Patents After the AIA: Evolving Law and Practice

Patents After the AIA:
Evolving Law and Practice
Brad Pedersen
March 31, 2016
America Invents Act (AIA)
Prior Art and Exceptions
AIA First Inventor to File with Grace (FTFG)
Suggested Post-AIA Filing Strategies
The Future of IP
Patent Quality
Patent Terms
US Patents and Lawsuits

© 2011-2016 Patterson Thuente Pedersen, P.A., May be distributed with attribution - www.ptslaw.com
DISCLAIMER: This presentation and any information contained herein are intended for educational and
informational purposes only and should not be construed as legal advice.
Patents After the AIA:
Evolving Law and Practice
Brad Pedersen
March 31, 2016

Big Changes for U.S. Patent System
September 4, 2014 3

• Signed into Law
– September 16th, 2011
• Three Big Changes
– PTO Fee Setting, but not Fee
Spending Authority
– First-Inventor-To-File (FITF)
(for new cases after 3/16/13)
– Improvements to Patent
Validity Challenges at the PTO
• Changes Not Included
– Contentious Litigation Issues
July 16, 2018 4

Post-AIA Section 102
Prior Art and Exceptions
July 16, 2018 5

ASSUMPTIONS FOR TIMELINE SCENARIOS: This text box will explain the set of assumptions that apply
to each scenario in a given group of scenarios (e.g., Scenarios 1A through 1D).
X
?
SCENARIOS: Each scenario will include a setup of the fact pattern in this paragraph, as
well as the assumptions for the fact pattern on the bottom of the left-hand page (top page
if book rotated to view in landscape mode). If there is a further explanation of the
difference in successive scenarios, the notation (+/-) is used at the end of the scenario
paragraph to refer the reader to the text portion of Chapter 14 for a discussion of the
factual difference in this scenario or a series of successive scenarios.
LegendsforTimelineScenarios
Y
Inventor
Inventor
Scenario
Question
Publication of
A+B
U.S. provisional
filing for A
U.S. nonprovisional
filing for A+B

ANALYSIS: The analysis and answer for the result of the fact pattern after the AIA is
explained in this paragraph. The right-hand page (bottom page) will have the answer for
the result of the fact pattern, as well as an indication in the header box of how this result
under post-AIA First-Inventor-to-File (FITF) law compares to pre-AIA First-to-Invent (FTI)
law. If there is an additional explanation or relevant citations helpful in understanding the
analysis, the notation (#) is used at the end of the analysis paragraph to refer the reader
to the text portion of Chapter 14 for further information.

PRACTICE TIP. A practice tip related to the scenario and the result is presented in this text box.
Sometimes, a quick takeaway from the practice tip is presented at the end of the practice tip in
bold. For example: Always file first!
Claim Issued
U.S. nonprovisional
patent for A+B
Claim Not Issued
U.S. nonprovisional
patent for claims to
A, A+B

OTHER ICONS AND LEGENDS: Some scenarios will involve different fact patterns
relating to grace periods as exceptions to prior art under either the sub(A) exceptions or
the sub(B) exceptions under post-AIA Section 102(b). For comparison with pre-AIA FTI
law, in some scenarios it may be necessary to understand the sequence of conception of
the claimed invention in addition to the sequence of filings and disclosures.
−−−−−− 1 year −−−−−
FTD grace period
Conception of
claimed
invention
Fixed grace period of one year only for
inventor-originated works
under the sub(A) exception
First-to-Disclose (FTD) grace period that is
variable in length and operates as a
triggered grace period for third-party
intervening art under the sub(B) exception
Conception of
different claimed
inventions

OTHER ICONS AND LEGENDS: Some scenarios may include fact patterns that involve
applications that assert priority to previous applications, either previous U.S. applications
or international applications. In these scenarios, the relevant time periods for filing a
corresponding U.S. nonprovisional application are indicated by the following icons.
PRACTICE TIP. The practice tips generally relate to the specific scenario being presented. As a
result, when the fact patterns in the scenarios are similar or mirror images, the practice tips may
be similar to emphasize the points being made.
1 year – prov. One-year period for filing U.S. nonprovisional
application from provisional application
One-year reciprocity period for
international filings
PCT International Phase 30 month deadline
for national stage filings
Paris Conv. (12 mos.)/
PCT Int’l Phase (30 mos.)
1 year –
Paris Conv.
One-year reciprocity period for
international filings

OTHER ICONS AND LEGENDS: Some scenarios will involve international patent filings.
In general, there are three kinds of international patent filings that will be considered: a
national application filed directly in a given country outside the United States (OUS); a
PCT application; and (3) national stage filings of a PCT application (either as a U.S.
application or another national application). Other scenarios will involve different
variations of public disclosures in either content or form of disclosure.
OUS application
for A+B
PCT application
for A+B
Publication of A+B’
where B’ is patentably
indistinct variation of B
U.S. application
for A+B
withdrawn
Public use of A+B
Public sale of A+B

SCENARIO 1A: Inventor X files an application for Invention A+B before X publishes or
otherwise makes publicly available disclosure of A+B.
ASSUMPTIONS FOR SET 1 SCENARIOS: For all timeline scenarios in Set 1, it is assumed that: Invention
A+B is patentable over any other prior art; Inventor X independently conceived Invention A+B; each
application fully describes and enables the claimed Invention A+B; no application is published before the
filing of another application; and all applications are filed after the cutover date (i.e., no transition
applications).
XFilesBeforePublishingA+B
SCENARIO1A
X ?

ANALYSIS FOR SCENARIO 1A: Inventor X is entitled to a patent. After the AIA, X’s
publication is not (a)(1) prior art to X’s application because X’s publication is after the
effective filing date of X’s application. The same result occurs under pre-AIA FTI law.
PRACTICE TIP 14.1A. Proactive filing of an application before public disclosure of any kind by
the inventor is the best way to ensure an effective filing date under post-AIA Section 100(i) that
preserves an inventor’s chances for obtaining patent protection. Always file first!
SameResultas
Pre-AIAFTILaw
ANALYSISFORSCENARIO1A
X

−−−−−− 1 year −−−−−
XPublishesBeforeYFiles
Scenario1C
SCENARIO 1B: Inventor X files an application for Invention A+B more than one year
after X publishes or otherwise makes publicly available disclosure of A+B.
XFilesMoreThanOneYear
AfterPublishingA+B
SCENARIO1B
X ?
applications).

ANALYSIS FOR SCENARIO 1B: Inventor X is not entitled to a patent. After the AIA, X’s
publication is (a)(1) prior art to X’s application, and because X’s publication date is more
than one year before the effective filing date of X’s application, X’s publication does not
qualify under the sub(A) exception. The same result occurs under pre-AIA FTI law.
SameResultas
Pre-AIAFTILaw
ANALYSISFORSCENARIO1B
PRACTICE TIP 14.1B. Like pre-AIA Section 102(b), the sub(A) exception does not disqualify even
the inventor’s own work that is publicly disclosed more than one year before the effective filing
date of an application. Like pre-AIA FTI law, nothing in post-AIA FITF patent law disqualifies
inventor works that are publicly disclosed more than one year before an effective filing date.

−−−−−− 1 year −−−−−
X

−−−−− −−− 1 year −−−−−−
Scenario1C
SCENARIO 1C: Inventor X files an application for Invention A+B less than one year after
X publishes or otherwise makes publicly available disclosure of A+B.
XFilesLessThanOneYear
AfterPublishingA+B
SCENARIO1C
X ?
applications).

