Guidelines Concerning the Implementation of
Changes to 35 USC 102(g) and 103(c) and the
Interpretation of the Term "Original Application"
in the American Inventors Protection Act of 1999
On November 29, 1999, the American Inventors Protection Act of 1999
(hereinafter "Act") was enacted.1 This notice addresses several of the
changes created by the Act which do not require rulemaking to implement.
First, the Patent and Trademark Office (PTO) is hereby setting forth
guidelines to establish its interpretation of the changes made to 35
U.S.C. 102(g) and 103(c). Second, the PTO is hereby setting forth an
interpretation of the term "original application" to clarify the
application of the Option Inter Partes Reexamination Procedure created
in Subtitle F of the Act. Further, this notice instructs patent
examiners and the public on how to implement these changes and addresses
situations that are anticipated to arise in the future.
An O.G. notice stating the PTO's interpretation of 35 U.S.C. 102(e) as
amended by the Act is expected to be published in the near future. The
notice will also include guidelines for implementing the amended
102(e) and illustrative examples.
I. Guidelines To Implement Changes in 35 U.S.C. 102(g)
Section 4806 of the Act amended 35 U.S.C. 102(g) to read as follows:
A person shall be entitled to a patent unless-
(g)(1) during the course of an interference conducted under section 135
or section 291, another inventor involved therein establishes, to the
extent permitted in section 104, that before such person's invention
thereof the invention was made by such other inventor and not abandoned,
suppressed or concealed, or (2) before such person's invention thereof,
the invention was made in this country by another inventor who had not
abandoned, suppressed or concealed it. In determining priority of
invention under this subsection, there shall be considered not only the
respective dates of conception and reduction to practice of the
invention, but also the reasonable diligence of one who was first to
conceive and last to reduce to practice, from a time prior to conception
by the other.
The effective date of this change to 102(g) is the date of enactment,
November 29, 1999. Amended 102(g) will apply to all interference
proceedings involving applications pending on November 29, 1999 since
this change merely ratifies an existing interpretation of the law. The
significant features resulting from this amendment to 102(g) are the
following:
(1) Amended 102(g) makes it explicitly clear that a party involved in
an interference proceeding under 35 U.S.C 135 or 291 may establish a
date of invention under 104. 35 U.S.C. 104, as amended by GATT
(Public Law 103-465, 108 Stat. 4809 (1994)) and NAFTA (Public Law
103-182, 107 Stat. 2057 (1993)), permits a party to establish a date of
invention in a NAFTA member country on or after December 8, 1993 or in
WTO member country other than a NAFTA member country on or after January
1, 1996.
(2) Apart from interference proceedings under 35 U.S.C. 135(a), and ex
parte examination following an interference to enforce the judgment in
the interference and the estoppel provisions of 37 CFR 1.658(c) [see
also In re Deckler, 977 F.2d 1449, 24 USPQ2d 1448 (Fed. Cir. 1992)
(party losing interference is not entitled to claims to same patentable
invention as count--based on estoppel) and Ex parte Tytgat, 225 USPQ 907
(Bd. App. 1985) (same)], evidence of a date of invention in a NAFTA or
WTO country other than the United States will not be considered prior
art under 102(g), as amended.
(3) No change is anticipated in 37 CFR 1.131 practice, which will
continue to require diligence until reduction to practice. In re
Eickmeyer, 602 F.2d 974, 202 USPQ 655 (CCPA 1979), states that Rule 131
practice is not necessarily controlled by the laws pertaining to
interference. In addition, through a Rule 131 affidavit, parties will be
able to continue to show evidence of the date of invention in a NAFTA
member country and a WTO member country to the extent permitted by 35
U.S.C. 104.
Implementation Steps As to Amended 35 U.S.C. 102(g)
Since the amendment to 102(g) merely ratifies an existing
interpretation of the law, no changes in practice are needed.
II. Guidelines To Implement Changes in 35 U.S.C. 103(c)
Section 4807 of the Act amended 35 U.S.C. 103(c) to read as follows:
(c) Subject matter developed by another person, which qualifies as
prior art only under one or more of subsections (e), (f), and (g) of
section 102 of this title, shall not preclude patentability under this
section where the subject matter and the claimed invention were, at the
time the invention was made, owned by the same person or subject to an
obligation of assignment to the same person.
