by Dennis Crouch
The America Invents Act of 2011 included a major reshuffling of what counts as “prior art” against a given patent. 35 U.S.C. § 102 was substantially rewritten with a new focus on an application’s effective filing date, and zero focus on whether a patent applicant was the “first to invent.” The new law applies only to post-AIA patents. The Act defines these as any patent that “contains or contained at any time” a patent claim “that has an effective filing date” on or after March 16, 2013. We are now in the midst of a major change-over. Most in-force patents are still pre-AIA, but most newly issued patents are post-AIA.
The pretty chart below provide a sense of where we stand for newly issued patents. For 2021, 90%+ of newly issued patents are post-AIA, meaning that their effective filing date was on or after the March 16, 2013 threshold. Patents coming out of TC-1600 (Biotech + Organic Chemistry) are the most likely to still be pre-AIA (18% pre-AIA in 2021) while TC-2800 (Semiconductors, Electrical and Optical Systems and Components) is at the other end of the table (4% pre-AIA in 2021).
The data here comes from the USPTO data files, but is generated primarily from applicant input on the application data sheet. So, there are likely some mistakes. Further we do not have clear case law interpreting the threshold timing in any detail.
Patent Term: We know that in the USPTO, the patent term lasts 20 years from the effective filing date (not counting US provisional PCT and foreign national stage filing). However, the US also has a generous patent term adjustment (PTA) program that provides patentees with additional patent term in cases where patent prosecution took too long. Thus, although the clock is seemingly running on these still-pending pre-AIA applications, I expect that many of them will find their terms substantially adjusted. [Thanks to a reader for catching my typo above. Priority claims to a PCT application do count into the 20 year patent term.]
Failing to make any progress here, I resorted instead to a search facility, with some success.
The Finnegan firm, see linked briefing, expertly confirms what I had gathered already, namely that: The USPTO takes a less restrictive approach to amendments than SIPO or the EPO.
link to finnegan.com
The reality is that the de facto “new matter” standard for the allowability of claim amendments in prosecution at the USPTO, namely, that:
“the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed.”
is lax in comparison with the “directly and unambiguously derivable” standard imposed at SIPO and the EPO. Curious. It seems to me that “derivable” and “conveyance” of possession of the claimed invention should deliver much the same result. No wonder then, that so many US patent attorneys find the EPO standard oppressive.
But is the WD dragon awakening after a long slumber? Patent Docs suggests that it might be. See its June 2020 post on Biogen v. Mylan referencing Amgen v. Sanofi. This would not surprise me, for it is an inevitable consequence of the switch to a FtF regime.
Well about time, MaxDrei.
Maybe you should have noted that from the get go.
OR – you could just as easily referenced our own past discussions – as I noted below – in that I had long ago told you of the US not requiring an Ipsis Verbis “exact” view of what “no new matter” meant.
Not at the EPO either, anon.
Just so as you are aware, anon, it’s a common misconception that under the EPC or the established case law of the EPO ipsis verbis textual support is required. Click on the link to the Finnegan briefing I gave you, to find the words:
“literal support is not required”
The firm has fully-functional filing and prosecution offices in Europe, staffed with the necessary slew of attorneys registered to practise before the EPO. So I think you can safely rely on the advice in its Briefing, OK?
Circling back though, I still don’t understand why you informed Paul Morgan that the USA does have a “new matter” provision to constrain prosecution amendments of the claims. It was this remark of yours that started our various exchanges in this thread, thankfully now drawing to a close.
Ah, now I see what you were driving at, when writing to Paul Morgan. As Finnegan puts it, in practice, the WD requirement does indeed serves as the USA’s “new matter” restriction on the freedom to amend claims during prosecution.
…now you see?
Something that I have pointed out to you since well before the publication of the reference you now use?
And you wonder why I chastise you for having mind not willing to understand? It takes you well over five years to grasp a simple point (and even then, you do not grasp it fully – as you continue to want to cling to your narratives.
“It seems to me that “derivable” and “conveyance” of possession of the claimed invention should deliver much the same result.”
The distinction rather reminds me of an obviousness determination under strict TSM versus an obviousness determination post-KSR.
Indeed, Ben. Overnight I have been mulling over the symmetry of the legal provisions, in the two sovereign jurisdictions. In the one (the EPC) it’s certainly the “novelty” standard on both sides of the equation whereas under prevailing US law (as it seems to me), it is the notion of obviousness that controls, on both sides of the equation. Both are defensible. Both have their advantages and disadvantages.
