The Leahy-Smith America Invents Act, Public Law 112-29, 125 Stat 284 (2011) (the “AIA”) changed the American patent system from a “first to invent” to a “first inventor to file” system on March 16, 2013. It did so by replacing the section of the Patent Act that that defines what what is not novel — in other words, what constitutes “prior art” — for a particular patent claim. A claim in a patent cannot cover any subject matter that is not novel or, said another way, that is part “prior art.” Nor can it cover any subject matter that would be obvious to someone of ordinary skill in the field of the invention based on the prior art. An AIA patent is one to which the new first inventor to file regime applies.
The change was dramatic and unfavorable to patent owners. To some degree the AIA simplifies determination of prior art but mostly in ways that do not favor patent owners. More importantly it substantially expands what can be prior art.
Applications filed on or after March 16, 2013 will be AIA patents unless they claim the benefit of the filing date of an application filed before this date. However, even if they do, they might nevertheless fall into the AIA regime if they are a “transitional application.”
Briefly, the AIA will apply(a) to claims with an “effective filing date” on or after March 16, 2013 and (b) to claims, regardless of their effective filing date, that are presented in applications filed after March 16, 2013 that contain or are amended to contain a claim that has an effective filing date on or after March 16, 2013, or that claim the benefit of the filing date of such an application.
The AIA broadened the definition of prior art in many ways and made it is easier to determine with a high degree of confidence whether or not a particular reference is prior art. Therefore, someone challenging a patent that might be transitional will feel the urge to characterize a patent as an AIA patent, while the patent owner will likely fight to avoid that characterization.
Overview of AIA section 102
AIA 102(a) defines “prior art” and starts with two simple novelty rules that amount to an absolute novelty standard.
The Basic Rules
The first rule, found in post-AIA 102(a)(1), is that a claimed invention cannot have been made available to the public in any way, including by patenting or printed publication, before the earliest effective filing date for the claimed invention.
The second rule, found in post-AIA 102(a)(2), specifies that all issued U.S. patents, U.S. published applications, and WIPO published PCT applications designating the U.S., and that have been “effectively filed” before the earliest effective filing date of a claimed invention, constitute prior art as to that claimed invention.
“Effectively filed” is defined by AIA 102(d). A more detailed explanation of this section is given below but suffice it to say that foreign priority dates are taken into account under the AIA when determining when a U.S. patent or published U.S or PCT application was effectively filed.
The Exceptions
The relative simplicity of 102(a) is, however, a bit of a mirage. We are talking about the U.S. legal system, after all. Nothing can be simple or predictable. AIA 102(b) creates several complicated exceptions to these two rules.
AIA 102(b)(1) removes from the prior art subject matter in a public disclosure that would otherwise be prior art under AIA 102(a)(1) in two situations. The first situation is when the inventor, or someone who has derived the subject matter from an inventor, discloses it within one year of the earliest effective filing date of a claim. 35 USC 102(b)(1)(A). The “disclosure” does not need to have been a public disclosure. It applies to all disclosures. The second situation involves subject matter in a third-party disclosure occurring after a disclosure of the subject matter by the inventor or a person who derived it from him. Id. at 102(b)(1)(B). However, unlike the first situation, the disclosures by the inventor (or the person who obtained the subject matter from an inventor) must have been public.
There are, of course, similar exceptions to the second rule, which relates to earlier filed patents and patent applications. Subject matter in an application that would otherwise be prior art under AIA 102(b)(2) is not prior art if any one of the following is true:
(i) The subject matter disclosed was derived from the inventor or a joint inventor. 35 U.S.C. §102(b)(2)(A) (2014).
(ii) The subject matter, before it was effectively filed in the earlier patent or patent application, had been publicly disclosed by either an inventor or someone who derived the subject matter from an inventor. Id. at §102(b)(2)(B); or
(iii) The subject matter disclosed in the earlier application and the claimed invention were “owned by the same person or subject to an obligation of assignment to the same person” as of the effective filing date of the earlier application. Id.at § 102(b)(2)(C).
Although this last exception is similar to pre-AIA 103(e)(1), it should be noted that pre-AIA section 102(e) applied only to applications “of another.” Earlier filed applications by the same inventive entity were not prior art. Now an earlier application by the same inventive entity can be prior art if it is not commonly owned.
