Invention details need not be public to be prior art under AIA

The United States Court of Appeals for the Federal Circuit recently issued a major decision interpreting provisions of the America Invents Act (AIA), specifically the AIA on-sale bar provisions. In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit panel of Judges Dyk, Mayer and O’Malley determined: “after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale” for the sale to be invalidating. In so reaching this ruling, the Federal Circuit has largely done away with the belief that the AIA created some kind of “safe harbor” for sales that did not disclose the details of the claimed invention.

After first determining that a sale had occurred, the Federal Circuit turned to the language of the statute and the legislative history of the AIA. “We next address whether the AIA changed the meaning of the on-sale bar under 35 U.S.C. § 102 so that there was no qualifying sale as to the ‘219 patent,” Judge Dyke wrote.


Supplemental Examination to Cleanse Inequitable Conduct

One of the new provisions of the America Invents Act that went into effect last week authorizes Supplemental Examination.  Supplemental examination will probably be used less frequently than the USPTO thinks it might be, but it will still be valuable in a small percentage of cases.  We all know that inequitable conduct does not happen nearly as often as some might think or suggest, but it does happen. If there is inequitable conduct, supplemental examination is the route to go because it inoculates you from losing the patent.

Before examining the inoculation effect, let’s explore what is required to initiate a supplemental examination. Pursuant to 37 CFR 1.610(b), a complete request for supplemental examination must contain: (1) An identification of the number of the patent for which supplemental examination is requested; (2) A list of the items of information that are requested to be considered, reconsidered, or corrected;  (3) A list identifying any other prior or concurrent post-patent Office proceedings involving the patent for which supplemental examination is being requested; (4) An identification of each claim of the patent for which supplemental examination is requested; (5) A separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested; (6) A copy of the patent for which supplemental examination is requested and a copy of any disclaimer or certificate issued for the patent; (7) A copy of each item of information (other than U.S. patents and published U.S. patent applications) accompanied by a written English translation of all of the necessary and pertinent parts of any non-English-language item of information; (8) A summary of the relevant portions of any submitted document that is over 50 pages in length; and (9) An identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner establishing the entirety of the ownership in the patent requested to be examined.


America Invents Phase 2 Implemented

At 12:01 am on Sunday morning, September 16, 2012, phase 2 of the America Invents Act (AIA) went into effect.  This is the culmination of many months of work on the part of the United States Patent and Trademark Office to first propose the necessary rules and then consider all of the comments received, finally implementing final rules in July and August.

No fewer than seven substantive rule sets have been implemented on time to meet the legislation’s September 16, 2012, effective date.  The new rules are as follows:


Next Wave of AIA on Patent Exam Starting Oct. 2, 2012

By now you have certainly heard about the most revolutionary change to the U.S. patent laws since at least 1952, and most likely since the inception of the first patent laws in the U.S. in 1790.  The America Invents Act (AIA) is poised to change patent practice from the ground up.  The bill was signed into law by President Obama on September 16, 2011, and some minor provisions went effective immediately, or nearly immediately.

The next wave of changes comes online on September 16, 2012, and the United States Patent and Trademark Office is feverishly working on multiple final rules packages that will be required for the implementation of that next wave of changes.  So far, the only one that has been released is the final rules package relative to third-party submissions of prior art during prosecution. See USPTO Publishes Final Rule on Preissuance Submissions.


USPTO Plans National Roadshow on AIA Implementation

The United States Patent and Trademark Office will once again take to the road in the Fall of 2012 to discuss implementation of the America Invents Act (AIA). The USPTO is planning to host eight (8) roadshows during September 2012 to share information about new final rules implementing provisions of the America Invents Act that become effective on September 16, 2012. The Roadshows are free and open to the public, and pre-registration is not required. Nevertheless, seating will be limited and is available only on a first-come, first-served basis. The USPTO has posted the agenda
for these Roadshows on their website.

The USPTO will webcast the roadshows during the first week (from Minneapolis, Alexandria, and Los Angeles) and post videos of those events on the micro-site. Copies of any written materials will also be made available on the USPTO micro-site devoted to the AIA Roadshows.
While attorneys are certainly invited to attend these Roadshow presentations, no CLE credit is available for attending any Roadshow event.