(279) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2012-0024]
Examination Guidelines for Implementing the
First-Inventor-to-File Provisions of the
Leahy-Smith America Invents Act
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
SUMMARY: The United States Patent and Trademark Office (Office) is
publishing proposed examination guidelines concerning the first-
inventor-to-file (FITF) provisions of the Leahy-Smith America Invents
Act (AIA). The AIA amends the patent laws pertaining to the conditions of
patentability to convert the United States patent system from a "first to
invent" system to a "first inventor to file" system, treats United States
patents and United States patent application publications as prior art
as of their earliest effective United States, foreign, or international
filing date, eliminates the requirement that a prior public use or sale
activity be "in this country" to be a prior art activity, and treats
commonly owned or joint research agreement patents and patent
application publications as being by the same inventive entity for
purposes of novelty, as well as nonobviousness. The changes to the
conditions of patentability in the AIA result in greater transparency,
objectivity, predictability, and simplicity in patentability
determinations. These guidelines will assist Office personnel in, and
inform the public of how the Office is, implementing the FITF
provisions of the AIA. The Office is concurrently proposing in a
separate action (RIN 0651-AC77) published elsewhere in this issue of
the Federal Register to amend the rules of practice in patent cases to
implement the FITF provisions of the AIA.
DATES: Written comments must be received on or before October 5, 2012.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: fitf_guidance@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments - Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of Mary C. Till, Senior Legal Advisor, Office
of Patent Legal Administration, Office of the Deputy Commissioner for
Patent Examination Policy.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal, http://www.regulations.gov.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet in order to facilitate posting on the Office's Internet Web
site. Plain text is preferred, but comments may also be submitted in
ADOBE® portable document format or MICROSOFT WORD®
format. Comments not submitted electronically should be submitted on
paper, and will be digitally scanned into ADOBE® portable document format.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, currently located at Madison Building
East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments
also will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for
public inspection, information that the submitter does not desire to be
made public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Mary C. Till, Senior Legal Advisor
(telephone (571) 272-7755; email mary.till@uspto.gov) or Kathleen
Kahler Fonda, Senior Legal Advisor (telephone (571) 272-7754; email
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kathleen.fonda@uspto.gov), of the Office of the Deputy Commissioner for
Patent Examination Policy. Alternatively, mail may be addressed to Ms.
Till or Ms. Fonda at Commissioner for Patents, attn: FITF, P.O. Box
1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: The AIA \1\ was enacted into law on
September 16, 2011. Section 3 of the AIA amends the patent laws to:
(1) Convert the United States patent system from a "first to invent"
system to a "first inventor to file" system; (2) eliminate the
requirement that a prior public use or sale activity be "in this
country" to be a prior art activity; (3) treat U.S. patents and U.S.
patent application publications as prior art as of their earliest
effective filing date, regardless of whether the earliest effective
filing date is based upon an application filed in the U.S. or in
another country; and (4) treat commonly owned patents and patent
application publications, or those resulting from a joint research
agreement, as being by the same inventive entity for purposes of 35
U.S.C. 102 and 103. The changes in section 3 of the AIA take effect on
March 16, 2013.
\1\ Public Law 112-29, 125 Stat. 284 (2011).
These proposed guidelines do not constitute substantive rulemaking
and do not have the force and effect of law. The proposed guidelines
set out the Office's interpretation of 35 U.S.C. 102 and 103 as amended
by the AIA, and advise the public and the Patent Examining Corps on how
the changes to 35 U.S.C. 102 and 103 in the AIA impact the provisions
of the Manual of Patent Examining Procedure (MPEP) pertaining to 35
U.S.C. 102 and 103. The guidelines have been developed as a matter of
internal Office management and are not intended to create any right or
benefit, substantive or procedural, enforceable by any party against
the Office. Rejections will continue to be based upon the substantive
law, and it is these rejections that are appealable. Failure of Office
personnel to follow the guidelines is not, in itself, a proper basis
for either an appeal or a petition.
Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA
The AIA replaces pre-AIA 35 U.S.C. 102 with provisions that: (1) A
person is not entitled to a patent if the claimed invention was
patented, described in a printed publication, or in public use, on
sale, or otherwise available to the public before the effective filing
date of the claimed invention (35 U.S.C. 102(a)(1)); and (2) a person
is not entitled to a patent if the claimed invention was described in a
patent issued under 35 U.S.C. 151, or in an application for patent
published or deemed published under 35 U.S.C. 122(b), in which the
patent or application, as the case may be, names another inventor, and
was effectively filed before the effective filing date of the claimed
invention (35 U.S.C. 102(a)(2)). In 35 U.S.C. 100(j), the AIA defines
the term "claimed invention" as the subject matter defined by a claim
in a patent or an application for a patent. The AIA defines the term
"effective filing date" for a claimed invention in a patent or
application for patent (other than a reissue application or reissued
patent) in 35 U.S.C. 100(i)(1) as meaning the earliest of: (1) The
actual filing date of the patent or the application for the patent
containing a claim to the claimed invention (claimed invention); or (2)
the filing date of the earliest provisional, nonprovisional,
international (PCT), or foreign patent application to which the patent
or application is entitled to benefit or priority as to such claimed
invention. Under pre-AIA 35 U.S.C. 102(a) and (b), knowledge or use of
the invention (pre-AIA 35 U.S.C. 102(a)), or public use or sale of the
invention (pre-AIA 35 U.S.C. 102(b)), was required to be in the United
States to qualify as a prior art activity. Under the AIA, a prior
public use, sale activity, or other disclosure has no geographic
requirement (i.e., need not be in the United States) to qualify as
prior art.
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The "first inventor to file" provisions of the AIA eliminate the
provisions in pre-AIA 35 U.S.C. 102(c) (abandonment of the invention),
102(d) (premature foreign patenting), 102(f) (derivation), and 102(g)
(prior invention by another). Under AIA 35 U.S.C. 102, abandonment of
the invention or premature foreign patenting is not relevant to
patentability. Prior invention by another is not relevant to patentability
unless there is a prior disclosure or filing of an application by another.
The situation in which an application names a person who is not the actual
inventor as the inventor (pre-AIA 35 U.S.C. 102(f)) will be handled in a
derivation proceeding under 35 U.S.C. 135, by a correction of inventorship
under 37 CFR 1.48 to name the actual inventor, or under 35 U.S.C. 101.\2\
\2\ 35 U.S.C. 101 ("[w]hoever invents or discovers * * *, may
obtain a patent therefor, subject to the conditions and requirements
of this title); see also P.J. Federico, Commentary on the New Patent
Act, 75 J. Pat. & Trademark Off. Soc'y 161, 179 (1993) (noting that
pre-AIA 35 U.S.C. 102(f) is perhaps unnecessary since 35 U.S.C. 101
provides that ("[w]hoever invents or discovers * * *, may obtain a
patent therefor, subject to the conditions and requirements of this
title").
The AIA provides in 35 U.S.C. 102(b)(1) that a disclosure made one
year or less before the effective filing date of a claimed invention
shall not be prior art under 35 U.S.C. 102(a)(1) with respect to the
claimed invention if: (1) The disclosure was made by the inventor or
joint inventor or by another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor; or (2)
the subject matter disclosed had, before such disclosure, been publicly
disclosed by the inventor or a joint inventor or by another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. Thus, AIA 35 U.S.C. 102(b)(1) provides a
one-year grace period after a first disclosure of an invention within
which to file a patent application. Specifically, AIA 35 U.S.C.
102(b)(1) permits an applicant to disqualify a disclosure of the
invention made not more than one year before the effective filing date
of the claimed invention that would otherwise be prior art if: (1) The
disclosure to be disqualified was by an inventor or by a party who
obtained the disclosed subject matter from an inventor; or (2) an
inventor or a party who obtained the disclosed subject matter from an
inventor had publicly disclosed the subject matter before the date of
the reference disclosure to be disqualified. The one-year grace period
in AIA 35 U.S.C. 102(b)(1) is measured from the earliest U.S. or
foreign patent application to which the patent or application is
entitled to benefit or priority as to such invention, whereas the one-
year grace period in pre-AIA 35 U.S.C. 102(b) is measured from only the
earliest application filed in the United States.
AIA 35 U.S.C. 100(f) defines the term "inventor" as the
individual or if a joint invention, the individuals collectively who
invented or discovered the subject matter of the invention. AIA 35
U.S.C. 100(g) AIA defines the term "joint inventor" and "co-inventor"
to mean any one of the individuals who invented or discovered the subject
matter of a joint invention.
The date of invention is not relevant under AIA 35 U.S.C. 102.
Thus, a prior art disclosure could not be disqualified or antedated by
showing that the inventor invented the claimed invention prior to the
effective date of the prior art disclosure of the subject matter (e.g.,
under the provisions of 37 CFR 1.131).
In accordance with 35 U.S.C. 102(a)(2) of the AIA, a person is not
entitled to a patent if the claimed invention was described in a U.S.
patent or a U.S. patent application publication that names another
inventor and was effectively filed before the effective filing date of
the claimed invention. Under 35 U.S.C. 374, a World Intellectual
Property Organization (WIPO) publication of a Patent Cooperation Treaty
(PCT) international application that designates the United States is
deemed a U.S. patent application publication for purposes of AIA 35
U.S.C. 102(a)(2). Thus, under the AIA, WIPO publications of PCT
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applications that designate the United States are treated in the same
way as U.S. patent application publications for prior art purposes,
regardless of the international filing date or whether they are
published in English. Accordingly, a U.S. patent, a U.S. patent
application publication, or a WIPO publication of a PCT application
that designates the United States (WIPO published application), that
names another inventor and was effectively filed before the effective
filing date of the claimed invention, is prior art under 35 U.S.C.
102(a)(2). Compare with treatment under pre-AIA 35 U.S.C. 102(e), where
a WIPO publication of a PCT application designating the United States
is treated as a U.S. patent application publication under pre-AIA 35
U.S.C. 102(e) only if the PCT application was filed on or after
November 29, 2000, and published under PCT Article 21(2) in the English
language.\3\
\3\ Under 35 U.S.C. 102(e) as amended by the American Inventors
Protection Act (Pub. L. 106-113) and the Intellectual Property and
High Technology Technical Amendments Act of 2002 (Pub. L. 107-273),
the international filing date of a PCT application is a U.S. filing
date for prior art purposes under 35 U.S.C. 102(e) if the international
application: (1) Has an international filing date on or after November 29,
2000; (2) designated the United States; and (3) is published under PCT
Article 21(2) in English. See MPEP § 706.02(f)(1). The AIA amends
35 U.S.C. 102, 363, and 374 to provide simply that the publication under
the PCT of an international application designating the United States shall
be deemed a publication under 35 U.S.C. 122(b).
In 35 U.S.C. 102(d), the AIA defines "effectively filed" for the
purpose of determining whether a U.S. patent, U.S. patent application
publication, or WIPO published application is prior art under 35 U.S.C.
102(a)(2) to a claimed invention. A U.S. patent, U.S. patent
application publication, or WIPO published application is considered to
have been effectively filed for purposes of its prior art effect under
35 U.S.C. 102(a)(2) with respect to any subject matter it describes on
the earlier of: (1) The actual filing date of the patent or the
application for patent; or (2) if the patent or application for patent
is entitled to claim the benefit or priority of the filing date of an
earlier U.S. provisional, U.S. nonprovisional, international (PCT), or
foreign patent application, the filing date of the earliest such
application that describes the subject matter of the claimed invention.
Thus, if the subject matter relied upon is described in the earliest
claimed benefit or priority application, a U.S. patent, a U.S. patent
application publication or WIPO published application is effective as
prior art as of its earliest benefit or priority date, rather than only
as of its earliest United States benefit date.
