The LAW- 3 ring binder

Question 1

Date of transition to “First to File” under AIA?

Answer 1

March 16, 2013

Question 2

Date AIA was signed into law?

Answer 2

Sept. 16, 2011

Some elements were effective immediately

Question 3

What is STATUTORY SUBJECT MATTER under 35 USC 101?

Answer 3

Process

Machine

Manufacture

Composition of Matter

Question 4

What are the 5 patent eligibility requirements?

(Chapter 2100 Patentability Requirements)

Answer 4

1. Useful/Utility (101)
2. Patent-eligible subject matter (101)
3. Novel (102)
4. Non-obvious (103)
5. Adequately described (112)

Question 5

What is the utility requirement (35 USC 101)?

Answer 5

“Base utility”- Crude functionality is sufficient. (If it works as you say, it is useful)

Question 6

When are computer programs patentable?

Answer 6

• If coupled with a computer (machine)
• • If it produces a dramatically different product than the information fed into it (a process)

Question 7

Is bacteria patentable?

Answer 7

Some basic forms of GENETICALLY ALTERED bacteria have been found patentable

Question 8

Are chemical intermediates patentable?

Answer 8

Yes, if they are useful (even if never sold or only transiently exists)

Question 9

35 USC 101?

Answer 9

“WHOEVER INVENTS or DISCOVERS any new and useful PROCESS, MACHINE, MANUFACTURE, or COMPOSITION OF MATTER, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Question 10

Subject Matter Eligibility Test- Step 1 (Statutory Categories)?

35 USC 101

Answer 10

1. Is the claim to a PROCESS, MACHINE, MANUFACTURE or COMPOSITION of MATTER? (Anything under the sun made by man)

If yes, see Step 2
If no, NOT subject matter eligible material

Diamond v. Chakrabarty (oil-eating bacteria)

Question 11

Subject Matter Eligibility Test Step 2a (The JUDICIAL Exceptions)

35 USC 101

Answer 11

2a. Is the Claim directed to a…
- LAW of NATURE,
-a NATURAL PHENOMENOM (PRODUCT of NATURE), or
- an ABSTRACT IDEA?

If no, Patentable
If yes, Step 2b

Mayo Collaborative Services v. Prometheus Labs., Inc

Question 12

Subject Matter Eligibility Test Step 2b (The INVENTIVE Concept)

35 USC 101

Answer 12

2b. Does the Claim recite…
- ADDITIONAL ELEMENTS that amount to SIGNIFICANTLY MORE that the Judicial Exception?

If yes, Patentable
If no, NOT subject matter eligible material

Question 13

Old 102(a)?

Answer 13

CANNOT get a patent on something that someone else provable INVENTED first.
Proof accepted: Before your invention date…
- PUBLISHED documents or PATENTS (from anywhere in the world)
- KNOWN or USED by OTHERS (IN THE US ONLY)

Question 14

Old 102(b)?

Answer 14

Once an invention has entered the “PUBLIC DOMAIN” by the inventor’s or another’s action, the inventor has a ONE YEAR grace period within which to decide whether to file a patent application
- If 1 year deadline passes, inventor(s) are BARRED from filing

• PUBLIC DOMAIN- PUBLISHED documents or PATENTS (from ANYWHERE) or public USE or SALE (in the US ONLY)

Question 15

Old102(c)?

Answer 15

You cannot patent something that you, personally, have PUBLICLY stated you have GIVEN UP on

Question 16

Old 102(d)?

Answer 16

You may BEGIN the patent process OUTSIDE the US in a foreign country, but once a year has come and gone from the Foreign Filing Date, you are at risk of being BARRED from filing in the US if the foreign patent issues

Question 17

Old 102(e)?

Answer 17

You cannot patent something someone else INVENTED first (akin to 102(a)) if proof of the prior invention can be found in a previously filed and NOW ISSSUED, or PUBLISHED, US application that has a US filing data BEFORE your invention

US ONLY for proof

Question 18

Old 102(f)?

Answer 18

Can only patent who you invented; you may not patent the work of another

(Have to tell patent office what the starting point was of your contribution)

Question 19

Old 102(g)?

Answer 19

USPTO only gives out ONE PATENT for each invention. If more than one inventor claims the same invention, the PTO will conduct an “Interference” to decide who truly invented first and will awards the patent to that inventor

Question 20

New 102(a)(1)?

Answer 20

PUBLIC DOMAIN- ANYWHERE- by ANYONE (including inventor(s))

You cannot file a patent on something that is already provably in the “PUBLIC DOMAIN” before you filed

Proof- form of patents, printed publications, public use or sale, or otherwise in the “public domain”, all from ANYWHERE in the world

Prior art date for patent (under this provision) is GRANT DATE (or made available if patent is secret)

Question 21

New 102(a)(2)?