ANALYSIS FOR SCENARIO 1C: Inventor X is entitled to a patent. After the AIA, X’s
publication is (a)(1) prior art to X’s application, but because X’s publication is less than
one year before the effective filing date of X’s application, X’s publication is disqualified
as prior art under the sub(A) exception. While the same result would occur under pre-AIA
FTI law, it would be for different reasons under an analysis of pre-AIA Section 102(a) and
102(b). (#)
SameResultas
Pre-AIAFTILaw
ANALYSISFORSCENARIO1C

PRACTICE TIP 14.1C. The sub(A) exception for inventor-originated public disclosures is a fixed
grace period, similar to the one-year period of pre-AIA Section 102(b). The fixed nature of the
sub(A) exception and the absence of any triggering disclosure to be analyzed mean that, if an
exception must be used for post-AIA FITF applications, the sub(A) exception is the better one.
−−−−− −−− 1 year −−−−−−
X

−−−−− −−− 1 year −−−−−−
Scenario1C
SCENARIO 1D: Inventor X files an application for Invention A+B less than one year after
X publishes or otherwise makes publicly available disclosure of A+B’, where B’ is not the
same as B but is patentably indistinct variation of B.
XFilesLessThanOneYear
AfterPublishingA+B’
SCENARIO1D
X ?
applications).

ANALYSIS FOR SCENARIO 1D: Inventor X is entitled to a patent. After the AIA, X’s
publication is (a)(1) prior art, but because X’s publication is less than one year before the
effective filing date of X’s application, X’s publication is disqualified under the sub(A)
exception. Unlike the sub(B) exception, there is no need to evaluate the content of the
subject matter disclosed in X’s publication; only the timing of X’s publication is relevant to
whether the sub(A) exception can be utilized. Under pre-AIA FTI law, the same result
occurs, but for different reasons under an analysis of pre-AIA Section 102(a) and 102(b).
(#)
SameResultas
Pre-AIAFTILaw
ANALYSISFORSCENARIO1D

PRACTICE TIP 14.1D. The sub(A) exception for public disclosures by/for/from the inventor(s) is
not concerned with “what” was disclosed, only with “who” originated the disclosure and
“when” it occurred. If the disclosure was by/for/from the inventor(s), then the sub(A) exception
applies. If a prior art exception must be used, the sub(A) exception is the better one.
−−−−− −−− 1 year −−−−−−
X

SCENARIO 2A: Inventor X conceives and files an application for Invention A+B before
Inventor Y independently conceives and publishes Invention A+B. (+/-)
A+B is patentable over any other prior art; Inventors X and Y each independently conceived Invention
A+B; each application fully describes and enables the claimed Invention A+B; no application is published
before the filing of another application; and all applications are filed after the cutover date (i.e., no transition
applications).
XConceivesandFiles
BeforeYPublishes
SCENARIO2A
?X
Y

ANALYSIS FOR SCENARIO 2A: Inventor X is entitled to a patent. After the AIA,
Inventor Y’s publication is not (a)(1) prior art to X’s application. Under pre-AIA law, the
result is the same because X filed prior to conception by Y. Swearing behind under pre-
AIA FTI law is not relevant when comparing post-AIA and pre-AIA outcomes.
PRACTICE TIP 14.2A. Proactive filing of an application is also the best way to ensure an
effective filing date under post-AIA Section 100(i) that is before other inventors, whether the
other inventors publish or file for an application. Always file first!
SameResultas
Pre-AIAFTILaw
X
Y

SCENARIO 2B: Inventor X conceives and files an application for Invention A+B after
Inventor Y independently publishes Invention A+B.
XConceivesandFiles
AfterYPublishes
SCENARIO2B
X ?
Y
applications).

ANALYSIS FOR SCENARIO 2B: Inventor X is not entitled to a patent. After the AIA,
Inventor Y’s publication is (a)(1) prior art to X’s application. Under pre-AIA law, Y’s
publication is pre-AIA Section 102(a) prior art as prior invention by another. Because X
conceived after Y, swearing behind under pre-AIA FTI law is not relevant when
comparing post-AIA and pre-AIA outcomes.
PRACTICE TIP 14.2B. Being first to file in a First-Inventor-to-File system does not mean that an
earlier inventor who does not file, but publishes instead, does not create prior art. Just like pre-
AIA FTI law, an earlier inventor who publishes or files first destroys patentability for a later
inventor who conceives after the public disclosure or filing.
SameResultas
Pre-AIAFTILaw
X
Y


−−−−−−−−−−−− 1 year −−−
SCENARIO 2C: Inventor X conceives first, but files an application for Invention A+B
after Inventor Y independently conceives and then publishes Invention A+B. Y’s
publication is less than one year before X’s filing.
XConceivesBeforeYbutFiles
AfterYPublishes
SCENARIO2C
X ?
Y
applications).

−−−−−−−−−−−− 1 year −−−
ANALYSIS FOR SCENARIO 2C: Inventor X is not entitled to a patent. Inventor Y’s
publication is (a)(1) prior art. X can no longer submit an affidavit under 37 C.F.R. §1.131
to swear behind Y’s prior publication of A+B. Under pre-AIA FTI law, X may or may not
be able to swear behind Y’s publication as pre-AIA Section 102(a) prior art depending on
whether X can prove conception together with actual reduction to practice coupled with
diligence from before Y’s reduction to practice until X’s filing date. (#)
PRACTICE TIP 14.2C. Swearing behind under pre-AIA FTI law is no longer an option to remove
works of others that fall between an inventor’s conception date and filing date of an application
fully enabling and describing a claimed invention. There is no more option to swear behind!
MostlyDifferentResultsFrom
Pre-AIAFTILaw
ANALYSISFORSCENARIO2C
X
Y

−−−−−−−−−−−− 1 year −−−
SCENARIO 2D: Inventor X conceives Invention A+B before Inventor Y, but Y publishes
A+B before X publishes, and both publications are made less than one year before X
files an application for A+B.
XandYBothPublish,
butYPublishesFirst
SCENARIO2D
?
Y
X
applications).

ANALYSIS FOR SCENARIO 2D: Inventor X is not entitled to a patent. Although X files
less than one year after X’s own publication and Y’s public disclosure, the FTD grace
period for third-party works under the sub(B) exception is a triggered grace period that
only begins as of X’s own publication. Under pre-AIA FTI law, Y’s publication is not pre-
AIA Section 102(b) prior art, but is pre-AIA Section 102(a) prior art; and X may or may
not be able to swear behind Y’s publication. (#)
PRACTICE TIP 14.2D. The FTD grace period for the sub(B) exception is only triggered by an
inventor-originated publication of effectively identical subject matter. After the AIA, third-party
works published less than one year before the filing date but before the date of the triggering
disclosure are not “intervening art” and cannot be disqualified by the sub(B) exception.
Pre-AIAFTILaw

−−−−−−−−−−−− 1 year −−−
Y
X FTD grace
period

−−−−−−−−−−−− 1 year −−−
SCENARIO 2E: Inventor X conceives Invention A+B before Inventor Y, then X publishes
A+B before Y publishes. Both publications are made less than one year before X files an
application for A+B.
XandYBothPublish,
butXPublishesFirst
SCENARIO2E
?
Y
X
applications).

ANALYSIS FOR SCENARIO 2E: Inventor X is entitled to a patent. X files less than one
year after X’s own publication. The FTD grace period for third-party works under the
sub(B) exception begins as of X’s publication. Y’s publication is disqualified as (a)(1)
prior art to X’s filing under the sub(B) exception. The key here is that the subject matter
disclosed by X’s publication must be effectively identical to Y’s publication. The same
result occurs under pre-AIA FTI law due to the fixed grace period of pre-AIA Section
102(b). (#)
PRACTICE TIP 14.2E. After the AIA, third-party prior art that is less than one year before the
filing date but after the date of the triggering publication for the FTD grace period for the sub(B)
exception may be disqualified; however, the FITF Rules require that the subject matter disclosed
A+B is effectively identical to the subject matter of the intervening art of Y’s publication of A+B.
SameResultas
Pre-AIAFTILaw
ANALYSISFORSCENARIO2E
FTD grace period
−−−−−−−−−−−− 1 year −−−
Y
X 

SCENARIO 2F: Inventor X conceives and files an application for Invention A+B before
Inventor Y conceives and files an application for Invention A+B. (+/-)
XConceivesand
FilesBeforeY
SCENARIO2F
X ?
Y ?
applications).