The AIA provides in 35 U.S.C. 102(b)(2)(A) and (B) that a disclosure
shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2)
if: (1) The subject matter disclosed was obtained directly or indirectly
from the inventor or a joint inventor; or (2) the subject matter disclosed
had, before such subject matter was effectively filed under 35 U.S.C.
102(a)(2), been publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor. Thus, under the AIA, a U.S. patent,
U.S. patent application publication, or WIPO published application that was
not issued or published more than one year before the effective filing date
of the claimed invention is not prior art to the claimed invention if:
(1) The U.S. patent, U.S. patent application publication, or WIPO published
application was by a party who obtained the disclosed subject matter
from an inventor; or (2) an inventor, or a party who obtained the
disclosed subject matter from an inventor, had disclosed the subject
matter before the effective filing date of the U.S. patent, U.S. patent
application publication, or WIPO published application.
The AIA provides in 35 U.S.C. 102(b)(2)(C) that a disclosure made
in a U.S. patent, U.S. patent application publication, or WIPO
published application shall not be prior art to a claimed invention
under 35 U.S.C. 102(a)(2) if, not later than the effective filing date
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of the claimed invention, the subject matter disclosed and the claimed
invention were owned by the same person or subject to an obligation of
assignment to the same person. This provision replaces the exception in
pre-AIA 35 U.S.C. 103(c) that applied only in the context of 35 U.S.C.
103 to prior art that was commonly owned at the time the claimed
invention was made, and which qualifies as prior art only under pre-AIA
35 U.S.C. 102(e), (f), or (g). AIA 35 U.S.C. 102(b)(2)(C) provides an
exception to prior art that qualifies only under 35 U.S.C. 102(a)(2)
but that applies in the context of anticipation or obviousness to prior
art that was commonly owned not later than the effective filing date of
the claimed invention.
Thus, the AIA provides that certain prior patents and patent
applications of co-workers and collaborators are not prior art either
for purposes of determining novelty (35 U.S.C. 102) or nonobviousness
(35 U.S.C. 103). This exception, however, applies only to AIA 35 U.S.C.
102(a)(2) type of prior art: Namely, U.S. patents, U.S. patent
application publications, or WIPO published applications effectively
filed, but not published, before the effective filing date of the
claimed invention. This exception does not apply to prior art that is
available under 35 U.S.C. 102(a)(1), that is, patents, printed
publications, public uses, sale activities, or other publicly available
disclosures published or occurring before the effective filing date of
the claimed invention. A prior disclosure, as defined in 35 U.S.C.
102(a)(1), by a co-worker or collaborator is prior art under 35 U.S.C.
102(a)(1) unless it falls within an exception under 35 U.S.C.
102(b)(1), regardless of whether the subject matter of the prior
disclosure and the claimed invention were commonly owned not later than
the effective filing date of the claimed invention.
The AIA provides in 35 U.S.C. 102(c) for common ownership of
subject matter under joint research agreements. Under 35 U.S.C. 100(h),
the term "joint research agreement" is defined as a written contract,
grant, or cooperative agreement entered into by two or more persons or
entities for the performance of experimental, developmental, or
research work in the field of the claimed invention. The AIA 35 U.S.C.
102(c) specifically provides that subject matter disclosed and a
claimed invention shall be deemed to have been owned by the same person
or subject to an obligation of assignment to the same person in
applying the provisions of AIA 35 U.S.C. 102(b)(2)(C) if: (1) The
subject matter disclosed was developed and the claimed invention was
made by, or on behalf of, one or more parties to a joint research
agreement that was in effect on or before the effective filing date of
the claimed invention; (2) the claimed invention was made as a result
of activities undertaken within the scope of the joint research
agreement; and (3) the application for patent for the claimed invention
discloses or is amended to disclose the names of the parties to the
joint research agreement.
The AIA provides in 35 U.S.C. 103 that a patent for a claimed
invention may not be obtained, notwithstanding that the claimed
invention is not identically disclosed as set forth in 35 U.S.C. 102,
if the differences between the claimed invention and the prior art are
such that the claimed invention as a whole would have been obvious
before the effective filing date of the claimed invention to a person
having ordinary skill in the art to which the claimed invention
pertains. 35 U.S.C. 103 also provides that patentability shall not be
negated by the manner in which the invention was made. This provision
tracks pre-AIA 35 U.S.C. 103(a), except that the temporal focus for the
obviousness inquiry is before the effective filing date of the claimed
invention, rather than at the time of the invention. The provisions of
pre-AIA 35 U.S.C. 103(c) have been replaced with 35 U.S.C. 102(b)(2)(C)
and (c), and the provisions of pre-AIA 35 U.S.C. 103(b) pertaining to
biotechnological processes have been eliminated.
The AIA 35 U.S.C. 102 and 103 take effect on March 16, 2013. These
new provisions apply to any patent application that contains or
contained at any time: (1) A claimed invention that has an effective
filing date that is on or after March 16, 2013; or (2) a designation as
a continuation, divisional, or continuation-in-part of an application
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that contains or contained at any time a claimed invention that has an
effective filing date that is on or after March 16, 2013.\4\ The AIA 35
U.S.C. 102 and 103 also apply to any patent resulting from an
application to which the AIA 35 U.S.C. 102 and 103 applied.\5\
\4\ Public Law 112-29, § 3(n)(1), 125 Stat. at 293.
\5\ Id.
The AIA provides that the provisions of pre-AIA 35 U.S.C. 102(g)
\6\ apply to each claim of an application for patent if the patent
application: (1) Contains or contained at any time a claimed invention
having an effective filing date that occurs before March 16, 2013; or
(2) is ever designated as a continuation, divisional, or continuation-
in-part of an application that contains or contained at any time a
claimed invention that has an effective filing date before March 16,
2013.\7\ Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting
from an application to which pre-AIA 35 U.S.C. 102(g) applied.\8\
\6\ 35 U.S.C. 102(g) precludes the grant of a patent if:
(1) During the course of an interference conducted under 35 U.S.C. 135
or 291, another inventor involved therein establishes, to the extent
permitted in 35 U.S.C. 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.
\7\ Public Law 112-29, § 3(n)(2), 125 Stat. at 293.
\8\ Id.
Thus, if an application (1) contains or contained at any time any
claimed invention having an effective filing date that is before March
16, 2013, or ever claimed a right of priority or the benefit of an
earlier filing date under 35 U.S.C. 119, 120, 121, or 365 based upon an
earlier application ever containing a claimed invention having an
effective filing date that is before March 16, 2013, and (2) also
contains or contained at any time any claimed invention having an
effective filing date that is on or after March 16, 2013, or ever
claimed a right of priority or the benefit of an earlier filing date
under 35 U.S.C. 119, 120, 121, or 365 based upon an earlier application
ever containing a claimed invention having an effective filing date
that is on or after March 16, 2013, then AIA 35 U.S.C. 102 and 103
apply to the application, but each claimed invention is also subject to
pre-AIA 35 U.S.C. 102(g).
I. Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)
The AIA defines in 35 U.S.C. 102(a) the prior art that will
preclude the grant of a patent on a claimed invention unless an
exception in 35 U.S.C. 102(b) is applicable. 35 U.S.C. 102(a)
specifically provides that "a person shall be entitled to a patent
unless -
(1) The claimed invention was patented, described in a printed
publication, or in public use, on sale, or otherwise available to the
public before the effective filing date of the claimed invention; or
(2) The claimed invention was described in a patent issued under
section 151, or in an application for patent published or deemed
published under section 122(b), in which the patent or application, as
the case may be, names another inventor and was effectively filed
before the effective filing date of the claimed invention." \9\
\9\ 35 U.S.C. 102(a).
As an initial matter, Office personnel should note that the
introductory phrase "[a] person shall be entitled to a patent unless"
remains unchanged from the pre-AIA version of 35 U.S.C. 102. Thus, 35
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U.S.C. 102 continues to provide that the Office bears the initial
burden of explaining why the applicable statutory or regulatory
requirements have not been met if a claim in an application is to be
rejected. The AIA also does not change the requirement that in
rejecting any claim of an application, the Office must establish a
prima facie case of unpatentability.
The categories of prior art documents and events are set forth in
the AIA's 35 U.S.C. 102(a)(1) and (a)(2) and serve to qualify prior art
activities for purposes of determining whether a claimed invention is
novel or non-obvious. The documents upon which a prior art rejection
may be based are an issued patent, a published application, and a non-
patent printed publication. Evidence that the claimed invention was in
public use, on sale, or otherwise available to the public may also be
used as the basis for a prior art rejection. Note that a printed
publication that does not have a sufficiently early publication date to
itself qualify as prior art under 35 U.S.C. 102(a)(1) may still be
competent evidence of a previous public use, offer for sale, or other
availability of a claimed invention that does have a sufficiently early
date to qualify as prior art under 35 U.S.C. 102(a)(1).\10\
\10\ In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994).
The AIA in 35 U.S.C. 102(b) sets out exceptions to 35 U.S.C.
102(a), in that prior art that otherwise would be included in 35 U.S.C.
102(a) shall not be prior art if it falls within an exception in 35
U.S.C. 102(b).
35 U.S.C. 102(b)(1) provides exceptions to the categories of prior
art defined in 35 U.S.C. 102(a)(1). 35 U.S.C. 102(b)(1) specifically
states that a disclosure made one year or less before the effective
filing date of a claimed invention shall not be prior art to the
claimed invention under subsection (a)(1) if -
[ssquf] The disclosure was made by the inventor or joint inventor
or by another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor; or
[ssquf] The subject matter disclosed had, before such disclosure,
been publicly disclosed by the inventor or a joint inventor or another
who obtained the subject matter disclosed directly or indirectly from
the inventor or a joint inventor." \11\
\11\ 35 U.S.C. 102(b)(1).
35 U.S.C. 102(b)(2) provides exceptions to the categories of prior
art defined in 35 U.S.C. 102(a)(2). 35 U.S.C. 102(b)(2) specifically
states that a disclosure shall not be prior art to a claimed invention
under subsection (a)(2) if -
[ssquf] The subject matter disclosed was obtained directly or
indirectly from the inventor or a joint inventor;
[ssquf] The subject matter disclosed had, before such subject
matter was effectively filed under subsection (a)(2), been publicly
disclosed by the inventor or a joint inventor or another who obtained
the subject matter disclosed directly or indirectly from the inventor
or a joint inventor; or
[ssquf] 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." \12\
\12\ 35 U.S.C. 102(b)(2).
Although some of the prior art provisions of AIA 35 U.S.C. 102(a)
and (b) will seem familiar, especially in comparison to pre-AIA 35
U.S.C. 102(a), (b), and (e), the AIA has introduced a number of
important changes with respect to prior art documents and activities
(disclosures). First, the availability of a disclosure as prior art is
measured from the effective filing date of the claimed invention no
matter where that filing occurred. Second, the AIA adopts a global view
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of prior art disclosures and thus does not require that a public use or
sale activity be "in this country" to be a prior art activity.
Finally, a catch-all "otherwise available to the public" category of
prior art is added.
DATES: Effective filing date: Pre-AIA 35 U.S.C. 102(a) and (e)
reference patent-defeating activities occurring before the applicant
invented the claimed invention. AIA 35 U.S.C. 102(a)(1) and (a)(2) make
no mention of the date of the invention, but instead concern documents
that existed or events that happened "before the effective filing date
of the claimed invention." As a result, it is no longer possible to
antedate or "swear behind" certain prior art disclosures by making a
showing under 37 CFR 1.131 that the applicant invented the claimed
subject matter prior to the effective date of the prior art disclosure.
