AIA Patent Updates

The chart above shows the percentage of published US patent applications that are classified as post-AIA applications. These are grouped by application publication date. Thus, for recently published applications, about 60% are AIA applications while 40% are pre-AIA. The Sept/Oct 2014 jump occurred 18-months from the March 2013 AIA changeover date. Under US law, an application is ordinarily published “18 months from the earliest filing date for which a benefit is sought under this title.” 35 U.S.C. § 122. I expect that we will be seeing another jump in the percentages next month as US versions of post-AIA PCT applications begin to be published. (A PCT application can delay national stage filing by 30 months, and once the US national stage application is filed it takes the US a bit over 3-months to publish the application. December 16, 2015 represents the 33-month date if counting from the March 2013 AIA changeover date).

So far, there have been no PTAB or court decisions interpreting the first-to-file rules of the AIA – those issues are still churning within the examiner corps.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

3 thoughts on “AIA Patent Updates

  1. Regarding the AIA and prior art, one wonders what the patent office is going to do if an application claims the same invention disclosed in a published application or patent commonly owned at the time of filing but that has a different inventive entity?

    Is there a problem with inventorship particularly if that other inventive entity also claims the invention?

    1. Actually, if I were the PTO, I would proceed on the following basis:

      The first filed application names the correct the inventorship of the particular subject matter that is in common to the two applications or the application and patent as the case may be. The second application therefore either names incorrect inventorship of the common subject matter or the subject matter was presumed to have been invented by the same inventive entity if there are overlapping inventors.

      Thus, the first filed application or patent as the case may be will be used as a reference as prior art if there is a common inventor or the prosecution will be suspended pending clarification of the inventorship of the common subject matter.

      If the clarification results in naming the same inventive entity for the common subject matter of both applications, the first application/patent will be used as prior art.

      If the clarification results in a statement that the common subject matter was invented by different inventive entities with no common inventor, then the second application will be rejected under the doctrine of statutory double patenting or obviousnessnes double patenting.

      As one can see, the above procedure effectively eliminates the common ownership exception.

      1. Err.. If the same inventive entity is trying to patent the same invention (or obvious variations) twice? That seems like double patenting even if there is no statutory basis for prior art under 102(a)(2) for citing the first application or patent as prior art.

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