims in the application(s) filed in the PPH 2.0 participating office. Any dependent claims with additional limitations must be clearly identified in the claims correspondence table.
(4) Examination of the U.S. application for which participation in the PPH 2.0 program is requested has not begun.
(5) The applicant must file a request for participation in the PPH 2.0 program and a request that the U.S. application be advanced out of turn for examination by order of the Director to expedite the business of the Office under 37 CFR 1.102(a). Revised PPH request forms are available from the USPTO Web site at http://www.uspto.gov/forms/. Applicants are encouraged to use the USPTO request form. A petition fee under 37 CFR 1.17(h) is NOT required. See Notice Regarding the Elimination of the Fee for Petitions To Make Special Filed Under the Patent Prosecution Highway (PPH) Programs, 75 Fed. Reg. 29312 (May 25, 2010).
(6) The applicant must submit a copy of the office action issued just prior to the “Decision to Grant a Patent” (e.g., the latest “Notification of Reasons for Refusal”) from each of the application(s) filed in the PPH 2.0 participating office containing the allowable or patentable claims that form the basis for the request, along with an English translation thereof. The English translation may be a machine translation. The applicant no longer needs to provide a statement that the English translation is accurate if the office actions are not in the English language.
It is not necessary for the applicant to submit a copy of the “Decision to Grant a Patent” and an English translation thereof. If the application filed in the PPH 2.0 participating office is a first action allowance, i.e., there is no office action just prior to the “Decision to Grant a Patent,” then the applicant should indicate on the request form that no office action from the application filed in the PPH 2.0 participating office is submitted since the application was a first action allowance.
If the copy of the office action (along with an English translation thereof if the office action is not in the English language) from the application filed in the PPH 2.0 participating office is available via the dossier access system, instead of submitting a copy of the office action, the applicant may request that the USPTO obtain such a copy of the office action (along with an English translation thereof if the office action is not in the English language) via the dossier access system. If the USPTO is not able to obtain a copy of the office action (along with an English translation thereof if the office action is not in the English language) via the dossier access system, the applicant will be notified and given an opportunity to submit a copy of the office action (along with an English translation thereof if the office action is not in the English language) from the application filed in the PPH 2.0 participating office. The English translation may be a machine translation.
If the USPTO finds the machine translation (submitted by the applicant or obtained by the USPTO via the dossier access system) is of such poor quality that it is difficult to understand, the applicant may be required by the USPTO to submit a manual translation into the English language of the office action from the application filed in the PPH 2.0 participating office.
The applicant must submit copies of any office actions (which are relevant to patentability) from the application(s) filed in the PPH 2.0 participating office issued after the grant of the request for participation in the PPH 2.0 program in the USPTO (especially where the PPH 2.0 participating office might have reversed a prior holding of allowability).
(7) The applicant must submit an information disclosure statement (IDS) listing the documents cited in the office action of the PPH 2.0 participating office (unless such an IDS has already been filed in the U.S. application). The applicant must submit copies of all the documents cited in the office action of the PPH 2.0 participating office (unless the copies have already been filed in the U.S. application) except U.S. patents or U.S. patent application publications.
The request for participation in the PPH 2.0 program and all the supporting documents must be submitted to the USPTO via EFS-Web and indexed with the following document description: “Petition to make special under Patent Pros Hwy.” Information regarding EFS-Web is available at http://www.uspto.gov/patents/process/file/efs/index.jsp. Any preliminary amendment or IDS submitted with the PPH 2.0 documents must be separately indexed as a preliminary amendment or an IDS, respectively.
Where the request for participation in the PPH 2.0 program and special status are granted, the applicant will be notified and the U.S. application will be advanced out of turn for examination. In those instances where the request for participation in the PPH 2.0 program does not meet all the requirements set forth above, the applicant will be notified and the defects in the request will be identified. The applicant will be given one opportunity to perfect the request in a renewed request for participation (which must be submitted via EFS-Web and indexed accordingly as noted above). Note that action on the application by the USPTO will NOT be suspended (37 CFR 1.103) awaiting a reply by the applicant to perfect the request in a renewed request for participation. That is, if the application is picked up for examination after the applicant has been notified of the defects in the request, any renewed request will be dismissed. If the renewed request is perfected and examination has not begun, the request and special status will be granted, the applicant will be notified and the U.S. application will be advanced out of turn for examination. If the request is not perfected, the applicant will be notified and the application will await action in its regular turn.
(8) Request for participation in the PPH 2.0 program and special status granted in a parent application will not carry over to a continuing application. The applicant must fulfill all the conditions set forth above in order for special status to be granted in the continuing application.
If any of the documents identified in items (2), (6) and (7) above have already been filed in the U.S. application prior to the request for participation in the PPH 2.0 program, it is not necessary for the applicant to resubmit these documents with the request for participation. The applicant may simply refer to these documents and indicate in the request for participation in the PPH 2.0 program when these documents were previously filed in the U.S. application.
IV. Special Examining Procedures
Once the request for participation in the PPH 2.0 program and special status have been granted to the U.S. application, the U.S. application will be taken up for examination before all other categories of applications except those clearly in condition for allowance, those with set time limits, such as examiner’s answers, and those that have been granted special status for “accelerated examination.”
Any claims amended or added after the grant of the request for participation in the PPH 2.0 program must sufficiently correspond to one or more allowable or patentable claims in the application(s) filed in the PPH 2.0 participating office. The applicant is required to submit, along with the amendment, a statement certifying that the amended or newly added claims sufficiently correspond to the allowable or patentable claims in the application(s) filed in the PPH 2.0 participating office. If the certification statement is omitted, the amendment will not be entered and will be treated as a non-responsive reply.
The PPH 2.0 program does not absolve applicants of all their duties under 37 CFR 1.56 and 37 CFR 11.18. By complying with requirements III.(6) and (7) identified above, applicants would be considered to have complied with their duties to bring to the attention of the USPTO any material prior art cited in the corresponding foreign application(s) (see MPEP § 2001.06(a)). Applicants still have a duty of candor and good faith, including a requirement to provide to the USPTO other information known to them to be material to patentability.
Any inquiries concerning this notice may be directed to Bryan Lin, Office of PCT Legal Administration at 571-272-3303, or via e-mail addressed to bryan.lin@uspto.gov.
Specific questions about the Patent Prosecution Highway should be directed to the Office of Petitions at 571-272-3282, or via e-mail addressed to PPHfeedback@uspto.gov.
| February 12, 2013 |
TERESA STANEK REA |
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Acting Under Secretary of Commerce for Intellectual Property and |
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Acting Director of the United States Patent and Trademark Office |
| Revised Requirements for the Patent Prosecution Highway (PPH) Program to Implement PPH 2.0 with the Portugal Intellectual Property Office |
Requirements for the Patent Prosecution Highway (PPH) Program to Implement PPH 2.0 with the
Portugal National Institute of Industrial Property
|
I. Background
Since July 15, 2011, the United States Patent and Trademark Office (USPTO) and seven other offices (i.e., IP Australia (IPAU), Canada (CIPO), Finland (NBPR), Japan (JPO), Russia (ROSPATENT), Spain (SPTO) and United Kingdom (UKIPO)) have participated in an enhanced PPH pilot program called “MOTTAINAI”. Under MOTTAINAI, participation in the PPH may be requested on the basis of search and examination results from any patent family application from any participating office, regardless of whether the participating office was the office of first filing. To implement the MOTTAINAI pilot, the USPTO revised its PPH requirements. See, for example, the notice available at http://www.uspto.gov/web/offices/com/sol/og/2011/week33/TOC.htm#ref13.
