AIA Applications Working Through the System

The AIA makes important changes to the law of prior-art that will impact which inventions are patentable, although it remains unclear whether the new law makes it more difficult to obtain patent protection because it increases the scope of prior art in some areas but decreases the scope in other areas.

What is an AIA-Application.  An AIA application is a patent application that – at some point – included at least one claim whose effective filing date is on or after March 16, 2013.   For most applications, the answer to this is easy: if the US application is filed before the 2013 deadline then it is not an AIA-application; and if the US application is filed after the 2013 deadline and has no priority claims then it is an AIA-application.  The difficult questions come-up with post-AIA applications that claim priority to pre-AIA filings.  The question that the applicant must answer for those is whether the newly filed application includes any claims (including cancelled claims) that were not fully supported by the priority filing.

In their filing papers, patent applicants are asked to self-identify whether the application should be considered pre- or post-AIA with the following check-box statement:

To get a sense of how the transition is going, I pulled-up the files of about 6,000 recently published patent applications to see whether they are listed as pre- or post- AIA applications. The chart below shows the results. Prior to October 2014, very few of the published applications were considered post-AIA.  Unless early publication was requested, those applications were either filed prior to the March 2013 date or claimed priority prior to that date (which thus led to early publication).  Applications published since October 2014 are generally ones filed after March 2013.

PostAIAApps2

We now have a growing number of post-AIA applications filed more than 24-months ago. Many of these have now received a first office action and at least some have issued as patents. (See, for example, Patent Nos. 9,032,902; 9,033,062; 9,035,301; 9,035,446; and 9,037,353).  Coming soon – battles over the meaning of the revised 35 U.S.C. 102.

 

34 thoughts on “AIA Applications Working Through the System

  1. 6

    Filing an incorrect checkbox statement, or otherwise miss-representing, that the application does or does NOT fall under the AIA is far more likely to be occurring than any of the more rare AIA 102 legal question situations commented on below, since there are, and will be, many thousands of transitional applications with provisional or other pre-AIA parent or grandparent priority dates, including continuations, CIPs, and divisonals.
    Here is a PTO comment that accompanied the AIA rule changes that suggests that it could be considered inequitable conduct if they were aware that any claim in the application is AIA subject contrary to their checkbox statement. The most likely reasons for such a checkbox errors will be carelessness [such as letting the admin do it], legal ignorance, or failure to read the parent specs to insure that ALL claim elements of every new claim are fully 112 supported.. But the PTO is unlikely to consider those to be valid excuses:
    1.78 – PTO Comment RESPONSE TO COMMENT 18:
    “However, § 1.56 also includes a general duty of candor and good faith in dealing with the Office, which could be implicated if an applicant is aware that a transition application contains a claim to a claimed invention that has an effective filing date on or after March 16, 2013, but nonetheless chooses not to provide the statement when required under §1.55 or 1.78.”

    Bottom line, this seems dangerous, and the fact that it is in the form of a checkbox may not make it any less dangerous than any other affirmative attorney or applicant representation in the file history?

    1. 6.1

      BTW, here are some more things to cogitate about this. May not a false checkbox or other assertion that the application is non-AIA also be accompanied by, or even arguably amount to, a false priority claim for a claim filed in a post-AIA application that does not have full support in the spec of the pre-AIA parent application? That is, an application that should have required a CIP application oath rather than a regular oath.?

      [Relying on a myth that PTO examiners are checking for full 112 claim support in a parent application for which priority is claimed in a new application with a new claim does not seem likely to survive an attack in litigation, because it would seem so easy to get overwhelming testimony that they normally do not?]

  2. 5

    OT: fresh CAFC case tanking some miserable claims under 101. Although non-precdential, this will nevertheless be of interest to folks here:

    link to cafc.uscourts.gov

    Allvoice Developments LLC v. Microsoft Corp (CAFC, May 19, 2015)
    Prost, Dyk, O’Malley (O’Malley writing)

    Try to believe this representative claim:

    A universal speech-recognition interface that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different
    computer-related applications, the universal speech-recognition interface comprising:

    input means for receiving speech-recognition data including recognised words;

    output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text; and

    audio playback means for playing audio data associated with the recognised words.

    Got that? Truly deep, sooper dooper technical stuff. Heckuva job, PTO.

    The CAFC’s take:

    If a claim is drawn to subject matter that falls outside the four statutory categories of § 101, it is not patent eligible. In re Nuitjen, 500 F.3d 1346, 1354 (Fed. Cir. 2007). This is true without regard to whether it might otherwise be
    ineligible because it encompasses a law of nature, natural phenomenon, or abstract idea. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 124 S. Ct. 2347, 2354 (2014).