The AIA defines the term "effective filing date" for a claimed
invention in a patent or application for patent (other than a reissue
application or reissued patent) as the earlier of: (1) The actual
filing date of the patent or the application for the patent containing
the claimed invention; or (2) the filing date of the earliest
application for which the patent or application is entitled, as to such
invention, to a right of priority or the benefit of an earlier filing
date under 35 U.S.C. 119, 120, 121, or 365.\13\ Thus, the one-year
grace period in AIA 35 U.S.C. 102(b)(1) is measured from any earlier
foreign patent application to which the patent or application is
entitled to benefit or priority as to such invention, whereas the one-
year grace period in pre-AIA 35 U.S.C. 102(b) is measured from only the
earliest application filed in the United States.
\13\ 35 U.S.C. 100(i)(1).
As under pre-AIA law, the effective filing date of a claimed
invention is determined on a claim-by-claim basis and not an
application-by-application basis. That is, the principle that different
claims in the same application may be entitled to different effective
filing dates vis-á-vis the prior art remains unchanged by the
AIA. See MPEP § 706.02(VI) (8th ed. 2001) (Rev. 8, July 2010).
Finally, the AIA provides that the "effective filing date" for a
claimed invention in a reissue patent or application for a reissue
patent shall be determined by deeming the claim to the claimed
invention to have been contained in the patent for which reissue was
sought.\14\
\14\ 35 U.S.C. 100(i)(2).
The meaning of "disclosure": The AIA does not define the term
"disclosure." In addition, while 35 U.S.C. 102(a) does not use the
term "disclosure," 35 U.S.C. 102(b)(1) and (b)(2) each state
conditions under which a "disclosure" that otherwise falls within 35
U.S.C. 102(a)(1) or 102(a)(2) is not prior art under 35 U.S.C.
102(a)(1) or 102(a)(2).\15\ Thus, the Office is treating the term
"disclosure" as a generic expression intended to encompass the
documents and activities enumerated in 35 U.S.C. 102(a) (i.e., being
patented, described in a printed publication, in public use, on sale,
or otherwise available to the public, or being described in a U.S. patent,
U.S. patent application publication, or WIPO published application).
\15\ See 35 U.S.C. 102(b)(1) ("[a] disclosure made one year or
less before the effective filing date of a claimed invention shall
not be prior art to the claimed invention under [35 U.S.C.
102](a)(1)") and 102(b)(2) ("[a] disclosure shall not be prior art
to a claimed invention under [35 U.S.C. 102](a)(2)"); see also H.R.
Rep. No. 112-98, at 43 (2011) (indicating that the grace period
provision of 35 U.S.C. 102(b) would apply to all patent applicant
actions during the grace period that would create prior art under 35
U.S.C. 102(a)).
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A. Prior Art Under AIA 35 U.S.C. 102(a)(1)
35 U.S.C. 102(a)(1) sets forth prior documents and activities which
may preclude patentability. Such documents and activities include prior
patenting of the claimed invention, descriptions of the claimed
invention in a printed publication, public use of the claimed
invention, placing the claimed invention on sale, and otherwise making
the claimed invention available to the public.
Patented: AIA 35 U.S.C. 102(a)(1) indicates that prior patenting of
a claimed invention precludes the grant of a patent on the claimed
invention. This means that if a claimed invention was patented in this
or a foreign country before the effective filing date of the claimed
invention, 35 U.S.C. 102(a)(1) precludes the grant of a patent on the
claimed invention. The effective date of the patent for purposes of
prior art is the grant date of the patent for determining whether the
patent qualified as prior art under 35 U.S.C. 102(a)(1). There is an
exception to this rule if the patent is secret as of the date the
rights are awarded.\16\ In such situations, the patent is available as
prior art as of the date the patent was made available to the public by
being laid open for public inspection or disseminated in printed
form.\17\ The phrase "patented" in AIA 35 U.S.C. 102(a)(1) has the
same meaning as "patented" in pre-AIA 35 U.S.C. 102(a) and (b). For a
discussion of "patented" as used in pre-AIA 35 U.S.C. 102(a) and (b),
see generally MPEP § 2126.
\16\ In re Ekenstam, 256 F.2d 321 (CCPA 1958); see also MPEP
§ 2126.01.
\17\ In re Carlson, 983 F.2d 1032, 1037 (Fed. Cir. 1992); see
also MPEP § 2126.
Although an invention may be described in a patent and not claimed
therein, the grant date or publication date of the published
application would also be the applicable prior art date for purposes of
relying on the subject matter disclosed therein as "described in a
printed publication," provided that the patent was made available to
the public on its grant date. It is helpful to note that a U.S. patent
that issues after the effective filing date of the claimed invention is
not available as prior art under 35 U.S.C. 102(a)(1), but could be
available as prior art under 35 U.S.C. 102(a)(2).
Described in a printed publication: If a claimed invention is
described in a patent, published patent application, or printed
publication, such a document may be prior art under 35 U.S.C. 102(a)(1)
or (a)(2). Both pre-AIA 35 U.S.C. 102(a) and (b) and AIA 35 U.S.C.
102(a)(1) use the term "described" with respect to an invention in a
prior art printed publication. Likewise, AIA 35 U.S.C. 102(a)(2) uses
that term with respect to U.S. patents, U.S. patent application
publications, and WIPO published applications. Thus, the Office does
not view the AIA as changing the description requirement for a prior
art document to anticipate a claimed invention under 35 U.S.C. 102.
While the conditions for patentability of AIA 35 U.S.C. 112(a)
require a written description of the claimed invention that would have
enabled a person skilled in the art to make as well as use the
invention, the prior art provisions of 35 U.S.C. 102(a)(1) and (a)(2)
require only that the claimed invention be "described." \18\ The two
basic requirements that must be met by a prior art disclosure in order
to describe a claimed invention under AIA 35 U.S.C. 102 are the same as
those under pre-AIA 35 U.S.C. 102. First, "each and every element of
the claimed invention" must be disclosed either explicitly or
inherently, and the elements must be "arranged or combined in the same
way as in the claim." \19\ Second, a person of ordinary skill in the
art must have been enabled to make the invention without undue
experimentation.\20\ Thus, in order for a prior art disclosure to
describe a claimed invention under 35 U.S.C. 102(a), it must disclose
all elements of the claimed invention arranged as they are in the
claim, and also provide sufficient guidance to enable a person skilled
in the art to make the claimed invention. There is, however, no
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requirement that a document meet the "how to use" requirement of 35
U.S.C. 112(a) in order to qualify as prior art.\21\ Furthermore,
compliance with the "how to make" requirement is judged from the
viewpoint of a person of ordinary skill in the art, and thus does not
require that the document explicitly disclose information within the
knowledge of such a person.\22\
\18\ Novo Nordisk Pharma., Inc. v. Bio-Tech. Gen. Corp., 424
F.3d 1347, 1355 (Fed. Cir. 2005), discussing pre-AIA 35 U.S.C. 112,
first paragraph, and pre-AIA 35 U.S.C. 102.
\19\ In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), citing
Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369,
1375 (Fed. Cir. 2006); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1370 (Fed. Cir. 2008); In re Bond, 910 F.2d 831, 832-33 (Fed.
Cir. 1990).
\20\ Gleave, 560 F.3d at 1334, citing Impax Labs., Inc. v.
Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); In re
LeGrice, 301 F.2d 929, 940-44 (CCPA 1962).
\21\ Gleave, 560 F.3d at 1334; see also In re Schoenwald, 964
F.2d 1122 (Fed. Cir. 1992) (holding that a claimed compound was
anticipated even though the prior art reference did not disclose a
use for the compound); Schering Corp. v. Geneva Pharms., Inc., 339
F.3d 1373, 1380-81 (Fed. Cir. 2003) (pointing out that actually
reducing the invention to practice is not necessary in order for a
prior art reference to anticipate); Impax Labs. Inc. v. Aventis
Pharm.Inc., 468 F.3d 1366, 1383 (Fed. Cir. 2006) (stating that
"proof of efficacy is not required for a prior art reference to be
enabling for purposes of anticipation").
\22\ In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985).
There is an additional important distinction between the written
description that is necessary to support a claim under 35 U.S.C. 112(a)
and the description sufficient to anticipate the subject matter of the
claim under 35 U.S.C. 102.\23\ To provide support for a claim under 35
U.S.C. 112(a), it is necessary that the specification describe and
enable the entire scope of the claimed invention. However, in order for
a prior art disclosure to describe a claimed invention under 35 U.S.C.
102(a)(1) or (a)(2), a prior art document need only describe and enable
one skilled in the art to make a single species or embodiment of the
claimed invention.\24\ This is consistent with pre-AIA case law.
\23\ Rasmussen v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed.
Cir. 2005).
\24\ Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir.
1991) ("As the court pointed out, `the description of a single
embodiment of broadly claimed subject matter constitutes a
description of the invention for anticipation purposes * * *,
whereas the same information in a specification might not alone be
enough to provide a description of that invention for purposes of
adequate disclosure.' ") (quoting In re Lukach, 442 F.2d 967 (CCPA
1971)); see also In re Van Langenhoven, 458 F.2d 132 (CCPA 1972),
and In re Ruscetta, 255 F.2d 68 (CCPA 1958).
In public use: The pre-AIA case law indicates that a public use
will bar patentability if the public use occurs before the critical
date \25\ and the invention is ready for patenting.\26\ Under the pre-
AIA case law, the inquiry was whether the use was: (1) Accessible to
the public; and (2) commercially exploited. The phrase "in public
use" in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning
as "in public use" in pre-AIA 35 U.S.C. 102(b). For a discussion of
"in public use" in pre-AIA 35 U.S.C. 102(b), see generally MPEP
§ 2133.03(a) et seq.
\25\ Under pre-AIA 35 U.S.C. 102(b), the critical date is the
date that is one year prior to the date of application for patent in
the United States.
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\26\ Invitrogen Corp. v. Biocrest Mfg. L.P., 424 F.3d 1374 (Fed.
Cir. 2005).
Additionally, under pre-AIA 35 U.S.C. 102(b), that an invention was
"in public use" precluded a patent only if such public use occurred "in
this country." \27\ Under AIA 35 U.S.C. 102(a)(1), there is no geographic
limitation on the location where a prior public use or public availability
may occur. Furthermore, a public use would need to occur before the
effective filing date of the claimed invention to constitute prior art
under AIA 35 U.S.C. 102(a)(1). When formulating a rejection, Office
personnel should consider evidence of public use or other public
availability regardless of where the public use or other public
availability took place.
\27\ Similarly, under pre-AIA 35 U.S.C. 102(a), that an
invention was "known or used by others" precluded a patent only if
such knowledge or use occurred "in this country."
On sale: The pre-AIA case law regarding on sale activity indicates
that a sale will bar patentability of the invention if the sale of the
claimed invention was: (1) The subject of a commercial offer for sale,
not primarily for experimental purposes; and (2) ready for
patenting.\28\ With respect to a sale, contract law principles apply in
order to determine whether a commercial offer for sale occurred. The
phrase "on sale" in AIA 35 U.S.C. 102(a)(1) is treated as having the
same meaning as "on sale" in pre-AIA 35 U.S.C. 102(b), except as
discussed in this guidance. For a discussion of "on sale" as used in
pre-AIA 35 U.S.C. 102(b), see generally MPEP § 2133.03(b) et seq.
\28\ Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).
Under pre-AIA 35 U.S.C. 102(b), if an invention was "on sale"
patentability was precluded only if the invention was on sale "in this
country." Under AIA 35 U.S.C. 102(a)(1), there is no geographic
limitation on the location where the sale may occur. When formulating a
rejection, Office personnel should consider evidence of sales activity
of the claimed invention, regardless of where the sale took place.