On January 29, 2012, the USPTO implemented PPH 2.0 with respect to the seven MOTTAINAI participating offices and the European Patent Office (EPO) to further enhance the PPH program and to encourage greater usage of, and participation in, the PPH program. PPH 2.0 simplifies the PPH requirements and procedures in a consolidated and user-friendly framework, while ensuring that work sharing benefits to the offices are not diminished.
The USPTO had discussions with the Portugal National Institute of Industrial Property (INPI-PT) and is implementing PPH 2.0 with respect to the INPI-PT.
II. Trial Period for the PPH 2.0 Program
The PPH 2.0 program commenced with respect to the INPI-PT on January 29, 2013, and will terminate on January 28, 2014. The trial period may be extended if necessary to adequately assess the feasibility of the PPH 2.0 program. The USPTO and the INPI-PT will evaluate the results of the PPH 2.0 program to determine whether and how the program should be implemented after the trial period. The offices may also terminate the PPH 2.0 program early if the volume of participation exceeds a manageable level or for any other reason. Notice will be published if the PPH 2.0 program will be terminated with respect to the INPI-PT before January 28, 2014. As of January 29, 2013, the PPH 2.0 participating offices are IPAU, CIPO, EPO, NBPR, JPO, ROSPATENT, SPTO, UKIPO, INPI-PT, and the Korean Intellectual Property Office (KIPO) with respect to applications filed in the USPTO.
III. Requirements for Requesting Participation in the PPH 2.0 Program in the USPTO
In order to be eligible to participate in the PPH 2.0 program at the USPTO, the following conditions must be met:
(1) At least one claim was determined by the PPH 2.0 participating office to be allowable/patentable. The applicant does not need to submit a copy of the allowed claims from the application filed in the PPH 2.0 participating office or any English translation thereof.
(2) The U.S. application for which participation in the PPH 2.0 program is requested and the corresponding application filed in the PPH 2.0 participating office (with the allowable/patentable claim(s)) must have the same priority/filing date. In particular, the U.S. application (including national stage entry of a PCT application and a so-called “bypass application” filed under 35 U.S.C. § 111(a) which validly claims benefit under 35 U.S.C. § 120 to a PCT application):
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Case I – is an application that validly claims priority under 35 U.S.C. § 119(a) and 37 CFR 1.55 to one or more applications filed with the PPH 2.0 participating office (examples are provided in the ANNEX, Figures A, B, C and D),
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or
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Case II – is an application which is the basis of a valid priority claim under the Paris Convention for the application filed in the PPH 2.0 participating office (examples are provided in the ANNEX, Figures E, F and G),
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or
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Case III – is an application which shares a common priority document with the application filed in the PPH 2.0 participating office (examples are provided in the ANNEX, Figures H, I, J, K, L, M and N),
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or
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Case IV – and the application filed in the PPH 2.0 participating office are derived from/related to a PCT application having no priority claim (example is provided in the ANNEX, Figure O).
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Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded and not subject to participation in the PPH 2.0 program.
(3) All claims on file, as originally filed or as amended, for examination under the PPH 2.0 program in the U.S. application must sufficiently correspond to one or more of those claims indicated as allowable in the application filed in the PPH 2.0 participating office. A claim is considered to "sufficiently correspond" where, accounting for differences due to translations and claim format, the claim in the U.S. application is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office. A claim in the U.S. application which is narrower in scope than the claims indicated as allowable in the application filed in the PPH 2.0 participating office will also sufficiently correspond if presented as a claim dependent upon a claim which is of the same or similar scope as a claim indicated as allowable in the application filed in the PPH 2.0 participating office. The additional limitation that makes the claim in the U.S. application narrower in scope than the allowable or patentable claims in the application filed in the PPH 2.0 participating office must have support in the written description of the U.S. application.
A claim in the U.S. application which introduces a new or different category of claims to those claims indicated as allowable in the application filed in the PPH 2.0 participating office is not considered to sufficiently correspond. For example, if the only allowable or patentable claims in the application filed in the PPH 2.0 participating office are claims to a process of manufacturing a product, then any product claims in the U.S. application are not considered to sufficiently correspond, even if the product claims are dependent on process claims which sufficiently correspond to allowable or patentable claims in the application filed in the PPH 2.0 participating office.
The applicant is required to submit a claims correspondence table in English. The claims correspondence table must indicate how all the claims in the U.S. application correspond to the allowable or patentable claims in the application(s) filed in the PPH 2.0 participating office. Any dependent claims with additional limitations must be clearly identified in the claims correspondence table.
(4) Examination of the U.S. application for which participation in the PPH 2.0 program is requested has not begun.
(5) The applicant must file a request for participation in the PPH 2.0 program and a request that the U.S. application be advanced out of turn for examination by order of the Director to expedite the business of the Office under 37 CFR 1.102(a). Revised PPH request forms are available from the USPTO Web site at http://www.uspto.gov/forms/. Applicants are encouraged to use the USPTO request form. A petition fee under 37 CFR 1.17(h) is NOT required. See Notice Regarding the Elimination of the Fee for Petitions To Make Special Filed Under the Patent Prosecution Highway (PPH) Programs, 75 Fed. Reg. 29312 (May 25, 2010).
(6) The applicant must submit a copy of the office action issued just prior to the “Decision to Grant a Patent” (e.g., the latest “Notification of Reasons for Refusal”) from each of the application(s) filed in the PPH 2.0 participating office containing the allowable or patentable claims that form the basis for the request, along with an English translation thereof. The English translation may be a machine translation. The applicant no longer needs to provide a statement that the English translation is accurate if the office actions are not in the English language.
It is not necessary for the applicant to submit a copy of the “Decision to Grant a Patent” and an English translation thereof. If the application filed in the PPH 2.0 participating office is a first action allowance, i.e., there is no office action just prior to the “Decision to Grant a Patent,” then the applicant should indicate on the request form that no office action from the application filed in the PPH 2.0 participating office is submitted since the application was a first action allowance.
If the copy of the office action (along with an English translation thereof if the office action is not in the English language) from the application filed in the PPH 2.0 participating office is available via the dossier access system, instead of submitting a copy of the office action, the applicant may request that the USPTO obtain such a copy of the office action (along with an English translation thereof if the office action is not in the English language) via the dossier access system. If the USPTO is not able to obtain a copy of the office action (along with an English translation thereof if the office action is not in the English language) via the dossier access system, the applicant will be notified and given an opportunity to submit a copy of the office action (along with an English translation thereof if the office action is not in the English language) from the application filed in the PPH 2.0 participating office. The English translation may be a machine translation.
If the USPTO finds the machine translation (submitted by the applicant or obtained by the USPTO via the dossier access system) is of such poor quality that it is difficult to understand, the applicant may be required by the USPTO to submit a manual translation into the English language of the office action from the application filed in the PPH 2.0 participating office.
The applicant must submit copies of any office actions (which are relevant to patentability) from the application(s) filed in the PPH 2.0 participating office issued after the grant of the request for participation in the PPH 2.0 program in the USPTO (especially where the PPH 2.0 participating office might have reversed a prior holding of allowability).
(7) The applicant must submit an information disclosure statement (IDS) listing the documents cited in the office action of the PPH 2.0 participating office (unless such an IDS has already been filed in the U.S. application). The applicant must submit copies of all the documents cited in the office action of the PPH 2.0 participating office (unless the copies have already been filed in the U.S. application) except U.S. patents or U.S. patent application publications.
The request for participation in the PPH 2.0 program and all the supporting documents must be submitted to the USPTO via EFS-Web and indexed with the following document description: “Petition to make special under Patent Pros Hwy.” Information regarding EFS-Web is available at http://www.uspto.gov/patents/process/file/efs/index.jsp. Any preliminary amendment or IDS submitted with the PPH 2.0 documents must be separately indexed as a preliminary amendment or an IDS, respectively.