Suppose, Ben, you and I both hit upon much the same invention, independently, and both of us file on it. Suppose that both of us are clear through to issue (no other prior art, no 112 problems). The ONLY issue is the priority contest between the two of us and who will come out on top.
Not so unreal, actually. Watch how the CRISPR-Cas9 contest is playing out, currently, in the USA and in Europe.
The USA gives the Party that was First to File enormous leverage. Any later filings fail if what they claim is deemed obvious in the light of that which was first filed. Under the EPC, it is instead only what the earlier filing renders old that is taken away from the later to file (Art 54(3), EPC). However, and here’s the “equalling up” factor, neither filer during prosecution can make any amendment to the claim that adds to the pending application any “matter” that is novel over the originally filed disclosure content.
To the contrary, in the USA. Here, the later filer can amend the claims with more freedom than under the EPC. It’s the way US law has, to “equal up” the appalling situation for the later filer, that they are deprived of all subject matter that the earlier filing renders obvious.
Anybody disagree?
How so, Ben?
At 1521, anon, you told Paul:
“Your ‘concern’ about uncertainty is a bit overblown – there IS a no new matter requirement.”
I’m just curious what it is, this “no new matter” provision of US law. That’s because of the myriad occasions when instructing US counsel has informed me that an “added matter” objection from an EPO Examiner, which strikes me as unremarkable, would not be seen as “new matter” under US law. In general, there is constant criticism from the USA that the “new matter” standard at the EPO is overly strict. You tell us that there “IS” a new matter standard in the USA and that it is powerful enough to assuage Paul’s concerns. I’m just curious what it is.
Oh dear, anon. That was supposed to be in reply to your 1522111, below, in our discussion about endless streams of continuing filings resulting in “uncertainty” (for competitors I suppose, would-be manufacturers, investors and those tasked with writing FTO opinions).
But never mind: my reply will stand on its own, I hope, and all being well generate a new and informative conversation thread.
Ah, so very typical of MaxDrei – hiding behind “politeness” and in so doing, being incredibly rude.
Here, MaxDrei pines for some “and all being well generate a new and informative conversation thread.”
With the NONSENSE lead of, “But never mind: my reply will stand on its own hope,”
You JUST got called out because your reply does NOT stand on its own.
To wit, you have EVADED the point put to you:
I ask because it is you here that writes with the implication that the EPO’s “New Matter” is “more rigorous.”
If you want to walk that back – be my guest.
But if you cannot substantiate it, AND don’t want to walk it back, well, what then should people make of your comment?
And instead of EITHER walking back YOUR original insinuation that the EPO is somehow (unidentified) as being ‘more rigorous,’ you want to push to me to explain what the US position is on ‘no new matter’ – in the first instance.
That is intellectually bankrupt.
YOU are the one that inserted a comparative degree and got called out on it.
YOU are the one that needs to EITHER walk back your statement or substantiate it.
If you NOW want to claim that you do not even understand what it IS for the US system to have this “no new matter,” AND you want some one else to explain it in the first instance, then you most definitely need to FIRST walk back your insinuation.
Until YOU do that, I simply do NOT believe that you are approaching this – no matter how (falsely) polite – in a genuine sense of “mind open to understanding.”
Let’s see that walk back OR explanation from you first. Are you really going to bank you assertion on your own ‘feeling’ that is NOT substantiated? Based on some nebulous hearsay of “when instructing US counsel has informed me that an “added matter” objection from an EPO Examiner, which strikes me as unremarkable, would not be seen as “new matter” under US law”….?
You NEED to supply some actual context there to your assertion. What exactly is the item – ‘unremarkable to you’ that is drawing a “no, no that is not new matter here” response? Is it some type of strict Ipsis Verbis (because, if THAT is what it is, we have already been over that distinction).
Tell.
Please.
Do.
Oh shoot – sorry for that. I when I was typing, I was thinking “provisional and foreign national”, but it obviously came out wrong. Changing that now.
Please clarify the dating methodology for Cons, Divs and CIPs.
The Office treats filing dates of these (not priority date) as separate and distinct, such that the comments of several posters noting chain continuation practice may be in error.
Dennis explicitly indicated that he is classifying based on effective filing date. (“For 2021, 90%+ of newly issued patents are post-AIA, [i]meaning that their effective filing date was on or after the March 16, 2013 threshold.”[/i] (emphasis added))
35 USC 100 makes clear that “[t]he term ‘effective filing date’ … means… the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).” 35 USC 100.
