Pre-AIA 102 rules

Pre-AIA rules seem to go away and no longer within your interesting topics? Not really. A lot of patents are reviewed under Pre-AIA rules, in particular 102, if their effective filing dates are prior to 2013/05/16.

FYI, in one of the PTAB’s institution decisions, the PTAB stated, “Because the claims at issue have an effective filing date prior to March 16, 2013, the effective date of the applicable provisions of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), we apply the pre-AIA versions of 35 U.S.C. §§ 102 and 103 in this Decision.”

Pre-AIA 102(a), (b), and (e):

(a) the invention was known or used by others in this country [USA], or patented or described in a printed publication in this or a foreign country, before the invention [usually EFD, unless the Patent Owner proves the actual invention date] thereof by the applicant for a patent

(a) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent [EFD] in the United States.

(e)  the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language. [Only applies to U.S. patent application publication]

  • Examples of Prior Are References

In one of the relevant IPR petitions, the challenger stated,

Duan was filed on February 18, 2005 and published on August 24, 2006 as U.S. Patent Application Publication No. 2006/0185830 to Qiang-Fei Duan et al. (Ex. 1005.) Thus, Duan is entitled to an effective filing date of at least February 18, 2005, so Duan is prior art to the ’681 patent [a family of 764 patent] under at least pre-AIA 35 U.S.C. §102(e).

Shin was filed as Japanese Patent Application 2000-345470 on November 8, 2000 and published on May 24, 2002 as Japanese Unexamined Patent Application Publication No. 2002-151638 to Takayuki Shin. (Ex. 1006 at (21), (22), (11), (43).) Thus, Shin is entitled to an effective filing date of at least May 24, 2002. Shin is prior art to the ’681 patent under at least pre-AIA 35 U.S.C. §102(a) and (b).

So, Shin is qualified under 102(a) because it was published on 2002/05/24, before the EFD of the 681 patent (,which is probably same as the EFD of the 764 patent, 2005/05/06). Also, Shin is qualified under 102 (b) because it was described in the publication on 2002/05/24, which is more than one year prior to the EFD.

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