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
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