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Posts Tagged: "Hilmer"

Anticipating Expansion of Intervening Disclosures Under the AIA

Although what qualifies as art under the AIA can be distilled to disclosures before a patent application, both pre-AIA and AIA created exceptions for intervening disclosures in Section 102(a)(2). Intervening disclosures are defined by an earlier filing date, but a later publication date and are sometimes referred to as secret prior art. Intervening disclosures apply only to US patents, US publications, and PCT applications. Other types of disclosures, such as disclosures at a Beijing conference in Chinese would need to be considered under Section 102(a)(1). Where is this expansion for intervening disclosures going to come from? Mainly from two primary sources: 1) US patents or publications that have foreign priority claims; and 2) PCT applications published in a language other than English, regardless of foreign priority claim… The potential doubling of available intervening disclosures would create significantly more prior art.

The Impact of the America Invents Act on the Definition of Prior Art

While the search for prior art won’t likely be impacted, the value of the prior art located will be dramatically impacted according to Ken Hattori, partner in the Washington, D.C. firm of Westerman, Hattori, Daniels & Adrian, LLP. “US patents with a foreign priority claim will become tremendously stronger as prior art,” says Hattori. “The subject matter disclosed in the US patent has an effectively filed date as priority date since the Hilmer doctrine is eliminated.” This is significant because “there will be no Section 112 requirement for the description of the subject matter disclosed in the foreign specification. Thus, the subject matter in a prior art US patent or application will go back to the foreign filing date as a reference.”