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

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.