    News flash for the CAFC: “new functionalities” aren’t eligible subject matter. Learn to make it easy on yourselves. But wait! There’s more:

    Except for process claims, “the eligible subject matter must exist in some physical or tangible form.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir. 2014). To be considered a machine under section 101, “the claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’” Id. at 1349 (quoting Burr v. Duryee, 68 U.S. 531, 571 (1863)).

    If the eligible subject matter “must exist in some physical or tangible form” then it necessarily must be described as such in order to be claimed. This is the same fundamental underlying concern that required product-by-process claims to be construed to cover only the process steps, whether or not a description of the allegedly new resultant product was “impossible”.

    Now let’s watch the CAFC spin up a cloud of sparkly dust:

    Software may be patent eligible, but when a claim is not directed towards a process, the subject matter must exist in tangible form. Here, the disputed claims merely claim software instructions without any hardware limitations. …. We decline to import or, as Allvoice argues, “imply” a tangible medium into claims that fail to recite or reference any such medium

    LOL. Got that, everywhere? Instructions are ineligible subject matter because (at least) they do not fall into a statutory category (arguably, instructions also fall under the larger category of information and are therefore ineligible as abstractions). BUT — regardless of Mayo, regardless of Alice — if you recite “any such tangible medium” — even an old tangible medium with no utility other than to store software instructions — the CAFC will gleefully take a giant bong hit and pretend that the protected “innovation” is eligible subject matter. On the other hand, if you don’t play this transparent scrivener’s game according to the CAFC’s cute rules, they won’t even fire up the bowl.

    The farce continues.

  3. 4

    Has anyone reading this blog seen or heard of any PTAB or CAFC appeal where an issue in dispute is a legal interpretation of any part of AIA 102?

      1. 4.1.1

        Ned, including all the AIA applications for which PTO priority prosecution was paid for, plus CIP’s, and some RCE’s, continuations or divisionals in which at least one post-AIA [after 3/16/13] claim was added that is not fully supported by the original spec, there should be several thousand AIA-102-subject applications by now that could already be on, or ripe for, PTAB appeal. Especially with this showing of about 67% having already been pending more than 18 months as if this April.

        1. 4.1.1.1

          P.S. I was not, of course, referring to appeals already fully decided, given that backlog.

  4. 3

    “Im seeing alot of boxes not checked when it’s clear no reasonable person could have thought the claims were supported in the transitional application by the pre aia filing.”

    So make whatever rejection you think is appropriate and let the applicant respond.

    “Be interesting to see if oed gets involved with the more blatant errors in status.”

    Lulz. More fantasizing about “OED getting involved.”

    1. 3.1

      AAA JJ, your client commercially uses a claimed process for more than a year prior to filing the application. Do you have a duty to disclose this use?

      1. 3.1.1

        Well Ned, I guess that would depend on whether you believe the AIA overruled Metallizing Engineering. I haven’t formed an opinion on that yet.

        I guess it would also depend on whether “commercially uses” is a “public use” under the AIA, or if the “commercial use” made the process “otherwise available to the public” under the AIA.

        Until we have some definitive rulings on these terms as their used in the AIA, I would say there is no obligation to disclose.

        I could be wrong.

        1. 3.1.1.1

          If the process is discoverable by a POSITA from the publicly sold product that was made by that process, that is not an AIA change.

          Whether or not the AIA overruled the long established Metallizing Engineering doctrine started by J. Learned Hand is very much debatable, since the Fed. Cir. is clear that a truly secret commercial use of a method is NOT a 102 statutory bar, and not prior art to anyone. It is only an individual equitable forfeiture someone who elected trade secret protection and belatedly seeks patent protection in addition. So withholding information about a secret but commercial use for more than a year before filing is at your own risk, and it may takes years before such a patent is sued on again to get the question decided.

          1. 3.1.1.1.1

            Pshaw Paul – read the Soliloquy.

            Why is this question even being bandied about? Ned – why are you kicking up dust ?

          2. 3.1.1.1.2

            Paul, unless and until it is affirmatively decided by a court that the AIA changed the law, secret commercial use by an inventor IS a bar.

            Thus, failure to disclose a prior, but secret, commercial use IS inequitable conduct.

            And, even though I think these cases are wrongly decided, a private “have made” contract by a vendor is an on sale bar that IS prior art under the current law and must be disclosed. Failure to disclose it will be inequitable conduct.

            Thus, I do not think it will be long before such prior commercial, but non public uses and sales, are voluntarily disclosed to the PTO. The powers over at the PTO should raise the issue quickly up to the Federal Circuit for a decision. What the PTO should not do is decide the issue in favor of issuing the patent. That is is not within their constitutional mandate and their arrogating such issues into the executive is one of the problems we have historically had with the PTO.

              1. 3.1.1.1.2.1.1

                anon, are you suggesting that one intentionally not disclose prior art to to the PTO that could invalidate the claims?

          3. 3.1.1.1.3

            Paul, ” a truly secret commercial use of a method is NOT a 102 statutory bar, and not prior art to anyone.”