Where the request for participation in the PPH 2.0 program and special status are granted, the applicant will be notified and the U.S. application will be advanced out of turn for examination. In those instances where the request for participation in the PPH 2.0 program does not meet all the requirements set forth above, the applicant will be notified and the defects in the request will be identified. The applicant will be given one opportunity to perfect the request in a renewed request for participation (which must be submitted via EFS-Web and indexed accordingly as noted above). Note that action on the application by the USPTO will NOT be suspended (37 CFR 1.103) awaiting a reply by the applicant to perfect the request in a renewed request for participation. That is, if the application is picked up for examination after the applicant has been notified of the defects in the request, any renewed request will be dismissed. If the renewed request is perfected and examination has not begun, the request and special status will be granted, the applicant will be notified and the U.S. application will be advanced out of turn for examination. If the request is not perfected, the applicant will be notified and the application will await action in its regular turn.
(8) Request for participation in the PPH 2.0 program and special status granted in a parent application will not carry over to a continuing application. The applicant must fulfill all the conditions set forth above in order for special status to be granted in the continuing application.
If any of the documents identified in items (2), (6) and (7) above have already been filed in the U.S. application prior to the request for participation in the PPH 2.0 program, it is not necessary for the applicant to resubmit these documents with the request for participation. The applicant may simply refer to these documents and indicate in the request for participation in the PPH 2.0 program when these documents were previously filed in the U.S. application.
IV. Special Examining Procedures
Once the request for participation in the PPH 2.0 program and special status have been granted to the U.S. application, the U.S. application will be taken up for examination before all other categories of applications except those clearly in condition for allowance, those with set time limits, such as examiner’s answers, and those that have been granted special status for “accelerated examination.”
Any claims amended or added after the grant of the request for participation in the PPH 2.0 program must sufficiently correspond to one or more allowable or patentable claims in the application(s) filed in the PPH 2.0 participating office. The applicant is required to submit, along with the amendment, a statement certifying that the amended or newly added claims sufficiently correspond to the allowable or patentable claims in the application(s) filed in the PPH 2.0 participating office. If the certification statement is omitted, the amendment will not be entered and will be treated as a non-responsive reply.
The PPH 2.0 program does not absolve applicants of all their duties under 37 CFR 1.56 and 37 CFR 11.18. By complying with requirements III.(6) and (7) identified above, applicants would be considered to have complied with their duties to bring to the attention of the USPTO any material prior art cited in the corresponding foreign application(s) (see MPEP § 2001.06(a)). Applicants still have a duty of candor and good faith, including a requirement to provide to the USPTO other information known to them to be material to patentability.
Any inquiries concerning this notice may be directed to Bryan Lin, Office of PCT Legal Administration at 571-272-3303, or via e-mail addressed to bryan.lin@uspto.gov.
Specific questions about the Patent Prosecution Highway should be directed to the Office of Petitions at 571-272-3282, or via e-mail addressed to PPHfeedback@uspto.gov.
| February 12, 2013 |
TERESA STANEK REA |
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Acting Under Secretary of Commerce for Intellectual Property and |
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Acting Director of the United States Patent and Trademark Office |
Errata
"All reference to Patent No. D675,902 to Wayne Rothbaum, et al of New
York, NY for STRAP WITH CORD ATTACHMENT MECHANISM FOR A CORD MANAGEMENT
SYSTEM appearing in the Official Gazette of February 12, 2013 should be
deleted since no patent was granted."
"All reference to Patent No. 8,371,013 to Steeve Michaud, et al of
Sherbrooke, Canada for SYSTEM FOR INSERTING BLIND ATTACHMENTS appearing in
the Official Gazette of February 12, 2013 should be deleted since no patent
was granted."
"All reference to Patent No. 8,371,055 to David Walter Compton, et al of
Kitchner, Canada for RAIL FOR INDUCTIVELY POWERING FIREMAN ACCESSORIES
appearing in the Official Gazette of February 12, 2013 should be deleted
since no patent was granted."
"All reference to Patent No. 8,371,284 to John H. Wiker, et al of
Lockport, IL for SELF-CLEANING OVEN appearing in the Official Gazette of
February 12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,371,432 to T. Michael Shore of Princeton,
MA for METHOD OF OPERATING ROLLING MILL CONVEYOR appearing in the Official
Gazette of February 12, 2013 should be deleted since no patent was
granted."
"All reference to Patent No. 8,371,575 to Yasuhiro Sagawa, et al of
Kanagawa-Ken, Japan for SHEET ADJUSTING DEVICE, SHEET HOLDING RECEPTACLE
INCORPORATING SAME, AND IMAGE FORMING APPARATUS INCORPORATING SAME
appearing in the Official Gazette of February 12, 2013 should be deleted
since no patent was granted."
"All reference to Patent No. 8,371,906 to Norio Kimura, et al of Tokyo,
Japan for POLISHING APPARATUS appearing in the Official Gazette February
12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,371,959 to kozue Wada, et al of
Chichibu-Shi, Japan for GOLF CLUB HEAD appearing in the Official Gazette of
February 12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,372,533 to Young Gi Lee, et al of Daejeon
Korea, Republic of for VACUUM-SEALING-TYPE FLEXIBLE-FILM PRIMARY BATTERY
appearing in the Official Gazette of February 12, 2013 should be deleted
since no patent was granted."
"All reference to Patent No. 8,372,547 to Meiten Koh, et al of
Settsu-Shi, Japan for NON-AQUEOUS ELECTROLYTIC SOLUTION appearing in the
Official Gazette of February 12, 2013 should be be deleted since no patent
was granted."
"All reference to Patent No. 8,372,767 to Naoya Wada, et al of Tokyo,
Japan for GLASS COMPOSITION AND MEMBER HAVING THE SAME ON SUBSTRATE
appearing in the Official Gazette of February 12, 2013 should be deleted
since no patent was granted."
"All reference to Patent No. 8,372,778 to Sona Eijsbouts-Spickova, et al
of Nieuwkuijk, Blegium for BULK CATALYST COMPOSITION AND A PROCESS
PREPARING THE BULK CATALYST COMPOSITION appearing in the Official Gazette
of February 12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,372,853 to Keith Clinch, et al of Lower
Hutt, New Zealand for ACYCLIC AMINE INHIBITORS OF NUCLEOSIDE
PHOSEPHORYLASES AND HYDROLASES appearing in the Official Gazette of
February 12, 2013 should be deleted since no patent was granted."
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 282 |
"All reference to Patent No. 8,372,903 to Masaki Mizutani, et al of
Osaka, Japan for PHOTO-SENSITIVE RESIN COMPOSITION, FLEXIBLE CIRCUIT BOARD
EMPLOYING THE SAME, AND CIRCUIT BOARD PRODUCTION METHOD appearing in the
Official Gazette of February 12, 2013 should be deleted since no patent was
granted."
"All reference to Patent No. 8,373,158 to Jeong-IL Park, et al of
Seongnam-Si Korea, Republic of for SURFACE MODIFYING AGENT, LAMINATED
STRUCTURE AND TRANSISTOR INCLUDING THE SAME, AND METHOD OF MANUFACTURING
THE LAMINATED STRUCTURE appearing in the Official Gazette of February 12,
2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,373,213 to Sanh D. Tang, et al of Boise,
ID for FLOATING BODY CELL STRUCTURES, DEVICES INCLUDING SAME, AND METHODS
FOR FORMING SAME appearing in the Official Gazette of February 12, 2013
should be deleted since no patent was granted."
"All reference to Patent No. 8,373,287 to William Franklin Burgoyne Jr.,
et al of Bethelehem, PA for POLYMERIC COMPOSITIONS COMPRISING
PER(PHENYLETHYNL) ARENE DERIVATIVES appearing in the Official Gazette of
February 12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,373,336 to Kunihiko Hakata, et al of
Tottori-City, Japan for LIGHT-EMITTING DEVICE AND LIGHTING APPARATUS
INCORPORATING SAME appearing in the Official Gazette of February 12, 2013
should be deleted since no patent was granted."
