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Swearing Behind: Overcoming Asserted Prior Art in PTAB Proceedings
Introduction
With the adoption of the America Invents Act (AIA) in 2011 and the accompanying change from a first-to-invent system to a first-to-file system, one might be tempted to conclude that first-to-invent concepts like prior conception and reasonable diligence are no longer relevant. But despite the passage of more than a decade since the enactment of the AIA, a significant number of patents with an effective filing date before March 16, 2013 remain in existence and will continue to be litigated under pre-AIA rules. (See, United States Patent and Trademark Office, Manual of Patent Examining Procedure (9th ed., rev. January 2024) (MPEP) §2159.) See also, Colleen V. Chien et al., “The AIA at Ten-How Much Do the Pre-AIA Prior Art Rules Still Matter?,” 35 Patently-O Patent Law Journal 1, 1 (2021) (reporting that approximately 90% of litigated patents fell under the pre-AIA system in 2020 versus 100% in 2013).
For such patents, patent owners may still be able to antedate or remove an asserted reference as prior art in Patent Trial and Appeal Board (PTAB or Board) proceeding by demonstrating an invention date prior to the effective date of the prior art or removing the prior art by demonstrating that the prior art described the inventor’s own work. See, MPEP §§715, 2132.01(I). Consequently, the legal standards and factual requirements for antedating and removing prior art will remain important for patent owners and petitioners alike to understand and consider, at least until the 20-year anniversary of the AIA’s enactment in 2033.
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