Patent Prosecution Across the AIA Divide: Warning to Patent Practitioners – Special Care is Needed to Avoid Legal Malpractice

By Howard Skaist
January 19, 2012

On and after March 13, 2013, any patent application filed is subject to new 102 (and new 103) unless it fits within an exception defined by the transition provisions of the AIA.  Therefore, imagine the following possibility: a continuation is filed on or after March 13, 2013, but because of the manner in which it is handled, it does not fit within the exception.  Now, new section 102 (and new 103) applies to the patent application.  What consequences might follow from such an occurrence?

This situation, which I describe in more detail below, has the potential to affect anyone prosecuting an application originally filed under current law, who files a continuation under the AIA to continue prosecution.  Therefore, most patent prosecutors can expect to be affected and may wish to consider more carefully how best to proceed in such situations. To comprehend the issue takes some elaboration because the situation is complex, unfortunately.  Several different legal threads, in effect, may come together to seemingly conspire against an unwary or unsuspecting patent prosecutor.

As most are aware, on March 13, 2013, the United States moves to a quasi-first-to-file patent system, whereas currently the United States operates under a first-to-invent principle.  Of course, there are many other changes.  For example, currently, a one year grace period exists for events that may have occurred with respect to an invention, including:  publication of, public use of or placing the invention on sale.  That is, under current law, even if one of these events takes place, so long as a patent application is filed within a year of the event, the invention is not forfeited or “barred” (as it is sometimes called) as a result of the occurrence of one of these events.  However, under new 102, a patent application must be filed before one of these events occurs or the invention will be barred.  In addition, whereas under current law, if some of the events occurred outside the US, such as ‘public use’ or being placed ‘on sale,’ then forfeit of the invention does not occur.  However, under new 102, these events occurring outside the US before a patent application is filed in the US will not prevent forfeit of the invention.  Likewise, under current law, an inventor is able to patent obvious variations of a prior filing so long as the claims are not “anticipated” by the prior filing and the new filing takes place within a year of publication (eg, if the new filing is published under 18 month publication, for example). Under new 103, however, the prior filing would render the obvious variations unpatentable regardless.

Therefore, returning to my hypothetical inquiry above, assume a continuation is filed on or after March 13, 2013, but is accomplished in such a manner so that its does not qualify to be treated as a patent application under current law.  This means, as a consequence, that if, for example, the parent application when originally filed relied upon the one year grace period or if someone else files a patent application describing the subject matter of the invention before the filing of the parent application (but otherwise was not the “first to invent”), the claims of the continuation will be rendered unpatentable.  Furthermore, since it would have been possible to file the continuation in a manner so that current law continued to apply even after March 13, 2013, one might imagine that a patent prosecutor in this situation may be subject to liability and/or perhaps a bar complaint.  If I now have your attention, continue reading, because this situation can take place much more easily than I certainly would have imagined.

Adequate dissection of the legal risks here in general requires a deep dive into the transition provisions of the AIA.  The upshot of the provisions, however, may be summarized as follows:  if a patent claim is added at any time that does not have written description support in the original patent application filing, the patent application filed on or after March 13, 2013 is subject to new 102 and new 103. Furthermore, once such a patent claim is added, this consequence cannot be undone.  Once new 102 and new 103 apply as a result of adding a patent claim without written description support in the original pre-March 13, 2013 filing, cancelling the claim, because, for example, it constitutes new matter, will not result in current law applying to the patent application filed on or after March 13, 2013.

To appreciate how the relevant transition provisions work, we turn to section 3(n)(1)(A) of the AIA.  This section is written to operate so that if the provisions at issue here, e.g., new sections 100, 102 and 103 of the AIA, apply to any claim of a patent application, then those sections apply to all claims of the patent application.  These sections apply to a particular claim of a patent application if the “effective filing date” of the claim, as defined in new section 100(i), is on or after March 13, 2013.  Therefore, determining if these provisions of the AIA apply to a patent application requires evaluating the effective filing date of each claim of a patent application filed on or after March 13, 2013.

In pertinent part, section 3(n)(1)(A) states that the provisions at issue:

“…take[] effect upon expiration of the 18-month period beginning on the date of enactment of this Act, and shall 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 100(i)…, that is on or after the effective date described in this paragraph; or

(B) a specific reference under section 102, 121, or 365(c), … to any patent or application that contains or contained at any time such a claim.”