ANALYSIS FOR SCENARIO 2F: Inventor X is entitled to a patent, but Inventor Y is not.
After the AIA, because of the relative timing, Y’s application is not (a)(2) prior art to X’s
application, but X’s application is (a)(2) prior art to Y’s application. Because X conceived
and filed before Y conceived, neither swearing behind nor interference under pre-AIA FTI
law is relevant when comparing post-AIA and pre-AIA outcomes.
PRACTICE TIP 14.2F. Proactive filing of an application is also the best way to ensure an effective
filing date under post-AIA Section 100(i) that is before other inventors and may preserve an
inventor’s chances for obtaining patent protection. Always file first!
SameResultas
Pre-AIAFTILaw
ANALYSISFORSCENARIO2F


X
Y

SCENARIO 2G: Inventor X conceives Invention A+B before Inventor Y independently
conceives Invention A+B. Y files an application for A+B before X files an application for
A+B.
XConceivesFirst
butYFilesFirst
SCENARIO2G
X ?
Y ?
applications).

ANALYSIS FOR SCENARIO 2G: Inventor Y is entitled to a patent, but Inventor X is not.
Y’s application is (a)(2) prior art to X’s application, and X cannot submit an affidavit under
37 C.F.R. §1.131 to swear behind Y’s prior-filed application. Under pre-AIA FTI law, X
may or may not swear behind Y’s filing or prevail in an interference depending on
whether X can prove conception together with actual reduction to practice or diligence
from before Y’s reduction to practice until X’s filing date. (#)
PRACTICE TIP 14.2G. Swearing behind under pre-AIA FTI law is no longer an option to remove
“intervening” art between conception and filing of an application fully enabling and describing
a claimed invention. There is no swearing behind after the AIA!
Pre-AIAFTILaw
ANALYSISFORSCENARIO2G

X
Y

SCENARIO 2H: Inventor X conceives Invention A+B before Inventor Y independently
conceives Invention A+B. Y files an application for A+B on the same day that X files an
application for A+B.
XConceivesFirstbutXandYFile
ontheSameDay
SCENARIO2H
X ?
Y ?
applications).

ANALYSIS FOR SCENARIO 2H: Both Inventor X and Inventor Y are entitled to a patent.
Neither application is (a)(2) prior art to the other because each has the same effective
filing date. Unlike pre-AIA FTI law where the first to invent could potentially prevail by
provoking an interference or swearing behind the other, after the AIA separate patents
are issued to each of X and Y as long as there is no derivation. (#)
PRACTICE TIP 14.2H. Swearing behind and interference under pre-AIA FTI law are no longer an
option after the AIA to break the “tie” when two inventors file on the same day. Ties go to both
inventors after the AIA!
DifferentResultFrom
Pre-AIAFTILaw
ANALYSISFORSCENARIO2H

X
Y


−−−−−−−−−−−− 1 year −−−
SCENARIO 2I: Inventor X conceives Invention A+B. Shortly thereafter, Inventor Y
conceives the same invention and files an application for A+B. X makes a public
disclosure of A+B after Y’s filing and then files an application for A+B. Both X’s public
disclosure and Y’s application are less than one year before X files for A+B. (+/-)
YFilesFirstBeforeXPublishes
andBeforeXFiles
SCENARIO2I
?
Y ?
X
applications).

FTD grace
period
ANALYSIS FOR SCENARIO 2I: Inventor X is not entitled to a patent, but Inventor Y is
entitled to a patent. X’s publication of A+B is not (a)(1) prior art to Y because it is after
Y’s filing. X’s publication of A+B does trigger an FTD grace period, but it does not
disqualify Y’s filing because X’s publication is after Y’s filing. Under pre-AIA FTI law, one
of X or Y (if evidence of X’s earlier invention came to light) may obtain a patent,
depending upon proofs to swear behind or prevail in an interference. (#)
PRACTICE TIP 14.2I. The duration of any FTD grace period is not a fixed one-year period and
does not extend backward before the date of the FTD triggering publication. There is no fixed
grace period for third-party intervening art after the AIA.
Pre-AIAFTILaw
ANALYSISFORSCENARIO2I


−−−−−−−−−−−− 1 year −−−
Y
X

−−−−−−−−−−−− 1 year −−−
SCENARIO 2J: Inventor X conceives Invention A+B but is not sure if the invention will
be marketable, so X publicly discloses A+B to see if it attracts any interest. Inventor Y
independently conceives the same invention before X’s disclosure and files an
application for A+B after X’s disclosure. X has a positive response to the disclosure, so
within one year of the disclosure X files an application for A+B.
XPublishesFirst
butYFilesFirst
SCENARIO2J
?
Y ?
X
applications).

FTD grace period
ANALYSIS FOR SCENARIO 2J: Inventor X is entitled to a patent, but Inventor Y is not.
X’s publication of A+B is disqualified as prior art to X under the sub(A) exception. X’s
publication of A+B is (a)(1) prior art to Y and also triggers an FTD grace period. Because
X’s publication is effectively identical subject matter it disqualifies Y’s filing as (a)(2) prior
art under the sub(B) exception. Under pre-AIA FTI law, one of X or Y may obtain a
patent, depending upon proofs to swear behind or prevail in an interference.
PRACTICE TIP 14.2J. File a fully enabled and described application as quickly as practical after
a publication by/for/from the inventor (if the publication is not already more than one year old).
Try to make the duration for relying on any FTD grace period as short as possible (if the
application was not filed first). The shorter the grace period, the better!
MostlySimilarResultsas
Pre-AIAFTILaw
ANALYSISFORSCENARIO2J


−−−−−−−−−−−− 1 year −−−
Y
X

−−−−−−−−−−−− 1 year −
−−−−−−−−−−−− 1 year −
SCENARIO 2K: Inventor X conceives Invention A+B before Inventor Y. Inventor X
publishes A+B before Y publishes, and X files an application for A+B before Y files. Both
applications are filed less than one year after the earliest publication of A+B. (+/-)
XandYBothPublishandFile,
butXPublishesandFilesFirst
SCENARIO2K
?
?Y
X
applications).

ANALYSIS FOR SCENARIO 2K: Inventor X is entitled to a patent, but Inventor Y is not.
X’s publication of A+B is disqualified as (a)(1) prior art to X under the sub(A) exception
but it is (a)(1) prior art to Y. Inventor X’s publication also triggers an FTD grace period.
Because X’s publication is effectively identical subject matter it disqualifies Y’s
publication as (a)(1) prior art under the sub(B) exception. Under pre-AIA FTI law, X is
more likely to obtain a patent than Y, depending upon proofs to swear behind or prevail in
an interference.
PRACTICE TIP 14.2K. In dueling publishing and filings situations like this scenario there
actually are four separate grace periods that need to be evaluated, two for each prior
publication—the sub(A) exception for the inventor(s) own patent filings, and the FTD grace
period for the sub(B) exception as applied to the publications and filings by the other inventor(s).
Pre-AIAFTILaw
ANALYSISFORSCENARIO2K
−−−−−−−−−−−− 1 year −
FTD grace period


−−−−−−−−−−−− 1 year −
Y
X
FTD grace period

−−−−−−−−−−−−−−− 1 year
−−−−−−−−−−−− 1 year −
SCENARIO 2L: Inventor X conceives Invention A+B before Inventor Y. Inventor X
publishes A+B before Y publishes; however, X files an application for A+B after Y files
an application for A+B. Both applications are filed less than one year after the earliest
publication of A+B.
XandYBothPublishandFile,butX
PublishesFirstandFilesSecond
SCENARIO2L
?
?Y
X
applications).

