Antedating a reference
15, 2016) (Before Moore, Schall, and O’Malley, J.) (Opinion for the court, Moore, J.) (Opinion concurring in part and dissenting in part filed by Schall, J.) In an IPR decision, the Patent Trial and Appeal Board invalidated several claims from U. Antedating requires two things: earlier conception; and reasonable diligence during the time just prior to the effective date of the reference and until the invention’s reduction to practice (“critical period”). 6,030,384 as anticipated or obvious over Japanese Publication No. Pre-AIA section 102(g) allows antedating a reference, which removes it from the prior art for analysis of novelty and nonobviousness. The Court disagreed with the Board’s finding that there was a lack of reasonable diligence in reducing the claimed invention to practice, which prevented the Patent Owner from antedating certain prior art.For example, the Board criticized the inventor for not indentifying “any specific activities undertaken or the dates of those activities.” Instead, the Court ruled the Board should have considered preparation of comments on draft applications that must have been prepared during the unexplained periods, as well as work completed by the drafting attorney (as the inventor’s agent).Judge Schall’s dissent argued that the Board evaluated diligence using the correct legal standard: “As I read them, our cases turn on whether evidence supports a satisfactory explanation for periods of inactivity.” The antedating inquiry under Pre-AIA section102(g) is directed to evidence of diligent activity during the critical period as a whole and does not require justifying every period of unexplained inactivity.Robert Schaffer is an intellectual property partner at Troutman Sanders.
patent application publication reference is entitled to claim the benefit of an earlier filed application, its effective filing date is determined under pre-AIA 35 U. For additional information regarding effective dates of printed publications, see MPEP §§ 2128 - 2128.02. An affidavit or declaration is inappropriate under 37 CFR 1.131(a) when the reference is claiming interfering subject matter as defined in 37 CFR 41.203(a), see MPEP Chapter 2300.He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions.In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. A printed publication, including a published foreign patent application, is effective as of its publication date, not its date of receipt by the publisher. patent application publication of a pending or patented application that claims the rejected invention. See MPEP §§ 706.02(a), 706.02(f)(1), and 2136 - 2136.03.