(emphasis supplied)

(Note that subparagraph (B) above has a further consequence that any patent application claiming priority to a patent application to which these provisions apply (e.g., new 100, new 102, and new 103) results in these provisions also applying the application making the priority claim.)  New section 100(i) states that “effective filing date”:

“…for a claimed invention in a patent or application for patent means-

–      (A) if subparagraph (B) does not apply, the actual filing date ….;

–      (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….”(emphasis supplied).

Thus, under new section 100(i), if a claim does not have an effective filing date as a result of subparagraph (B), the effective filing date is determined by subparagraph (A).  Under subparagraph (A), if the application is filed on or after March 13, 2013, the effective filing date of the claim is on or after March 13, 2013.  Therefore, under subparagraph (A) of new section 100(i) and per section 3(n)(1)(A), the provisions at issue would apply to the particular claim and, also per section 3(n)(1)(A), to all of the claims of the patent application.

It now seems appropriate to pause here and consider the state of the law regarding written description support, which will determine whether subparagraph (A) or subparagraph (B) of new section 100(i) applies to a particular claim.  As many may know, a line of Federal Circuit cases, which includes, among others, New Railhead v. Vermeer, 298 F.3d 1290 (Fed. Cir. 2002),  Gentry Gallery v. Berkline, 134 F.3d 1473 (Fed. Cir. 1998), and Tronzo v. Biomet, (Fed. Cir. 1998), raise the specter that even small changes to the claims could result in an invalid claim (or a claim with a later filing date) if those changes are deemed to not be supported by the original filing.  For example, in Tronzo, the absence of the word “conical” from a claim to describe the shape of a cup resulted in invalidity because a generic cup did not have written description support.  Soon, unfortunately, a new twist will be added.  Whereas currently, if one were to inadvertently add a claim that lacked written description support, while that claim might later be held invalid, nonetheless,  other claims that do have written description support remain intact.  Soon, however, the consequences will be more dramatic and dire.  All the claims of the patent application might be rendered invalid, if, as mentioned above, the invention had previously been published, been put on sale or been put in public use, despite previous applicability of a one year grace period to the original filing, for example.

At one extreme, any time claims are changed from those originally filed in the patent application, there is a potential risk that the changes do not have written description support.  However, in actual practice this is a risk many patent prosecutors generally feel they understand.  Nonetheless, the boundaries of written description are far from clear.  Therefore, how much change is permissible without raising risk measurably remains difficult to articulate.  In many cases, a continuation will be filed precisely so that the claims may be changed.

To my way of thinking, this suggests a need for consulting with the client more often than is likely current practice.  One way to ameliorate the AIA transition risk, of course, is to file two continuations, one with newly written claims and one with original claims or a similar strategy involving dividing higher risk and lower risk claim changes between two or more filings.  However, not only is this approach costly, it raises other potential prosecution pitfalls associated with parallel prosecution of virtually identical or quite similar subject matter. Therefore, in light of additional risks resulting from transition provisions of the AIA, some hard choices and hard decisions will need to be made.  My advice to the patent prosecutor then, is this:  first, when amending claims, tread more carefully than before; and second, before taking action, to reduce risk, seek client buy in after explaining what potentially may be at stake.

The Author

Howard Skaist

Howard Skaist

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 20 Comments comments.

  1. EG January 19, 2012 9:27 am

    Howard,

    Interesting concern, but I’ve got at least one question: why are you referring to March 13, 2013 as the key date. As even the USPTO September 16, 2011 release says, the key date is March 16, 2013. Why did you pick March 13, 2013 instead?

  2. patent leather January 19, 2012 10:03 am

    Howard, thanks for the heads up, I hadn’t thought about this. This scenario is even more likely to occur when a provisional is filed before the effective date and it is converted after the effective date. Since many attorneys/inventors file a “light” provisional to be followed up with a full non-provisional (although personally I never do this, I insist on preparing the provisional in full), they may be in for some problems. The new 102 gives even more reason to file applications with a nonpublication request (when possible). To all attorneys out there, get your provisionals filed before March 13 (or 16th?) 2012 and you won’t have to worry about this issue.

  3. Anon January 19, 2012 11:02 am

    patent leather,

    Can you explain why you think the new 102 gives even more reason to file applications with a nonpublication request (when possible)?

    I would think the opposite, as a nonpublished filing cannot serve as a bar to others.

  4. Jessica January 19, 2012 2:06 pm

    “Likewise, under current law, an inventor is able to patent obvious variations of a prior filing so long as the claims are not “anticipated” by the prior filing and the new filing takes place within a year of publication (eg, if the new filing is published under 18 month publication, for example). Under new 103, however, the prior filing would render the obvious variations unpatentable regardless.”