ANALYSIS FOR SCENARIO 2L: Inventor X is entitled to a patent, but Inventor Y is not. X’s
publication of A+B is disqualified as (a)(1) prior art to X under the sub(A) exception, but it is
(a)(1) prior art to Y. Inventor X’s publication also triggers an FTD grace period because it is
effectively identical subject matter that disqualifies both Y’s publication as (a)(1) prior art and
Y’s filing as (a)(2) prior art under the sub(B) exceptions. Under pre-AIA FTI law, one of X or
Y may obtain a patent, depending upon proofs to swear behind or prevail in an
interference.
PRACTICE TIP 14.2L. Waiting as long as shown in this scenario between publication and filing
by Inventor X increases the risks of needing to deal with potential intervening art. X prevails
because the subject matter disclosed for A+B was effectively identical between X and Y, but in
reality this scenario will be the exception, not the rule. The shorter the grace period, the better!
Pre-AIAFTILaw
ANALYSISFORSCENARIO2L


−−−−−−−−−−−− 1 year −
FTD grace period
−−−−−−−−−−−− 1 year −
Y
X
FTD grace
period

−−−−−−−−−−−− 1 year −
−−−−−−−−−−−− 1 year −
SCENARIO 2M: Inventor X conceives Invention A+B before Inventor Y. Inventor X
publicly sells A+B before Y publishes A+B and X then files an application for A+B before
Y files. Both applications are filed less than one year after the earliest public disclosure of
A+B. (+/-)
XSellsandThenYPublishes,
BothFilebutXFilesFirst
SCENARIO2M
?
?Y
X
applications).

ANALYSIS FOR SCENARIO 2M: Inventor X is entitled to a patent, but Inventor Y is not.
X’s sale of A+B is disqualified as (a)(1) prior art to X under the sub(A) exception, but it is
(a)(1) prior art to Y. Inventor X’s sale also triggers an FTD grace period because it is
effectively identical subject matter that disqualifies Y’s publication as (a)(1) prior art
under the sub(B) exceptions. Under pre-AIA FTI law, X is more likely to obtain a patent
than Y, depending upon proofs to swear behind or prevail in an interference. (#)
PRACTICE TIP 14.2M. The mode of public disclosure (e.g., publication, sale, or public use) does
not impact the availability of the FTD grace period if the subject matter disclosed is effectively
identical. Practically, there will be differences in the subject matter disclosed between what is
sold and what is described in the intervening art that likely defeats use of the sub(B) exception.
Pre-AIAFTILaw
ANALYSISFORSCENARIO2M
FTD grace period


−−−−−−−−−−−− 1 year −
Y
X
FTD grace
period
−−−−−−−−−−−− 1 year −

−−−−−−−−−−−− 1 year −
−−−−−−−−−−−− 1 year −
SCENARIO 2N: Inventor X conceives Invention A+B before Inventor Y. Inventor X
publicly uses A+B before Y publishes A+B. Inventor X then files an application for A+B
before Y files. Both applications are filed less than one year after the earliest public use
or public disclosure of A+B.
XPubliclyUsesandThenYPublishes,
BothFilebutXFilesFirst
SCENARIO2N
?
?Y
X
applications).

ANALYSIS FOR SCENARIO 2N: Inventor X is entitled to a patent, but Inventor Y is not.
X’s public use of A+B is disqualified as (a)(1) prior art to X under the sub(A) exception,
but it is (a)(1) prior art to Y. Inventor X’s public use also triggers an FTD grace period
because it is effectively identical subject matter that disqualifies Y’s publication as (a)(1)
prior art under the sub(B) exceptions. Under pre-AIA FTI law, X is more likely to obtain a
patent than Y, depending upon proofs to swear behind or prevail in an interference. (#)
PRACTICE TIP 14.2N. The mode of public disclosure (e.g., publication, sale, or public use) does
not impact the availability of the FTD grace period if the subject matter disclosed is effectively
identical. Practically, the issue in this scenario is more likely to turn on X’s ability to prove what
was actually publicly used and whether that was effectively identical to the intervening art.
Pre-AIAFTILaw
ANALYSISFORSCENARIO2N
FTD grace period


−−−−−−−−−−−− 1 year −
Y
X
FTD grace
period
−−−−−−−−−−−− 1 year −

SCENARIO 2O: Inventor X conceives Invention A+B after Inventor Y conceives the
same invention. Then, X files an application for A+B after Y files an application for A+B.
Y decides to abandon Y’s application before it is published or patented (either by express
abandonment or by failure to respond to a USPTO action) and Y did not otherwise
publicly disclose or use A+B before X’s filing. Note that Y’s abandonment could be more
than 18 months after Y’s filing date in A situation where A request for nonpublication has
been made.
YFilesFirstbut
ThenAbandons
SCENARIO2O
X ?
Y
applications).

ANALYSIS FOR SCENARIO 2O: Inventor X is entitled to a patent. Inventor Y’s patent
filing is not (a)(2) prior art as it was never published or patented as required by the
language of the statute. This is one scenario under both pre-AIA FTI law and post-AIA
FITF law where the inventor awarded the patent is neither the first inventor to invent nor
the first inventor to file.
PRACTICE TIP 14.2O. U.S. applications are effective (a)(2) prior art as of their priority date,
only so long as the applications are eventually published and/or patented. The subject matter of
applications abandoned before publication does not qualify as (a)(2) prior art.
SameResultas
Pre-AIAFTILaw
ANALYSISFORSCENARIO2O
X
Y


AIA First Inventor to File + Grace (FTFG) Is Different
Comparison of One Filer Scenarios
Scenarios where only 1 party is seeking a patent
(based on hypothetical evaluation of weighted likelihood of 200 typical
fact patterns from “The Matrix” article at Cybaris IP Law Review)
See, http://web.wmitchell.edu/cybaris/wp-
content/uploads/2010/05/01.Pedersen.05-12-10-
vFINAL.WITHAPPENDIX.pdf
49

AIA First Inventor to File + Grace (FTFG) Is Different
Comparison of Two Filer Scenarios
Scenarios where both parties are seeking a patent
(based on hypothetical evaluation of weighted likelihood of 200 typical
fact patterns from “The Matrix” article at Cybaris IP Law Review)
See, http://web.wmitchell.edu/cybaris/wp-
content/uploads/2010/05/01.Pedersen.05-12-10-
vFINAL.WITHAPPENDIX.pdf
50

SCENARIO 3B: Inventor X conceives Inventions A and A+B after Inventor Y conceives
Inventions A and A+C. X files an application for A and A+B before Y files an application
for A and A+C. Claim element A is independently patentable by itself, and is also
independently patentable in combination with either of claim elements B and C such that
A+B is patentably distinct from A+C.
XConceivesA,A+BAfterY
ConceivesA,A+C,butXFilesFirst
SCENARIO3B
X ?
Y ?
ASSUMPTIONS FOR SET 3 SCENARIOS: For all timeline scenarios in Set 3, it is assumed that: the
claimed inventions are patentable over any other prior art; Inventors X and Y each independently
conceived each claimed invention; each application fully describes and enables only the claimed invention;
each nonprovisional application publishes, but no application is published before the filing of another
application; and all applications are filed after the cutover date (i.e., no transition applications).

