On July 26, 2012, the USPTO released in the Federal Register proposed changes to the patent rules and examination guidelines for implementation of the America Invents Act’s (AIA’s) change to a “first-inventor-to-file” system. Public comments on the proposal must be submitted to the USPTO no later than October 5, 2012. The proposed rules interpret and implement Section 3 of the AIA by defining how to show that certain disclosures are not prior art, where this question may exist, refining the procedures for claims of priority and filing certified copies of foreign priority applications and requiring applicants to specify if the AIA should apply to a patent application where that is not self-evident. How the examining corps is to interpret Section 3 of the AIA is set forth in the proposed examination guidelines as a prelude to adding them to the Manual of Patent Examining Procedure (MPEP). March 16, 2013 will bring many changes to patent prosecution practice, and these proposals give insight into how applicants will interact with the USPTO under the AIA.
Prior art provisions of AIA 35 U.S.C §102 define the new “first-inventor-to-file” system by qualifying as “prior art” the documents or events that came into being before the “effective filing date of the claimed invention,” which is either the actual U.S. filing date or the earliest valid priority date based on a U.S., international or foreign priority application. In contrast, pre-AIA provisions defined prior art either relative to the date the invention was made or to the filing date of the U.S. patent application for the claimed invention.
Furthermore, the new system makes it essential, for several reasons, to document public disclosures by the inventors of their inventions, as well as communications by the inventors of their inventions to other parties. Including statements on inventor disclosures in patent applications may simplify their examination. The patenting entity may also be called to establish by evidence the dates and the content of inventor communications in order to avoid the characterization of the inventor-derived disclosures as prior art. For research universities and other entities actively engaged in publication activities and other types of scientific communication, it is particularly important to document and regularly review past and future publications and all other types of public disclosure by inventors as well as non-inventors (e.g., lab personnel, students, public relations officers), including discussions at scientific meetings, pertaining to the claimed inventions.
Systematic attention to monitoring and documentation of inventor communications may help to avoid loss of the potential patent rights due to prior art stemming from the disclosures of the subject matter that a patenting entity is attempting to protect. Another practical advantage of monitoring and documenting the communications pertaining to the invention is that the activities falling into the new category “otherwise available to the public” should be disclosed to the USPTO in information disclosure statements to fulfill the duty of the disclosure requirement, which will remain in force after the AIA takes effect. Joint research agreements should be drafted to ensure that their scope covers the desired inventing activities, and appropriate care should be taken to include the required information in patent applications.
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