(272) 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: Examination guidelines.
SUMMARY: The United States Patent and Trademark Office (Office) is
publishing examination guidelines concerning the first inventor to file
provisions of the Leahy-Smith America Invents Act (AIA). The AIA amends the
patent laws pertaining to the conditions of patentability to convert the
U.S. patent system from a "first to invent" system to a "first inventor to
file" system, treats patents and patent application publications as prior
art as of their earliest effective U.S., 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. The Office is providing these examination
guidelines to Office personnel, and notifying the public of these
guidelines, to assist in the implementation of the first inventor to file
provisions of the AIA. These examination guidelines also clarify, in
response to the public comment, that there is no requirement that the mode
of disclosure by an inventor or joint inventor be the same as the mode of
disclosure of an intervening disclosure (e.g., inventor discloses his
invention at a trade show and the intervening disclosure is in a
peer-reviewed journal). Additionally, there is no requirement that the
disclosure by the inventor or a joint inventor be a verbatim or ipsissimis
verbis disclosure of an intervening disclosure in order for the exception
based on a previous public disclosure of subject matter by the inventor or
a joint inventor to apply. These guidelines also clarify that the exception
applies to subject matter of the intervening disclosure that is simply a
more general description of the subject matter previously publicly
disclosed by the inventor or a joint inventor.
DATES: Effective March 16, 2013.
FOR FURTHER INFORMATION CONTACT: Mary C. Till, Senior Legal Advisor
(telephone (571) 272-7755; electronic mail message (mary.till@uspto.gov))
or Kathleen Kahler Fonda, Senior Legal Advisor (telephone (571) 272-7754;
electronic mail message (kathleen.fonda@uspto.gov)), of the Office of the
Deputy Commissioner for Patent Examination Policy.
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
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 United
States 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. The Office is providing these examination guidelines to Office
personnel, and notifying the public of these guidelines, to assist in the
implementation of the first inventor to file provisions of the AIA.
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These examination guidelines do not constitute substantive rulemaking
and do not have the force and effect of law. The examination 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 Office personnel 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) 2 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.
These examination guidelines apply the case law on pre-AIA 35 U.S.C. 102
and 103 to interpret the provisions of AIA 35 U.S.C. 102 and 103 where the
AIA retains principles of pre-AIA 35 U.S.C. 102 and 103. Office personnel
may and should continue to rely upon pre-AIA 35 U.S.C. 102 and 103 case law
and the discussion of that case law in MPEP chapter 2100, except where
these guidelines specifically indicate that the AIA does not retain a
principle of pre-AIA 35 U.S.C. 102 and 103. The provisions of AIA 35 U.S.C.
102 and 103 will be further clarified as the case law on the first inventor
to file provisions of the AIA develops, and the Office will provide
additional or revised guidelines as necessary.
Table of Contents
Discussion of the Public Comments
General Discussion of the Recurrent Issues Raised in the Comments
Responses to Specific Comments
Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First
Inventor To File Provisions of the Leahy-Smith America Invents Act
I. Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA
II. Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)
A. Effective Filing Date of the Claimed Invention
B. Provisions Pertaining to Disclosures Before the Effective
Filing Date of the Claimed Invention
1. Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a
Printed Publication, or in Public Use, on Sale, or Otherwise Available to
the Public)
a. Patented
b. Described in a Printed Publication
c. In Public Use
d. On Sale
e. Otherwise Available to the Public
f. No Requirement of "by Others"
g. Admissions
h. The Meaning of "Disclosure"
2. Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35
U.S.C. 102(a)(1)
a. Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) to AIA 35 U.S.C.
102(a)(1) (Grace Period Inventor or Inventor-Originated Disclosure
Exception)
i. Grace Period Inventor Disclosure Exception
ii. Grace Period Inventor-Originated Disclosure Exception
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b. Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 U.S.C.
102(a)(1) (Inventor or Inventor-Originated Prior Public Disclosure
Exception)
C. Provisions Pertaining to Subject Matter in a U.S. Patent or
Application for a U.S. Patent Effectively Filed Before the Effective Filing
Date of the Claimed Invention
1. Prior Art Under AIA 35 U.S.C. 102(a)(2) (U.S. Patents, U.S. Patent
Application Publications, and World Intellectual Property Organization
(WIPO) Publications of International Applications (WIPO Published
Applications)
a. WIPO Published Applications
b. Determining When Subject Matter Was Effectively Filed Under AIA 35
U.S.C. 102(d)
c. Requirement of "Names Another Inventor"
2. Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C.
