How to Overcome Rejections Under 35 U.S.C. § 102 2012 IP Summer Seminar Jamie Armstrong, Partner [email protected] Peter Konzel, Partner [email protected] July 2012 © 2012 Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP Patentability Standard MPEP § 706 AN APPLICATION SHOULD NOT BE ALLOWED, UNLESS AND UNTIL ISSUES PERTINENT TO PATENTABILITY HAVE BEEN RAISED AND RESOLVED IN THE COURSE OF EXAMINATION AND PROSECUTION, SINCE OTHERWISE THE RESULTANT PATENT WOULD NOT JUSTIFY THE STATUTORY PRESUMPTION OF VALIDITY . THE STANDARD TO BE APPLIED IN ALL CASES IS THE "PREPONDERANCE OF THE EVIDENCE" TEST. IN OTHER WORDS, AN EXAMINER SHOULD REJECT A CLAIM IF, IN VIEW OF THE PRIOR ART AND EVIDENCE OF RECORD, IT IS MORE LIKELY THAN NOT THAT THE CLAIM IS UNPATENTABLE. 1 1 How to Overcome a Prior Art Rejection under 35 USC § 102? SHORT ANSWER: SHOW THAT IT IS MORE LIKELY THAN NOT THAT THE CLAIM IS PATENTABLE! 2 35 USC § 102 - Lack of Novelty REJECTIONS FOR LACK OF NOVELTY OR ANTICIPATION ARE BASED ON 35 U.S.C. § 102. ♦ The claimed invention must have been publicly known and publicly available before the invention thereof by the Applicant. ♦ To be anticipating, each and every element of a claim, as those elements are arranged in the claim, must be explicitly or inherently described in a single prior art reference. WE WILL DISCUSS REJECTIONS UNDER 35 USC §§ 102(a), 102(b), AND 102(e). We will not be discussing sections: 102(c) – Abandonment of the invention; 102(d) – Patented in a foreign country more than 12 months before filing in the US; 102(f) – False Inventorship 102(g)- Interference proceedings. 3 2 35 U.S.C. §102(a) A person shall be entitled to a patent unless— a) the invention was known or used by others in this country, or b) patented or described in a printed publication in this or a foreign country, c) before the invention thereof by the applicant for patent, or … 4 35 U.S.C. §102(a) With regard to a) the invention being known or used by others in this country; 1.) Section 102(a) applies only to the work of others, NOT the applicant’s own work. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). ♦ If all inventors are the same, then no rejection under §102(a) is available. ♦ A common assignee is insufficient to overcome a rejection under 102(a) if there is different inventorship. 2.) Section 102(a) requires public knowledge or use, and pertains only to activities occurring in the United States. ♦ Activities in NAFTA and WTO member countries are not included. 5 3 35 U.S.C. §102(a) With regard to b) the invention being patented or described in a printed publication in this or a foreign country, ♦ The patents and publications can include printed publications, scientific articles, etc. published anywhere in the world – to include publications available on the Internet ♦ However, the publications must be sufficiently publicly available/accessible. 6 35 U.S.C. §102(a) With regard to c) the activities must have occurred before the invention thereof by the applicant for patent, ♦ Despite current patent reform efforts, the US remains a first to invent country; ♦ Additionally, prior invention can only be established in the US, or in NAFTA or WTO countries. 7 4 Overcoming 35 U.S.C. §102(a) Rejections HOW DO YOU OVERCOME A 102(a) Rejection? (1) Establish prior invention; (2) Show that prior invention was not “by another;” (3) Persuasively argue that claims are patentably distinguishable; (4) Show that cited reference is not enabled; or (5) Amend the claims to distinguish over the prior art. 8 Overcoming 35 U.S.C. §102(a) In overcoming a ground of rejection keep in mind that Prosecution History Estoppel may prevent you from later making certain arguments that are inconsistent with arguments that were previously made during prosecution. Additionally, in making any amendments to the claims for a “substantial reason related to patentability”, always consider the effects of Prosecution History Estoppel and the Festo decisions. 9 5 Overcoming 35 U.S.C. §102(a) Rejections Prosecution History Estoppel ♦ Prosecution history estoppel relates to statements made, positions taken, and amendments made to the claims during prosecution in an effort to obtain allowance, which may later bar the availability of equivalents during subsequent, post-grant proceedings. 10 Overcoming 35 U.S.C. §102(a) Rejections The Festo decisions: ♦ Although an amendment to a claim during prosecution may not be a complete bar to equivalents, there is a rebuttable presumption that the patentee surrendered the availability of equivalents to the amended subject matter. ♦ Along this line, “a narrowing amendment made to comply with any provision of the Patent Act, including § 112, may invoke an estoppel.” Festo VIII, 533 U.S. 722, 736 (2002); Festo IX, 344 F. 3d 1359 (Fed. Cir. 2003). ♦ Voluntary amendments can also bar claims to equivalents. 