When a Patent or Patent Application Is Prior Art Under AIA 102(A)(2)
“Patents” are those issued under 35 U.S.C. § 151, and thus are limited to U.S. patents. “Applications” must be published or deemed published under 35 U.S.C. § 122(b), and are thus limited to U.S. non-provisional applications and WIPO publications of PCT applications that designate the U.S. The WIPO publication does not need to be in English and is not limited to those filed on or after November 29, 2000, as was the case under pre-AIA law. See Examination Guidelines at 11077. Applications that are abandoned, subject to secrecy orders, or for a design patent are not included. See 35 U.S.C. §122(b)(2) (2014).
US patents and US and PCT applications published before the earliest effective filing date of the claimed invention are always printed publications under post-AIA 102(a)(1).
If the claimed invention and the prior patent or patent application are not commonly owned or subject to an obligation to assign to the same person as of the filing date of the same invention, or the claimed invention is not the result of activities undertaken within the scope of a joint research agreement, follow these rules:
(i) If the patent or patent application does not have a priority or benefit claim, then it is prior art as of its filing date. 35 U.S.C. § 102(a)(2) (2014).
(ii) If there is a proper claim of priority or benefit to an earlier application, and the relevant subject matter is found in the earlier application, then that subject matter is prior art as of the priority date, regardless of where the priority application was filed or what language it is filed in. See Examination Guidelines at 11064. See, also, 35 U.S.C. §§ 102(a)(2) and 102(d)(2) (2014).
(iii) If the relevant subject matter in the patent or patent application was obtained directly or indirectly from the invention, the subject matter is not prior art. Id. at §102(b)(2)(A).
(iv) If the relevant subject matter in the patent or patent application had been publicly disclosed by an inventor, or someone who had obtained the subject matter directly or indirectly from an inventor, before the patent or patent application was effectively filed — remember, you must take into account valid priority and benefit claims — then it is not prior art. Id. at §102(b)(2)(B).
If the patent or patent application and the claimed invention are commonly owned as the effective filing date of the claimed invention, then the subject matter disclosed in the patent or patent application is not prior art. Id. at §102(b)(2)(B).
If a claimed invention is made as a result of activities within the scope of a joint research agreement that was entered into on or before the effective filing date of the claimed invention, and the subject matter disclosed in a patent or patent application was developed, and the claimed invention was made, by or on behalf of one or more parties to the joint research agreement, then that subject matter will not be prior art under post-AIA 102(a)(2) if the application for the claimed invention includes or is amended to include the names of the parties to the joint research agreement. The subject matter and the claimed invention will be deemed to be commonly owned. See id. at §102(b)(2)(C).
The differences between pre-AIA and AIA novelty
Despite the complications and flaws of AIA 102, petitioners in any kind of AIA review at the PTAB — inter partes review (IPR), covered business method review (CBMR), or post grant review (PGR) — will typically prefer, if possible, that the challenged patent be an AIA patent.
First, the date of conception of the invention is no longer relevant to determining whether or not a preference is prior art. See, generally, 35 U.S.C. §102(a) (2014). There is no longer pre-AIA 102(e) prior art, and thus there is no reason to avoid relying on a previously filed application out of fear that one could be sworn behind.
Furthermore, pre-AIA 102(e) limited the prior art effect of patents and published applications to those filed in the U.S. before the date of invention. Under the AIA, applications claiming priority to foreign filed applications will have prior-art effect as of their priority dates. This change effectively overrules the holding in In re Hilmer, 359 F.2d 859 (C.C.P.A. 1966), which held that the filing date of an application for purposes of pre-AIA 102(e) was the filing date in the United States (or the filing date of the PCT published application), taking into benefit claims under 35 U.S.C. §§119(e) and 120, and not its foreign priority date.
Consequently, there are fewer uncertainties under the AIA, such as those associated with using a pre-AIA 102(e) reference. A petitioner can have the confidence that a previously filed application is prior art. However, uncertainty remains under AIA 102(b), as the date of conception could conceivably be a fact helpful in showing whether a derivation has occurred. Therefore, there is reason to continue to create and maintain records of conception and evidence of people with access to information about inventions.