This is the standard bifurcation that every attorney keeps in mind when prosecuting any application with a priority claim.
I’m honestly flummoxed as to what alternative “dating methodology” you could even be contemplating. Redefining “effective filing date” to mean anything other than this would just be unintuitive and confusing.
Thanks yes.
For this chart I did not actually consider patent application filing dates. Rather, my data only considers a flag in USPTO files about whether or not this is an AIA patent.
Thanks – I did miss the “effective” aspect as most charts like this (if coming from Office data) do use the actual later filing dates (that’s why I asked for clarification).
My bad on the miss.
With that clarification, I am actually surprised that the “open for effective” is actually that low.
With the number of families we have (as an anecdotal proxy), I would have placed the number in the 20-25% range.
The percentage seems low to me as well, but it is also possible that the flag is inaccurate for some patents/applications.
This is a good point Anon. Those still-pending pre-aia patent applications are unlikely to be of average quality or value.
Some possibilities for your situation: (1) your firm handles a higher proportion of valuable patents or (2) your firm is encouraging filing of continuations to clients as standard practice. (I expect many other explanations exist as well).
Dennis, wrote, “We know that in the USPTO, the patent term lasts 20 years from the effective filing date (not counting PCT and foreign national stage filing).”
Wrong.
The PCT filing date begins the 20-year term for the US national phase of that PCT. The only way a PCT filing doesn’t count against the 20-year term is if the PCT filing serves as a Paris Convention priority filing for the US application, which is not filed as a national phase of that PCT application.
Re AIA’s “35 U.S.C. § 102 .. focus on an application’s effective filing date, and zero focus on whether a patent applicant was the “first to invent.” Well, pretty much, but AIA 35 U.S.C. § 102(b) and (c) do have some important exceptions that do not limit applicants to only their filing dates against others.
Also, the percentage of patents in which an earlier “first to invent” date beat an earlier “first to file” date in contested patent litigation [not untested ex parte application declarations] was always very, very, small. Other parts of the AIA have had more impact in that regard, especially parent foreign priority filing dates of U.S. applications becoming prior art.
Also, re “90%+ of newly issued patents are .. post-AIA..” That means 1 out of ten of all issued patents have had a true PTO application pendency of at least 8 years or far more. Why is that acceptable docket management?
Your last question was my first thought.
Cons, divs, and RCEs
Well, perhaps RCEs, but the others are treated as distinct items.
But they are still pre-AIA if the parent is and would appear to have long pendency.
“they are still pre-AIA if the parent is”
In most cases, but not necessarily.
If the continuing application’s original claims are not supported by the parent application, it would lose pre-AIA status.
Of course one might say that such an application is not really a continuing application. If then those original claims were corrected to be supported by the parent application, the application would be a proper continuation, but the temporary effective filing date change would have resulted in permanent loss of pre-AIA date status.
? Ben, falsely filing a continuation that is really a CIP without a proper CIP oath [or other false priority date claims as to any of the claims] should not be allowed, but I wonder how often it is even detected in the PTO? The false priority date will not be allowed if those claims are ever litigated. I would hope it is not so common as to change pendency statistics. The real pendency statistics problem has been the PTO falsely calling refiled specifications with somewhat different claims [of any name] as “new” applications.
Certainly a good approximation (and I would think Ben’s point, although a possibility, would be extremely rare, given the mad rush of filings just before the AIA enactment dates).
But such may not matter here – pending clarity on the dating methodology as noted above.
“That means 1 out of ten of all issued patents have had a true PTO application pendency of at least 8 years or far more. Why is that acceptable docket management?”
I’m sensing that “true pendency” is a pet term of yours for the time since the effective filing date of an application without any regard for the date on which the application was filed. Correct me if I’m wrong.
Tell me, do you hang around the PTO waiting for pharmaceutical companies to file pre-AIA status continuations, so that you can immediately wail about the years of “true pendency” that the PTO has burdened those applicants with?
Ben, paragraph 2 = no. True pendency is obviously the time from from the earliest claimed priority date, which is also the original filing date, and is also the patent term starting date. [Not some PTO generated “new” date for re-filings of the same application.]
Paragraph 3 = no. [But some members of Congress are.]