Answer 21

FIRST TO FILE (Effective filing date of Published or issued US or published PCT designating US)

You cannot file a patent application on something SOMEONE ELSE FILED before you filed

Evidence of prior filing here is only in the form of a PREVIOUSLY FILED published or issued US application, published PCT that designates the US, with the prior art date set for these documents as the earlier effective filing date (foreign or domestic) of that patented or published US application or PCT

“the claimed invention was described in a US patent or published application that names another inventor, that was filed before the effective filing date of the claimed invention”

Question 22

New 102(b)(1)(a) Exception?

Answer 22

During Grace Period- Prior Disclosure by INVENTOR (and from inventor)

A disclosure made by the INVENTOR, or a person who obtained the disclosure FROM the INVENTOR, within ONE YEAR of [i.e., within one year prior to] the filing date does not qualify as prior art

Question 23

New 102(b)(1)(b) Exception?

Answer 23

During Grace Period- Prior disclosure by 3rd PARTY, AFTER inventor already disclosed

Likewise, if the SUBJECT MATTER of a 3rd PARTY’s DISCLOSURE, made within ONE YEAR prior to filing, was made public by the INVENTOR, or someone who obtained it from the inventor, BEFORE the 3rd party’s disclosure thereof.

Question 24

New 102(b)(2)(a) Exception?

Answer 24

Directly or indirectly from INVENTOR in prior-filed, not yet published or issued US app or PCT equivalent

A disclosure in a prior-filed, but not yet published or issued US application(s), or their PCT equivalent, is not prior art if the subject matter was obtained, directly or indirectly, from the inventor (NOTE: SUBJECT MATTER, not “CLAIMED INVENTION”

Question 25

New 102(b)(2)(b) Exception?

Answer 25

3rd PARTY in prior filed, not yet published or issued US app of PCT equivalent, where 1st disclosed by/from INVENTOR BEFORE 3rd party filing Subject matter disclosed in prior, 3rd party-filed but not yet published or issued US application, or their PCT equivalent, is not prior art if it was 1st publicly disclosed, before the filing date of the 3rd party reference, by the inventor or another who had obtained the subject matter, directly or indirectly, from the inventor

Question 26

New 102(b)(2)(c) Exception?

Answer 26

(Subject matter and claimed invention) Disclosed in prior-filed not yet published or issued US app of PCT equivalent COMMONLY OWNED by owner (before effective filing date) If the subject matter disclosed, and the claimed invention, in the prior-filed but not yet published or issued US application, or their PCT equivalent, were COMMONLY OWNED (or under an obligation of assignment) by the owner of the application currently being examined before the effective filing date thereof

Question 27

New 102(c)?

Answer 27

JOPINT RESEARCH AGREEMENTS- Joint ownership under a Joint Research Agreement exists if: 102(c)(1) - The claimed invention was made by parties to an agreement and the agreement was in effect BEFORE the effective filing date, and 102(c)(2) - The invention resulted from activities within the scope of the agreement, and 102(c)(3) - The application discloses the names of the parties to the agreement

Question 28

Two BASIC REQUIREMENTS to qualify as PRIOR ART under 102(a)(1) for "Described in a patent, published patent app or printed publication"?

Answer 28

1. “EACH and EVERY ELEMENT of the claimed invention” must be disclosed either explicitly or inherently; AND the elements must be “ARRANGED or COMBINED in the SAME WAY as in the claim” 2. A person of ORDINARY SKILL in the art must have been ENABLED to make the invention from the document without undo experimentation NOTE: Admission by inventor(s) as prior art can be relied upon for both anticipation (101) and obviousness (102). Can "take back" admission about your own work by not a 3rd party admission

Question 29

Requirement to qualify as PUBLIC USE under 102(a)(1)?

Answer 29

Uses AVAILABLE to the PUBLIC in ordinary stream of commerce ONLY DO NOT need to know it was used or how it works

Question 30

ABC Mnemonic for 102(b) exceptions of 102(a) prior art?

Answer 30

Attribution - attribute to yourself, either directly or indirectly, Beat- the data of another, Common Ownership

Question 31

SPECIES (inventor) → GENIUS (3rd party) - Inventor discloses a SPECIES during grace period - Subsequent intervening grace period disclosure of a GENUS - Is disclosure of GENUS prior art under AIA 35 USC 102(a)(1)?

Answer 31

NO

Question 32

GENUS (inventor) → SPECIES (3rd party) - Inventor discloses a GENUS during grace period - Subsequent intervening grace period disclosure of a SPECIES - Is disclosure of SPECIES prior art under AIA 35 USC 102(a)(1)?