Second, there is no one-year grace period for third party prior art. The one-year grace period is irrelevant as to third party disclosure unless one of the inventor disclosure exceptions in post-AIA 102(b) applies. Under pre-AIA 102(b), printed publications, public uses, and offers for sale could only be prior art if they were occurred more than one year prior to the filing date, regardless of whether they were by the inventor or a third party. Now any publication by a third party is prior art if it was published prior to the earliest effective filing date of the claim, unless its subject matter was derived from the inventor, see 35 U.S.C. §102(b)(1)(A), or the inventor first published the subject matter within one year of the earliest effective filing date of the claimed invention, see id.at §102(b)(1)(B).
Third, AIA 102 places no geographical limitations or conditions on prior art. Public use, public knowledge, and “on sale” activities no longer need to occur within the United States to constitute prior art.
Fourth, the amendments to Section 102 eliminated the Hilmer doctrine. According to In re Hilmer, 359 F.2d 859 (C.C.P.A. 1966) a claim of priority to an application filed outside the United States or a PCT application designating the U.S. is not taken into account when determining the pre-AIA 102(e) “filing date” of an application in the United States. The definition of “effectively filed” in post-AIA 102(d) makes clear that claims of priority under 35 U.S.C. §119 to foreign applications are to be taken into account when determining the “effectively filed” date of an application under post-AIA 102(a)(2). See 35 U.S.C. § 102(d) (2014).
Fifth, an earlier filed application by the same inventors will be prior art if the claimed invention, as of its effective filing date, and the earlier application are not owned by, or subject to an obligation to assign to, the same person. Under the pre-AIA 102(e), a first application filed by the same inventive entity as the second application was not prior art.
In short, the subject matter in a United States patent, published patent application, or published PCT application that is effectively filed earlier than the effective filing date of the claimed invention will always be prior art unless one of the following is true:
(i) It is commonly owned with the claimed invention as of the effective filing date of the claimed invention.
(ii) It is deemed to be commonly owned under post-AIA 102(c) (joint research agreements).
(iii) It is subject to an obligation to assign the same person, as of the effective filing date of the claimed invention.
(iv) The subject matter was derived from the inventor or a joint inventor.
(v) The subject matter was publicly disclosed by the inventor or a joint inventor or by another who had obtained from either the inventor or a joint inventor within one year of the effective filing date of the claimed invention.
On the other hand, filing a patent on an invention outside the United States more than 12 months earlier no longer bars application in the US, as it would under pre-AIA 102(d). There is no counterpart to pre-AIA §102(d) in post-AIA 102. Therefore, an applicant could, unless there is other prior art, still obtain a patent after the priority period expires. This puts the US system on even footing with those in other countries.
The Supreme Court’s decision in Helsin Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. decision in January of 2019, held that “on sale” in section 102(a)(1) still had its pre-AIA meaning. It thus appears that the AIA substantially broadened the universe of prior art available to invalidate a patent in a number of ways without narrowing it.
How to determine whether a patent is an AIA patent
The Basic Rule
Section 3(n)(1) of the AIA determines whether or not a patent is subject to AIA Section 102 as well as whether or not the patents are subject to PGR. It says:
“IN GENERAL. —Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date March 16, 2013 described in this paragraph; or
(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.”
If the filing date of the application is before March 16, 2013 it’s simple: it is a pre-AIA patent. For national phase PCT applications, use the filing date of the PCT application.
If the filing date of the application is on or after March 16, 2013, it depends on the earliest effective filing date of the claims presented in it and any preceding application from which it claims to benefit under 25 USC 120.
If a claim is presented at any time while an application is pending, even if it is subsequently amended or canceled, and has an earliest effective date on or after March 16, 2013, the provisions of the AIA will apply to the patent that issues, as well as any patent child application claiming the benefit of the application. This is true even if the patent grant that issues has only claims entitled to a filing date prior to March 16, 2013.
Thus, the only time that an application filed on or after March 16, 2013 will be treated under pre-AIA law is if it (1) claims the benefit of an application filed prior to March 16, 2013 and (2) every claim presented at any time during the examination of the application and in any previous application to which benefit is claimed under 35 USC 119 that is filed after March 16, 2013 has an earliest effective filing date prior to March 16, 2013. The moment that a claim is presented in an application that has an effective filing date on or after March 16, 2013, that application and all child applications are forever tainted and will be treated as an AIA patent.
Analysis
A typical analysis for determining whether a patent is an AIA patent would follow these steps:
• Is the application filing date after March 16, 2013? If not, it is a pre-AIA patent. If yes, proceed to the next step.