ANALYSIS FOR SCENARIO 3B: Inventor X is entitled to a patent for both Invention A
and A+B, and Inventor Y is only entitled to a patent for Invention A+C. X’s filing is (a)(2)
prior art, and Y can no longer submit an affidavit under 37 C.F.R. §1.131 to swear
behind X’s prior-filed application. Under pre-AIA FTI law, one of X or Y may obtain a
patent for Invention A, depending upon proofs to swear behind or prevail in an
interference.
PRACTICE TIP 14.3B. Swearing behind or provoking an interference under pre-AIA FTI law is no
longer an option to remove “intervening” art between conception and filing of an application
fully enabling and describing a claimed invention. File as quickly and completely as possible to
beat the effective filing date of other potential inventors.
Pre-AIAFTILaw


X
Y

SCENARIO 3D: Inventor X publishes Invention A+B before Inventor Y publishes
Invention A+B’. X files an application for A+B after Y publishes, but before Y files for
A+B’. Claim elements B and B’ are patentably indistinct from each other. Neither X nor Y
seeks claims to element A as patentable by itself, but only to the combination of element
A with either element B or B’. Both publications are made less than one year before
either filing.
XPublishesFirstandFilesFirstforA+B,
YPublishesSecondand
FilesSecondforA+B’
SCENARIO3D
?
?
−−−−−−−−−−−−−−− 1 year
−−−−−−−−−−−− 1 year −
Y
X

ANALYSIS FOR SCENARIO 3D: Neither Inventor X nor Inventor Y obtains a patent. X’s
publication is (a)(1) prior art and X’s filing is (a)(2) prior art to Y. Inventor Y’s filing is not
(a)(2) prior art to X because it is after X’s filing, but Y’s publication of A+B’ is (a)(1) prior art
to X. Under USPTO guidance, because X’s publication of A+B is not effectively identical
subject matter it does not trigger an FTD grace period that removes Y’s publication of
A+B’. Under pre-AIA FTI law, X is more likely to obtain a patent than Y. (#)
PRACTICE TIP 14.3D. Under USPTO guidance, the FTD grace period cannot be relied upon to
eliminate intervening art, either (a)(1) prior art or (a)(2) prior art, where the intervening art
describes patentably indistinct variation that is not effectively identical to the subject matter in
the triggering disclosure. Compare to Scenario 2K where the FTD grace period does apply.
DifferentResultFrom
Pre-AIAFTILaw

FTD grace–A+B
FTD grace
–A+B’
−−−−−−−−−−−−−−− 1 year
−−−−−−−−−−−− 1 year −
Y
X

SCENARIO 3E: Inventor X publishes Invention A+B and then Inventor Y publishes
Invention A+B’. Both X and Y file an application for A+B and A+B’ on the same day.
Claim elements B and B’ are patentably indistinct from each other. Neither X nor Y seeks
claims to element A as patentable by itself, but only to the combinations of element A
with each of elements B and B’. Both publications are made less than one year before
either filing.
XPublishesA+BandYPublishesA+B’,
BothFileforA+BandA+B’onSameDay
SCENARIO3E
−−−−−−−−−−−−−−− 1 year
−−−−−−−−−−−− 1 year −
Y
X ?
?

ANALYSIS FOR SCENARIO 3E: Neither Inventor X nor Inventor Y obtains a patent.
Neither filing is (a)(2) prior art to the other, but X’s publication of A+B is (a)(1) prior art to
Y’s filing, and Y’s publication of A+B’ is (a)(1) prior art to X’s filing. Under USPTO
guidance, neither publication triggers an FTD grace period that removes the other’s
publication because the publications are not effectively identical subject matter. Under
pre-AIA FTI law, one of X or Y obtains a patent, depending upon proofs to swear behind
or prevail in an interference. (#)
PRACTICE TIP 14.3E. Even same-day filings are not disqualified from intervening art published
by a third party that is not effectively identical to the triggering disclosure. Never rely on the
FTD grace period to protect against intervening art!
DifferentResultFrom
Pre-AIAFTILaw


−−−−−−−−−−−−−−− 1 year
−−−−−−−−−−−− 1 year −
Y
X FTD grace–A+B
FTD grace
–A+B’

SCENARIO 3F: Inventor X conceives and files an application for Inventions A+C and
A+C1 after Inventor Y conceives and before Y files an application for Inventions A+C and
A+C2 (C1 and C2 are patentably distinct species of the genus C, and C is enabled and
described by a single species). Neither X nor Y seeks claims to Invention A as
patentable by itself, but only in combination with C, C1, or C2. (+/-)
XConceivesA+C1AfterYConceivesA+C2,
butXFilesFirstforA+C1(Patentably
DistinctSpecies)andA+C(Genus)
SCENARIO3F
X ?
Y ?

ANALYSIS FOR SCENARIO 3F: Inventor X is entitled to a patent for A+C (genus) and
A+C1 (species). Inventor Y is not entitled to a patent for A+C. Whether Y’s claim for A+C2 is
patentable over X’s filing for A+C depends on how USPTO guidance and post-AIA Section
102(d) are interpreted and whether a genus necessarily makes patentably distinct species
anticipated or obvious. Under pre-AIA FTI law, one of X or Y may obtain a patent,
depending upon proofs to swear behind or prevail in an interference. (#)
PRACTICE TIP 14.3F. The determination of effective filing date and prior art status gets
complicated after the AIA when genus and species claims are involved. For (a)(2) prior art,
patent filings do not have to be enabling, but still can be prior art under post-AIA Section 102(d)
as of the date the application is effectively filed “with respect to any subject matter described.”
Pre-AIAFTILaw

?
X
Y

SCENARIO 3J: Inventor X conceives Invention A+C (genus) after Inventor Y conceives
species A+C1, A+C2. X files an application for A+C before Y files an application for A+C,
A+C1, and A+C2 (C1 and C2 are patentably distinct species of the genus C, and C is
enabled and disclosed by a single species). Neither X nor Y seeks claims to Invention A
as patentable by itself, but only in combination with C, C1, or C2. (+/-)
XConceivesA+C(Genus)After
YConceivesA+C1,A+C2(Patentably
DistinctSpecies),XFilesFirstforA+C
SCENARIO3J
X ?
Y ?

ANALYSIS FOR SCENARIO 3J: Inventor X is entitled to a patent for A+C (genus) and
Inventor Y may or may not be entitled to a patent for the species. Whether Y’s claims for
A+C1 and A+C2 (patentably distinct species) are obvious over X’s filing for the genus A+C
depends on how USPTO guidance is interpreted and the technology involved as to whether
a genus necessarily makes a given species claim obvious. Under pre-AIA FTI law, one of X
or Y may obtain a patent, depending upon proofs to swear behind or prevail in an
interference. (#)
PRACTICE TIP 14.3J. The determination of effective filing date and prior art status gets
complicated after the AIA when genus and species claims are involved. For (a)(2) prior art, the
issue of whether a description of a genus is sufficient to defeat later-filed claims for patentably
distinct species is likely to be a fact-specific question after the AIA.
Pre-AIAFTILaw
ANALYSISFORSCENARIO3J
X
Y

?