Answer 32

YES!

Question 33

SPECIES (inventor) → ALTERNATE SPECIES (3rd party) - Inventor discloses a SPECIES during grace period - Subsequent intervening grace period disclosure of an ALTERNATE SPECIES - Is disclosure of ALTERNATE SPECIES prior art under AIA 35 USC 102(a)(1)?

Answer 33

YES!

Question 34

Rule for filing an affidavit or declaration of ATTRIBUTION to overcome a prior art rejection as INVENTOR'S OWN WORK (or indirectly from)?

Answer 34

37 CFR 1.130(a) (Attribution) Inventive entity must match EXACTLY or file affidavit or declaration with UNEQUIVOCAL statement ..with reasonable explanation...additional authors..."

Question 35

Requirements for Common Ownership in order to disqualify disclosures made before the effective filing date of the claimed invention? (NOTE- Can still qualify under AIA 35 USC 102(a)(1))

Answer 35

1. Subject matter disclosed and claimed invention, no later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person" 2. Clean and conspicuous statement by the applicant that claimed invention and prior art were owned by the same person or subject to an obligation of assignment to the same person PRIOR to the effective filing date of claimed invention

Question 36

Rule for filing an affidavit or declaration of PRIOR PUBLIC DISCLOSURE to disqualify an INTERVENING DISCLOSURE rejection as INVENTOR'S OWN WORK (or indirectly from)?

Answer 36

37 CFR Rule 1.130(b) (Beat the date) Affidavit or declaration must: - Identify SUBJECT MATTER publicly disclosed - DATE and CONTENT of earlier public disclosure - If not a printed publication, must describe the earlier disclosure with sufficient detail and particularity to determine that earlier disclosure is a public disclosure of the subject matter

Question 37

Who can file an affidavit or declaration under 37 CFR 1.130(a) or 1.130(b) to remove prior art?

Answer 37

- Applicant or patent owner NOTE: When app was filed under 35 USC 118 (s/o w/ sufficient proprietary interest FILED the application on behalf or and as agent for inventors): - Inventor may sign an affidavit or declaration under 37 CFR 1.130 - BUT, declaration MUST be filed by a party having authority to take action in the application

Question 38

Cases where provision of 37 CFR 1.130 are NOT available

Answer 38

- To eliminate a DOUBLE PATENTING REJECTION - To eliminate disclosure made more than 1 year before effective filing date - If it would result in issuing or confirming TWO PATENTS with patentable indistinct claims to TWO different PARTIES- In this situation, an applicant or patent owner may file a petition for a DERIVATION proceeding pursuant to 37 CFR 42.401 et seq.

Question 39

JOINT RESEARCH AGREEMENTS 3 conditions in order for subject matter which might otherwise qualify as prior art, and a claimed invention, to be treated as having been owned by the same person or subject to an obligation of assignment to the same person

Answer 39

1. SUBJECT MATTER disclosed was developed and the claimed invention was made by, or on behalf of, ONE OR MORE PARTIES to a joint research agreement that was in effect ON OR BEFORE the effective filing date of the claimed invention; and 2. The claimed invention was made as a RESULT OF ACTIVITIES UNDERTAKEN within the SCOPE of the joint research agreement; and 3. The APPLICATION for patent for the claimed invention DISCLOSES or is AMENDED to disclose the NAMES of the PARTIES to the joint research agreement

Question 40

When does Pre-AIA 35 USC 102 and 103 apply?

Answer 40

Applications filed BEFORE March 16, 2013 Note: Filing RCE is NOT a new filing Note: Entry into National Stage under 35 USC 371 IS NOT a new filing, if PCT was filed before March 16, 2013

Question 41

When does AIA 35 USC 102 and 103 apply?

Answer 41

Applications filed AFTER March 16, 2013

Question 42

When does Pre-AIA 35 USC 102(g) also apply to an application subject to AIA 35 USC 102 and 103 ? --------------------------------------------------------------------------------------- And what MUST the applicant do when this occurs? (37 CFR 1.55 and 1.78)

Answer 42

If AIA 35 USC 102 and 103 apply, AND the application... 1. Contain or contained AT ANY TIME a claim with an effective filing date BEFORE March 16, 2013 (even if claims with on/after March 16, 2013 data are later cancelled) 2. Is ever designated as a CONTINUATION, DIVISIONAL, or CIP of an app that contains or contained at any time a claim that has an effective filing date before March 16, 2013 - Pre-AIA 35 USC 102(g) also applies to any patent resulting from an application to which pre-AIA 35 USC 102(g) applied ---------------------------------------------------------------------------------------------------- Applicant must provide a STATEMENT to this effect (Statement in Transition Applications)