Applicants legally delaying total pendency to be able to extensively amend claims to cover later competitors or improvements [“from the catbird seat” as one decision noted] is a particularly U.S. practice. But it is enabled only by the US PTO not prosecuting applications in TRUE filing date order, which is obviously from their oldest priority date – the same date which would determine U.S. 20 year patent term but for statutory PTO delay term compensations. That is, U.S. examiners being allowed to take up recently filed applications to work on, instead of working on old applications, especially multiple continuations. This has gone on extensively for many years. Extreme examples being many patent applications by Lemelson and Hyatt, and other hundreds of patent applications pending so long they are under the old patent term of 17 years from whenever they finally issue from the PTO, to spring on U.S. companies. If old applications were taken up first by the PTO, in proper filing date order, applicant refilings could not provide such extensive delays.
“applicant refilings could not provide such extensive delays.”
You have been out of prosecution for much too long Paul – and that “catbird” strategy is NOT going to go away.
Paul,
With respect to the comment regarding docket management, keep in mind that many companies routinely keep at least one application pending in patent families they deem especially valuable. My strong suspicion is that the majority of these recently-issuing pre-AIA applications are continuations or divisionals that were filed within the last three or four years.
The practice of serially chaining continuations is pretty common, and consequently I do not think this stat can really be read as saying anything meaningful about the Office’s docket management.
Paul, you ask why is that “acceptable docket management”? My answer is that in the pharmaceutical area litigation occurs overwhelmingly at the end of the 20 year patent term and that it is simply sensible for innovative pharma to have something pending at the PTO even as that 20 year term draws to a close.
So regardless how fast the PTO will examine chain-filed continuations etc, the expectation would be that Applicant will simply file again, adding another link to the chain. And why shouldn’t they? Where’s the harm in it?
What to do about it? First, if Applicants want to keep adding to the chain, let them. Second, make sure they can’t add matter yet still keep their early filing date. Third, offer a fast track to those who ask for early issue.
But the Office does this already, doesn’t it?
So what’s not to like? What neds to be done better than it already is?
Pharma is pretty much the outlier on where the value of term comes into play.
Let’s not have the tail wag the dog.
Max, what’s “not to like” [in the public interest] is being able to amend pharma claims up to 20 years after the original application filing date, as you suggest, so as to prevent others from ever being able to tell for sure whether they can make the large investments needed to bring a competitive lower priced product to market with non-infringement certainty. I have never heard of that endless claim amendment opportunity in the EPO?
If such very long pendency applications were taken up in order and acted on in say six months after each re-filing the resultant multiplicity of filing fees for many multiple refilings would discourage all but the most valuable, and could even provide a basis for rejections for lack of prosecution diligence. [Filing papers JUST for purposes of delay is of course not even ethical, albeit rarely enforced.]
Are you only whining about that catbird strategy?
Your ‘concern’ about uncertainty is a bit overblown – there IS a no new matter requirement.
The strategy is not as “Oh N0es” as you seem to be fretting about. One can think of it as merely maintaining a suitable ‘pseudo-obviousness’ buffer around the innovation. IF you want to push ahead, then push ahead and innovate. IF you merely want a knock-off, then pony up and help reward innovation.
Paul, there is an “endless” opportunity to amend claims at the EPO. One can file one generation of divisionals after another, constrained only by the end of the original 20 year patent term.
What you will run up against though is the EPO’s Gold Standard prohibiting the addition of matter to the application anytime later than the original priority-defining PTO filing date. That Standard is seriously strict. Anything that is not “directly and unambiguously derivable” from the disclosure of the original filing is new, and prohibited.
Now some say that the EPO Gold Standard is too strict. Mainly, they are those accustomed to the added matter standard in the USA and who want belatedly to protect an invention they had not yet perceived at their original filing date or mentioned in their original drafting or filing. In a First to File jurisdiction, after the filing date is too late. You only get one chance to draft, to disclose what your invention is. It’s just the way it is. That’s what “First to File” means.
Can you be more particular with this “difference” that you seem to be seeing in the “No New Matter” regimes?
Particularize any differences, betwen US law and European, on the issue of “new matter”? No, anon, I can’t. But you can, anon, if you feel moved to do so.
I just told you with full particularity, what the standard is at the EPO. In your sovereign jurisdiction, anon, is it somehow different? If so, in what way? You have the floor.
I ask because it is you here that writes with the implication that the EPO’s “New Matter” is “more rigorous.”
If you want to walk that back – be my guest.
But if you cannot substantiate it, AND don’t want to walk it back, well, what then should people make of your comment?
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