SCENARIO 3L: Inventor X publishes Invention A+C1 and then Inventor Y publishes
A+C2 (C1 and C2 are patentably distinct species). X files an application for A+C (genus)
and A+C1 first, and then Y files an application for A+C and A+C2. Both publications are
made less than one year before either application is filed. Neither X nor Y seeks claims
to Invention A as patentable by itself, but only in combination with C, C1, or C2. (+/-)
XPublishesA+C1,ThenYPublishesA+C2
(PatentablyDistinctSpecies),XFilesFirst
forA+C1andA+C(Genus)
SCENARIO3L
?
?
−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −

ANALYSIS FOR SCENARIO 3L: Each Inventor is entitled to a patent for the species but
neither gets the genus. Each publication is (a)(1) prior art to the other’s filing and defeats
genus A+C, but not the patentably distinct species. Under USPTO guidance, X’s filing for A+C
(genus) is disqualified as (a)(2) prior art to Y’s publication of A+C2 due to the FTD grace period
created by Y’s publication. Under pre-AIA FTI law, X is likely entitled to both A+C and A+C1
unless prior invention by Y is proven and then Y is entitled to A+C2 and maybe A+C. (#)
PRACTICE TIP 14.3L. The takeaway from the USPTO guidance is that a species may trigger an
FTD grace period that could disqualify both kinds of third-party intervening art for a genus. But
this guidance seems inconsistent with the requirement that a triggering disclosure must have
subject matter disclosed effectively identical to the intervening art.
DifferentResultFrom
Pre-AIAFTILaw
ANALYSISFORSCENARIO3L
FTD grace–A+C1/A+C

−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −


SCENARIO 3M: Inventor X publishes Invention A+C1 and then Inventor Y publishes
A+C1’ (C1 and C1’ are patentably indistinct species). X files an application for A+C
(genus) and A+C1 first, and then Y files an application for A+C1’ and A+C. Both
publications are made less than one year before either application is filed. Neither X nor
Y seeks claims to Invention A as patentable by itself, but only in combination with C, C1,
or C1’.
XPublishesA+C1,ThenYPublishesA+C1’
(PatentablyIndistinctSpecies),XFiles
FirstforA+C1andA+C(Genus)
SCENARIO3M
−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −
?
?

ANALYSIS FOR SCENARIO 3M: Neither Inventor X nor Inventor Y is entitled to a patent. X’s
and Y’s publications are each (a)(1) prior art to the other’s filing and defeats both the genus
and patentably indistinct species claims. Neither FTD grace period is relevant because of the
different subject matter disclosed versus the species of intervening art. Under pre-AIA FTI law,
X is entitled to both A+C and A+C1 unless prior invention by Y is proven, as Y’s publication is
disqualified under pre-AIA Section 102(b). (#)
PRACTICE TIP 14.3M. Analysis of the impact of the FTD grace period gets complicated when
there are issues of genus and species disclosure. When the species involved are patentably
indistinct, competing publications of these species will generally defeat any chances for either
party obtaining patents based on later filings.
DifferentResultFrom
Pre-AIAFTILaw
ANALYSISFORSCENARIO3M


−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −
FTD grace–A+C1’/A+C

SCENARIO 3N: Inventor X publishes Invention A+C1 and then Inventor Y publishes
A+C2 (C1 and C2 are patentably distinct species). Y files an application for A+C (genus)
and A+C2 first, and then X files an application for A+C and A+C1. Both publications are
to Invention A as patentable by itself, but only in combination with C, C1, or C2. (+/-)
XPublishesA+C1,ThenYPublishesA+C2
(PatentablyDistinctSpecies),YFilesFirst
forA+C2andA+C(Genus)
SCENARIO3N
?
?
−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −

ANALYSIS FOR SCENARIO 3N: Each Inventor is entitled to a patent for the species but
neither gets the genus. Each publication is (a)(1) prior art to the other’s filing and defeats
genus A+C, but not the patentably distinct species. Under USPTO guidance, the FTD grace
period created by X’s publication disqualifies Y’s filing for A+C but not A+C2 as (a)(2) prior art
to X’s filing. Under pre-AIA FTI law, the result is different because one of X or Y should get
the genus based on proofs, whereas under post-AIA law, neither can get the genus. (#)
PRACTICE TIP 14.3N. Analysis of the FTD grace periods in the context of genus/species subject
matter is a good example of when the USPTO guidance on “partial exemption” comes into play.
Just because a triggering disclosure disqualifies part of the subject matter disclosed in an
intervening art, does not mean that the entire subject matter is disqualified.
DifferentResultFrom
Pre-AIAFTILaw
ANALYSISFORSCENARIO3N
FTD grace–
A+C2/A+C

−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −


SCENARIO 3P: Inventor X publishes Invention A+C1 (species) and then Inventor Y
publishes Invention A+C (genus). X files an application for A+C and A+C1 first, and then
Y files an application for A+C and A+C2 (patentably distinct species). Both publications
are made less than one year before either application is filed. Neither X nor Y seeks
claims to Invention A as patentable by itself, but only in combination with C, C1, or C2.
(+/-)
XPublishesA+C1(PatentablyDistinct
Species)BeforeYPublishesA+C(Genus),
BothFileforGenus/Species
SCENARIO3P
?
?
−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −

ANALYSIS FOR SCENARIO 3P: Inventor X is entitled to a patent for A+C1 (species) and
A+C (genus) because Y’s publication for A+C is disqualified as (a)(2) prior art due to X’s
FTD grace period. X’s filing of A+C is disqualified as (a)(2) prior art due to Y’s FTD grace
period and Y is entitled to patentably distinct species A+C2. Under pre-AIA FTI law, both
publications are disqualified as prior art under pre-AIA Section 102(b); X is entitled to both
A+C and A+C1 unless Y establishes prior invention of A+C, Y is likely not entitled to A+C2.
(#)
Pre-AIAFTILaw
ANALYSISFORSCENARIO3P
PRACTICE TIP 14.3P. Under current USTPO guidance, disclosure of a genus will disable later
publications or filings of any patentably indistinct species. If an FTD grace period must be used,
make every attempt to disclose a genus and as many species as possible in the earliest filing.
FTD grace–A+C 

−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −

SCENARIO 3Q: Inventor X publishes Invention A+C1 (C1 and C1’ are patentably
indistinct species). Then Inventor Y publishes A+C (genus). X files an application for
A+C and A+C1 first, and then Y files an application for A+C and A+C1’. Both publications
claims to Invention A as patentable by itself, but only in combination with C, C1, or C1’.
(+/-)
XPublishesA+C1(PatentablyIndistinct
Species)BeforeYPublishesA+C(Genus),
XFilesFirstforGenus/Species
SCENARIO3Q
−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −
?
?

ANALYSIS FOR SCENARIO 3Q: Inventor X is entitled to a patent for A+C1 (species)
and A+C (genus) because Y’s publication for A+C is disqualified as (a)(1) prior art due to
X’s FTD grace period. Although X’s filing of A+C is disqualified as (a)(2) prior art due to
Y’s FTD grace period, Y’s claims to A+C and A+C1’ are both defeated by X’s publication
of A+C1. Under pre-AIA FTI law, both publications are disqualified as 102(b) prior art and
X is entitled to both A+C and A+C1 unless Y establishes prior invention. (#)
Pre-AIAFTILaw
ANALYSISFORSCENARIO3Q
PRACTICE TIP 14.3Q. Under current USTPO guidance, disclosure of a species may disqualify
later publications or filings of any genus subject matter that more generally describes the
species, but will not disqualify intervening art that discloses other patentably indistinct species.
FTD grace–A+C


−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −

SCENARIO 3R: Inventor X publishes Invention A+C (genus) and then Inventor Y
publishes Invention A+C2 (patentably distinct species). X files an application first for A+C
and A+C1, and then Y files an application for Invention A+C and A+C2. Both publications
claims to Invention A as patentable by itself, but only in combination with C, C1, or C2.
(+/-)
XPublishesA+C(Genus)BeforeY
PublishesA+C2(PatentablyDistinct
Species),XFilesFirstforGenus/Species
SCENARIO3R
?
?
−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −

ANALYSIS FOR SCENARIO 3R: Each Inventor is entitled to a patent for a species but not for
the genus. Y’s publication of A+C2 is not disqualified as (a)(1) prior art due to X’s limited FTD
grace period, but X is entitled to A+C1 as patentable over that art. X’s filing of A+C is
disqualified as (a)(2) prior art due to Y’s FTD grace period, but X’s publication of A+C and
filing for A+C1 are prior art to Y. Even so, Y is entitled to A+C2. Under pre-AIA FTI law, the
result is different because one of X or Y should get the genus and the species based on
proofs. (#)
DifferentResultFrom
Pre-AIAFTILaw
ANALYSISFORSCENARIO3R
PRACTICE TIP 14.3R. Under current USTPO guidance, disclosure of a genus will not disqualify
later publications or filings of any patentably indistinct species. If an FTD grace period must be
used, the shorter that period, and the more specific the disclosure, the better!
FTD grace–A+C
FTD grace–A+C2/
A+C
−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −



SCENARIO 3S: Inventor X publishes Invention A+C (genus). Then Inventor Y publishes
A+C1’. X files an application for A+C and A+C1 first, and then Y files an application for
A+C and A+C1’ (C1 and C1’ are patentably indistinct species). Both publications are
to Invention A as patentable by itself, but only in combination with C, C1, or C1’.
XPublishesA+C(Genus)BeforeY
PublishesA+C1’(PatentablyIndistinct
Species),XFilesFirstforGenus/Species
SCENARIO3S
−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −
?
?

