Through the AIA Prior Art Looking Glass— Understanding the Global Wonderland of Prior Art, and Utilizing Preissuance Submissions, Supplemental Examination, Ex parte Reexamination, and Reissue

January 22, 2014 3:45pm

Brian C. Zielinski
Vice President, Assistant General Counsel
Pfizer Inc.

Suzannah K. Sundby
Partner
Canady + Lortz LLP (Washington, DC)

David J. Dykeman
Shareholder
Greenberg Traurig LLP

Andrew Baluch
Special Counsel
Foley & Lardner LLP

• Adapting to the increased amount of information that can be used as prior art against an applicant
– Updating prior art searches to include the global wonderland
– Comparing what constitutes prior art in the US vs. abroad and the risks the differences may pose
– Determining the implications of AIA-novelty and AIAnonobviousness in the US in comparison to absolute novelty in Europe
• Preparing for the shift to include prior art based on the “effective filing date” and not the date of invention
– Eliminating the ability to swear back
– The irrelevance of the Hilmer Doctrine
– Nonobvious subject matter under post-AIA § 103
• Applying the 102(b) exceptions to prior art
– How is the “subject matter disclosed” defined under the regulations?
– Understanding what constitutes sufficient subject matter identity for 102(b) exceptions and avoiding inadvertent mistakes
• When and what on-sale and public use activities can be considered prior art?
• Attack by third parties – Preissuance
– Grasping the significance of preissuance submissions which allow a third party to direct an examiner to novelty destroying prior art
– Evaluating the strengths and weaknesses of different kinds of prior art to be used in attacking a patent application
– Examining scenarios in which the application of a pending patent might actually be strengthened as opposed to diminished by third party submissions
– Utilizing the ability to respond to a submission by a third party
– Exploring the impact a response to a third party submission could have on patent term adjustments
– Investigating ways in which an applicant can anticipate third party submission and take steps to ward off its effects
– Employing a patent applicant’s statements to frame interpretation of claims
– Using an applicant’s statements interpreting claims in other litigation to confine interpretation in a pending application
• New Prior Art – Supplemental Examination vs. Ex parte Reexamination vs. Reissue
– Using supplemental examination, ex parte reexamination, or reissue to cure defects before a patent is challenged
– Understanding the requirements and risks associated with supplemental examination, reexamination, and reissue
 Rules and procedures
 Cancellation
 Amendment
 Preclusion of recovery for past damages
 What constitutes a substantial new question of patentability (SNQP)
 Ethical considerations—whether to use supplemental examination
– Circumstances in which supplemental examination can be used as a means to circumvent questions of inequitable conduct
 Analyzing cases applying Therasense to determine what constitutes inequitable conduct
 Failure to disclose – presence of mind
 Intent vs. mistake – does it make a difference in the findings?
 Materiality
 Findings of fraud in aftermath of proceedings and possibility of criminal prosecution
– Updates on supplemental examinations filed to date and the effects