"All reference to Patent No. 8,373,477 to Masahiro Hatano, et al of
Kanagawa, Japan for TIMING ADJUSTMENT CIRCUIT, SOLID-STATE IMAGE PICKUP
ELEMENT, AND CAMERA SYSTEM appearing in the Official Gazette of February
12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,373,701 to Teresa S. Tung, et al of San
Jose, CA for SYSTEM FOR PROVIDING STRATEGIES FOR INCREASING EFFICIENCY OF
DATA CENTERS appearing in the Official Gazette of February 12, 2013 should
be deleted since no patent was granted."
"All reference to Patent No. 8,373,783 to Atsuko Kume of Sagamihara-Shi,
Japan for PHOTO-ELECTRIC CONVERSION DEVICE appearing in the Official
Gazette of February 12, 2013 should be deleted since no patent was
granted."
"All reference to Patent No. 8,373,831 to Kenji Harada, et al of
Nomi-Shi, Japan for LIQUID CRYSTAL DISPLAY DEVICE AND METHOD OF DRIVING
LIQUID CRYSTAL DISPLAY DEVICE appearing in the Official Gazette of February
12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,373,850 to Yoshiyuki Sekine, et al of
Utsunomiya-Shi, Japan for COMPUTER READABLE MEDIUM AND EXPOSURE METHOD
appearing in Official Gazette of February 12, 2013 should be deleted since
no patent was granted."
"All reference to Patent No. 8,373,864 to Ryuichi Sato of Sendai-Shi,
Japan for SURFACE SHAPE MEASUREMENT APPARATUS appearing in the Official
Gazette of February 12, 2013 should be deleted since no patent was
granted."
"All reference to Patent No. 8,373,927 to Susumu Terakawa, et al of
Hamamatsu, Japan for OBSERVING DEVICE appearing in the Official Gazette of
February 12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,374,015 to Zhanping Chen, et al of
Portland, OR for ANTIFUSE PROGRAMMABLE MEMORY ARRAY appearing in the
Official Gazette of February 12, 2013 should be deleted since no patent was
granted."
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 283 |
"All reference to Patent No. 8,374,128 to Yutaka Aoyama, et al of
Kawasaki, Japan for RADIO BASE STATION APPARATUS AND SYCHRONIZATION METHOD
THEREOF appearing in the Official Gazette of February 12, 2013 should be
deleted since no patent was granted."
"All reference to Patent No. 8,374,181 to Min Zha, et al of Shenzhen,
China for METHOD, APPARATUS, AND SYSTEM FOR IMPLEMENTING MULTICAST SERVICES
appearing in the Official Gazette of February 12, 2013 should be deleted
since no patent was granted."
"All reference to Patent No. 8,374,215 to DAVID b. Chester, et al of
Palm Bay, FL for CONTINUOUS TIME CHAOS DITHERING appearing in the official
Gazette of February 12, 2013 should be deleted since no patent was
granted."
"All reference to Patent No. 8,374,216 to David B. Chester, et al of
palm Bay, FL for DISCRETE TIME CHAOS DITHERING appearing in the Official
Gazette of February 12, 2013 should be deleted since no patent was
granted."
"All reference to Patent No. 8,374,217 to Alan J. Michaels, et al of
West Melbourne, FL for PERMISSION-BASED MULTIPLE ACCESS COMMUNICATIONS
SYSTEMS appearing in the Official Gazette of February 12, 2013 should be
deleted since no patent was granted."
"All reference to Patent No. 8,374,222 to Gregory E. Bottomley, et al of
Cary, NC for DIFFERENTIATED LINEAR EQUALIZATION AT COMMUNICATION BASE
STATIONS appearing in the Official Gazette of February 12, 2013 should be
deleted since no patent was granted."
"All reference to Patent No. 8,374,267 to Yasuhiro Hamaguchi of
Ichihara-Shi, Japan for COMMUNICATION METHOD AND RADIO TRANSMITTER
appearing in the Official Gazette of February 12, 2013 should be deleted
since no patent was granted."
"All reference to Patent No. 8,374,286 to Chun Woo Lee, et al of San
Ramon, CA for METHODS AND SYSTEMS FOR IMPROVING FRAME DECODING PERFORMANCE
USING KNOWN INFORMATION appearing in the Official Gazette of February 12,
2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,374,441 to Koji Aoyama, et al of Saitama,
Japan for IMAGE PROCESSING DEVICE, METHOD, AND PROGRAM appearing in the
Official Gazette of February 12, 2013 should be deleted since no patent was
granted."
"All reference to Patent No. 8,374,641 to Kazuhisa Obuchi, et al of
Kawasaki, Japan for MOBILE USERS TERMINAL, MOBILE COMMINCATION SYSTEM, BASE
STATION, AND COMMUNICATION METHOD appearing in the Official Gazette of
February 12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,374,642 to Scott Ferrill Tibbitts, et al
of Niwot, CO for METHOD AND SYSTEM FOR CONTROLLING A MOBILE COMMUNICATION
DEVICE IN A MOVING VEHICLE appearing in the Official Gazette of February
12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,374,707 to Carrel W. Ewing, et al of
Incline Village, NVGilroy, for POWER DISTRIBUTION, MANAGEMENT, AND
MONITORING SYSTEMS AND METHODS appearing in the Official Gazette of
February 12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,374,773 to Morgan Ryman of Anderstorp,
Sweden for SYSTEM FOR WIRELESS TRANSMISSION OF MEASUREMENT RESULTS INTENTED
TO BE USED IN A COUPLING DEVICE AND A USE OF THE SYSTEM IN A VEHICLE
appearing in the Official Gazette of February 12, 2013 should be deleted
since no patent was granted."
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 284 |
"All reference to Patent No. 8,375,023 to Emil Ismalon of Tel-Aviv,
Israel for NEGATIVE ASSOCIATIONS FOR SEARCH RESULTS RANKING AND REFINEMENT
appearing in the Official Gazette of February 12, 2013 should be deleted
since no patent was granted."
"All reference to Patent No. 8,375,028 to Jianquing Wu of Beltsville, MD
for DISCOVERY INFORMATION MANAGEMENT SYSTEM appearing in the Official
Gazette of February 12, 2013 should be deleted since no patent was
granted."
"All reference to Patent No. 8,375,263 to Franklin F. Roohparvar, et al
of Monte Sereno, CA for REFRESH OF NON-VOLATILE MEMORY CELLS BASED ON
FATIGUE CONDITIONS appearing in the Official Gazette of February 12, 2013
should be deleted since no patent was granted."
"All reference to Patent No. 8,375,337 to Joseph D. Sawicki, et al of
Portland, OR for MANUFACTURABILITY appearing in the Official Gazette of
February 12, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,375,540 to Pierre Bar, et al of Grenoble,
France for METHOD FOR MANUFACTURING A MONOLITHIC OSCILLATOR WITH BULK
ACOUSTIC WAVE (BAW) RESONATORS appearing in the Official Gazette of
February 19, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,375,647 to Philip Graham Watters of
Falkirk, United Kingdom for PANEL appearing in the Official Gazette of
February 19, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,375,953 to Vidya Gopal, et al of Fremont,
CA for CONTRACEPTIVE DEVICES AND METHODS appearing in the Official Gazette
of February 19, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,376,056 to Martin Liess of Seelze,
Germany for APPARATUS AND METHODS FOR WEDGE LOCK PREVENTION appearing in
the Official Gazette of February 19, 2013 should be deleted since no patent
was granted."