The language of AIA 35 U.S.C. 102(a)(1) does not expressly state
whether a sale must be "sufficiently" public to preclude the grant of
a patent on the claimed invention.\29\ The Office is seeking the
benefit of public comment on this provision prior to issuing its
interpretation of the AIA 35 U.S.C. 102(a)(1) "on sale" provision and
is not setting out an initial position in this guidance to avoid having
an influence on the comments. Specifically, the Office is seeking
comment on the extent to which public availability plays a role in "on
sale" prior art defined in 35 U.S.C. 102(a)(1).
\29\ AIA 35 U.S.C. 102(a)(1) uses the same term ("on sale") as
pre-AIA 35 U.S.C. 102(b). The pre-AIA 35 U.S.C. 102(b) "on sale"
provision has been interpreted as including commercial activity even
if the activity is secret or private. See, e.g., Metallizing
Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d
Cir. 1946). However, 35 U.S.C. 102(a)(1), unlike pre-AIA 35 U.S.C.
102(b), contains the residual clause "or otherwise available to the
public." See 35 U.S.C. 102(a)(1). The legislative history of the
AIA indicates that the inclusion of this clause in AIA 35 U.S.C.
102(a)(1) should be viewed as indicating that AIA 35 U.S.C.
102(a)(1) does not cover non-public uses or non-public offers for
sale. See 157 Cong. Rec. S.1370 (Mar. 8, 2011) (The Committee's
understanding of the effect of adding the words `or otherwise
available to the public' is confirmed by judicial construction of
this phraseology. Courts have consistently found that when the words
`or otherwise' or `or other' when used as a modifier at the end of a
string of clauses restricts the meaning of the preceding clauses.).
Otherwise available prior art: The AIA in 35 U.S.C. 102(a)(1)
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provides a "catch-all" provision, which defines a new additional
category of potential prior art not provided for in pre-AIA 35 U.S.C.
102. Specifically, a claimed invention may not be patented if it was
"otherwise available to the public" before its effective filing date.
This "catch-all" provision permits decision makers to focus on
whether the disclosure was "available to the public," rather than on
the means by which the claimed invention became available to the public
or on whether a disclosure constitutes a "printed publication" or
falls within another category of prior art as defined in 35 U.S.C.
102(a)(1). The availability of the subject matter to the public may
arise in situations such as a student thesis in a university
library,\30\ a poster display or other information disseminated at a
scientific meeting,\31\ subject matter in a laid-open patent
application,\32\ a document electronically posted on the Internet,\33\
or a commercial transaction that does not constitute a sale under the
Uniform Commercial Code.\34\ Even if a document or other disclosure is
not a printed publication, or a transaction is not a sale, either may
be prior art under the "otherwise available" provision of 35 U.S.C.
102(a)(1), provided that the claimed invention is made sufficiently
available to the public.
\30\ E.g, In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989); In re
Hall, 781 F.2d 897 (Fed. Cir. 1986); In re Bayer, 568 F.2d 1357
(CCPA 1978).
\31\ E.g., In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir.
2004), Massachusetts Institute of Technology v. AB Fortia, 774 F.2d
1104 (Fed. Cir. 1985).
\32\ E.g., In re Wyer, 655 F.2d 221 (CCPA 1981); see also
Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006).
\33\ E.g., In re Lister, 583 F.3d 1307 (Fed. Cir. 2009), and SRI
International, Inc. v. Internet Security Systems, Inc., 511 F.3d
1186 (Fed. Cir. 2008).
\34\ E.g., Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d
1041 (Fed. Cir. 2001).
No requirement of "by others": A key difference between pre-AIA
35 U.S.C. 102(a) and AIA 35 U.S.C. 102(a)(1) is the requirement in pre-
AIA 35 U.S.C. 102(a) that the prior art relied on was "by others."
Under 35 U.S.C. 102(a)(1), there is no requirement that the prior art
relied upon be by others. Thus, any prior art which falls under 35
U.S.C. 102(a)(1) need not be by another to constitute potentially
available prior art. However, disclosures of the subject matter made
one year or less before the effective filing date of the claimed
invention by the inventor or a joint inventor or another who obtained
the subject matter directly or indirectly from the inventor or a joint
inventor may fall within an exception under 35 U.S.C. 102(b)(1) to 35
U.S.C. 102(a)(1).
Admissions: The Office will continue to treat admissions by the
applicant as prior art under the AIA. A statement by an applicant in
the specification or made during prosecution identifying the work of
another as "prior art" is an admission which can be relied upon for
both anticipation and obviousness determinations, regardless of whether
the admitted prior art would otherwise qualify as prior art under the
statutory categories of 35 U.S.C. 102.\35\ See generally MPEP § 2129.
\35\ Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346,
1354 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848
F.2d 1560, 1570 (Fed. Cir. 1988).
1. Prior Art Exception Under 35 U.S.C. 102(b)(1)(A) to 35 U.S.C.
102(a)(1)
The AIA in 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior
art provisions of 35 U.S.C. 102(a)(1). These exceptions limit the use
of an inventor's own work as prior art, when the inventor has publicly
disclosed the work either directly or indirectly. The provisions of 35
U.S.C. 102(b)(1)(A) indicate that a disclosure which would otherwise
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qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if the
disclosure was made: (1) One year or less before the effective filing
date of the claimed invention; and (2) by the inventor or a joint
inventor, or by another who obtained the subject matter directly or
indirectly from the inventor or joint inventor. These guidelines will
first discuss issues pertaining to disclosures within the grace period
by the inventor or a joint inventor ("grace period inventor
disclosure") and then subsequently discuss issues pertaining to
disclosures within the grace period by another who obtained the subject
matter directly or indirectly from the inventor or joint inventor
("grace period non-inventor inventor disclosure").
Grace period inventor disclosure: 35 U.S.C. 102(b)(1)(A) first
provides that a disclosure which would otherwisequalify as prior art under
35 U.S.C. 102(a)(1) is not prior art if: (1) The disclosure is made one
year or less before the effective filing date of the claimed invention; and
(2) was made by the inventor or a joint inventor. Thus, a disclosure that
would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) shall not be
prior art if the disclosure is made one year or less before the effective
filing date of the claimed invention, and the written record of the patent
application shows that the disclosure is by the inventor or a joint
inventor. What is necessary to show that the disclosure is by the inventor
or a joint inventor requires case-by-case treatment, depending upon whether
it is apparent from the disclosure or the patent application specification
that the disclosure is by the inventor or a joint inventor.
An examiner would not apply prior art that falls under 35 U.S.C.
102(a)(1) if it is apparent from the disclosure that it is by the
inventor or a joint inventor. Specifically, the examiner would not
apply a prior art disclosure that falls under 35 U.S.C. 102(a)(1) if
the disclosure: (1) Was made one year or less before the effective
filing date of the claimed invention; (2) names the inventor or a joint
inventor as an author or an inventor; and (3) does not name additional
persons as authors on a printed publication or inventors on a patent.
This means that in circumstances where an application names additional
persons as inventors relative to the persons named as authors in the
publication (e.g., the application names as inventors A, B, and C, and
the publication names as authors A and B), and the publication is one
year or less before the effective filing date, it is apparent that the
disclosure is a grace period inventor disclosure, and the publication
would not be treated as prior art under 35 U.S.C. 102(a)(1). If,
however, the application names fewer inventors than a publication
(e.g., the application names as inventors A and B, and the publication
names as authors A, B and C), it would not be readily apparent from the
publication that it is by the inventor or a joint inventor and the
publication would be treated as prior art under 35 U.S.C. 102(a)(1).
In certain circumstances, an examiner would not apply prior art
that falls under 35 U.S.C. 102(a)(1) if it is apparent from the patent
application specification that the disclosure is by the inventor or a
joint inventor. The Office is concurrently proposing in a separate
action (RIN 0651-AC77) to revise the rules of practice to provide that
applicants can include a statement of any grace period inventor
disclosures in the specification (in proposed 37 CFR 1.77(b)). If the
specification contains a specific reference to a grace period inventor
disclosure, the Office will consider it apparent from the patent
application specification that the disclosure is by the inventor or a
joint inventor, provided that the disclosure does not name additional
authors or inventors and there is no other evidence to the contrary.
The applicant may also provide a copy of the disclosure (e.g., copy of
a printed publication), and will be required to provide a copy of the
disclosure to disqualify an intervening disclosure under the provisions
of 35 U.S.C. 102(b)(1)(B) (discussed subsequently).
An applicant is not required to use the format specified in
proposed 37 CFR 1.77 or identify any prior disclosures by the inventor
or a joint inventor (unless necessary to overcome a rejection), but
identifying any prior disclosures by the inventor or a joint inventor
may save applicants (and the Office) the costs related to an Office
action and reply, and expedite examination of the application. In this
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situation, the Office would consider such a disclosure made one year or
less before the effective filing date of the claimed invention as
falling within the 35 U.S.C. 102(b)(1)(A) exception, and the disclosure
would not be treated as prior art under 35 U.S.C. 102(a)(1).
The Office is proposing in a separate action (RIN 0651-AC77)
elsewhere in this issue of the Federal Register to revise the rules of
practice to provide for situations in which it is not apparent from the
disclosure or the patent application specification that the disclosure
is by the inventor or a joint inventor (proposed 37 CFR 1.130).
Proposed 37 CFR 1.130 would generally provide a mechanism for filing an
affidavit or declaration to establish that a disclosure is not prior
art under 35 U.S.C. 102(a) due to an exception in 35 U.S.C. 102(b).
Proposed 37 CFR 1.130(a)(1) would provide for the situation in which:
(1) The disclosure on which the rejection is based was by the inventor
or joint inventor; (2) the subject matter disclosed had been publicly
disclosed by the inventor or a joint inventor before the disclosure of
the subject matter on which the rejection is based; or (3) the subject
matter disclosed had been publicly disclosed by the inventor or a joint
inventor before the date the subject matter in the patent or published
application on which the rejection is based was effectively filed.
An affidavit or declaration under proposed 37 CFR 1.130(a)(1) could
be used to establish that the prior art relied upon in a rejection is
an inventor disclosure made during the grace period and subject to the
exception of 35 U.S.C. 102(b)(1)(A). Specifically, such an affidavit or
declaration could be used to establish that the disclosure upon which
the rejection is based: (1) Was made one year or less before the
effective filing date of the claimed invention; and (2) had been
publicly disclosed by the inventor or joint inventor. The affidavit or
declaration must show that the disclosure of the subject matter on
which the rejection is based is by the inventor or is by a joint
inventor.\36\ Where the authorship of the prior art disclosure includes
the inventor or a joint inventor named in the application, an
"unequivocal" statement from the inventor or a joint inventor that
he/she (or some specific combination of named inventors) invented the
subject matter of the disclosure, accompanied by a reasonable
explanation of the presence of additional authors, may be acceptable in
the absence of evidence to the contrary.\37\ However, a mere statement
from the inventor or a joint inventor may not be sufficient where there
is evidence to the contrary.\38\ This is similar to the current process
for disqualifying a publication as not being by "others" discussed in
MPEP § 2132.01, except that 35 U.S.C. 102(b)(1)(A) requires only that the
disclosure be by the inventor or a joint inventor.
\36\ In re Katz, 687 F.2d 450, 455 (CCPA 1982).
\37\ In re DeBaun, 687 F.2d 459, 463 (CCPA 1982).
\38\ Ex parte Kroger, 218 USPQ 370 (Bd. App. 1982) (affirming
rejection notwithstanding declarations by the alleged actual
inventors as to their inventorship in view of a nonapplicant author
submitting a letter declaring the nonapplicant author's
inventorship).
