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  • USPTO on Using Declarations Regarding Prior Art under the AIA

    Contains 5 Component(s), Includes Credits Recorded On: 01/11/2018

    It’s been five years since a new regulation regarding declarations was promulgated by the USPTO through 37 C.F.R. §1.130. As patents prosecuted under the AIA begin to flow in larger numbers, practitioners would do well to understand the choices the USPTO has made in implementing those rules.

    It’s been five years since a new regulation regarding declarations was promulgated by the USPTO through 37 C.F.R. §1.130. As patents prosecuted under the AIA begin to flow in larger numbers, practitioners would do well to understand the

    choices the USPTO has made in implementing those rules.


    For instance, the USPTO has arguably taken a hard line on the issue of whether a section 102(b)(1)(B) or 102(b)(2)(B)
    exception regarding prior art applies. It has narrowly defined the provision that an exception applies when there has been
    a previous inventor-originated public disclosure of the same subject matter as that of a third party's potential prior art
    disclosure, including when a third party discloses an obvious variant of the invention.


    The USPTO is frequently having to make decisions on when to apply a section 102(a)(1) exception. This situation arises
    when prior art has another person’s name on it, e.g., along with the inventor’s. A declaration by the inventor is necessary
    to explain that the other person was, for example, a graduate student working under the inventor’s direct supervision.
    Our panel features a Senior Legal Advisor at the USPTO, and chief IP attorney for a technology company, and a veteran
    patent prosecutor at a major law firm.

    Speakers:

    • Kathleen Fonda, U.S. Patent & Trademark Office
    • Courtenay Brinckerhoff, Foley & Lardner LLP
    • Gary Ganzi, Evoqua

    Courtenay Brinckerhoff

    Foley & Lardner LLP

    is a partner with Foley & Lardner in Washington, D.C. She is chair of the firm’s IP Law and Practice Committee and a member of the firm's Life Sciences Industry Team, Patent Trials Group and Appellate Practice Team, and as well as editor and primary author for Foley’s PharmaPatentsBlog. She is vice chair of IPO’s U.S. Patent Office Practice Committee and a member of its Section 101 Legislation Task Force. 

    Kathleen Fonda

    U.S. Patent and Trademark Office

    is a partner with Foley & Lardner in Washington, D.C. She is chair of the firm’s IP Law and Practice Committee and a member of the firm's Life Sciences Industry Team, Patent Trials Group and Appellate Practice Team, and as well as editor and primary author for Foley’s PharmaPatentsBlog. She is vice chair of IPO’s U.S. Patent Office Practice Committee and a member of its Section 101 Legislation Task Force. 

    Gary Ganzi

    Evoqua Water Technologies LLC

    is Senior Counsel and Head of Intellectual Property for Evoqua Water Technologies, as he was for its corporate predecessor Siemens Water Technologies.  He is named as an inventor on 35 U.S. patents in fields related to water treatment.  Gary serves on the Board of Directors of IPO and as board liaison of the IPO U.S. Patent Office Practice Committee.