AIA

Question 1

Why is it called the “first inventor to file system”?

Answer 1

Because it’s not a first to file system

Question 2

Why isn’t it a first to file system?

Answer 2

Because an inventor can invent, do some stuff - other people can do some stuff and file, and the inventor can file second, and still get the patent, as long as you publicly disclosed

Question 3

What happens when you have publicly disclosed?

Answer 3

You put a bookmark down, and anyone can do anything, and as long as you file within a year, then you can still get your patent

Question 4

Why wouldn’t you publicly disclose?

Answer 4

because you create prior art for yourself in other countries

if you’re organized enough to publicly disclose, just file!

Question 5

What are the exceptions to the statement: the first to file now wins? (3)

Answer 5

1. where second filer was first to publicly disclose the invention within the 1-year pre-filing grace period; or
2. where first actual filer derived invention from another
3. the first filer abandons the application prior to publication or issuance

Question 6

How is derivation determined?

Answer 6

by a “derivation proceeding” – the heir to interferences under the old law

Question 7

What does the grace period exempt the inventor from?

Answer 7

exempts from the prior art both
(i) the inventor’s own “disclosures”; and
(ii) other parties’ “disclosures”
that occur after the inventor’s disclosure

Question 8

What is new 102(a)(1)?

Answer 8

A person shall be entitled to a patent unless—
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

Question 9

What is new 102(a)(2)?

Answer 9

A person shall be entitled to a patent unless—
the claimed invention was described in a patent issued [to another] … or in [another’s] application for patent published … [that] was effectively filed before the effective filing date of the claimed invention.

Question 10

What are the five categories of 102(a)(1) and the one category of 102(a)(2)?

Answer 10

1. patented
2. printed publication
3. public use
4. on sale
5. otherwise available to the public
6. effectively filed

Question 11

What statutory language establishes the first-to-file rule?

Answer 11

102(a)(2)

Note that (a)(2) provides the fundamental rule that, between first filer A and second filer B, B cannot get a patent because A’s earlier effective filing date makes the application prior art to B.

Question 12

Where does the abandonment exception come from?

Answer 12

102(a)(2)

If first filer A abandons his application prior to publication, then B could still get a patent.

Question 13

What’s new to 102(a)?

Answer 13

Timing (of course) – art is now “prior” if it is before the effective filing date, not the invention date (consistent w/ first-to-file philosophy).

End of Geographic Restrictions – all categories are global, including public use and on sale.

Addition of “otherwise available to the public”– similar to old “known … by others”.

Question 14

What does the new 102(b) do?

Answer 14

Paragraph (b) (1) provides all the exceptions to 102(a)(1) categories of prior art (prior art based on printed publications, public uses, etc).

Paragraph (b) (2) provides all the exceptions to 102(a)(2) (e.g., a first filed U.S. patent application).

Question 15

What happens to “swearing behind”?

Answer 15

it goes away, but people can publish behind others’ filing date or prior art

Question 16

What qualifies as a public disclosure, according to Merges and Duffy?

Answer 16

A careful reading of the statute shows that the word “disclosure” in new section 102(b)(1)(A) should be interpreted broadly to encompass any activity that would generate prior art under 102(a)(1).

Question 17

1. Able files an application on June 1 of Year 1, but …

2. On May 1 of Year 1, Baker had published an article in Science magazine disclosing the material later claimed by Able.

Answer 17

Result: Able’s patent application is invalid for lack of novelty under 102(a)(1), even if Able had independently invented and even if Able had invented long before Baker’s article.

Question 18

1. On June 1 of Year 1, Able enters into a confidential sales agreement with Company X to sell units of Able’s invention.

Answer 18

Result: Without more, Able has until June 1 of Year 2 to file a patent application on the invention. Thereafter, the protections of 102(b)(1) expire, and Able’s sales will constitute prior art against Able.

Question 19

1. On June 1 of Year 1, Able enters into a confidential sales agreement with Company X to sell units of Able’s invention.
2. Baker publishes an article on July 1 describing the invention secretly sold by Able on June 1.
3. Baker’s article was not derived from Able’s work.
4. Able files a patent application on July 15.

Answer 19

Able’s application will be rejected for lack of novelty due to Baker’s article. Able does not get protection from 102(b)(1)(B) because Able did not “publicly disclose” prior to Baker’s article.