Grace period non-inventor disclosure: 35 U.S.C. 102(b)(1)(A) also
provides that a disclosure which would otherwise qualify as prior art
under 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made:
(1) One year or less before the effective filing date of the claimed
invention; and (2) by another who obtained the subject matter directly
or indirectly from the inventor or a joint inventor. Thus, if the
disclosure upon which the rejection is based is by someone who obtained
the subject matter from the inventor or a joint inventor, the inventor
could provide an affidavit or declaration which may overcome the
rejection.
As discussed previously, proposed 37 CFR 1.130 would generally
provide a mechanism for filing an affidavit or declaration to establish
that a disclosure is not prior art due to an exception in AIA 35 U.S.C.
102(b). Proposed 37 CFR 1.130(a)(2) provides for the situation in
which: (1) The disclosure on which therejection is based was by a party
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who obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor; (2) the subject matter disclosed had been
publicly disclosed by a party who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor before the
disclosure of the subject matter on which the rejection is based; or
(3) the subject matter disclosed had been publicly disclosed by a party
who obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor before the date the subject matter in the
patent or patent application publication on which the rejection is based
was effectively filed.
Proposed 37 CFR 1.130(a)(2) thus provides for an affidavit or
declaration to establish that the named inventor or joint inventor is
the inventor of the disclosed subject matter, and that the subject
matter was communicated by the inventor or a joint inventor to another
who disclosed it. Such an affidavit or declaration must show that the
inventor or a joint inventor is the inventor of the subject matter of
the disclosure (in accordance with proposed 37 CFR 1.130(d)), and
indicate the communication of the subject matter by the inventor or a
joint inventor to another who disclosed the subject matter. Thus, an
applicant may benefit from the earlier disclosure by another during the
grace period, if the applicant can establish that the inventor or a
joint inventor is the actual inventor of the subject matter of the
disclosure and that the subject matter was obtained directly or
indirectly from the inventor or a joint inventor. Specifically, the
applicant must show that a named inventor actually invented the subject
matter of the disclosure.\39\ The applicant must also show a
communication of the subject matter of the disclosure sufficient to
enable one of ordinary skill in the art to make the subject matter of
the claimed invention.\40\ Any documentation which provides evidence of
the communication of the subject matter by the inventor or a joint
inventor to the entity that earlier disclosed the subject matter should
accompany the affidavit or declaration. This is similar to the current
process for disqualifying a publication as being derived from the
inventor discussed in MPEP §§ 715.01(c) II and 2137.
\39\ In re Facius, 408 F.2d 1396, 1407 (CCPA 1969).
\40\ Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573,
1577 (Fed. Cir. 1997).
2. Prior Art Exception Under 35 U.S.C. 102(b)(1)(B) to 35 U.S.C. 102(a)(1)
The AIA in 35 U.S.C. 102(b)(1)(B) provides additional exceptions to
the prior art provisions of 35 U.S.C. 102(a)(1). These exceptions
disqualify a disclosure that occurs after a public disclosure by the
inventor, joint inventor, or another who obtained the subject matter
directly or indirectly from the inventor or joint inventor. The
provisions of 35 U.S.C. 102(b)(1)(B) indicate that a disclosure which
would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) is not
prior art if the disclosure was made: (1) One year or less before the
effective filing date of the claimed invention; and (2) after a public
disclosure of the subject matter of the disclosure which would
otherwise qualify as prior art under 35 U.S.C. 102(a)(1) by the
inventor or a joint inventor or another who obtained the subject matter
directly or indirectly from the inventor or a joint inventor.
The exception in 35 U.S.C. 102(b)(1)(B) applies if the "`subject
matter' disclosed [in the prior art disclosure] had, before such [prior
art] disclosure, been publicly disclosed by the inventor or a joint
inventor * * * ." \41\ Thus, the exception in 35 U.S.C. 102(b)(1)(B)
requires that the subject matter in the prior disclosure being relied
upon under 35 U.S.C. 102(a) be the same "subject matter" as the
subject matter publicly disclosed by the inventor before such prior art
disclosure for the exception in 35 U.S.C. 102(b)(1)(B) to apply. Even
if the only differences between the subject matter in the prior art
disclosure that is relied upon under 35 U.S.C. 102(a) and the subject
matter publicly disclosed by the inventor before such prior art
disclosure are mere insubstantial changes, or only trivial or obvious
variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.
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\41\ 35 U.S.C. 102(b)(1)(B).
Grace period intervening disclosure exception: Under this
exception, potential prior art under 35 U.S.C. 102(a)(1) is not prior
art if the patent, printed publication, public use, sale, or other
means of public availability was made: (1) One year or less before the
effective filing date of the claimed invention; and (2) after a "grace
period inventor disclosure" or a "grace period non-inventor disclosure"
as those terms have been discussed previously.
An affidavit or declaration under 37 CFR 1.130(a)(1) could be used
to establish that the subject matter disclosed had been publicly
disclosed by the inventor or a joint inventor before the disclosure of
the subject matter on which the rejection is based. Such an affidavit
or declaration under 37 CFR 1.130(a)(1) must establish that the subject
matter disclosed in the cited prior art had been publicly disclosed by
the inventor or a joint inventor before the disclosure of the subject
matter on which the rejection is based. Specifically, the inventor or
joint inventor must establish the date and content of their earlier
public disclosure. If the earlier disclosure was a printed publication,
the affidavit or declaration must be accompanied by a copy of the
printed publication. If the earlier disclosure was not a printed
publication, the affidavit or declaration must describe the earlier
disclosure with sufficient detail and particularity to determine that
the earlier disclosure is a public disclosure of the subject matter.
Alternatively, as discussed previously, an affidavit or declaration
under 37 CFR 1.130(a)(2) could establish that the subject matter
disclosed had been publicly disclosed by a party who obtained the
subject matter directly or indirectly from the inventor or a joint
inventor before the disclosure of the subject matter on which the
rejection is based. Such an affidavit or declaration under 37 CFR
1.130(a)(2) must establish that the subject matter disclosed in the
cited prior art had been publicly disclosed by another who obtained the
subject matter disclosed directly or indirectly from the inventor or a
joint inventor before the disclosure of the subject matter on which the
rejection is based. The affidavit or declaration must specifically show
that the inventor or a joint inventor is the inventor of the subject
matter of the earlier public disclosure and indicate the communication
of the subject matter to another who disclosed the subject matter. As
discussed previously, this is similar to the current process for
disqualifying a publication as being derived from the inventor
discussed in MPEP section 2137.
Such an affidavit or declaration under 37 CFR 1.130(a)(2) must also
establish the date and content of the earlier public disclosure which
was made by another who obtained the subject matter directly or
indirectly from the inventor or joint inventor. If the earlier
disclosure was a printed publication, the affidavit or declaration must
be accompanied by a copy of the printed publication. If the earlier
disclosure was not a printed publication, the affidavit or declaration
must describe the earlier disclosure with sufficient detail and
particularity to determine that the earlier disclosure is a public
disclosure of the subject matter. Any documentation which provides evidence
of the public availability of a non-printed publication prior art and any
documentation which provides evidence of the communication of the
subject matter by the inventor or a joint inventor to the entity that
disclosed the subject matter should accompany the affidavit or
declaration.
B. Prior Art Under AIA 35 U.S.C. 102(a)(2)
AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents
that are available prior art as of the date they were effectively filed
with respect to the subject matter relied upon in the document: (1)
U.S. patents; (2) U.S. patent application publications; and (3) WIPO
published applications. These documents may have different prior art
effects under pre-AIA 35 U.S.C. 102(e) and AIA 35 U.S.C. 102(a)(2).
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A U.S. patent, U.S. patent application publication, or WIPO
published application is prior art under 35 U.S.C. 102(a)(1) if its
issue or publication date is before the effective filing date of the
claim at issue. If the issue date of the U.S. patent or publication
date of the U.S. patent application publication or WIPO published
application is not before the effective filing date of the claimed
invention, it may still be applicable as prior art under 35 U.S.C.
102(a)(2) if it was "effectively filed" before the effective filing
date of the claim at issue with respect to the subject matter relied
upon to reject the claim. AIA 35 U.S.C. 102(d) sets forth when subject
matter described in a U.S. patent, U.S. patent application publication,
or WIPO published application was "effectively filed" for purposes of
35 U.S.C. 102(a)(2).
1. Determining When Subject Matter Was Effectively Filed Under 35
U.S.C. 102(d)
35 U.S.C. 102(d) provides the criteria to determine the date that a
U.S. patent, U.S. patent application publication, or WIPO published
application was "effectively filed" with respect to the subject
matter described in the patent or published application for purposes of
constituting prior art under 35 U.S.C. 102(a)(2).
Under 35 U.S.C. 102(d), a U.S. patent, U.S. patent application
publication, or WIPO published application is prior art under 35 U.S.C.
102(a)(2) with respect to any subject matter described in the patent or
published application as of either its actual filing date (35 U.S.C.
102(d)(1)), or the filing date of a prior application to which there is
a priority or benefit claim (35 U.S.C. 102(d)(2)). A U.S. patent, U.S.
patent application publication, or WIPO published application "is
entitled to claim" priority to, or the benefit of, a prior-filed
application if it fulfills the ministerial requirements of: (1)
Containing a priority or benefit claim to the prior-filed application;
(2) being filed within the applicable filing period requirement
(copending with or within twelve months of the earlier filing, as
applicable); and (3) having a common inventor or being by the same
applicant.\42\
\42\ See 157 Cong. Rec. S.1370 (Mar. 8, 2011) (distinguishing
between the core requirement that the prior-filed application
include an enabling disclosure and the ministerial requirements that
the applications be copendent and specifically referenced); see also
MPEP § 201.08 (permitting a claim to the benefit of a prior-
filed application in a continuation-in-part application provided
that the continuation-in-part application has a common inventor, has
copendency with the prior-filed application, and includes a specific
reference to the prior-filed application, regardless of whether the
prior-filed application contains support under 35 U.S.C. 112 for any
claim in the continuation-in-part application).
The AIA draws a distinction between actually being entitled to
priority to, or the benefit of, a prior-filed application in the
definition of effective filing date in 35 U.S.C. 100(i)(2), and merely
being entitled to claim priority to, or the benefit of, a prior-filed
application in the definition of effectively filed in 35 U.S.C.
102(d).\43\ As a result of this distinction, the question of whether a
patent or published application is actually entitled to priority or
benefit with respect to any of its claims is not at issue in
determining the date the patent or published application was
"effectively filed" for prior art purposes.\44\ Thus, there is no
need to evaluate whether any claim of a U.S. patent, U.S. patent
application publication, or WIPO published application is actually
entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365
when applying such a document as prior art.
\43\ The legislative history of the AIA discusses an important
distinction between ministerial entitlement to make a priority or
benefit claim, and actual legal entitlement to the priority or
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benefit: In section 100(i), which defines the effective filing date
of the patent under review, the patent must be entitled to the
priority or benefit itself under the relevant sections. Here again
in section 102(d), however, the application need only be entitled to
claim the benefit or priority under those sections. This difference
in language distinguishes between the core requirement of section
120 et al. - that the application include an enabling disclosure - and
the ministerial requirements of that section - that the application
be copendent and specifically referenced. In effect, an application
that meets the ministerial requirements of copendency and specific
reference is entitled to claim the benefit or priority, but only an
application that also offers an enabling disclosure is actually
entitled to the benefit or priority itself. See 157 Cong. Rec.
S.1370 (Mar. 8, 2011).
\44\ In re Wertheim, 646 F.2d 527 (CCPA 1981), which relies upon
Alexander Milburn Co. v. Davis-Bournonville, 270 U.S. 390 (1926),
for its conclusion that the patent must actually be entitled to the
benefit of the prior-application for any subject matter in the
patent to have a prior art date under 35 U.S.C. 102(e) as of the
filing date of the prior application. The legislative history of the
AIA indicates that: Paragraph (2) [of AIA 102(d)] is intended to
overrule what remains of In re Wertheim, 646 F.2d 527 (CCPA 1981),
which appeared to hold that only an application that could have
become a patent on the day that it was filed can constitute prior
art against another application or patent. See 157 Cong. Rec.