            Metallizing held that secret use by third parties is not prior art — and this is consistent with on sale being a bar only to an applicant for patent on the basis of abandonment by the prior commercial exploitation of the invention.

            The Federal Circuit explained that a secret use of a process is a bar to the applicant on the basis for forfeiture. In re Kollar, 286 F. 3d 1326 (Fed. Cir. 2002) link to scholar.google.com

    2. 3.2

      It doesn’t matter to me what oed does. I reject, you amend, repeat.

      That being said, if you belive with all the tools the office had to monitor examiners that they aren’t quantifying the percentage of cases that have the aia status changed your nuts. Ill bet if that percentage gets over X, OED gets involved. But hey like I said doesn’t matter to no me, my livelihood isn’t tied to my reg. Number.

      1. 3.2.1

        “Ill bet if that percentage gets over X, OED gets involved.”

        You might want to adjust the settings on your tinfoil hat.

        Just a suggestion. :-)

  5. 2

    ” Coming soon – battles over the meaning of the revised 35 U.S.C. 102.”

    What are the biggest anticipated issues?

      1. 2.1.1

        On Sale.

        The question is whether secret commercial use of the claimed invention, by the inventor, before filing of the application, and without regard to a grace period, will act as a bar to a valid patent.

        In Pennock v. Dialogue, the claimed invention was a fire hose, but the manner of making the hose was kept secret while the inventor and others with his consent made and sold hoses according to the secret method for years prior to filing for a patent. The hoses themselves were in public use. The Supreme Court held the patent invalid as the inventor had placed the invention on sale and into public use prior to filing a patent application, and by these acts, the inventor had abandoned his right to a patent.

        Would it have made any difference if the patent were limited to the process for making the hose? I think not.

        Under the Metallizing Engineering case written by Hand and cited with approval by Pfaff, third party secret uses are not prior art even where similar acts performed by the inventor would bar the application. As well, Pfaff was all about the inventor placing the invention on sale.

        Alse see, Andrews v. Hovey, 123 U.S. 267, 8 S. Ct. 101, 31 L. Ed. 160 (1887) link to scholar.google.com where the Supreme Court seemed to suggest that the “on sale” bar could extend to third parties — but the case dealt with third party public uses that amounted to bars.

        1. 2.1.1.1

          Ned, I can see both sides of the public policy debate. On the one hand, selling for years and reaping the profit then, after all that, belatedly filing for a patent , seems like an abuse of the patent system.

          On the other hand, if you think of a patent as a reward for an enabling disclosure of a solution to a still unsolved technical problem, why should the belatedness of the enabling disclosure disqualify the discloser from patent reward?

          But, if the Congress gave no indication it was switching from the one hand to the other, presumably the pre-existing jurisprudence still rules, thereby finessing out of any considerations whether the AIA is attempting to harmonise the substantive law of patentability of the USA with that of the rest of the world.

          1. 2.1.1.1.1

            Silly boys, this is NOT an issue precisely because Congress DID give more than an indication.

            See the Soliloquy.

          2. 2.1.1.1.2

            Max, but a rule requiring that a patent application be filed before an invention went into commercial use or within a 1 year grace period would force early public disclose of secret processes and thereby enhance the progress of the useful arts — especially IF there were no such thing as prior user rights.

        1. 2.1.2.1

          Perhaps “What does it mean to “make available” some technical teaching to “the public”? In Europe we have been occupying ourselves with this question under the EPC since 1978.

          Suppose a product already on sale embodies the claimed subject matter. At what point is the reverse engineering task so hard that the product fails to “make available” the claimed invention?

          Suppose the product was sold under Conditions of Sale that constrained onward transmission of the product or its description by the Buyer. Or suppose the Buyer and the Seller have a common fiduciary interest in not letting the cat out of the bag? Knowledge of the invention somehow remains bounded. Has the sale made the invention “available” to any member of “the public”?

          1. 2.1.2.1.2

            Max, if the product could not be reverse engineered on the date it went into “public use,” but it became reverse-engineerable at a later date due, I would think that the later date should be the prior art date.

            But if the product were sold or used by the inventor, US law sets aside the issue of whether the invention is known to the public. The on sale bar is an equitable bar that holds that the inventor (or his privies) has abandoned his right to a patent. Pennock and Pfaff both say the same thing on this issue.

            1. 2.1.2.1.2.1

              …and Ned continues his internet style “shout down” soap box monologue without regard to clear history of the AIA…

              It’s like Dorothy clicking her heels…

  6. 1

    Im seeing alot of boxes not checked when it’s clear no reasonable person could have thought the claims were supported in the transitional application by the pre aia filing.
    Be interesting to see if oed gets involved with the more blatant errors in status.

    1. 1.1

      I thought that the director already made a statement effectively saying trying to get pre-AIA when it is not pre-AIA would be taken up with OED.

Comments are closed.