ANALYSIS FOR SCENARIO 3S: Neither Inventor X nor Inventor Y is entitled to a patent.
Y’s publication of A+C1’ is not disqualified as (a)(1) prior art to X’s filing under USPTO
guidance and defeats both A+C and A+C1. X’s publication is (a)(1) prior art likely defeats Y’s
claims, as does X’s filing of A+C1 that is not disqualified as (a)(2) prior art to Y’s filing given
the limited FTD grace period. Under pre-AIA FTI law, X is entitled to both A+C and A+C1
unless Y establishes prior invention. (#)
DifferentResultFrom
Pre-AIAFTILaw
ANALYSISFORSCENARIO3S
PRACTICE TIP 14.3S. Under current USTPO guidance, a triggering disclosure of a genus will
not create an FTD grace period that disqualifies later publications or filings of any patentably
indistinct species. Once a triggering disclosure has been made, every attempt should be made to
present a genus and as many species as possible in the earliest possible filing.
FTD grace–A+C
FTD grace–A+C1’
/A+C

−−−−−−−−−−−−−−− 1 year
Y
X
−−−−−−−−−−−− 1 year −


SCENARIO 4F: Inventor X conceives Invention A+B after Inventor Y conceives A+B and
A+B’. Y files a national application only for A+B’ before X files a U.S. application for
A+B. Within the one-year period under the Paris Convention, Y files a PCT application in
English with a U.S. designation and claims priority to the national application, but
changes the description and claim from A+B’ to A+B. Prior to the 30-month PCT
deadline, Y enters the national stage in the United States.
XFilesAfterY’sU.S.FilingforA+B
butY’sForeignPriorityisforA+B’NotA+B
SCENARIO4F
?
?Y
X
ASSUMPTIONS FOR SET 4 SCENARIOS: For all timeline scenarios in Set 4, it is assumed that: each
claimed Invention is patentable over any other prior art; Inventors X and Y each independently conceived each
claimed Invention; each application fully describes and enables the Invention claimed; no application is
published before the filing of another application; no new matter is introduced by translation into an official
language; and all applications are filed after the cutover date (i.e., no transition applications).
In
English
Paris Conv. (12 mos.) ⎯

ANALYSIS FOR SCENARIO 4F: Neither Inventor X nor Inventor Y is entitled to a U.S.
patent. Y’s national application for A+B’ is (a)(2) prior art to X’s filing as of the filing date of Y’s
national application for what is described under post-AIA Section 102(d). X’s application is
(a)(2) prior art to Y’s U.S. application, which is only accorded an effective filing date as of Y’s
PCT application. Under pre-AIA FTI law, the Hilmer Doctrine prevents use of Y’s national
filing as a sword for prior art against X, and X gets a patent unless there is an
interference.
PRACTICE TIP 14.4F. Under post-AIA Section 102(d)(2), PCT applications can backdate to the
effective filing date to the national stage filing date for whatever that earliest priority application
describes.
DifferentResultFrom
Pre-AIAFTILaw

Y
X
In
English
Paris Conv. (12 mos.) ⎯

SCENARIO 5A: Inventor X conceives Invention A, later conceives Invention A+B, and
files a provisional application for A+B after Y conceives both Invention A and A+B and
files a provisional after X’s provisional. Both Inventor X and Y file nonprovisional
applications within one year that asserts priority to the provisional filing and claims both
A and A+B, but X files the nonprovisional earlier (A and A+B are patentable over each
other).
conceived each claimed invention; each application fully describes and enables the claimed invention(s);
no application is published before the filing of another application; and all applications are filed after the
cutover date (i.e., no transition applications).
YConceivesA+BBeforeX,
XFilesProvisionalBeforeY,
andXFilesNonprovisionalBeforeY
SCENARIO5A
X ?
Y ?
1 year – prov.
1 year – prov.

ANALYSIS FOR SCENARIO 5A: Inventor X is entitled to a patent for A and A+B and
Inventor Y is not entitled to either A or A+B. Y’s patent filing is not (a)(2) prior art to X’s
claim for A or A+B, because the effective filing date of both A and A+B is the date of X’s
provisional. Under pre-AIA FTI law, X might swear behind for A or prevail in an
interference, and Y might swear behind or prevail in an interference for either A or A+B,
depending on proof of reduction to practice and diligence.
PRACTICE TIP 14.5A. Filing provisional applications as early as possible after conception of an
invention, if the provisional application both enables and describes the invention establishes an
earlier effective filing date. It is also not advisable to wait the full year to convert provisional
application to nonprovisional application.
Pre-AIAFTILaw


X
Y
1 year – prov.
1 year – prov.

−−−−−−−−−−−− 1 year −
−−−−−−−−−−−− 1 year −
SCENARIO 6H: Inventor X conceives Invention A+B before Inventor Y. Inventors X and
Y each publishes A+B on the same day, but X files an application for A+B before Y files.
Both applications are filed less than one year after the earliest publication of A+B.
XConceivesA+BFirstbutXandY
PublishonSameDay
SCENARIO6H
?
?Y
X
conceived each claimed invention; and all applications are filed after the cutover date (i.e., no transition
applications).

ANALYSIS FOR SCENARIO 6H: Neither Inventor X nor Inventor Y is entitled to a
patent. Neither FTD grace period is effective at removing the publication of the other
because the sub(B) exceptions apply only to (a)(1) prior art that is “before such
disclosure” of the triggering disclosure. This is similar timing issue to the same day filing
result presented in Scenario 2H, but with the opposite result. Under pre-AIA FTI law, one
of X or Y may obtain a patent, depending upon proofs to swear behind or prevail in an
interference.
PRACTICE TIP 14.6H. In dueling publishing situations where the publications occur on the same
day, the FTD grace period for the sub(B) exception only starts as of the next day. As a result,
publications on the same day create the opposite result as patent filing on the same day—neither
inventor gets patent.
DifferentResultFrom
Pre-AIAFTILaw
ANALYSISFORSCENARIO6H
FTD grace
period
FTD grace period
Y
X 

SCENARIO 7E: Inventor X conceives Invention A+B and files a nonprovisional
application for A+B after Third Party Z files a nonprovisional for A+B, but before Z’s
nonprovisional publishes. Z did not conceive A+B, but derived A+B from conveyances of
confidential information from X. Neither X nor Z seeks claims to Invention A as
patentable by itself, but only to A+B. (+/-)
ZFilesFirstforA+BbutZDerivedA+B
FromXandXFiles
BeforeZ’sFilingPublishes
SCENARIO7E
?
?
X
Z
−− 1 year
claimed inventions are patentable over any other prior art; and all applications are filed after the cutover
date (i.e., no transition applications).