S.1369-70 (Mar. 8, 2011). The Office has previously indicated that
the reasoning of In re Wertheim, 646 F.2d 527 (CCPA 1981), did not
survive the amendment to 35 U.S.C. 102(e) in the American Inventors
Protection Act. See, e.g, Ex parte Yamaguchi, 88 U.S.P.Q.2d 1606
(Bd. Pat. App. & Inter. 2008). In In re Giacomini, 612 F.3d 1380
(Fed. Cir. 2010), the U.S. Court of Appeals for the Federal Circuit
(Federal Circuit) held that a patent was effective as prior art as
of the filing date of a provisional application claimed under 35
U.S.C. 119(e).
35 U.S.C. 102(d) does require that the prior-filed application to
which a priority or benefit claim is made describe the subject matter
from the U.S. patent, U.S. patent application publication, or WIPO
published application relied upon in a rejection for that subject
matter. However, 35 U.S.C. 102(d) does not require that this
description meets the requirements of 35 U.S.C. 112(a). As discussed
previously with respect to 35 U.S.C. 102(a), the Office views the
description requirement as being the same as the pre-AIA description
requirement for a prior art disclosure of an invention.
Another important consequence of 35 U.S.C. 102(d) is its impact on
the vitality of the so-called Hilmer doctrine.\45\ Under the Hilmer
doctrine, pre-AIA 35 U.S.C. 102(e) limited the effective filing date
for U.S. patents (and published applications) as prior art to their
earliest United States filing date. In contrast, AIA 35 U.S.C. 102(d)
provides that if the U.S. patent, U.S. patent application publication,
or WIPO published application claims priority to prior-filed foreign or
international application under 35 U.S.C. 119 or 365, the patent or
published application was effectively filed on the filing date of the
earliest such application that describes the subject matter.\46\
Therefore, if the subject matter relied upon is described
in the application to which there is a priority or benefit claim, a
U.S. patent, a U.S. patent application publication, or WIPO published
application is effective as prior art as of the filing date of the
earliest such application, regardless of where filed, rather than only
as of its earliest United States benefit date.
\45\ In In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966),
the CCPA held that reliance on the foreign priority date of a
reference applied in a rejection under pre-AIA 35 U.S.C. 102(e) was
improper.
\46\ When examining an application to which the changes in 35
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U.S.C. 102 and 103 do not apply, Office personnel will continue to
apply the Hilmer doctrine, and foreign priority dates may not be
used in determining 35 U.S.C.102(e) prior art dates. Note that the
international filing date of a PCT application may be the 35
U.S.C.102(e) prior art date under pre-AIA law under certain
circumstances. See MPEP § 706.02(f).).
Requirement of "names another inventor": To qualify as prior art
under 35 U.S.C. 102(a)(2), the prior art U.S. patent, U.S. patent
application publication, or WIPO published application must "name[s]
another inventor." This means that if there is any difference in
inventive entity between the prior art U.S. patent, U.S. patent
application publication, or WIPO published application and the
application under examination or patent under reexamination, the U.S.
patent, U.S. patent application publication, or WIPO published
application satisfies the "names another inventor" provision of 35
U.S.C. 102(a)(2). Thus, in the case of joint inventors, only one
inventor needs to be different for the inventive entities to be
different. Even if there are some inventors in common in a U.S. patent,
a U.S. patent application publication, or WIPO published application
and in a later-filed application under examination or patent under
reexamination, the U.S. patent, a U.S. patent application publication,
or WIPO published application qualifies as prior art under 35 U.S.C.
102(a)(2) unless an exception in AIA 35 U.S.C. 102(b)(2) is applicable.
2. Prior Art Exception Under 35 U.S.C. 102(b)(2)(A) to 35 U.S.C.
102(a)(2)
Under 35 U.S.C. 102(b)(2)(A), certain disclosures will not be
considered prior art under 35 U.S.C. 102(a)(2) if the disclosure of the
subject matter on which the rejection is based was made by another who
obtained the subject matter directly or indirectly from the inventor or
a joint inventor.
Non-Inventor Disclosure Exception: 35 U.S.C. 102(b)(2)(A) provides
that a disclosure which would otherwise qualify as prior art under 35
U.S.C. 102(a)(2) is not prior art if the disclosure was made by another
who obtained the subject matter directly or indirectly from the
inventor or a joint inventor. This means that if the disclosure of the
subject matter upon which the rejection is based is by another who
obtained the subject matter from the inventor or joint inventor, then
the inventor could provide an affidavit or declaration to establish
that the inventor or joint inventor is the inventor of the subject
matter of the disclosure and that such subject matter was communicated
to the other entity. Thus, an applicant may benefit from the earlier
disclosure by another during the grace period, if the applicant can
establish that the inventor or a joint inventor is the actual inventor
of the subject matter of the disclosure and that the subject matter was
obtained directly or indirectly from the inventor or a joint inventor.
As discussed previously, proposed 37 CFR 1.130(a)(2) provides for
an affidavit or declaration to establish that the named inventor or
joint inventor is the inventor of the disclosed subject matter, and
that the subject matter was communicated by the inventor or a joint
inventor to another who disclosed it. Such an affidavit or declaration
must show that the inventor or a joint inventor is the inventor of the
subject matter of the disclosure and indicate the communication of the
subject matter by the inventor or a joint inventor to another who
disclosed the subject matter. Specifically, the inventor must show that
a named inventor actually invented the subject matter of the
disclosure.\47\ The inventor must also show a communication of the
subject matter of the disclosure sufficient to enable one of ordinary
skill in the art to make the subject matter of the claimed
invention.\48\ Any documentation which provides evidence of the
communication of the subject matter by the inventor or a joint inventor
to the entity that earlier disclosed the subject matter should
accompany the affidavit or declaration. This is similar to the current
process for disqualifying a publication as being derived from the
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inventor discussed in MPEP § 2137.
\47\ In re Facius, 408 F.2d 1396, 1407 (CCPA 1969).
\48\ Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573,
1577 (Fed. Cir. 1997).
In circumstances where the claims of the cited prior art, which
names another inventor and is a U.S. patent, or U.S. patent application
publication, and the claims of the application under examination are
directed to the same or substantially the same invention, the Office
may require an applicant to file a petition for derivation proceeding
pursuant to 37 CFR 41.401 et seq. of this title.
3. Prior Art Exception Under 35 U.S.C. 102(b)(2)(B) to 35 U.S.C. 102(a)(2)
35 U.S.C. 102(b)(2)(B) provides another exception to the prior art
provisions of 35 U.S.C. 102(a)(2). Specifically, 35 U.S.C. 102(b)(2)(B)
indicates that certain disclosures are not prior art if the disclosure
of the subject matter of the claimed invention to be disqualified was
made after a disclosure of the subject matter by the inventor or a
joint inventor or after a disclosure of the subject matter by another
who obtained the subject matter directly or indirectly from the
inventor or joint inventor. In other words, an inventor, joint
inventor, or someone who obtained the subject matter directly or
indirectly from the inventor or joint inventor, disclosed the subject
matter before the disclosure of the subject matter on which the
rejection is based.
As discussed previously with respect to 35 U.S.C. 102(b)(1)(B), the
exception in 35 U.S.C. 102(b)(2)(B) requires that the subject matter in
the prior disclosure being relied upon under 35 U.S.C. 102(a) be the
same "subject matter" as the subject matter publicly disclosed by the
inventor before such prior art disclosure for the exception in 35
U.S.C. 102(b)(2)(B) to apply.\49\ Even if the only differences between
the subject matter in the prior art disclosure that is relied upon
under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the
inventor before such prior art disclosure are mere insubstantial
changes, or only trivial or obvious variations, the exception under 35
U.S.C. 102(b)(2)(B) does not apply.
\49\ 35 U.S.C. 102(b)(2)(B).
Intervening disclosure: Under this exception, potential prior art
under 35 U.S.C. 102(a)(2) is not prior art if the U.S. patent, U.S.
patent application publication, or WIPO published application was
effectively filed after the subject matter was first disclosed by the
inventor, a joint inventor, or another who obtained it directly or
indirectly from the inventor or joint inventor.
As discussed previously, an affidavit or declaration under 37 CFR
1.130(a)(1) could be used to establish that the subject matter
disclosed in the cited patent or published application to be
disqualified had been publicly disclosed by the inventor or a joint
inventor before the date the subject matter in the patent or published
application to be disqualified was effectively filed. Specifically, the
inventor or joint inventor must establish the date and content of their
earlier public disclosure. If the earlier disclosure was a printed
publication, the affidavit or declaration must be accompanied by a copy
of the printed publication. If the earlier disclosure was not a printed
publication, the affidavit or declaration must describe the earlier
disclosure with sufficient detail and particularity to determine that
the earlier disclosure is a public disclosure of the subject matter.
Alternatively, also as discussed previously, an affidavit or
declaration under 37 CFR 1.130(a)(2) could establish that the subject
matter disclosed in the cited patent or published application to be
disqualified had been publicly disclosed by a party who obtained the
subject matter directly or indirectly from the inventor or a joint
inventor before the date the subject matter in the patent or published
application to be disqualified was effectively filed. Specifically, the
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inventor or joint inventor must establish the date and content of their
earlier public disclosure. The affidavit or declaration must also show
that the inventor or a joint inventor is the inventor of the subject
matter disclosed in the patent or published application and indicate
the communication of the subject matter to another who disclosed the
subject matter. As discussed previously, this is similar to the current
process for disqualifying a publication as being derived from the
inventor discussed in MPEP § 2137.
Such an affidavit or declaration under 37 CFR 1.130(a)(2) must also
establish the date and content of the earlier public disclosure which
was made by another who obtained the subject matter directly or
indirectly from the inventor or a joint inventor. If the earlier
disclosure was a printed publication, the affidavit or declaration must
be accompanied by a copy of the printed publication. If the earlier
disclosure was not a printed publication, the affidavit or declaration
must describe the earlier disclosure with sufficient detail and
particularity to determine that the earlier disclosure was a public
disclosure of the subject matter. Any documentation which provides
evidence of the public availability of a non-printed publication prior
art and any documentation which provides evidence of the communication
of the subject matter by the inventor or a joint inventor to the entity
that disclosed the subject matter should accompany the affidavit or
declaration.
In circumstances where the claims of the cited patent or published
application to be disqualified is a U.S. patent, or a U.S. patent
application publication of a pending or patented application that names
another inventor, and the claims of the application under examination
and the cited patent or published application are directed to the same
or substantially the same invention, the Office may require applicant
to file a petition for derivation proceeding pursuant to 37 CFR 41.401
et seq.
4. Prior Art Exception Under 35 U.S.C. 102(b)(2)(C) to 35 U.S.C. 102(a)(2)
Under 35 U.S.C. 102(b)(2)(C), there is an exception to the prior
art defined in 35 U.S.C. 102(a)(2) if the disclosures of the subject
matter on which the rejection is based 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.
In accordance with 35 U.S.C. 102(a)(2), a U.S. patent, U.S. patent
application publication, or WIPO published application that describes a
claimed invention of an application under examination may be prior art
as of its effective filing date. However, 35 U.S.C. 102(b)(2)(C)
excludes published applications or patents from 35 U.S.C. 102(a)(2) if
the subject matter disclosed in the potential prior art published
application or patent, and the claimed invention of the application
under examination "were owned by the same person or subject to an
obligation of assignment to the same person." In this situation, the
U.S. patent, U.S. patent application publication, or WIPO published
application is not available as prior art under 35 U.S.C. 102(a)(2), so
long as the common ownership or obligation to assign existed not later
than the effective filing date of the claimed invention.
