09 March 2013

Comparison of AIA and EPC as well as ante-AIA, post AIA and 'real' first-to-file prior art

In a new posting on the ksnh::law blog titled "10 aspects of the AIA that are (somehow) comparable to European provisions" we discuss the following new provisions of the America Invents Act and their link to European patent law:
  1. grace period
  2. prior public use
  3. intervening rights
  4. usurpation and derivation
  5. post grant review
  6. covered business method review
  7. third-party submissions
  8. supplemental examination
  9. prior use rights
  10. patent marking
Further to that, one of the most interesting aspects of the AIA is the way the conversion from first-to-invent to first-to-file is implemented and the impact on the definition of relevant prior art.

The two main changes to prior art can be found in 35 USC § 102 (a) and (b). While the former relates prior public use and intervening rights to the new notion of "effective filing date" (cf. 35 U.S.C. § 100(i)(1)), by that ending the Himer doctrine of 1966, the latter introduces an individual type of grace period combining elements of the ante-AIA first-to-invent and a classical first-to-file grace period. These issues have been discussed to some extent in sections 1 to 3 of this ksnh::law posting (English) and in this ksnh::jur posting (German).

Before this background it is worthwhile to not ony compare ante-AIA with post-AIA prior art, but also post-AIA prior art with the prior art in a classical first-to-file regime with grace period:

Post-AIA prior art versus classical first-to-file with grace period:
  • The post-AIA grace period excludes third-party disclosure of an invention published between an own disclosure of the inventor within the grace period and the actual filing date. In contrast thereto, the classical first-to-file grace period excluded only own disclosure of the inventor within the grace period while all third-party disclosure before the filing date is considered regular prior art.    
  • In the post-AIA era, intervening rights - i.e. patent applications filed before but published after the effective filing date of an invention under examination - are relevent for both novelty and obviousness, while, in a pure first-to-file scheme, such rights usually are only relevant for novelty but not for inventive step. 
Ante-AIA versus post-AIA prior art: 
  • prior public and commercial use are now relevant anywhere in the world (post-AIA) and not any more upon occurrance in the United States only (post-AIA).
  • the relevant date for determining as to whether or not a reference is regular prior art is the "effective filing date" of an application, i.e. either its filing date or its priority date independent on where the priority application has actually been filed. 
  • This new notion ends the Hilmer doctrine of 1966 and has the effect that in the post-AIA era intervening rights are independent on whether or not the priority application has been filed in the US, while in the ante-AIA era only US applications could qualify for an intervening right status.