This change to 103(c) applies to any patent application filed on or
after the date of enactment, November 29, 1999. American Inventors
Protection Act of 1999, Pub. L. No. 106-113, Sec. 4807(b). This
amendment to 103(c) does not apply to any application filed before
November 29, 1999, any request for examination under 37 CFR 1.129 of
such an application nor any request for continued examination, which is
defined in section 4403 of the Act, of such an application. The
significant features resulting this amendment to 103(c) are the
following:
(1) Subject matter which was prior art under former 35 U.S.C. 103(c) via
102(e) is now disqualified as prior art against the claimed invention
if that subject matter and the claimed invention "were, at the time the
invention was made, owned by the same person or subject to an obligation
of assignment to the same person."
(2) The mere filing of a continuation application on or after November
29, 1999 will serve to exclude commonly owned 102(e) prior art that
was applied, or could have been applied, in a rejection under 103 in
the parent application. For reissue applications, the doctrine of
recapture may prevent the presentation of claims that were cancelled or
amended to overcome such prior art applied in the application which
matured into the patent for which reissue is being sought. See (4) below
for further explanation.
(3) This amendment applies only to prior art usable in an obviousness
rejection under 103. Subject matter that qualifies as anticipatory
prior art under 102, including 102(e), is not affected, and may
still be used to reject claims as being anticipated.
(4) The recapture doctrine may prevent the presentation of claims in
reissue applications that were amended or cancelled from the application
which matured into the patent for which reissue is being sought, if the
claims were amended or cancelled to distinguish the claimed invention
from 102(e)/103 prior art which was commonly owned or assigned at the
time the invention was made.
(5) The burden of establishing that subject matter is disqualified as
prior art is placed on the patent applicants once the patent examiners
have established a prima facie case of obviousness based on the subject
matter.
(6) Nonstatutory and statutory double patenting rejections, based on
subject matter now disqualified as prior art in amended 103(c), may
still be made by patent examiners.
Implementation Steps As to Amended 35 U.S.C. 103(c)
A. Applications To Be Considered.
(1) The amendment of 103(c) "... shall apply to any application for
patent filed on or after the date of enactment of this Act," which is
November 29, 1999. Therefore, amended 103(c) will be applied to all
utility, design and plant patent applications filed on or after November
29, 1999, including continuing applications filed under 37 CFR 1.53(b),
continued prosecution applications filed under 37 CFR 1.53(d) and
reissues. Reexaminations proceedings are not "any application for
patent." Therefore, this amendment to 103(c) does not apply to
reexamination proceedings.
(2) Amended 103(c) does not affect any application filed before
November 29, 1999, a request for examination under 37 CFR 1.129(a) of
such an application nor a request for continued examination (defined in
section 4403 of the Act) of such an application.
B. Examination Procedure with respect to amended 103(c).
(1) Examiners are encouraged to check the assignment records, which are
available on the Patent Application Locating and Monitoring (PALM)
system, for the patents and applications involved in any rejection to
see if there is a possible common owner or assignee with the application
being examined. Since examiners should always apply potentially commonly
owned or assigned prior art, the review of assignment records is only to
indicate to the examiner whether making one or more appropriate back up
rejections should be considered. The assignment records on PALM show the
execution date of any recorded assignment. Since applicants are not
required to record assignments, however, these records are not the
exclusive means to determine whether there was common ownership at the
time the invention was made. In addition, the Office records other
papers, such as employment contracts, which are not evidence of common
ownership. Therefore, the examiners should be careful to refer to the
box labeled "Brief" on the bottom of the PALM screen which provides a
brief description of the paper recorded as stated by the applicant.
Examiners should not fail to apply a reference believed to be commonly
owned at the time of the invention based only upon the data in PALM. The
assignment information in PALM, however, may give an examiner a warning
that a reference may be disqualified by the applicant in the future.
(2) Applications and patents will be considered by the examiner to be
owned by, or subject to an obligation of assignment to, the same person,
at the time the invention was made, if:
(a) the applicant provides evidence that the application and patent
files refer to assignments recorded in the PTO in accordance with 37 CFR
3.11 which convey the entire rights in the applications to the same
person(s) or organization(s) at the time of the invention;
(b) copies of unrecorded assignments which convey the entire rights in
the applications to the same person(s) or organization(s) at the time of
the invention are filed in each of the applications and patents;
(c) an affidavit or declaration by the common owner is filed which
states that there was common ownership at the time the invention was
made and explains why the affiant believes there was common ownership; or
(d) other evidence is submitted which establishes common ownership of
the applications and patents at the time the invention was made, e.g., a
court decision determining the owner. In circumstances where the common
owner is a corporation or other organization, an affidavit or
declaration averring ownership may be signed by an official of the
corporation or organization empowered to act on behalf of the
corporation or organization.