    Could anyone confirm the statement is corrent? Prior filing by the inventor is an exception for prior art.

    ‘‘(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—
    A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
    ‘‘(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
    ‘‘(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2),
    been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed
    directly or indirectly from the inventor or a joint inventor; or

  5. patent leather January 19, 2012 2:14 pm

    Anon,

    “Likewise, under current law, an inventor is able to patent obvious variations of a prior filing so long as the claims are not “anticipated” by the prior filing and the new filing takes place within a year of publication (eg, if the new filing is published under 18 month publication, for example). Under new 103, however, the prior filing would render the obvious variations unpatentable regardless.”

    Thus, if an application is published, and then the inventor has an obvious improvement, under the new 103 the publication will bar the obvious improvement (under current law the inventor would have up to one year after the publication to file the obvious improvement). If the application is not published (and not otherwise disclosed), then the obvious improvement can still be filed and patented.

    While the nonpublished application is not a bar to others, it will be a retroactive bar once the patent issues.

  6. Jessica January 19, 2012 3:11 pm

    patent leather,
    Thanks for the answer. Should the prior filing publication be qualified for the priror art exception for the one year grace period for publication by the inventors?

  7. EG January 19, 2012 4:17 pm

    “This section [3(n)(1)(A)] is written to operate so that if the provisions at issue here, e.g., new sections 100, 102 and 103 of the AIA, apply to any claim of a patent application, then those sections apply to all claims of the patent application.”

    Howard,

    I know this section of the AIA is murky and written poorly, but I think you’re reading far too much into the effect of section 3(n)(1)(A), even when considered in view of section 3(i)(1)(A)&(B). Even if section 3(n)(1)(A) is applied to the application because at least one claim has an effective filing date after the “effective date” of this section of the AIA, 3(i)(1)(B) says that a “claimed invention” still gets the earliest “effective filing date” of any application that has a right of priority to under either section 120 (continuations) or 121 (divisional). So if there’s WD support for the “claimed invention” in a continuation application(s) filed before the “effective date” of the AIA, that “claimed invention” still gets the priority benefit of those continuation application(s) whether or not 3(n)(1)(A). In other words 3(n)(1)(A) only impacts those “claimed invention” for which the only WD support is an application filed after the “effective date” of the AIA. Any other reading is odd in the extreme, and would potentially create a question of whether 3(n)(1)(A) is consistent with the Paris Convention in that priority is to be judged based on disclosure in the priority (foreign) application, and not when that claim appears in the application.

  8. EG January 19, 2012 4:21 pm

    Howard,

    Sorry I meant my 3rd sentence to read as follows: So if there’s WD support for the “claimed invention” in a parent application(s) filed before the “effective date” of the AIA, that “claimed invention” still gets the priority benefit of those parent application(s) in a continuation filed after that “effective date,” whether or not 3(n)(1)(A) applies to that continuation.

  9. patent leather January 19, 2012 5:51 pm

    Howard, after reviewing Jessica’s comment above, doesn’t 102(b)(1)(a), “‘‘(b) EXCEPTIONS.—
    ‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor;” prevent the situation where you write, “Under new 103, however, the prior filing would render the obvious variations unpatentable regardless.”

    I think one thing we can all agree on is that Congress could have worded this Act much clearer!

  10. Anon January 19, 2012 7:03 pm

    it will be a retroactive bar once the patent issues

    Two more questions if you do not mind:

    1) what happens to any applications that become patents (i.e. that are on an expedited track) that would otherwise be barred but have made it through because the application at point was not published?

    2) won’t this same retroactive bar apply just as equally to the same inventor’s work? Anything over that year limit still applies.

    I do not see the benefit because your answer of the retroactive bar applies universally (except the one year exception, which itself applies universally). In other words, the advantage is illusionary.

  11. patent leather January 19, 2012 8:53 pm

    Anon, as to your questions:

    #1 – If A files his patent on Jan 1 2001 which is published July 1, 2002, and on Jan 1, 2002 B files an application on an obvious variation and expedites it and B’s patents issues on June 1, 2002 (even though A’s patent was not available to B), Once A’s patent is either published or issued then B’s patent is invalid under the old 102(e) because A’s patent is filed “by another” (and also invalid under the new 102 as well). This seems not entirely fair to B but that’s just how it goes. Same result if A filed his application with a nonpublication request (B’s patent is invalid once A’s patent issues, but if A’s patent does not issue then B’s patent remains valid). This assumes no other disclosures.

