On July 26, 2012, the U.S. Patent & Trademark Office (USPTO) published a notice of proposed rulemaking and a notice of proposed examination guidelines to implement the first-inventor-to-file (FITF) provisions of the AIA effective March 16, 2013. The notices set an initial comment deadline date of October 5, 2012. In response to requests for additional time to submit comments, the USPTO recently extended the comment deadline date to November 5, 2012.

On October 5, two prominent intellectual property law associations joined the ranks of those providing comments in regard to the two USPTO notices: the American Intellectual Property Law Association (AIPLA) and the Intellectual Property Owners Association (IPO). The AIPLA is a national bar association with approximately 14,000 members who are primarily attorneys in private/corporate practice, government service and/or academia. The IPO is a trade association whose membership represent more than 200 companies and 12,000 individuals. We briefly highlight below two areas of comment in which the AIPLA and IPO positions are in substantial agreement.

With the breadth of change introduced by the FITF provisions, the USPTO faces a considerable challenge in implementing rules and examination guidelines that effectively implement these provisions without introducing uncertainty and unintended consequences. It will be interesting to see what effect the comment period has on the USPTO’s ability to identify and eliminate “minefields” in the proposed rules and examination guidelines. We will continue to monitor and report on their actions in this regard.

Proposed Rules – “Statements of New Matter” or “New Claim”

Sections 1.55(a)(4) and 1.78(a)(3) of the proposed rules require that if a non-provisional patent application filed on or after March 16, 2013, that claims a priority benefit from a foreign or provisional U.S. patent application filed prior to March 16, 2013, the applicant must provide a statement when applicable upon reasonable belief that the non-provisional application contains at least one claim having a filing date later than March 16, 2013 or subject matter not disclosed in the foreign or provisional U.S. patent application filed prior to March 16, 2013. The rules are intended to assist the USPTO in determining whether to apply pre-March 16, 2012 or post-March 16, 2013 law to determine patentability.

In their letter to the USPTO on October 5, the AIPLA object to the proposed rules as an “unfair shifting of a burden [to the applicant] that properly belongs on the [USPTO].” They suggest the following alternative:

[The] determination of which version of the law applies is most pertinent in the case where intervening prior art is discovered during the transitional period. … In these instances, factual inquiry can best be made [by the USPTO] through the judicious application of 35 U.S.C §112, first paragraph, enablement, and written description analyses as currently used to establish if new matter is present. Where appropriate, a request for information under 37 C.F.R. §105 could be used if the [USPTO] requires additional information after its initial review. In instances where an applicant’s actions necessitate a change from the applicability of pre-AIA to AIA law (or vice-versa), it may be appropriate to make a second action final.

In their letter to the USPTO on October 5, the IPO finds no objection with regard to a required statement relating to claims, but does object to a statement relating to new subject matter:

IPO submits that the proposed rules and guidelines fail to provide a meaningful definition of when “subject matter” would be considered “new.” For example, is subject matter “new” merely because it is not described verbatim in the earlier application? ….

IPO submits that if the applicant is not claiming such “new” subject matter, such a statement does nothing more than put the PTO on notice that the applicant may later amend the claims to incorporate such subject matter. Thus, the benefits to the PTO of requiring identification of applications that have subject matter not disclosed in an earlier application are minimal compared to the burden being imposed on applicants and the risk that applicants may later be accused of inequitable conduct if any differences were not identified.

Proposed Examination Guidelines – Prior Art Exceptions for Grace Period

Under the proposed guidelines, inventors may remove prior art from consideration during examination under a “same subject matter” test:

[The] exception in 35 U.S.C. 102(b)(1)(B) requires that the subject matter in the prior disclosure being relied upon under 35 U.S.C. 102(a) be the same “subject matter” as the subject matter publicly disclosed by the inventor before such prior art disclosure for the exception in 35 U.S.C. 102(b)(1)(B) to apply. Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.

Guidelines, Federal Register Vol. 77 at 43767, (July 26, 2012) (emphasis added).

In their letters of October 5, the IPO and AIPLA both suggest that these guidelines are inconsistent with Congressional intent and ineffectual. For example, the IPO makes the following observations:

[The guidelines impose] a verbatim requirement, and [are] directly contrary to congressional intent. Such an interpretation could have far-reaching and unintended consequences. It would appear to allow third parties to usurp a public disclosure by making a minor or trivial change, publishing it immediately, and then precluding the original publisher from obtaining a patent on the disclosed subject matter. This would decimate the grace period contemplated by the AIA.

As a simple solution, the IPO proposes that the guidelines provide that the exception apply if the differences are “mere insubstantial changes, or only trivial or obvious variations.” The AIPLA proposes another alternative:

AIPLA suggests that the Office resolve these issues by interpreting the phrase “subject matter” to mean that material from the third-party disclosure which the Office has identified to justify the rejection. Currently one need only show that the applicant had prior possession of at least as much as is disclosed in the prior art as relied on by the examiner in the rejection, in order to antedate a reference under 37 CFR §1.131. We suggest that a similar principle should apply to the exceptions under 35 U.S.C. §102(b)(1)(B) and (2)(B).


Thomas J. Bean is Counsel to the Gibbons Intellectual Property Department.