ANALYSIS FOR SCENARIO 7E: Inventor X is entitled to a patent for Invention A+B;
Third Party Z should not be granted a patent to A+B. Z’s filing is technically (a)(2) prior
art to X, but under the sub(A) exception Z’s filing is disqualified because Z derived the
subject matter of A+B from X. Inventor X must use a derivation proceeding to prevail
once Z’s application publishes. Under pre-AIA FTI law, a similar result could be obtained
by X swearing behind Z or prevailing in an interference. (#)
Pre-AIAFTILaw
PRACTICE TIP 14.7E. In situations involving derivation of an invention by another, the new
derivation proceedings under post-AIA Sections 135 and/or 291 need to be used unless the
parties can resolve the dispute and provide evidence that a prior filing is subject to the sub(A)
invention as being directly or indirectly attributable to the actual inventor.


−− 1 year
X
Z

SCENARIO 8F: Inventor X conceives Invention A+B before Inventor Y independently
conceives Invention A+B’. X files a nonprovisional application for A+B before Y files a
nonprovisional for A+B’. Each application publishes. At the time of each conception, X
and Y do not work for the same company, but prior to Y’s filing X and Y do work for the
same company. Neither X nor Y seeks claims to Invention A as patentable by itself, but
only to A in combination with B or B’.
XConceivesA+BBeforeYConceivesA+B’,
andXFilesFirst,BothXandYWorkfor
SameCompanyOnlyasofLaterFiling
SCENARIO8F
X ?
Y ?− 1 year
conceived each invention; each application fully describes and enables the claimed invention; no
application is published before the filing of another application; and all applications are filed after the
cutover date (i.e., no transition applications).
−−− Same Company −−

ANALYSIS FOR SCENARIO 8F: Both Inventor Y and Inventor X are entitled to a patent.
Y’s application is (a)(2) prior art, so X must use the sub(C) exception to remove Y’s filing
as prior art. Under pre-AIA FTI law, the result is different because the team exception
under pre-AIA Section 103(c) requires common assignment as of the date of conception,
not the filing date. Y cannot use the team exception and it is not likely that Y can swear
behind X depending upon proof of conception and reduction to practice (#).
PRACTICE TIP 14.8F. Even if both inventors are only working for the same company as of the
filing date of the later-filed application, the new sub(C) team exception removes patent filings by
the same team as (a)(2) prior art. This change after the AIA creates options to strategically use
the team exception even after one of the applications is already filed.
DifferentResultFrom
Pre-AIAFTILaw

X
Y − 1 year
−−− Same Company −−

SCENARIO 9E: Inventor X conceives and files a provisional for Invention A before the
cutover date (March 16, 2013), and then conceives A+B and files a nonprovisional after
the cutover date but within one year that asserts priority to the provisional filing and
claims both A and A+B. Inventor Y conceives and files a nonprovisional for A and A+C
after X’s provisional, but before the cutover date. Both applications publish (A, A+B, and
A+C are patentable over each other).
YFilesforA,A+CBetweenX’sProvisional
forAandNonprovisionalforA,A+B
SCENARIO9E
?X 1 year – prov.
March 16, 2013
Y ?
and no application is published before the filing of another application.

ANALYSIS FOR SCENARIO 9E: Inventor X is entitled to a patent to A+B and Inventor Y is
entitled to a patent to A+C. X’s nonprovisional is subject to post-AIA transition law, but Y’s filing
is subject to pre-AIA FTI law. Under post-AIA transition law, X may be entitled to a patent to A
because Y’s filing is not (a)(2) prior art, but Y’s filing could be used as pre-AIA 102(g) art.
Under pre-AIA FTI law, X may be entitled to a patent A unless Y can swear behind X’s
provisional or establishes prior invention in an interference. (#)
PRACTICE TIP 14.9E. difference in which law applies can make a difference in the results, and
can even create scenarios in which both inventors are awarded very similar, but not completely
identical, claims to the same subject matter.
BothPre-AIAFTILawandPost-AIA
TransitionLawWithDifferentResults
post-
AIA
Trans
law
pre-
AIA
FTI
law
X 1 year – prov.
March 16, 2013
Y


?

Suggested Post-AIA Filing Strategies
• Always File First!
– Treat the AIA as a First-to-File patent system
• Avoid Using the First-to-Disclose
Grace Period if at all Possible
– Avoid publicly disclosure before patent
applications are filed
– Use quickly-filed provisionals only to limit
exposure for public disclosure before filing
• Choose Quality over Quantity
– Post-AIA applications needs to be well-
researched and well-written
– Pay extra attention to “transition” applications
– Extra effort is needed to bolster applications
against post-issuance review proceeding
challenges
July 16, 2018 87
File File

The Future of IP?
July 16, 2018
88

Patent Quality:
Not a New Problem
89
 Patent Quality:
 AIA Changes will increase
patent quality
 USPTO just announced
new measures for tracking
patent quality
 But this is not a new issue
“Dead Ringer” 1882 Patent:
 Insured you were not
buried alive
 Rope on chest that can be
pulled if you discover you
were buried alive!
 Note the Inventor -
Fearnaught

Patent Quality:
Not a New Problem
July 16, 201890
 “Dead Ringer” 1868 Patent:
 14 years earlier
 Not cited in prosecution of
1882 patent
 Bottom Line:
 Clearly, good ideas can be
rediscovered
 Patents have been our best
approach for both
disseminating new ideas and
trying to insure that old ideas
are not repeated

September 4, 2014 91
Patent Terms – Not Tracking Technology Times
Year Term Delay
1790-
1834
14 yr
issue
1-2 yr
1835-
1860
21 yr
issue
1-2 yr
1861-
1995
17 yr
issue
1-3 yr
1996-
date
20 yr
filing +
PTA
2-5+
yr

U.S. Patent Litigation: A Patent Troll Problem?

U.S. Patents and Lawsuits
September 4, 2014
93

U.S. Patents and Lawsuits: A Function of GDP

Exponential Technology/Information Growth

Do We Need IP in the Future?
• Why IP?
– English and Venetian royalty
• Goal was to raise taxes/bust trade unions
– US Constitution Article I, Section 8
• Goal is to promote progress
• To promote the Progress of Science and useful Arts, by securing for limited
Times to Authors and Inventors the exclusive Right to their respective
Writings and Discoveries
• Do we need IP to innovate?
– IP Does Not encourage innovation – humans are
already predisposed to innovate
– IP Does encourage investment in commercializing
innovation – “Adding the fuel of fire to the genius
of our innovation” Abraham Lincoln
– Until the Internet, IP also served to codify human
knowledge
September 4, 2014
96

Predictions for IP and Patents
• 3-5 Years – Computers will Improve the Patent System
– Current trend is toward harmonization – Global Dossier
– Common patent application forms – XML-based filings
– Automated search/translation of “prior art”
– English will be the common patent language
• 10-20+ Years – AI may Obsolete our current Patent System
– “Person of Ordinary Skill in the Art” (POSITA) will become an AI
– There won’t be anymore “unpredictable” arts
• You will be part of the Evolution of our Patent System

My Favorite Patent

Thank You!
About Brad Pedersen
Brad Pedersen is a patent attorney with more than 30 years of
experience in patent law, engineering, business and
entrepreneurship. He is a partner with Patterson
Thuente Pedersen, P.A. and chair of the firm's patent
practice group. He concentrates his practice on post-grant
review proceedings and patent prosecution strategy,
licensing and litigation.
Brad can be reached at pedersen@ptslaw.com or
(612) 349-5740
About Patterson Thuente IP
Patterson Thuente Pedersen, P.A. helps creative and inventive
clients worldwide protect, and profit from, their ideas.
Practicing in the areas of patents, trademark, copyright,
trade secrets, IP litigation, international IP protection,
licensing and post-grant proceedings, the firm’s attorneys
excel at finding strategic solutions to complex intellectual
property matters.
Visit us online at www.ptslaw.com.
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