First to File: Patents for Today’s Scientist and Engineer

The America Invents Act (AIA) introduces some of the biggest changes in patent law since 1952. This book lays out the new features of the AIA, explains the differences between the first-to-file rule introduced by the AIA and the pre-existing first-to-invent rule, sets out the changes in determinations of patentable novelty under the new law, and focuses on the growth of new technologies in industry and of the laws pertaining to their possible patent rights. The book bridges the gap between the realistic needs and questions of scientists and engineers and the legal skills of professionals in the patent field at a level accessible to those with no legal training.

Table of Contents

Chapter I

The First-to-File Rule:  Evolution and Application



A. History of the First-to-File Rule in the United States



B. “Who’s on First?” -- The Rule and Its Application



C. Adapting Business Routines to the First-to-File Rule


Chapter II

Prior Art Before and After the AIA – Two Standards Compared



A. Prior Art and the First-to-File Rule



B. “But Is It Art?” – The Art of Prior Art



C. And Is It “Prior?” – Pre-AIA Law vs. AIA



D. A Servant of Two Masters? – The “Effective Filing Date” and Its Role in Determining the Governing Rule



E. Conclusion


Chapter III

Creating One’s Own Prior Art:  Self-Imposed Barriers to Patentability



A. The On-Sale Bar



            1. Ready for Patenting?



            2. Exceptions for Experimental Use



B. The Publication Bar – Publish and Perish?



            1. Posting on an Internet Server



            2. Slide Presentations and Posters at a Conference



            3. Submission of a Thesis to a University Library



            4. Grant Proposals



C. Observations


Chapter IV

Cancelling Prior Art and Other Benefits of Record Keeping



A. Derivation Proceedings



B. Disqualifying Reference Materials as Prior Art



C. Records Showing Collaboration



D. Records of Public Disclosures and Commercial Uses



E. Laboratory Notebooks


Chapter V

Inventing in an Employment Environment – The AIA’s New Recognition of Employer Interests and Project Management



A. Project Management and the New Definition of Prior Art



B. Allowing the Employer to Stand In for the Inventor



C. What Constitutes an Obligation to Assign?



D. Implying an Obligation to Assign When There is No Express Agreement



E. Having a “Sufficient Proprietary Interest” Other Than By Assignment or Obligation to Assign



F. When No Assignment, Obligation to Assign, or Proprietary Interest: The “Shop Right”


Chapter VI

The Novelty Threshold:  Can You Recognize It When You See It?



A. Anticipation and the “All Elements in a Single Reference” Rule



            1. “Incorporation by Reference” of the Missing
            Element From Another Source



            2. Inherent Disclosure of the Missing Element



B. Novelty in the Arrangement of Parts



C. Another Argument Against Anticipation:  The “Non-Enabling” Reference



D. Caution:  A Reference Can Anticipate an Invention Even if it “Teaches Away” From the Invention



E. Novelty vs. Anticipation Among Genus, Subgenus, and Species



            1. Species Anticipating a Genus



            2. Specific Value Anticipating a Range



            3. “Shotgun” Disclosures in the Prior Art



            4. Species or Subgenus Novel Over a Larger,
             Encompassing Genus



            5. Narrow Range Novel Over a Broad Range
            Encompassing the Narrow Range



F. Are We Done?


Chapter VII

Confronting the Prior Art:  What Makes an Invention Nonobvious?



A. “But Every Invention is a Combination of Old Elements!”



            1. Synergism and Changes in Function



            2. “But Why Would a Munitions Manufacturer Go to
            a Horse Trainer (for the Missing Element)?”



            3. “But Nobody Knew What the Problem Was
            (Before I Came Along)!”



            4. “But They Said It Couldn’t Be Done!”



B. Pursuing the Unpredictable



            1.  Predictable Now But Not Predictable Then?



            2. Finding a Needle in a Haystack



            3. Unpredictability vs. Optimization



C. In Hindsight (and Other Obvious or Nonobvious Thoughts)


Chapter VIII

The View From the Infringer’s Side – Challenging a Patent’s Validity



A. Do You Really Want to Go to Court?



B. Selecting Claims



C. Options for Challenge Before a Patent is Granted



D. Options for Challenge After a Patent is Granted



            1. Citation of Prior Art and Written Statements



            2. Post-Grant Review and Inter Partes Review


Chapter IX

Patent Eligibility – Pushing the Envelope on Subject Matter Appropriate for Patenting



A. Medical Diagnostic Methods



B. Computer-Implemented Processes



C. Business Methods



D. The AIA’s New Procedure for Challenging Business Method Patents



E. Conclusion:  A Rule for Patent Eligibility? Or a Case of “I’ll Know It When I See It”?


Chapter X

Selected Topics in Patent Strategy



A. Provisional Patent Applications



B. Strategies in Claim Construction


Chapter XI

Patents and Beyond: The Variety and Scope of Intellectual Property



A. Trade Secrets



            1. Scope



            2. The Right of an Individual to Use Fundamental



            3. Comparing Trade Secrets to Patents



B. Trademarks



            1. Choosing a Trademark



            2.  Securement, Maintenance, and Infringement of
            Trademark Rights



C. Copyrights



D. Design Patents



E. Intellectual Property Coverage for Plants



F. Conclusion


Appendix A

Selected Fees Charged by U.S. Patent and Trademark Office and Other U.S. Agencies for Intellectual Property as of January 1, 2014


Appendix B

Patent Searchers


Henry Heines portrait

© 2010-2012 Henry Heines. Designed by Threestory Studio.