AIA 35 U.S.C. 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) in
that both concern common ownership, and both offer an avenue by which
an applicant may avoid certain rejections. However, there are
significant differences between AIA 35 U.S.C. 102(b)(2)(C) and pre-AIA
35 U.S.C. 103(c).
If the provisions of 35 U.S.C. 102(b)(2)(C) are met, a U.S. patent,
U.S. patent application publication, or WIPO published application that
might otherwise qualify as prior art under 35 U.S.C. 102(a)(2) is not
available as prior art under either 35 U.S.C. 102 or 103. In contrast,
pre-AIA 35 U.S.C. 103(c) merely provided that if its conditions were
met, prior art qualifying only under pre-AIA 35 U.S.C. 102(e), (f), or
(g), would not preclude patentability under 35 U.S.C. 103. Under pre-
AIA 35 U.S.C. 103(c), prior art qualifying only under pre-AIA 35 U.S.C.
102(e), (f), or (g) could preclude patentability under 35 U.S.C. 102,
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even if the conditions of pre-AIA 35 U.S.C. 103(c) were met. The
consequence of this distinction is that a published application or an
issued patent that falls under the common ownership provisions of AIA
35 U.S.C. 102(b)(2)(C) may not be applied in either an anticipation or
an obviousness rejection.
It is important to note the circumstances in which the AIA 35
U.S.C. 102(b)(2)(C) exception does not remove U.S. patents, U.S. patent
application publications, or WIPO published applications as a basis for
any rejection. Even if the U.S. patent or U.S. published application is
not prior art under 35 U.S.C. 102 or 103 as a result of AIA 35 U.S.C.
102(b)(2)(C), a double patenting rejection (either statutory under 35
U.S.C. 101 or non-statutory, sometimes called obviousness-type) may
still be made on the basis of the U.S. patent or U.S. patent
application publication. Furthermore, the U.S. patent, U.S. patent
application publication, or WIPO published application that does not
qualify as prior art as a result of AIA 35 U.S.C. 102(b)(2)(C) may be
cited, in appropriate situations, to indicate the state of the art when
making a lack of enablement rejection under 35 U.S.C. 112(a). A
document need not qualify as prior art to be applied in the context of
double patenting \50\ or enablement.\51\ Also, the AIA 35 U.S.C.
102(b)(2)(C) exception does not apply to any disclosure made before the
effective filing date of the claimed invention under AIA 35 U.S.C.
102(a)(1). Thus, if the issue date of a U.S. patent or publication date
of a U.S. patent application publication or WIPO published application
is before the effective filing date of the claimed invention, it may be
prior art under AIA 35 U.S.C. 102(a)(1), regardless of common ownership
or the existence of an obligation to assign.
\50\ MPEP § 804.03 (prior art disqualified under the CREATE
Act may be the basis for a double patenting rejection).
\51\ MPEP § 2124 (publications after the critical date may
be used to show factual evidence that, as of an application's filing
date, undue experimentation would have been required to make or use
the invention, that a parameter absent from the claims was or was
not critical, that a statement in the specification was inaccurate,
that the invention was inoperative or lacked utility, that a claim
was indefinite, or that characteristics of prior art products were
known).
The Office is concurrently proposing in a separate action (RIN
0651-AC77) to revise the rules of practice to include provisions that
pertain to commonly owned or joint research agreement subject matter
(proposed 37 CFR 1.104(c)(4) and (c)(5)). Proposed 37 CFR 1.104(c)(4)
would be applicable to applications that are subject to AIA 35 U.S.C.
102 and 103. Proposed 37 CFR 1.104(c)(5) would be applicable to
applications that are subject to 35 U.S.C. 102 and 103 as in effect on
March 15, 2013 (pre-AIA 35 U.S.C. 102 and 103). Proposed 37 CFR
1.104(c)(4)(i) would pertain to commonly owned subject matter under AIA
35 U.S.C. 102 and 103, and proposed 37 CFR 1.104(c)(5)(i) would pertain
to commonly owned subject matter under pre-AIA 35 U.S.C. 102 and 103.
An applicant's clear and conspicuous statement on the record will
be sufficient to establish that the AIA 35 U.S.C. 102(b)(2)(C)
exception applies. When relying on the provisions of pre-AIA 35 U.S.C.
103(c), the applicant or his attorney or agent of record could provide
the statement required to disqualify the cited prior art. Because the
practice to rely on the AIA 35 U.S.C. 102(b)(2)(C) provisions is
similar to previous provisions under pre-AIA 35 U.S.C. 103(c), the
statement from the applicant or his attorney or agent of record would
still be sufficient to disqualify such disclosures. The statement must
indicate that the claimed invention of the application under
examination and the subject matter disclosed in the published
application or issued patent (prior art) to be excluded under AIA 35
U.S.C. 102(b)(2)(C) were owned by the same person or subject to an
obligation of assignment to the same person not later than the
effective filing date of the claimed invention. The applicant may
present supporting evidence such as copies of assignment documents, but
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is not required to do so. Unless an examiner has independent evidence
which raises doubt as to the veracity of such a statement, the examiner
may not request corroborating evidence. The statement under AIA 35
U.S.C. 102(b)(2)(C) will generally be treated by the examiner
analogously to statements made under pre-AIA 35 U.S.C. 103(c). See MPEP
§ 706.02(l)(2)(II).
II. Joint Research Agreements
35 U.S.C. 102(c) provides that subject matter disclosed, which
might otherwise qualify as prior art, and a claimed invention are
treated as having been owned by the same person or subject to an
obligation of assignment to the same person in applying the provisions
of 35 U.S.C. 102(b)(2)(C) if three conditions are satisfied. First, the
subject matter disclosed must have been developed and the claimed
invention must have been made by, or on behalf of, one or more parties
to a joint research agreement that was in effect on or before the
effective filing date of the claimed invention.\52\ The AIA defines the
term "joint research agreement" as a written contract, grant, or
cooperative agreement entered into by two or more persons or entities
for the performance of experimental, developmental, or research work in
the field of the claimed invention.\53\ Second, the claimed invention
must have been made as a result of activities undertaken within the
scope of the joint research agreement.\54\ Third, the application for
patent for the claimed invention must disclose, or be amended to
disclose, the names of the parties to the joint research agreement.\55\
Proposed 37 CFR 1.104(c)(4)(ii) pertains to joint research agreement
subject matter under AIA 35 U.S.C. 102 and 103, and proposed 37 CFR
1.104(c)(5)(ii) pertains to joint research agreement subject matter
under pre-AIA 35 U.S.C. 102 and 103. If these conditions are met, the
joint research agreement prior art is not available as prior art under
35 U.S.C. 102(a)(2).
\52\ 35 U.S.C. 102(c)(1).
\53\ 35 U.S.C. 100(h).
\54\ 35 U.S.C. 102(c)(2).
\55\ 35 U.S.C. 102(c)(3)
The provisions of AIA 35 U.S.C. 102(c) generally track those of the
Cooperative Research and Technology Enhancement Act of 2004 (CREATE
Act).\56\ The major differences between AIA 35 U.S.C. 102(c) and the
CREATE Act are that the new provision is keyed to the effective filing
date of the claimed invention, while the CREATE Act focused on the date
that the claimed invention was made, and that the CREATE Act provisions
only applied to prior art obviousness rejections.
\56\ Public Law 108-453, 118 Stat. 3596 (2004)), which was an
amendment to pre-AIA 35 U.S.C. 103(c). Congress has made it clear
that the intent of AIA 35 U.S.C. 102(c) is to continue the promotion
of joint research activities that was begun under the CREATE Act,
stating in section 3(b) of the AIA that "The United States Patent
and Trademark Office shall administer section 102(c) of title 35,
United States Code, in a manner consistent with the legislative
history of the CREATE Act that was relevant to its administration by
the United States Patent and Trademark Office." See 125 STAT. at 287.
In order to invoke a joint research agreement to disqualify a
disclosure as prior art, the applicant must provide a statement that
the disclosure of the subject matter on which the rejection is based
and the claimed invention were made by or on behalf of parties to a
joint research agreement under AIA 35 U.S.C. 102(c). The statement must
also assert that the agreement was in effect on or before the effective
filing date of the claimed invention, and that the claimed invention
was made as a result of activities undertaken within the scope of the
joint research agreement. When relying on the provisions of pre-AIA 35
U.S.C. 103(c), the applicant or his attorney or agent of record could
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provide the statement required to disqualify the cited prior art.
Because the practice to rely on the 102(c) provisions is similar to
previous provisions under pre-AIA 35 U.S.C. 103(c), the statement from
the applicant or his attorney or agent of record would still be
sufficient to disqualify such disclosures. If the names of the parties
to the joint research agreement are not already stated in the
application, it is necessary to amend the application to include the
names of the parties to the joint research agreement in accordance with
37 CFR 1.71(g). As is the case with establishing common ownership, the
applicant may, but is not required to, present evidence supporting the
existence of the joint research agreement. Furthermore, the Office will
not request corroborating evidence in the absence of independent
evidence which raises doubt as to the existence of the joint research
agreement.
As discussed previously, the AIA 35 U.S.C. 102(b)(2)(C) exception
does not apply to any disclosure made before the effective filing date
of the claimed invention under AIA 35 U.S.C. 102(a)(1). Thus, if the
issue date of a U.S. patent or publication date of a U.S. patent
application publication or WIPO published application is before the
effective filing date of the claimed invention, it may be prior art
under AIA 35 U.S.C. 102(a)(1) regardless of the fact that the subject
matter disclosed and the claimed invention resulted from a joint
research agreement.
III. Improper Naming of Inventors
Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent
laws still require that a patent name the actual inventor or joint
inventors of the claimed subject matter. The Office presumes that the
named inventor or inventors are the actual inventor or joint
inventors.\57\ Where an application names an incorrect inventorship,
the applicant should correct the situation via a request to correct
inventorship under 37 CFR 1.48. In the rare situation in which it is
clear that the application does not name the correct inventorship and
the applicant has not filed a request to correct inventorship under 37
CFR 1.48, the appropriate course of action is to reject the claims
under 35 U.S.C. 101.\58\
\57\ MPEP § 2137.01.
\58\ As discussed in end note 1, 35 U.S.C. 101 provides that:
"[w]hoever invents or discovers * * *, may obtain a patent therefor,
subject to the conditions and requirements of this title."
IV. 35 U.S.C. 103
AIA 35 U.S.C. 103 continues to set forth the nonobviousness
requirement for patentability.\59\ There are, however, some important
changes from pre-AIA 35 U.S.C. 103.
\59\ 35 U.S.C. 103 provides that: A patent for a claimed
invention may not be obtained, notwithstanding that the claimed
invention is not identically disclosed as set forth in section 102,
if the differences between the claimed invention and the prior art
are such that the claimed invention as a whole would have been
obvious before the effective filing date of the claimed invention to
a person having ordinary skill in the art to which the claimed
invention pertains. Patentability shall not be negated by the manner
in which the invention was made.
The most significant difference between the AIA 35 U.S.C. 103 and
pre-AIA 35 U.S.C. 103(a) is that AIA 35 U.S.C. 103 determines
obviousness as of the effective filing date of the claimed invention,
rather than as of the time that the invention was made. Under pre-AIA
examination practice, the Office uses the effective filing date as a
proxy for the invention date, unless there is evidence of record to
establish an earlier date of invention. Thus, as a practical matter
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during examination, this distinction between the AIA 35 U.S.C. 103 and
pre-AIA 35 U.S.C. 103 will result in a difference in practice only when
the case under examination is subject to pre-AIA 35 U.S.C. 103, and
there is evidence in the case concerning a date of invention prior to
the effective filing date. Such evidence is ordinarily presented by way
of an affidavit or declaration under 37 CFR 1.131.
