One of the biggest AIA changes to affect patent examiners (and applicants) is the transition from a first-to-invent to a first-inventor-to-file system. To assist with this transition, the USPTO has been rolling out a series of examiner training materials along with a training timeline that outlines training programs that extend into FY 2014. The latest training materials provide in-depth explanations and examples for an examiner to analyze the novelty of a claimed invention.
Of particular note, the training materials include a "FITF Comprehensive Training Definition Sheet" that defines key AIA terms. Among those terms is the "effective filing date." The first step in the novelty analysis is determining the effective filing date of the claimed invention, which is determined on a claim-by-claim basis. The materials define effective filing date for AIA applications (other than reissue applications) as the earlier of the actual filing date of the application or (2) the filing date of the earliest application for which the application is entitled to a right of foreign priority or the domestic benefit of the earlier filing.
The training materials also include a presentation addressing prior art under the AIA. The presentation outlines the statutory framework and shows how the availability of a disclosure as prior art depends on the effective filing date of the claimed invention. 35 U.S.C. §§ 102(a)(1) and 102(a)(2) identify the two types of prior art, and § 102(b) provides exceptions to each category. While most practitioners and examiners are generally familiar with §§ 102(a) and 102(b), the training materials provide concrete examples that illustrate the specifics of applying these rules.
The training materials provide a useful guide to examiners and practitioners alike in navigating the complexities of prior art rejections under the AIA, particularly as the first few Office actions for applications filed under the first-inventor-to-file system are issued and addressed in the coming months.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