"All reference to Patent No. 8,376,274 to Brian T. McGeer, et al of
Underwood, WA for METHOD AND APPARATUS FOR AUTOMATED LAUNCH, RETRIEVAL, AND
SERVICING OF A HOVERING AIRCRAFT appearing in the Official Gazette of
February 19, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,376,771 to Daniel Greub, et al of St.
Gallen, Switzerland for CABLE INSERTION HAVING UPSTREAM MOUNTING FIXTURE
appearing in the Official Gazette of February 19, 2013 should be deleted
since no patent was granted."
"All reference to Patent No. 8,376,891 to Marco Bassi, et al of Novate
Milanese, Italy for DRIVE AXLE ASSEMBLY AND DISENGAGEMENT SYSTEM appearing
in the Official Gazette of February 19, 2013 should be deleted since no
patent was granted."
"All reference to Patent No. 8,377,167 to Jin Cao, et al of Allentown,
PA for BURNER AND METHOD FOR PROCESSING OXIDIZABLE MATERIALS appearing in
the Official Gazette of February 19, 2013 should be deleted since no patent
was granted."
"All reference to Patent No. 8,377,189 to Premnathan Naidoo, et al of
Diamondhead, MI for ADHESION AND COHESION MODIFIERS FOR ASPHALT appearing
in the Official Gazette of February 19, 2013 should be deleted since no
patent was granted."
"All reference to Patent No. 8,377,505 to David J. Hiner, et al of
Chandler, AZ for CONFORMAL SHIELDING PROCESS USING FLUSH STRUTURES
appearing in the Official Gazette of February 19, 2013 should be deleted
since no patent was granted."
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 285 |
"All reference to Patent No. 8,378,215 to Todd W. Slinnger, et al of St.
Paul, MN for JOINED DISSIMILAR MATERIALS appearing in the Official Gazette
of February 19, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,378,580 to Yung Lin Lin, et al of Palo
Alto, CA for CIRCUITS AND METHODS FOR DRIVING LIGHT SOURCES appearing in
the Official Gazette of February 19, 2013 should be deleted since no patent
was granted."
"All reference to Patent No. 8,378,765 to Hiroaki Ueno, et al of Osaka,
Japan for CIRCUIT DEVICE INCLUDING A NANO-COMPOSITE DIELECTRIC FILM
appearing in the Official Gazette of February 19, 2013 should be deleted
since no patent was granted."
"All reference to Patent No. 8,378,934 to Hajime Kimura, et al of
Atsugi, Japan for SEMICONDUCTOR DEVICE AND METHOD OF DRIVING THE
SEMICONDUCTOR DEVICE appearing in the Official Gazette of February 19, 2103
should be deleted since no patent was granted."
"All reference to Patent No. 8,379,184 to Akio Ota of Tottori, Japan for
LIQUID CRYSTAL DISPLAY DEVICE appearing in the Official Gazette of February
19, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,379,200 to Julien Bounouar, et al of
Annecy, France for SYSTEM FOR ANALYZING A LOW-PRESSURE GAS BY OPTICAL
EMISSION SPECTROSCOPY appearing in the Official Gazette of February 19,
2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,379,263 to Kiyoshi Umeda of Kawasaki-Shi,
Japan for IMAGE PROCESSING APPARATUS, IMAGE PROCESSING METHOD, AND
COMPUTER-READABLE STORAGE MEDIUM appearing in the Official Gazette of
February 19, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,379,327 to Hisashi Goto, et al of
Tokyo-To, Japan for WIDE ANGLE OPTICAL SYSTEM AND IMAGE PICKUP APPARATUS
USING THE SAME appearing in the Official Gazette of February 19, 2013
should be deleted since no patent was granted."
"All reference to Patent No. 8,379,593 to Hyung-Nam Choi, et al of
Hamburg, Germany for COMMUNICATION TERMIANL, COMMUNICATION DEVICE, METHOD
FOR DATA COMMUNICATION, AND METHOD FOR FREQUENCY ALLOCATION appearing in
the Official Gazette of February 19, 2013 should be deleted since no patent
was granted."
"All reference to Patent No. 8,379,783 to Aaron W. Buchwald, et al of
Newport, CA for HIGH-SPEED SERIAL DATA TRANSCEIVER AND RELATED METHODS
appearing in the Official Gazette of February 19, 2013 should be deleted
since no patent was granted."
"All reference to Patent No. 8,379,959 to Hideaki Miyamoto of Tokyo,
Japan for IMAGE PROCESSING APPARATUS, IMAGE PROCESSING METHOD, AND
COMPUTER-READABLE MEDIUM appearing in the Official Gazette of February 19,
2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,380,086 to Koji Fukuda of Fuchu, Japan
for PHASE DETECTOR CIRCUIT FOR CLOCK AND DATA RECOVERY CIRCUIT AND OPTICAL
COMMUNICATION DEVICE HAVING THE SAME appearing in the Official Gazette of
February 19, 2013 should be deleted since no patent was granted."
"All reference to Patent No. 8,380,250 to Sachin R. Vargantwar of
Overland Park, KS for ENHANCED VIRTUAL TERMINATION TARGET MECHANISM
appearing in the Official Gazette of February 19, 2013 should be deleted
since no patent was granted."
"All reference to Patent No. 8,380,807 to Brian K. Schmidt, et al of
Sunnyvale, CA for NETWORK REPOSITORY FOR METADATA appearing in the Official
Gazette of February 19, 2013 should be deleted since no patent was
granted."
"All reference to Patent No. 8,381,228 to Karlheinz Dorn, et al of
Kalchreuth, Germany for PROGRAM CODE COMPRISING A NUMBER OF PROGRAM CODE
PACKAGE GROUPS STORED ON STORAGE UNITS appearing in the Official Gazette of
February 19, 2013 should be deleted since no patent was granted."
