By Dennis Crouch
New patent applications are now being examined under the first-to-file rules codified in the America Invents Act of 2011. In my patent class, I talk about these as effectively rules of evidence that indicate what does and does-not count as evidence against patentability. Any change in the rule of law always has changeover difficulties where policymakers must figure out where to draw the line between the old and new rules. For the AIA, new patent applications filed on or after March 16, 2013 are examined under the new rules so long as the new application contains (or ever contained) at least one claim whose effective filing date is on or after March 16, 2013.
Under the new rules, the USPTO also requires that patent applicants help the PTO understand whether a new application should be examined under the AIA. In particular, the applicant must tell the PTO whenever it is pursuing a patent application that claims priority to a pre-AIA filing but that includes (or once included) at least one claim that had a post-AIA priority date. In the cut-out above, this statement is shown as a check-box as part of the application data sheet form.
The Risk: Over the next year, this issue will arise in thousands of cases – typically those will involve a pre-AIA provisional application followed by a post-AIA non-provisional application with some amount of new matter added in the claims. Under the rules, if any of the claims in that non-provisional lacked sufficient support in the provisional then the entire application is to be analyzed under the first-to-file regime of the AIA. Of course, the difficulty is that in US law the dividing line between supported and unsupported subject matter is not crisp and the determination is now being placed on patent applicants to make that determination at the risk of an inequitable conduct finding down-the-line.
Overturning the PTOs Approach?: It is possible that the USPTO's interpretation of the new law is incorrect. The PTO rules require a patent-by-patent analysis of the effective filing date. Under the USPTO's approach either a patent is an AIA patent or it is not. However, another reading of the AIA suggests that the proper approach is to go claim-by-claim rather than patent-by-patent. In particular, revised Section 102 focuses on the "effective filing date of the claimed invention" not the effective filing date of the patent application as a whole. 35 U.S.C. 102(a). In addition, the definitions Section 100(i) also focuses on individual claims – indicating that the effective filing date of a "claimed invention" is "(B) 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 benefit]." It seems to me that the statutory guidance of Sections 102 and 100(i) collectively instruct us to consider the effective date of a claimed invention rather than for a patent application as a whole, and when thinking about prior provisional/parent/grandparent applications, the focus should be on whether those prior applications disclose the claimed invention in question.
But the PTO's Approach is Probably Correct: Now, the PTO's rule makes sense under the AIA, Section 3(n) that provides that the first-to-invent rules 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 [35 U.S.C. §] 100(i) … that is on or after the effective date described in this paragraph; or (B) 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.
The result here is really that whether-or-not a claim is adjudicated under the first-to-file regime is determined on a patent-by-patent basis but the priority date (i.e., effective filing date) associated with any particular claim may be prior to March 16, 2013, even when the patent is being adjudicated under first-to-file.