Tuesday, February 28, 2012

Donald Chisum: Priority Among Competing Patent Applicants Under the America Invents Act

How will the “First Inventor to File” provisions of the America Invents Act (AIA) impact patent applications filed after the March 16, 2013 implementation date? Donald Chisum’s article, Priority Among Competing Patent Applicants Under the America Invents Act, utilizes a patent bar-esque hypothetical to highlight several important features of the new legislation. Chisum begins his article by outlining a fact pattern involving inventors A and B and the independent steps each inventor takes to patent invention X, a protein that controls muscle spasms.

Under section 3(n) of the AIA, the effective date of the “First Inventor to File” provisions is 18 months from the date of enactment, or March 16, 2013.  Patents and applications that have been issued or filed before March 16, 2013 will not be affected by the new amendments. Those that bridge the March 16 date by claiming the benefit of an earlier priority date will be examined under the pre-AIA law only if every claim in the application is supported by the pre-March 16 application. If just one claim within the application breaks this rule, then the entire application will be governed by the new amendments.

Using the above hypothetical, Chisum illustrates several potential issues applicants may encounter when traversing the new amendments.  Assume that A filed an application with the USPTO on April 1, 2012, before the March 16 implementation date. This application would be prosecuted using the old 102 and 103 statutes.  A then files a continuation-in-part (CIP) application claiming priority from the April 1 filing. If any of the CIP claims find support from the new material, this application will be prosecuted under the new amendments. A then files a final continuation application on November 1, 2013, making specific reference to the CIP application.  Even if each claim in the November 1 application finds support from the original application, the PTO will prosecute the application under the new amendments because the application made reference to an application that was examined under the new law.

Chisum next discusses how interfering patents and applications are treated by section 3(n)(2). While a single post-March 16 claim would expose an entire application to the new Section 102 and 103 amendments, for the purpose of interference proceedings, a single, pre-March 16 claim will bring the entire application back under the old law.  This creates the possibility that the first-to-invent priority rules of 102(g), eliminated by the AIA, will still apply to applications containing post-March 16 claims.

Chisum next explains how the AIA determines the effective priority date of applications, including how patents and applications will be used as prior art under amended Section 102(d). Importantly, Section 102(d) now recognizes a right of priority under Section 119, resulting in the abolition of the Hilmer doctrine. Going forward, prior art will be valid against a pending application based on not just the US priority date but any earlier corresponding foreign application.

Referring back to the original hypothetical, under Hilmer, A’s April 1, 2012 KIPO application could be used against B in an interference proceeding, however, the application would be prior art against B only as of its U.S. filing date (March 30, 2013), which came after B’s June 1, 2012 filing. Under the new 102(d) provisions, A’s KIPO application is considered prior art against B’s U.S. application and will likely prevent B from claiming subject matter disclosed in A’s application.

Less clear, is amended 102(d)’s impact on In re Wertheim.  Under the Wertheim doctrine, a reference patent can rely on a prior application only if the disclosures in the prior application meet the requirements of Sections 112 and 120.  If the disclosures in the prior application do not fully support the claim in the reference patent, then the reference patent is not effective for prior art under 102(e) and 103 as of the remote filing date.  Amended 102(d) requires that a later reference be “entitled to claim” priority to the earlier application.  Chisum argues that this can be interpreted as either “formal entitlement” or “substantive entitlement.”

Formal entitlement would require that the later application comply with the formal requirements for priority: continuity of disclosure, co-pendency, specific referencing, and overlapping inventorship.  Alternatively, substantive entitlement under the Wertheim doctrine only requires the later application have at least one claim that is substantively entitled to the benefit of the prior application.  Which section applies is unclear under 102(d).

Amended Section 102(d) allows priority under Section 119, which includes provisional applications and foreign priority applications.  Chisum argues that because neither provisional nor foreign applications could be issued as patents on their filing day, the logic for treating an application as prior art as of its filing date is weakened. Furthermore, Werthheim was argued before the adoption of an 18 month publication rule; thus, the need to prevent secret prior art is considerably reduced.  Chisum suggests that the inclusion of Section 119 priority, along with creation of the 18 month publication deadline, undermines the holding from Wertheim and points to the adoption of the “formal entitlement” language.

Using the hypothetical to illustrate the effects of “formal entitlement,” if A carries the disclosure from his first application directly to his CIP application, will the information originally disclosed be considered prior art as of the first filing date?  If it is considered prior art, B would have the burden of proving an invention date prior to April 1, 2012 in order to avoid the reference.  The formal entitlement interpretation of Section 102(d), could result in A’s initial application being used to prevent the patentability of certain claims by later filing inventor B but not sufficient to give inventor A priority over inventor B as to his later application.

Based on the combined impact of these amendments, Chisum points out the likely strategies practitioners will adopt to ensure that their continuation and CIP applications will be examined using the law most beneficial to their applications.  Going forward, the PTO might start to see separate continuation applications based on the same disclosure, one application referencing only pre-March 16 applications and the other used to prosecute new material.  Additionally, because of the unique “one-claim” interference rule, many practitioners will include at least one claim, regardless of its importance, that is entitled to  a pre-March 16 application in case they need to prove first to invent.

Throughout the article, Chisum points to certain provisions of the AIA that move the U.S. closer to the patent systems of other industrialized nations, even provisions that mimic portions of the European Patent Convention. While the American patent system retains several unique characteristics, such as the disclosure and derivation amendments, to what extent should the Federal Circuit and the Supreme Court look to the developed case law of other countries to interpret the AIA? Is the global harmonization of patent law even a good idea? Compare Dongwook Chun, Patent Law Harmonization in the Age of Globalization: The Necessity and Strategy for a Pragmatic Outcome, Vol. 93, No. 2 Journal of Patent Trademark Office Society 127, (2011) with John Duffy, Harmony and Diversity in Global Patent Law, 17 Berkeley Tech. L.J. 685 (2002). Furthermore, the AIA removes most references to territorial preference (e.g., “in this country”).  As patent prosecution around the world synthesizes, is it proper for the U.S. to continue to use the PTO to influence domestic policy initiatives (e.g., accelerated prosecution of green technologies) to the disadvantage of other global concerns?

Posted by Bryan Parrish (bparrish@smu.edu), a registered patent agent, research assistant to Sarah Tran, and a 2014 Juris Doctor candidate at SMU Dedman School of Law.

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