| Certificates of Correction |
Certificates of Correction
for February 26, 2013
6,054,737 8,127,458 8,264,466 8,317,779
6,226,030 8,139,360 8,265,480 8,317,917
6,252,707 8,140,369 8,265,569 8,318,133
6,542,190 8,146,882 8,265,725 8,318,390
6,555,543 8,160,732 8,266,460 8,318,584
6,564,731 8,161,358 8,267,913 8,318,636
6,650,319 8,165,607 8,268,207 8,318,649
6,780,753 8,169,946 8,268,902 8,318,756
6,856,110 8,170,163 8,270,056 8,318,798
6,975,176 8,175,626 8,270,062 8,318,831
6,986,091 8,177,084 8,270,418 8,318,904
6,987,422 8,178,357 8,270,548 8,319,945
7,002,588 8,179,582 8,270,581 8,320,309
7,023,437 8,182,015 8,271,042 8,320,357
7,032,564 8,182,490 8,271,313 8,320,874
7,041,964 8,186,260 8,271,372 8,320,979
7,053,064 8,186,566 8,273,408 8,321,134
7,061,475 8,187,908 8,273,732 8,321,176
7,110,151 8,196,852 8,274,360 8,321,232
7,125,899 8,197,405 8,276,194 8,321,381
7,165,867 8,197,674 8,277,816 8,321,450
7,167,223 8,197,846 8,277,998 8,321,489
7,188,180 8,198,027 8,278,874 8,321,902
7,206,872 8,198,080 8,279,134 8,322,008
7,260,546 8,198,252 8,279,690 8,323,170
7,279,674 8,198,542 8,279,916 8,324,007
7,282,509 8,203,991 8,280,082 8,324,061
7,282,595 8,204,232 8,281,297 8,324,135
7,323,195 8,204,445 8,281,332 8,324,552
7,348,556 8,205,820 8,281,345 8,324,554
7,367,166 8,207,793 8,281,770 8,325,028
7,370,866 8,207,881 8,281,781 8,325,680
7,374,616 8,209,285 8,283,074 8,325,716
7,403,270 8,211,422 8,283,132 8,325,851
7,404,718 8,211,513 8,283,266 8,326,325
7,411,167 8,212,022 8,283,287 8,326,393
7,457,503 8,212,597 8,283,788 8,326,485
7,464,435 8,213,121 8,284,138 8,328,056
7,470,662 8,213,385 8,284,234 8,328,880
7,488,742 8,213,411 8,284,310 8,329,482
7,511,567 8,218,071 8,285,288 8,329,776
7,524,211 8,218,468 8,285,369 8,331,430
7,539,387 8,218,550 8,286,698 8,331,775
7,539,620 8,219,449 8,286,978 8,331,896
7,550,748 8,220,107 8,287,190 8,333,222
7,550,749 8,220,959 8,287,341 8,333,263
7,554,073 8,221,793 8,287,343 8,333,672
7,556,036 8,222,756 8,287,534 8,334,051
7,572,017 8,225,022 8,288,005 8,334,280
7,572,265 8,225,319 8,288,335 8,334,772
7,591,896 8,225,564 8,288,352 8,334,995
7,609,291 8,227,051 8,288,641 8,335,707
7,613,076 8,227,966 8,289,639 8,336,029
7,615,053 8,230,093 8,289,708 8,337,820
7,620,507 8,230,898 8,289,827 8,337,931
7,622,593 8,230,946 8,289,999 8,341,176
7,622,595 8,231,448 8,290,122 8,341,772
7,629,475 8,231,538 8,290,759 8,344,341
7,635,942 8,231,924 8,290,943 8,344,767
7,647,502 8,232,353 8,291,358 8,344,817
7,654,958 8,232,517 8,291,555 8,345,319
7,683,037 8,234,533 8,292,506 8,345,967
| March 19, 2013 |
US PATENT AND TRADEMARK OFFICE |
1388 OG 287 |
7,683,894 8,234,630 8,292,553 8,345,971
7,692,194 8,234,968 8,292,699 8,346,192
7,696,661 8,235,072 8,293,333 8,346,337
7,699,845 8,235,819 8,293,939 8,346,430
7,706,428 8,236,400 8,294,290 8,346,604
7,731,581 8,236,684 8,294,635 8,346,858
7,732,067 8,237,021 8,295,125 8,348,078
7,735,686 8,238,197 8,295,151 8,348,082
7,744,450 8,238,338 8,295,310 8,348,285
7,745,392 8,238,377 8,295,329 8,348,866
7,767,975 8,239,625 8,295,480 8,349,465
7,781,607 8,240,724 8,295,730 8,350,669
7,802,941 8,240,843 8,296,181 8,351,155
7,842,933 8,241,770 8,296,370 8,351,552
7,855,463 8,242,174 8,296,648 8,352,288
7,883,592 8,243,267 8,298,229 8,353,163
7,885,614 8,243,460 8,298,298 8,354,010
7,890,832 8,243,749 8,298,447 8,355,248
7,892,809 8,244,305 8,298,759 8,355,517
7,893,026 8,244,942 8,300,390 8,355,682
7,913,087 8,246,893 8,301,028 8,355,865
7,917,542 8,247,235 8,301,918 8,355,877
7,919,115 8,249,356 8,302,285 8,358,147
7,928,203 8,249,704 8,305,883 8,359,504
7,929,593 8,249,714 8,306,376 8,364,014
7,935,697 8,249,975 8,308,175 8,364,633
7,936,794 8,251,688 8,308,554 D. 610,352
7,943,617 8,251,823 8,309,057 D. 660,931
7,944,915 8,253,349 8,309,541 D. 661,868
7,954,569 8,253,724 8,309,712 RE. 39,133
7,956,192 8,253,757 8,310,018 RE. 40,002
7,980,244 8,254,461 8,310,324 RE. 41,893
7,992,283 8,255,291 8,310,483 RE. 41,895
7,998,536 8,256,665 8,311,735 RE. 42,194
8,012,747 8,257,686 8,311,938 RE. 42,226
8,023,276 8,257,699 8,312,037 RE. 43,374
8,030,689 8,257,731 8,312,451 RE. 43,566
8,035,965 8,258,781 8,312,692 RE. 43,594
8,048,072 8,259,212 8,313,064 RE. 43,598
8,056,728 8,259,862 8,313,107 RE. 43,607
8,074,055 8,259,977 8,313,110 RE. 43,608
8,082,248 8,260,067 8,313,213 RE. 43,610
8,084,501 8,260,146 8,313,354 RE. 43,624
8,084,599 8,261,233 8,314,245 RE. 43,645
8,092,797 8,261,934 8,314,689 RE. 43,685
8,105,025 8,262,140 8,314,765 RE. 43,690
8,108,734 8,263,266 8,315,731 RE. 43,704
8,111,850 8,263,594 8,316,005 RE. 43,827
8,118,620 8,263,787 8,316,651 RE. 43,955
8,119,339 8,264,002 8,316,938
8,120,292 8,264,049 8,317,632
| Summary of Final Decisions Issued by the Trademark Trial and Appeal Board |
SUMMARY OF FINAL DECISIONS ISSUED BY THE TRADEMARK TRIAL AND APPEAL BOARD
February 11, 2013 – February 15, 2013
| Date Issued |
Type of Case(1) |
Proceeding or Appn. Number |
Party or Parties |
TTAB Panel (2) |
Issue(s) |
TTAB Decision |
Opposer’s or Petitioner’s mark and goods or services |
Applicant’s or Respondent’s mark and goods or services |
Mark and goods or services cited by Examining Attorney |
Issued as Precedent of TTAB |
| 2-11 |
EX
|
85187101 |
SpireBlack, LLC |
Seeherman Kuhlke Masiello* |
2(d) |
Refusal Affirmed |
|
DERMPLEX [Alpha hydroxy acids (AHAs), retinols, and peptides, all sold as integral ingredients of age spot reducing creams, anti-aging creams, anti-freckle creams, anti-wrinkle creams, beauty creams and lotions, body creams, face and body beauty creams, face and body creams, face creams and cleansers containing benzoyl peroxide for cosmetic purposes, face creams for cosmetic use] |
D DERMAPLEX-MD (and design) [non-medicated skin creams] |
No |
| 2-13 |
EX
|
85141753 |
WGI Innovations, Ltd. |
Seeherman Kuhlke*
Shaw |
2(d) |
Refusal Reversed |
|
FIELDVU [handheld computers for viewing, editing and transferring digital pictures obtained from game scouting cameras] |
FIELDVIEW [a wide variety of goods in Class 9; and a wide variety of services in Class 38] |
No |
| 2-13 |
EX |
85135885 |
Singapore-math.com, Inc. |
Seeherman Ritchie Shaw* |
2(d) |
Refusal Affirmed |
|
SM (and design) [educational learning cards, flash cards, activity cards, workbooks, textbooks, activity books, story books, puzzle books, printed puzzles, teacher guides, manuals, math themed posters, and educational booklets in the field of mathematics] [educational card games in the field of mathematics] |
EDICIONES SM (and design; three registrations) [publishing books and periodicals on all subjects] [book publishing; electronic publishing] [a wide variety of publications and books, including on math and for education] SM (and design) [book publishing; electronic publishing] |
No |
| 2-14 |
EX
|
85245646 |
WGI Innovations, Ltd. |
Kuhlke*
Wolfson
Masiello |
2(e)(1) |
Refusal Reversed |
|
LIVEVIEW [game scouting cameras] |
|
No |
| 2-14 |
OPP
|
91193335 |
Embarcadero Technologies, Inc. v. RStudio, Inc. |
Bucher Wellington* Ritchie |
2(d); 18 (as affirmative defense) |
Opposition Sustained as to published identifications; Opposition Dismissed as to amended and more limited identifications |
ER/STUDIO [computer software] [entity relationship modeling software for SQL databases] |
RSTUDIO (three applications; amended IDs listed) [computer software for advanced statistical computing using the R computing language and the data from two dimensional datasets] [providing training in the use of computer software for advanced statistical computing and in advanced statistical methods, both using the R computing language and data from two dimensional datasets] [application service provider (ASP) featuring software, consultation regarding computer software, design and development of computer software, and troubleshooting of problems with computer software, all for advanced statistical computing using the R computing language and data from two dimensional datasets] |
|
Yes |
| 2-14 |
EX |
85281102 |
Orange 21 North America Inc. |
Cataldo Ritchie
Wolfson* |
2(d) |
Refusal Affirmed |
|
DIRK [sunglasses] |
DIRK BIKKEMBERGS [spectacles] |
No |
| 2-14 |
CANC
(SJ) |
92052716 |
Under Armour, Inc. v. Evade, LLC |
Zervas Wellington Shaw [Opinion "By the Board" (Krisp)] |
2(d); 43(c); affirmative defense that 43(c) claim is not available |
Respondent’s Motion for Summary Judgment Granted (43(c) claim dismissed) |
UNDER ARMOUR (numerous registrations) [retail store services featuring apparel and sporting goods; and footwear, sporting goods and related accessories] |
EVADE OFFSHORE ARMOR (with and without design; two registrations, both for) [shirts, hats, visors, sweatshirts, jackets, shorts in the field of fishing] |
|
No |
(1) EX=Ex Parte Appeal; OPP=Opposition; CANC=Cancellation; CU=Concurrent Use; (SJ)=Summary Judgment; (MD)=Motion to Dismiss; (R)=Request for Reconsideration; (REM)=Decision on Remand (2) *=Opinion Writer; (D)=Dissenting Panel Member
| Mailing and Hand Carry Addresses for Mail to the United States Patent and Trademark Office |
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Mail Stop Document All requests for certified or uncertified
Services copies of patent or trademark documents.
