Authored by Peng Sun* and Tianran Yan
Our previous post discussed the need for invoking the first-to-file regime in order to maximize the value of certain pre-AIA applications that claim foreign priorities. Here, we present another scenario where the different prior art standards between the AIA and the pre-AIA patent law is likely to justify a deliberate entry into the first-to-file regime.
Consider this fact pattern:
- Company filed a US patent application (Application A) on January 1, 2009, claiming a novel process invented by X for fabricating an organic solar cell. The specification discloses a number of possible materials for a photoactive layer of the solar cell, including Compound K.
- Company filed another US patent application (Application B) on January 1, 2010, claiming a genus of compounds independently identified by Y as suitable for use in a photoactive layer. Compound K is a species of the claimed genus.
- Application A published on July 1, 2010. Both Application A and Application B are assigned to Company.
Under §102(e) of the pre-AIA patent law, Application A, which was filed before Application B and subsequently published, qualifies as “secret prior art” against Application B. Although a commonly-owned “secret prior art” can be disqualified from obviousness consideration under §103(c), the same reference cannot be disqualified if it is novelty-destroying. Thus, under the first-to-invent regime, the Patent Office can reject Application B under §102(e) for lack of novelty over Application A, notwithstanding the fact that both applications are commonly-owned by the same assignee. Continue reading this entry