    #2 – another fact pattern- A files first application on Jan 1, 2002, publishes on July 1, 2003, then files second application on obvious variation on July 2, 2004. A’s first patent issues on Jan 1, 2005. A’s publication is a 102(b) bar to his second application. But if A filed his first application with a nonpublication request, then there is no prong of 102 that A’s first application would come in as prior art against A’s second application (102e doesn’t apply when A’s first patent issues because it is not “by another”).

    So I hope this answers your question as to how filing a nonpublication request can benefit an inventor and the bar is not always applicable universally.

    But I am still curious about Jessica’s point above. I have also heard from other sources that the new 102/103 would bar an inventor’s obvious variations in some situations as the article here states, but after reading the new statute again I still can’t figure out why. If Howard or Gene can chime in and shed some light, I’d appreciate it.

  12. Anon January 19, 2012 10:05 pm

    patent leather,

    Extend the time frame in your example to be beyond the post grant window and please tell me how the first patent is rescinded (there is no mechanism for such). Not to be rude, but your mere proclamation does not make it so.

    I do like your second example showing a value in nonpublication, but doesn’t that show an inherent weakness in the system?

    Thanks for the discussion!

  13. patent leather January 19, 2012 11:45 pm

    Anon, the second patent (B) could be invalidated via a reexamination, or if the patent owner sued on it, in litigation. If not challenged, on paper it might still be a “patent” but not an enforcable one. I’ve filed a reexamination with this very fact pattern (based on a patent that was not public/issued when the subject patent issued)

    As far as #2, not sure if I would consider it a “weakness”, since I think there should be a mechanism (to some extent) where one’s own inventions shouldn’t be used against yourself.

  14. Anon January 20, 2012 9:12 am

    patent leather,

    At the risk of crossing thread streams, see the discussion thread at Patently-O regarding the Golan decision (especially the post this morning by my namesake).

    It appears that your point two is an express way that Congress has introduced a way (albeit still unpublished, so not truly and fully in the public domain) for an applicant to sidestep a time bar.

  15. Paul F. Morgan January 20, 2012 10:38 am

    The real danger in this respect is in filing continuation-in-part [CIP] applications after the AIA date, since they usually have some claims that are not entitled to the filing date of the orginal application. [This adds to other good and often missunderstood reasons not to use CIP’s.] . A regular continuation will not have a problem unless a new claim is added that does not have adequate 112 support in the pre-AIA parent application or is based on imoroper addition of “new matter.”

    P.S. Does not some of the above discussion need to discuss the increased protection the AIA provides against commonly-owned applications being prior art against one another?

  16. EG January 20, 2012 11:18 am

    Paul,

    You say what I said above much more concisely. Thank you.

  17. howard January 20, 2012 1:21 pm

    Thanks for noting the error regarding the date. It should be March 16th, as is correctly noted. It was an unfortunately mistake, but one that does not seem to have confused anyone fortunately. I will have to read and digest the other comments later when I have time.

  18. howard January 20, 2012 5:04 pm

    There are a lot of good comments and questions. The comments seem to correctly contemplate who I envision the statute operating based on a ‘common sense’ or ‘plain meaning’ reading, so I am not sure how additional comment would add anything. I absolutely agree there are several potential ambiguities, several of which are raised, and also there is no telling how a court may approach the language of the statute. I also am not suggesting that I prefer the reading I discuss – rather, I would like to see a ‘judicial gloss’ to remove what seems to me like very serious and probably unintented consequences of the present language; however, the article does reflect what I see as the more probable reading based on the actual language used. To the extent questions may not already be answered by my article or the comments after, please feel free to email me with a question.

  19. EG January 20, 2012 5:51 pm

    Howard,

    I appreciate you bringing up this issue, as the language in the AIA, especially section 3 is AWFUL. Trying to understand what it means, including all the subterranian connections between the various paragraphs, gives me nightmares, as well as monumental Excedrin headaches. That’s one reasons why I call the AIA the Abominable Inane Act. Congress should be taken to the wood shed for passing such nonsense.

  20. Current Law Question January 21, 2012 1:10 am

    “under current law, an inventor is able to patent obvious variations of a prior filing so long as the claims are not “anticipated” by the prior filing and the new filing takes place within a year of publication”

    This requires invention before the publication date as well, correct? Otherwise 102(a) applies and 103(c) does not.