Next, AIA 35 U.S.C. 103 differs from that of pre-AIA 35 U.S.C. 103
in that the AIA 35 U.S.C. 103 requires consideration of "the
differences between the claimed invention and the prior art," while
pre-AIA 35 U.S.C. 103 refers to "the differences between the subject
matter sought to be patented and the prior art." This difference in
terminology does not indicate the need for any difference of approach
to the question of obviousness.\60\
\60\ As pointed out by the Federal Circuit, "[t]he term
`claims' has been used in patent legislation since the Patent Act of
1836 to define the invention that an applicant believes is
patentable." Hoechst-Roussel Pharmaceuticals, Inc. v. Lehman, 109
F.3d 756, 758 (Fed. Cir. 1997) (citing Act of July 4, 1836, ch. 357,
§ 6, 5 Stat. 117). Furthermore, in Graham v. John Deere, 383
U.S. 1 (1966), the second of the Supreme Court's factual inquiries
(the "Graham factors") is that the "differences between the prior
art and the claims at issue are to be ascertained." Graham, 383
U.S. at 17. Thus, in interpreting 35 U.S.C. 103 as enacted in the
1952 Patent Act - language that remained unchanged until enactment of
the AIA - the Court equated "the subject matter sought to be
patented" with the claims.
Further, the AIA 35 U.S.C. 103 eliminates pre-AIA 35 U.S.C. 103(b),
and the AIA does not contain any similar provision. Pre-AIA 35 U.S.C.
103(b) is narrowly drawn, applying only to nonobviousness of
biotechnological inventions, and even then, only when specifically
invoked by the patent applicant. Pre-AIA 35 U.S.C. 103(b) provides that
under certain conditions, "a biotechnological process using or
resulting in a composition of matter that is novel under section 102
and nonobvious under subsection [103(a)] of this section shall be
considered nonobvious." In view of the case law since 1995,\61\ the
need to invoke pre-AIA 35 U.S.C. 103(b) has been rare.
\61\ As stated in MPEP § 706.02(n), in view of the Federal
Circuit's decisions in In re Ochiai, 71 F.3d 1565 (Fed. Cir. 1995)
and In re Brouwer, 77 F.3d 422 (Fed. Cir. 1996), the need to invoke
pre-AIA 103(b) rarely arose. Those cases continue to retain their
vitality under the AIA.
Finally, the AIA 35 U.S.C. 103 eliminates pre-AIA 35 U.S.C. 103(c),
but corresponding provisions have been introduced in AIA 35 U.S.C.
102(b)(2)(C) and 102(c). Pre-AIA 35 U.S.C. 103(c) applied if subject
matter qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f),
or (g), and only in the context of obviousness under pre-AIA 35 U.S.C.
103(a). If subject matter developed by another person was commonly
owned with the claimed invention, or if the subject matter was subject
to an obligation of assignment to the same person, at the time the
claimed invention was made, then pre-AIA 35 U.S.C. 103(a) did not
preclude patentability. Furthermore, under the pre-AIA 35 U.S.C.
103(c), if a joint research agreement was in place on or before the
date that the claimed invention was made, the claimed invention was
made as a result of activities undertaken within the scope of the joint
research agreement, and the application for patent was amended to
disclose the names of the parties to the joint research agreement,
common ownership or an obligation to assign was deemed to exist. As
discussed previously, AIA 35 U.S.C. 102(b)(2)(C) and 102(c) expand on
this concept. Under the AIA first-inventor-to-file approach, the common
ownership, the obligation to assign, or the joint research agreement
must exist on or before the effective filing date, rather than on or
before the date the invention was made. If the provisions of AIA 35
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U.S.C. 102(b)(2)(C) are met, a disclosure is not prior art at all,
whereas under pre-AIA 35 U.S.C. 103(c), certain prior art merely was
defined as not precluding patentability. Finally, disclosures
disqualified as prior art under AIA 35 U.S.C. 102(b)(2)(C) and 102(c)
may not be applied in either an anticipation or an obviousness
rejection. However, such disclosures could be the basis for statutory
double patenting or non-statutory double patenting rejections.
Generally speaking, and with the exceptions noted herein, pre-AIA
notions of obviousness will continue to apply under the AIA. It should
be noted that AIA 35 U.S.C. 102(a) defines what is prior art both for
purposes of novelty under AIA 35 U.S.C. 102 as well as for purposes of
obviousness under AIA 35 U.S.C. 103.\62\ Thus, if a document qualifies
as prior art under AIA 35 U.S.C. 102(a)(1) or (a)(2), and is not
subject to an exception under AIA 35 U.S.C. 102(b), it may be applied
for what it describes or teaches to those skilled in the art in a
rejection under 35 U.S.C. 103.\63\ Finally, Office personnel will
continue to follow guidance for formulating an appropriate rationale to
support any conclusion of obviousness. See MPEP § 2141 et seq. and
the guidance documents available at
http://www.uspto.gov/patents/law/exam/ksr_training_materials.jsp.
\62\ Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965)
(a previously filed patent application to another pending in the
Office, but not patented or published, at the time an application is
filed constitutes part of the "prior art" within the meaning of 35
U.S.C. 103).
\63\ This is in accordance with pre-AIA case law indicating that
in making determinations under 35 U.S.C. 103, "it must be known
whether a patent or publication is in prior art under 35 U.S.C.
102." Panduit Corp. v Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed.
Cir 1987). However, while a disclosure must enable those skilled in
the art to make the invention in order to anticipate under 35 U.S.C.
102, a non-enabling disclosure is prior art for all it teaches for
purposes of determining obviousness under 35 U.S.C. 103. Symbol
Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991);
Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.
Cir. 1989).
V. Applicability Date Provisions, Determining Whether an Application Is
Subject to Provisions of First Inventor To File Under AIA
Because the changes to 35 U.S.C. 102 and 103 in the AIA apply only
to specific applications filed on or after March 16, 2013, determining
the effective filing date of a claimed invention for purposes of
applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102
and 103 provisions is critical.
A. Applications Filed Before March 16, 2013
The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any
application filed before March 16, 2013. Thus, any application filed
before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103.
Note that the filing of a request for continued examination is not the
filing of a new application.
B. Applications Filed on or After March 16, 2013
AIA 35 U.S.C. 102 and 103 take effect on March 16, 2013. AIA 35
U.S.C. 102 and 103 apply to any patent application that contains or
contained at any time a claimed invention that has an effective filing
date that is on or after March 16, 2013. If a patent application
contains or contained at any time a claimed invention having an effective
filing date on or after March 16, 2013, 35 U.S.C. 102 and 103, as amended
by the AIA, apply to the application. If even a single claim in the
application ever has an effective filing date on or after March 16, 2013,
AIA 35 U.S.C. 102 and 103 apply in determining the patentability of every
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claim in the application. This is the situation even if the remaining
claimed inventions all have an effective filing date before March 16, 2013,
and even if the claimed invention having an effective filing date on or
after March 16, 2013, is canceled.
In addition, AIA 35 U.S.C. 102 and 103 apply to any patent
application that contains or contained at any time a specific reference
under 35 U.S.C. 120, 121, or 365(c) to any patent or application that
contains or contained at any time a claimed invention that has an
effective filing date that is on or after March 16, 2013. Thus, AIA 35
U.S.C. 102 and 103 apply to any patent application that was ever
designated as a continuation, divisional, or continuation-in-part of an
application that contains or contained at any time a claimed invention
that has an effective filing date that is on or after March 16, 2013.
This is the situation even if the application is amended to delete its
reference as a continuation, divisional, or continuation-in-part to the
prior-filed application, and even if the claimed invention having an
effective filing date on or after March 16, 2013, in the prior-filed
application, is canceled. An application filed on or after March 16,
2013, is governed by pre-AIA 35 U.S.C. 102 and 103 only if: (1) The
application does not contain and never contained any claimed invention
having an effective filing date on or after March 16, 2013; and (2) the
application does not contain and never contained a specific reference
under 35 U.S.C. 120, 121, or 365(c)) to an application that contains or
contained at any time a claim that has an effective filing date that is
on or after March 16, 2013.
Thus, once a claim that has an effective filing date on or after
March 16, 2013, is introduced in an application, or is introduced to an
application in its continuity chain, AIA 35 U.S.C. 102 and 103 apply to
that application and any subsequent continuation, divisional, or
continuation-in-part of that application. Specifically, a patent
application may be amended to add a claimed invention having an
effective filing date on or after March 16, 2013, or a specific
reference under 35 U.S.C. 120, 121 or 365(c) to an application
containing a claimed invention having an effective filing date on or
after March 16, 2013, that results in the application no longer being
subject to pre-AIA 35 U.S.C. 102 and 103 but being subject to AIA 35
U.S.C. 102 and 103. However, no amendment to a claim, or to a specific
reference under 35 U.S.C. 120, 121 or 365(c), or both, will result in
the application changing from being subject to AIA 35 U.S.C. 102 and
103 to being subject to pre-AIA 35 U.S.C. 102 and 103.
Also, AIA 35 U.S.C. 102 and 103 apply to any patent resulting from
an application to which AIA 35 U.S.C. 102 and 103 were applied.
Similarly, pre-AIA 35 U.S.C. 102 and 103 apply to any patent resulting
from an application to which pre-AIA 35 U.S.C. 102 and 103 were applied.
C. Applications Subject to the AIA But Also Containing a Claim Having
an Effective Filing Date Before March 16, 2013
Even if AIA 35 U.S.C. 102 and 103 apply to a patent application,
pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application
if it: (1) Contains or contained at any time a claimed invention having
an effective filing date that occurs before March 16, 2013; or (2) is
ever designated as a continuation, divisional, or continuation-in-part
of an application that contains or contained at any time a claimed
invention that has an effective filing date that occurs before March
16, 2013. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting
from an application to which pre-AIA 35 U.S.C. 102(g) applied.
Thus, if an application contains, or contained at any time, any
claimed invention having an effective filing date that occurs before
March 16, 2013, and also contains, or contained at any time, any
claimed invention having an effective filing date that is on or after
March 16, 2013, AIA 35 U.S.C. 102 and 103 apply to the application, but
each claim must also satisfy pre-AIA 35 U.S.C. 102(g) for the applicant
to be entitled to a patent.
Thus, when subject matter is claimed in an application having
priority to or the benefit of a prior-filed application (e.g., under 35
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U.S.C. 120, 121 or 365(c)), care must be taken to accurately determine
whether AIA or pre-AIA 35 U.S.C. 102 and 103 applies to the application.
D. Applicant Statement Regarding Applicability of AIA Provisions to
Claims in Applications Filed on or After March 16, 2013
The Office is concurrently proposing the following amendments to 37
CFR 1.55 and 1.78 a separate action (RIN 0651-AC77). First, the Office
is proposing to require that if a nonprovisional application filed on
or after March 16, 2013, claims the benefit of or priority to the
filing date of a foreign, U.S. provisional, U.S. nonprovisional, or
international application that was filed prior to March 16, 2013, and
also contains or contained at any time a claimed invention having an
effective filing date on or after March 16, 2013, the applicant must
provide a statement to that effect. Second, the Office is proposing to
require that if a nonprovisional application filed on or after March
16, 2013, does not contain a claim to a claimed invention having an
effective filing date on or after March 16, 2013, but discloses subject
matter not also disclosed in the foreign, provisional, or
nonprovisional application, the applicant must provide a statement to
that effect. This information will assist the Office in determining
whether the application is subject to AIA 35 U.S.C. 102 and 103 or pre-
AIA 35 U.S.C. 102 and 103.
July 17, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1382 OG 380]