Mail Stop EEO Mail for the Office of Civil Rights.
Mail Stop External Mail for the Office of External Affairs.
Affairs
Mail Stop Interference Communications relating to interferences and
applications and patents involved in interference.
Mail Stop M Mail to designate or change a fee
Correspondence address, or other correspondence related to
maintenance fees, except payments of
maintenance fees in patents. See below for
the address for maintenance fee payments.
Mail Stop OED Mail for the Office of Enrollment and Discipline.
Maintenance Fee Payments
Unless submitted electronically over the Internet at www.uspto.gov,
payments of maintenance fees in patents should be mailed through the
United States Postal Service to:
United States Patent and Trademark Office
P.O. Box 979070
St. Louis, MO 63197-9000
Alternatively, payment of maintenance fees in patents (Attn: Maintenance
Fee) using hand-delivery and delivery by private courier may be made to:
Director of the U.S. Patent and Trademark Office
Attn: Maintenance Fee
2051 Jamieson Avenue, Suite 300
Alexandria, Virginia 22314
Deposit Account Replenishments
To send payment to replenish deposit accounts, send the payments through
the United States Postal Service to:
United States Patent and Trademark Office
P.O. Box 979065
St. Louis, MO 63197-9000
Alternatively, deposit account replenishments (Attn: Deposit Accounts)
using hand-delivery and delivery by private courier (e.g., FedEx, UPS, etc.)
may be delivered to:
Director of the U.S. Patent and Trademark Office
Attn: Deposit Accounts
2051 Jamieson Avenue, Suite 300
Alexandria, VA 22314
Information abount deposit account replenishments may also be found on
the USPTO's web site at
http://www.uspto.gov/about/offices/cfo/finance/Deposit_Account_
Replenishments.jsp
Top of Notices
| Reference Collections of U.S. Patents Available for Public Use in Patent and Trademark Resource Centers |
Reference Collections of U.S. Patents Available for
Public Use in Patent and Trademark Resource Centers
The following libraries, designated as Patent and Trademark Resource Centers
(PTRCs), provide public access to patent and trademark information received
from the United States Patent and Trademark Office (USPTO). This
information includes all issued patents, all registered trademarks, the
Official Gazette of the U.S. Patent and Trademark Office, search tools such
as the Cassis CD-ROM suite of products and supplemental information in a
variety of formats including online, optical disc, microfilm and paper.
Each PTRC also offers access to USPTO resources on the Internet and to
PubWEST (Web based examiner search tool), a system used by patent examiners
that is not available on the Internet.
Staff assistance and training is provided in the use of this information.
All information is available free of charge. However, there may be charges
associated with the use of photocopying and related services. Hours of
service to the public vary, and anyone contemplating use of these
collections at a particular library is urged to contact that library in
advance about its services and hours to avoid inconvenience.
State Name of Library Telephone Contact
Alabama Auburn University Libraries (334) 844-1737
Birmingham Public Library (205) 226-3620
Alaska Fairbanks: Keith B. Mather Library,
Geophysical Institute,
University of Alaska, Fairbanks (907) 474-2636
Arkansas Little Rock: Arkansas State
Library (501) 682-2053
California Los Angeles Public Library (213) 228-7220
Riverside: University of
California, Riverside, Orbach
Science Library (951) 827-3316
Sacramento: California State
Library (916) 654-0261
San Diego Public Library (619) 236-5813
San Francisco Public Library (415) 557-4500
Sunnyvale Public Library (408) 730-7300
Colorado Denver Public Library (720) 865-1711
Connecticut Fairfield: Ryan-Matura Library
Sacred Heart University (203) 371-7726
Delaware Newark: University of Delaware
Library (302) 831-2965
Dist. of Columbia Washington: Howard University
Libraries (202) 806-7252
Florida Fort Lauderdale: Broward County
Main Library (954) 357-7444
Miami-Dade Public Library (305) 375-2665
Orlando: University of Central
Florida Libraries (407) 823-2562
Georgia Atlanta: Library and Information
Center, Georgia Institute of
Technology (404) 385-7185
Hawaii Honolulu: Hawaii State Library (808) 586-3477
Illinois Chicago Public Library (312) 747-4450
Macomb: Western Illinois
University Libraries (309) 298-2722
Indiana Indianapolis-Marion County Public
Library (317) 269-1741
West Lafayette Siegesmund
Engineering Library,
Purdue University (765) 494-2872
Iowa Davenport: Davenport Public Library (563) 326-7832
Kansas Wichita: Ablah Library, Wichita
State University 1 (800) 572-8368
Kentucky Louisville Free Public Library (502) 574-1611
Louisiana Baton Rouge: Troy H. Middleton
Library, Louisiana State University (225) 388-8875
Maine Orono: Raymond H. Fogler Library,
University of Maine (207) 581-1678
Maryland Baltimore: University of Baltimore
Law Library (410) 837-4554
College Park: Engineering and
Physical Sciences Library,
University of Maryland (301) 405-9157
Massachusetts Amherst: Physical Sciences Library,
University of Massachusetts (413) 545-2765
Boston Public Library (617) 536-5400
Ext. 4256
Michigan Ann Arbor: Art, Architecture &
Engineering Library,
University of Michigan (734) 647-5735
Big Rapids: Ferris Library for
Information, Technology &
Education, Ferris State
University (231) 592-3602
Detroit: Public Library (313) 481-1391
Minnesota Hennepin County Library
Minneapolis Central Library (612) 543-8000
Mississippi Jackson: Mississippi Library
Commission (601) 961-4111
Missouri Kansas City: Linda Hall Library (816) 363-4600