Your own stuff doesn’t hurt you for a year, if only disclosed
if publicly disclosed, your and other’s stuff doesn’t hurt you fro a year

Question 20

1. On June 1 of Year 1, Able enters into a confidential sales agreement with Company X to sell units of Able’s invention.
2. Baker publishes an article on July 1 describing the invention secretly sold by Able on June 1.
3. Baker’s article was not derived from Able’s work.
4. Able files a patent application on July 15, Year 1.
5. Baker files a patent application on June 15, Year 2.

Answer 20

Baker gets a patent!
Able’s secret sales don’t count as prior art as to Baker (W.L. Gore) so Baker doesn’t have to worry about the grace period +
Baker can rely on 102(b)(2)(B) to overcome Able’s earlier filed patent application because Baker “publicly disclosed” before Able’s filing.

Others: Able’s secret sale is prior art, so not novel (saying that AIA overruled Metallizing/Gore)

Question 21

1. On June 1 of Year 1, Able enters into a confidential sales agreement with Company X to sell units of Able’s invention.
2. Baker publishes an article on July 1 describing the invention secretly sold by Able on June 1.
3. Baker’s article was not derived from Able’s work.
4. Able files a patent application on July 15, Year 1.
5. Able can prove a public disclosure on June 30, Year 1.

Answer 21

Able’s July 15 patent application would now win the patent.
Able uses 102(b)(1)(A) to remove his own June 1 sales and June 30 public disclosure and uses 102(b)(1)(B) to remove Baker’s July 1 article.
Baker’s application fails novelty because of Able’s June 30, Year 1 publication. Note Baker would lose even if his application were filed July 14, Year 1.

Question 22

A product comprising the patentable subject-matter in a non-informing embodiment is sold by a third-party; inventor files on the product.

If the sale is secret?

Answer 22

Maybe waive it off because it’s non-informing - not enabling

Faculty list answer: start the clock; even if it’s truly non-informing, it’s anticipatory

If not anticipatory: look at obviousness

Hard case because it’s the product and not the process

We said third party secret sales don’t raise the 102(b) bar (though first party secret sales do - cheating the patent term), and Merges and Duffy agree

(Patent bar/PTO is saying that AIA gets rid of Metalizing/Gore, and that secret sales don’t count)

Question 23

Where is the fight coming from?

Answer 23

102(a):

“or otherwise available to the public” means that the other stuff is available/public/meaningfully available including “on sale”

cheat the patent term; we don’t care; we flip Metallizing

Question 24

What are the arguments against the PTO’s stance on overturning Metallizing/Gore, etc.?

Answer 24

That it says public use before otherwise available to the public, and so it shouldn’t be read backwards

Question 25

Does a first party secret sale raise the 102(b) bar? Is it a public disclosure?

Answer 25

Merges and Duffy: yes, no

PTO: no, no

Question 26

What does Merges and Duffy say about why third party secret sales shouldn’t raise the 102(b) bar? (2)

Answer 26

Public shouldn’t be suckerpunched by third party secret sales

On sale” should be considered public because we read that in for “known or used by others” (National Tractor)

Question 27

Chart:

Third party secret sale

Answer 27

M+D: Not Prior Art
Others (Lemley): Prior art
PTO: Not Prior Art

Question 28

Chart:

First party secret sale

Answer 28

M+D: Prior Art
Others (Lemley): Prior Art
PTO: Not Prior Art

Question 29

Chart:

First party public sale

Answer 29

M+D: Prior Art
Others(Lemley): Prior Art
PTO: Prior Art

Question 30

Chart:

Third party public sale

Answer 30

M+D: Prior Art
Others(Lemley): Prior Art
PTO: Prior Art

Question 31

What would Metallizing person do if they didn’t want a patent, but they didn’t want to get sued by someone else to stop doing what they’re doing?

Answer 31

Try and put prior art somewhere in public, but that doesn’t meaningfully inform anyone, so that they have time to get a patent within a year of that prior art; that way you could blow up anyone’s patent a year after the prior art

Question 32

What are prior user rights? What section? What does it replace?

Answer 32

273: a defense to infringement based on prior commercial use (a safe harbor) - i used it before they filed for it

defense for a process, machine, manufacture, or composition of matter used in manufacturing or other commercial process, that would otherwise infringe a claimed invention being asserted against the person if…

ONLY for those used in manufacturing or other commercial process

the use has to have happened at least 1 year before the earlier of either, filing date of claimed invention, or public disclosure of the invention (may not have to public disclosure - unclear)

102(g)