• Was a benefit claim made in the application under 35 USC 120, 121 or 365(c) at any time? If not, then it is an AIA patent. If yes, proceed to the next step.
• Was the benefit claim to an application filed prior to March 16, 2013? If not, it is an AIA patent. If yes, proceed to the next step.
• Determine the effective filing date of each claim that was presented in the application (as filed and in an amendment). If the effective filing date is on or after March 16, 2013, then it is an AIA patent. Otherwise, go to the next step.
• For each application to which a benefit claim is made and that was filed on or after March 16, 2013, was there a claim presented in the application at any time (at filing or in an amendment) that had an effective filing date on or after March 16, 2013? If not, then it is not an AIA patent. If yes, it is an AIA patent.
The PTO requires an applicant to alert the USPTO to a “transition application” that has or had at any time a claim with the effective filing date after March 16, 2013. A transition application is one filed on or after March 16, 2013, that claims the benefit of or priority to an application where the filing date of a foreign, U.S. provisional, U.S. nonprovisional, or international application is prior to March 16, 2013. An applicant is not required to provide this information if the transition application claims the benefit of an earlier transition application in which a 37 CFR 1.55 or 37 CFR 1.78 statement has been filed.
Thus, the analysis should not rely on the presence or absence of this statement or for that matter any statement concerning whether the later application is a “continuation”, “divisional” or “continuation-in-part” of an earlier application. If the applicant’s transition application statement is in error will they be held to this statement? The answer is not clear. And, of course, the applicant’s decision not to file the statement, as well as the applicant’s characterization of a new application as a continuation or divisional should never be relied on. For example, even if the specification is identical to the parent application, new claims included with the filing that are not supported by the parent application might nevertheless be considered valid under section 112 by reason of their inclusion when the child application was filed.
Determining the effective filing date of a claim
Defined in 35 U.S.C. §100(i)(1)(2014), the “effective filing date” for a particular claimed invention in a patent or application for patent is the earlier of:
(i) the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(ii) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).
Sections 119 generally concern Paris convention priority, and sections 120, 121 and 365(c) concern internal priority. Thus, the effective filing date depends on whether the claimed subject matter is entitled to (i) Paris Convention priority of a previously filed application under sections 119 or 365(a) or (ii) the benefit of an earlier filed U.S. application pursuant to section 120 (continuation), section 121 (divisional application), or an earlier filed PCT application designating the U.S. under 365(c).
Under 35 USC §120, “An application for a patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States…shall have the same effect, as to such invention, as though filed on the date of the prior application.”
To obtain the benefit of the filing date of a parent application, a claim in the later-filed application must be supported by the written description in the parent “in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). See also Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010). The disclosure must also be enabling.
Written Description
The purpose of the written description requirement is to ensure that a patent’s claims do not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification. Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000). Enablement, on the other hand, requires “that the patent specification enable those skilled in the art to make and use the full scope of the claimed invention without undue experimentation.” Invitrogen Corp. v. Clontech Labs. Inc.,429 F.3d 1052, 1070–71 (Fed. Cir. 2005).
The written description requirement is met when the specification “conveys to those skilled in the art that the inventor had possession of” and “actually invented” the claimed subject matter. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Whether there is adequate written description support “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.”
In order to comply with the written description requirement of § 112, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). See also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“the applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.”)
Although the specification need not recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the written description requirement. Lockwood, 107 F.3d at 1571–72 (“It is the disclosures of the applications that count. Entitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed. It extends only to that which is disclosed.”). The level of detail required to satisfy the written description requirement depends and varies on the nature and scope of the claims and the complexity and predictability of the relevant technology.
Thus, to benefit from the filing date of the earlier application, the disclosure in the earlier application must show that the inventor had “possession” of the claimed invention at the time the earlier application was filed. It does not matter that the prior disclosure would render the claimed invention obvious.
Enablement
The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation. United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). A specification that requires reasonable amount of routine experimentation still complies with the statute. Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999). Enablement also requires that ‘the invention will work for its intended purpose. Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005)
Whether undue experimentation is needed is not a simple factual determination, but rather a conclusion reached by weighing many factual considerations. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). These factors, referred to as the Wands factors, include, for example, the nature of the invention, the state of the prior art, the level of one of ordinary skill, the level of predictability in the art, and the amount of direction provided by the inventor. Id.
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