(3) If the application file being examined does not establish that it
and the reference patent(s) or application(s) are owned by, or subject
to an obligation of assignment to, the same person, at the time the
invention was made, the examiner will:
(a) assume the application(s) and patent(s) are not commonly owned;
(b) examine the application on all grounds other than any conflict
between the reference patent(s) or application(s) arising from a
possible 103 rejection based on 102(e), (f) and/or (g);
(c) consider the applicability of any references under 103 based on
102(e), (f) and/or (g), including provisional rejections under 35U.S.C.
102(e)/103; and
(d) apply the best references against the claimed invention by making
rejections under 102 and 103, including any rejections under 103
based on 102(e), (f) and/or (g), until such time that proof is
submitted that the application(s) and patent(s) were commonly owned, at
the time the invention was made (see (2) above). When applying any
102(e)/103 references against the claims, the examiner should anticipate
that an affidavit (or other adequate proof) averring common ownership at
the time the invention was made may disqualify any patent or application
applied in a rejection under 103 based on 102(e). If such an
affidavit (or other adequate proof) is filed in reply to the
102(e)/103 rejection and the claims are not amended, the examiner may
not make the next Office action final if a new rejection is made.
(4) If the application being examined establishes that it and any
reference patent or application were owned by, or subject to an
obligation or assignment to, the same person, at the time the invention
was made, the examiner will:
(a) examine the applications as to all grounds except 102(e), (f)
and (g) as they apply through 103, including provisional rejections
under 35 U.S.C. 102(e)/103;
(b) examine the applications for double patenting, including statutory
and nonstatutory double patenting, and make a provisional rejection, if
appropriate; and
(c) invite the applicant to file a terminal disclaimer to overcome any
provisional or actual nonstatutory double patenting rejection, if
appropriate.
III. Interpretation of the term "original application" to clarify the
application of the Optional Inter Partes Reexamination Procedure
Section 4608 of the Act states the effective date and applicability of
the Optional Inter Partes Reexamination Procedure established by
Subtitle F of the Act. Specifically, Section 4608 states that the
changes in Subtitle F "... shall take effect on the date of enactment of
this Act and shall apply to any patent that issues from an original
application filed in the United States on or after that date."
The phrase "original application" is interpreted to encompass utility,
plant and design applications, including first filed applications,
continuations, divisionals, continuations-in-part, continued prosecution
applications (CPAs) and the national stage phase of international
applications. This interpretation is consistent with the use of the
phrase in 35 U.S.C. 251 and the federal rules pertaining to
reexamination. In addition, section 201.04(a) of the Manual of Patent
Examination and Procedure (MPEP) defines an original application as "...
an application which is not a reissue application." Section 201.04(a) of
the MPEP further states that "[a]n original application may be a first
filing or a continuing application." Therefore, the Optional Inter
Partes Reexamination Procedure is applicable to patents which issue from
all applications (except for reissues) filed on or after November 29,
1999. A patent which issued from an application filed prior to November
29, 1999 with a request for continued examination (defined in section
4403 of the Act) on or after May 29, 2000, however, is not eligible for
the Optional Inter Partes Reexamination Procedure. A request for
continued examination is not considered a filing of an application
FOR FURTHER INFORMATION CONTACT: Jeanne Clark or Robert Clarke, Legal
Advisors in the Special Program Law Office, by telephone at (703)
305-1622, by fax at (703) 305-1013, or by e-mail addressed to
Jeanne.Clark@USPTO.gov or Robert.Clarke@USPTO.gov.
Stephen G. Kunin
Deputy Assistant Commissioner
for Patent Policy and Projects
1The American Inventors Protection Act of 1999 is a part of
the conference report (H. Rep. 106-479) on H.R. 3194, Consolidated
Appropriations Act, Fiscal Year 2000. The text of the American Inventors
Protection Act of 1999 is contained in title IV of S. 1948, the
Intellectual Property and Communications Omnibus Reform Act of 1999
(Public Law 106-113).