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Is The Definition Of “Same Or Substantially The Same” In 37 CFR 42.401 Valid?1

By Charles L. Gholz2 and Joshua D. Sarnoff3

Introduction

Section 135(a) of the Leahy-Smith America Invents Act, Public Law 112-29 (Sept. 16, 2011) (hereinafter referred to as “the AIA”) provides in pertinent part that:

The petition [for a derivation proceeding] shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. [Emphasis added.]

and § 100 (j) of the AIA provides that:

The term ‘claimed invention’ means the subject matter defined by a claim in a patent or an application for a patent.

Those sections of the AIA led the authors of this article to conclude in Proposed Technical Amendments to § 135 of the AIA, 19 Intellectual Property Today No. 8 (August 2012) at page 8 that:

So long as the claims of the first-filer are not identical to those of the second-filer (and, depending on ...

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