The America Invents Act (AIA) was passed in September 2011, bringing with it many changes to patent law. The most noteworthy change was the shift from inventorship being granted on a first to invent system to a first to file system. However, there were many additional changes to the system including, perhaps, some which were inadvertent.
For example, there has been a change with respect to double patenting. Prior to the passing of the AIA bill, your own patents could be used as prior art against your new application to support a double patenting rejection under 35 U.S.C. 103. This situation could be avoided by filing a terminal disclaimer.
After the passing of the AIA, however, the new law states “a disclosure shall not be prior art to a claimed invention under subsection (a)(2) if — (c) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.” 35 U.S.C. 102(b)(2)(C).
Now, under the new 102(b)(2)(C), which becomes effective March 16, 2003, your own prior disclosures cannot be used as prior art against you under 102(a)(2) to support a rejection.
As a result, certain inventions could be re-patented to extend the life of the patent, provided that other 102(a)(1) prior art is not cited.
So is it worth trying to take advantage of this loophole? Probably not.
First, the benefit received from taking advantage of this new law is minimal: patent-filers at most gain a one year extension on their patent due to the fact that your own admissions become prior art against you after a year under 102(b)(1). Though, a year-long extension may be lucrative in industries where patent rights are very important, such as the pharmaceutical industry.
Second, if the prosecution history of your patent was ever being scrutinized during litigation, the Federal Circuit would most likely not allow this type of patent term extension. To reach this analysis, the Federal Circuit could determine that references which do not qualify as prior art under 102(b)(2)(C) could nevertheless be combined to support an obviousness rejection pursuant to 103. But this could be troubling, because under current law and prior case law, references used in a 103 rejection must qualify for prior art under 102.
More likely the court would rely on precedent and the judicial doctrine of double patenting to reject such a term extension, explaining that Congress would not implicitly overturn prior case law.
However, the main deterrent to exploiting this loophole may be the fact that you run the risk that not only will your extension be redacted- but worse yet, you might run into counterclaims of patent fraud, patent misuse or inequitable conduct invalidating your patent and exposing you to damages.
What do you mean by “your own prior disclosures”?
Specifically, what types of prior art will be available on Friday, March 15, 2013 that won’t be prior art on Monday, March 18, 2013?
MPEP 706.02 might be relevant here.