11 6 Overcoming 35 U.S.C. §102(a) Rejections The Festo decisions: ♦ In applying the Festo rationale, a court will presume that the patentee has surrendered the entire territory between the original claim limitation and the amended claim limitation. ♦ However, the presumption is rebuttable by showing that, “at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent.” Festo VIII, 35 U.S.C. at 741. 12 Overcoming 35 U.S.C. §102(a) Rejections The Festo decisions: ♦ Three ways to overcome this presumption. 1. Show that the equivalent would have been unforeseeable at the time of the amendment. For example, show that later developed technology or technology that was not known in the relevant art would not have been foreseeable, but old technology would more likely have been foreseeable (but not always). 13 7 Overcoming 35 U.S.C. §102(a) Rejections The Festo decisions: 2. Show that the rationale underlying the amendment bore no more than a tangential relation to the equivalent in question, which is to say that the reason for the narrowing amendment was “peripheral, or not directly relevant, to the alleged equivalent.” However, what is considered “tangential”? . The Court did not say! Thus, a seemingly minor amendment made to avoid prior art that contains the equivalent in question may not be tangential. 14 Overcoming 35 U.S.C. §102(a) Rejections The Festo decisions: 3. Show that there was some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. For example, “[s]ome reason, such as the shortcoming of language why the patentee was prevented from describing the alleged equivalent when it narrowed the claim.” Festo IX. 15 8 Overcoming 35 U.S.C. §102(a) Rejections HOW DO YOU ESTABLISH PRIOR INVENTION? – 1. ) Establish Priority 119/120 ♦ Section 119(a) – An Applicant’s previously filed foreign application is treated as if filed in the US on the filing date of the foreign application – the foreign filing date can be used to overcome a reference. ♦ Section 119(e)/120 - The filing date of an earlier filed U.S. provisional or nonprovisional application is the effective filing date. ♦ However, for a CIP, only those claims that are fully supported by the earlier parent application enjoy the filing date of that earlier parent application. ♦ Under Section 102(e), the effective filing date of an application is the filing date of the U.S. application, which includes the filing date of a PCT application designating the U.S. and which is published in the English language. ♦ Finally, Applicant’s PCT application, which includes a priority claim to a foreign application, will be treated as if filed in the US as of the date of the foreign application. 16 Overcoming 35 U.S.C. §102(a) Rejections HOW DO YOU ESTABLISH PRIOR INVENTION – 1.) Establish Priority HOW DO YOU PERFECT PRIORITY? ♦ FILE CERTIFIED COPY OF FOREIGN PRIORITY DOCUMENTS; OR ♦ ENSURE COPY FORWARDED TO USPTO AS DESIGNATED/ELECTED OFFICE BY INTERNATIONAL BUREAU (PCT) ♦ SUBMIT TRANSLATIONS! 17 9 Overcoming 35 U.S.C. §102(e) Rejections ESTABLISHING PRIOR INVENTION – Cited Art A CITED US REFERENCE INCLUDING A CLAIM TO A PRIOR FILED US OR INTERNATIONAL APPLICATION DESIGNATING THE US OBTAINS THE BENEFIT OF THE PRIOR FILED US/INT APPLICATION – The prior filed Application is a US application. 18 Overcoming 35 U.S.C. §102(e) Rejections ESTABLISHING PRIOR INVENTION – Cited Art A CITED US/INTERNATIONAL REFERENCE INCLUDING A CLAIM TO A PRIOR FOREIGN APPLICATION DOES NOT OBTAIN THE BENEFIT OF THE PRIOR FILED FOREIGN APPLICATION!!! 19 10 Overcoming 35 U.S.C. §102(a) Rejections ESTABLISHING PRIOR INVENTION – 2.) “Swearing behind” 37 CFR § 1.131 provides for filing a declaration “to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based.” 20 Overcoming 35 U.S.C. §102(a) Rejections ESTABLISHING PRIOR INVENTION - 2.) “Swearing behind” Who may file declarations under 35 U.S.C. § 1.131? ♦ Inventor ♦ Owner of a patent under re-examination ♦ Party qualified under 37 C.F.R. §§ 1.42 (dead inventor), 1.43 (insane or legally incapacitated inventor), or 1.47 (uncooperative inventor). ♦ The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the inventor. Ex parte Foster, 1903 C.D. 213, 105 O.G. 261 (Comm'r Pat. 1903). 21 11 Overcoming 35 U.S.C. §102(a) Rejections ESTABLISHING PRIOR INVENTION – 2.) “Swearing behind” What is needed to/How do you Swear Behind? ♦ Show actual reduction to practice prior to the effective date of the reference; or ♦ Show conception of the invention prior to the effective date of the reference AND due diligence up to the reduction to practice (constructive or otherwise).