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[IntelProp007]

Here's the facts:

March 16, 2011: Inventor publishes the inventor's invention on subject matter A in a treatise.
March 16, 2012: Inventor files patent application on subject matter A in Japan (never mind about Japan patent rights possibly being lost.)
March 16, 2013: Inventor files U.S. patent application on subject matter A and subject matter B in U.S., claiming priority to the Japan patent application.
April 2015: Patent is granted in U.S. on claims directed to subject matter A and claims directed to subject matter B.

In the above example, because subject matter B was added and claimed on March 16, 2013, AIA applies to all claims, and pre-AIA 102(g) priority of invention rules apply to all claims (see AIA section 3(n)(2)).

I want to invalidate the claims directed to subject matter A of the Patent. I have a Reference Publication dated November, 2011, describing and showing subject matter A.

Here's the Analysis:

Under AIA, section 100(i)(1), the "effective filing date" of the Patent for claims directed to subject matter A is March 16, 2012.

Applying pre-AIA priority of invention rules to the claims:
For subject matter A, the inventor (owner of the Patent) can show an earlier invention date. The inventor's publication of subject matter A in the treatise of March 16, 2011, demonstrates an earlier invention date than that of the Reference Publication dated November, 2011. Thus, my challenge to invalidate the Patent based on the Reference Publication will fail.

Applying AIA First Inventor to Publish or File rules to the claims:
For subject matter A, the inventor published on March 16, 2011, and under the grace period "exception" AIA 35 USC 102(b)(1)(B), the inventor's publication of March 16, 2011, predates the Reference Publication dated November 2011, and thus the Reference Publication is not a valid prior art reference against the claims directed to subject matter A. Thus, here too, my challenge to invalidate the Patent based on the Reference Publication will fail.

Teaching Point:

When you are seeking to invalidate a patent under AIA that claims foreign priority, bear in mind that the patent may have a 102(b)(1)(B) "grace period" date as early as 2 years prior to its U.S. filing date.

Anybody see differently?