Ext. 724
St. Louis Public Library (314) 352-2900
Montana Butte: Montana Tech Library of
the University of Montana (406) 496-4281
Nebraska Lincoln: Engineering Library,
University of Nebraska-Lincoln (402) 472-3411
New Hampshire Concord: University of New
Hampshire School of Law (603) 513-5130
Nevada Reno: University of Nevada, Reno,
Mathewson-IGT Knowledge Center (775) 784-6500
Ext. 257
New Jersey Newark Public Library (973) 733-7779
Piscataway: Library of Science and
Medicine, Rutgers University (732) 445-2895
New Mexico Albuquerque: University of
New Mexico General Library (505) 277-4412
New York Albany: New York State Library (518) 474-5355
Buffalo and Erie County Public
Library (716) 858-7101
Rochester Public Library (716) 428-8110
New York: New York Public Library,
Science Industry & Business Library (212) 592-7000
North Carolina Charlotte: J. Murrey Atkins
Library, (704) 687-2241
University of North Carolina at
Charlotte (919) 515-2935
North Dakota Grand Forks: Chester Fritz Library,
University of North Dakota (701) 777-4888
Ohio Akron - Summit County Public (330) 643-9075
Library
Cincinnati and Hamilton County,
Public Library of (513) 369-6932
Cleveland Public Library (216) 623-2870
Dayton: Paul Laurence Dunbar
Library, Wright State University (937) 775-3521
Toledo/Lucas County Public Library (419) 259-5209
Oklahoma Stillwater: Oklahoma State
University Edmon Low Library (405) 744-6546
Pennsylvania Philadelphia, The Free Library of (215) 686-5394
Pittsburgh, Carnegie Library of (412) 622-3138
University Park: PAMS Library,
Pennsylvania State University (814) 865-7617
Puerto Rico Bayamon: Learning Resources Center,
University of Puerto Rico (787) 993-0000
Ext. 3222
Mayaquez General Library,
University of Puerto Rico (787) 832-4040
Ext. 2023
Bayamon, Learning Resources Center,
University of Puerto Rico (787) 786-5225
Rhode Island Providence Public Library (401) 455-8027
South Carolina Clemson University Libraries (864) 656-3024
South Dakota Rapid City: Devereaux Library,
South Dakota School of Mines and
Technology (605) 394-1275
Tennessee Nashville: Stevenson Science and
Engineering Library, Vanderbilt
University (615) 322-2717
Texas Austin: McKinney Engineering
Library, University of Texas at
Austin (512) 495-4511
College Station: West Campus
Library, Texas A & M University (979) 845-2111
Dallas Public Library (214) 670-1468
Houston: The Fondren Library, Rice
University (713) 348-5483
Lubbock: Texas Tech University (806) 742-2282
San Antonio Public Library (210) 207-2500
Utah Salt Lake City: Marriott Library,
University of Utah (801) 581-8394
Vermont Burlington: Bailey/Howe Library,
University of Vermont (802) 656-2542
Washington Seattle: Engineering Library,
University of Washington (206) 543-0740
West Virginia Morgantown: Evansdale Library,
West Virginia University (304) 293-4695
Wisconsin Wendt Commons Library,
University of Wisconsin-Madison (608) 262-0696
Milwaukee Public Library (414) 286-3051
Wyoming Cheyenne: Wyoming State Library (307) 777-7281
Top of Notices
| Patent Technology Centers |
| PATENT TECHNOLOGY CENTERS |
| AVERAGE FILING DATE OF APPLICATIONS RECEIVING A FIRST OFFICE ACTION IN THE LAST 3 MONTHS1
|
Technology
Center |
GAU |
Avg Filing Date |
| 1600 |
BIOTECHNOLOGY, AND ORGANIC CHEMISTRY |
| |
1610 |
12/17/2011 |
| |
1620 |
11/07/2011 |
| |
1630 |
11/01/2011 |
| |
1640 |
12/08/2011 |
| |
1650 |
12/11/2011 |
| |
1660 |
10/17/2011 |
| |
TOTAL |
11/23/2011 |
| |
|
|
| 1700 |
CHEMICAL AND MATERIALS ENGINEERING AND DESIGNS |
| |
1710 |
04/24/2011 |
| |
1720 |
06/30/2011 |
| |
1730 |
10/26/2011 |
| |
1740 |
08/08/2011 |
| |
1750 |
05/06/2011 |
| |
1760 |
10/05/2011 |
| |
1770 |
07/18/2011 |
| |
1780 |
06/08/2011 |
| |
1790 |
09/11/2011 |
| |
TOTAL |
07/18/2011 |
| |
|
|
| 2100 |
COMPUTER ARCHITECTURE AND SOFTWARE |
| |
2110 |
04/24/2011 |
| |
2120 |
02/01/2011 |
| |
2140 |
05/09/2011 |
| |
2150 |
10/26/2011 |
| |
2160 |
12/02/2011 |
| |
2170 |
05/15/2011 |
| |
2180 |
02/07/2011 |
| |
2190 |
01/01/2011 |
| |
TOTAL |
05/15/2011 |
| |
|
|
| 2400 |
NETWORKING, MULTIPLEXING, CABLE AND SECURITY |
| |
2410 |
04/02/2011 |
| |
2420 |
07/15/2011 |
| |
2430 |
06/27/2011 |
| |
2440 |
05/21/2011 |
| |
2450 |
05/09/2011 |
| |
2460 |
04/05/2011 |
| |
2470 |
04/21/2011 |
| |
2480 |
12/17/2010 |
| |
2490 |
06/05/2011 |
| |
TOTAL |
04/27/2011 |
| |
|
|
| 2600 |
COMMUNICATIONS |
| |
2630 |
04/11/2011 |
| |
2640 |
09/14/2011 |
| |
2650 |
03/30/2011 |
| |
2660 |
04/24/2011 |
| |
2670 |
12/23/2010 |
| |
2680 |
04/15/2011 |
| |
2690 |
01/10/2011 |
| |
TOTAL |
04/11/2011 |
| |
|
|
| 2800
|
SEMICONDUCTORS/MEMORY, CIRCUITS/MEASURING AND TESTING, OPTICS/PHOTOCOPYING |
| |
2810 |
10/05/2011 |
| |
2820 |
08/23/2011 |
| |
2830 |
06/14/2011 |
| |
2850 |
03/18/2011 |
| |
2860 |
08/11/2011 |
| |
2870 |
06/14/2011 |
| |
2880 |
07/18/2011 |
| |
2890 |
10/29/2011 |
| |
TOTAL |
07/12/2011 |
| |
|
|
| 2900
|
|
| |
2910 |
03/29/2012 |
| |
TOTAL |
03/29/2012 |
| |
|
|
| 3600
|
TRANSPORTATION, CONSTRUCTION, ELECTRONIC COMMERCE, AGRICULTURE, NATIONAL SECURITY AND LICENSE AND REVIEW
|
| |
3610 |
09/26/2011 |
| |
3620 |
08/29/2011 |
| |
3630 |
10/17/2011 |
| |
3640 |
07/06/2011 |
| |
3650 |
04/27/2011 |
| |
3660 |
06/14/2011 |
| |
3670 |
07/27/2011 |
| |
3680 |
09/14/2011 |
| |
3690 |
02/22/2012 |
| |
TOTAL |
08/14/2011 |
| |
|
|
| 3700
|
MECHANICAL ENGINEERING, MANUFACTURING AND PRODUCTS |
| |
3710 |
09/11/2011 |
| |
3720 |
04/21/2011 |
| |
3730 |
05/27/2011 |
| |
3740 |
11/13/2010 |
| |
3750 |
03/21/2011 |
| |
3760 |
08/02/2011 |
| |
3770 |
06/08/2011 |
| |
3780 |
06/23/2011 |
| |
TOTAL |
04/27/2011 |
| |
|
|
| |
1 Report last updated on 1-31-2013. |
Top of Notices
Top of Notices March 19, 2013