The transition from a first-to-invent to a first-to-file system under the America Invents Act (AIA) might suggest that older patent provisions are no longer pertinent. However, a significant number of patents with pre-AIA filing dates are still active, necessitating a deep understanding of the previous system’s rules. This includes the possibility for patent owners to challenge asserted prior art by proving an invention date before the effective date of the prior art. Another method involves demonstrating that the prior art actually describes their own work, rather than that “by another” as specified by legal standards.
In particular, overcoming prior art in Patent Trial and Appeal Board (PTAB) proceedings requires patent owners to shoulder the burden of production, offering evidence and arguments to support an earlier invention date. Common practice involves submitting a mixture of documentary evidence and declarations from relevant parties under 37 C.F.R. §1.131.
The challenges of meeting these strict legal and evidentiary standards can be substantial, leading to frequent difficulties for patent owners. For more on the complex issues surrounding the antedating and removal of prior art, read further analysis in part one of the article, available here.