102(a)(2)
a. Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C.
102(a)(2) (Inventor-Originated Disclosure Exception)
b. Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C.
102(a)(2) (Inventor or Inventor-Originated Prior Public Disclosure
Exception)
c. Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C.
102(a)(2) (Common Ownership or Obligation of Assignment)
D. Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome
Prior Art Rejections
1. Showing That the Disclosure Was Made by the Inventor or a Joint
Inventor
2. Showing That the Subject Matter Disclosed Had Been Previously
Publicly Disclosed by the Inventor or a Joint Inventor
3. Showing That the Disclosure Was Made, or That Subject Matter Had Been
Previously Publicly Disclosed, by Another Who Obtained the Subject Matter
Disclosed Directly or Indirectly From the Inventor or a Joint Inventor
4. Enablement
5. Who May File an Affidavit or Declaration under 37 CFR 1.130
6. Situations in Which an Affidavit or Declaration Is Not Available
III. Joint Research Agreements
IV. Improper Naming of Inventors
V. AIA 35 U.S.C. 103
VI. Applicability Date Provisions and Determining Whether an Application Is
Subject to the First Inventor To File Provisions of the AIA
A. Applications Filed Before March 16, 2013
B. Applications Filed on or After March 16, 2013
C. Applications Subject to the AIA But Also Containing a Claimed
Invention Having an Effective Filing Date Before March 16, 2013
D. Applicant Statement in Transition Applications Containing a Claimed
Invention Having an Effective Filing Date on or after March 16, 2013
Discussion of the Public Comments: The Office published a notice of
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proposed rulemaking and a notice of proposed examination guidelines on July
26, 2012, to implement the first inventor to file provisions of section 3
of the AIA. See Changes To Implement the First Inventor To File Provisions
of the Leahy-Smith America Invents Act, 77 FR 43742 (July 26, 2012) (notice
of proposed rulemaking), and Examination Guidelines for Implementing the
First Inventor To File Provisions of the Leahy-Smith America Invents Act,
77 FR 43759 (July 26, 2012) (notice of proposed examination guidelines).
The Office also conducted a roundtable discussion with the public on
September 6, 2012, to obtain public input from organizations and
individuals on issues relating to the Office's proposed implementation of
the first inventor to file provisions of the AIA. See Notice of Roundtable
on the Implementation of the First Inventor To File Provisions of the
Leahy-Smith America Invents Act, 77 FR 49427 (Aug. 16, 2012). The Office
also conducted a number of roadshow presentations in September of 2012 that
included a discussion of the first inventor to file provisions of the AIA.
The Office received approximately seventy comments (from intellectual
property organizations, governmental organizations, academic and research
institutions, industry, law firms, and individuals) in response to these
notices. The comments germane to the proposed changes to the rules of
practice will be discussed in the final rule that revises the rules of
practice in title 37 of the Code of Federal Regulations (CFR) in light of
the changes in section 3 of the AIA. The comments germane to the proposed
examination guidelines (other than those specific to the proposed rules)
and the Office's responses to the comments follow:
General Discussion of the Recurrent Issues Raised in the Comments: A
number of comments addressed the following issues raised in the proposed
examination guidelines.
The Office indicated in the proposed examination guidelines that 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, and sought the benefit of public comment on the extent to which
public availability plays a role in "on sale" prior art defined in AIA 35
U.S.C. 102(a)(1). See Examination Guidelines for Implementing the First
Inventor To File Provisions of the Leahy-Smith America Invents Act, 77 FR
at 43765. The Office received a number of comments on this question. These
examination guidelines indicate that the Office views the "or otherwise
available to the public" residual clause of the AIA's 35 U.S.C. 102(a)(1)
as indicating that secret sale or use activity does not qualify as prior
art. These examination guidelines also indicate that an activity (such as a
sale, offer for sale, or other commercial activity) is secret (non-public)
if, for example, it is among individuals having an obligation of
confidentiality to the inventor. The specific comments on this issue are
discussed in greater detail in the Responses to Specific Comments section.
The Office also indicated in the proposed examination guidelines that
the subject matter in the prior disclosure being relied upon under AIA 35
U.S.C. 102(a) must be the same "subject matter" as the subject matter
previously publicly disclosed by the inventor for the exceptions in AIA 35
U.S.C. 102(b)(1)(B) and 102(b)(2)(B) to apply, and that the exceptions in
AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply even if the only
differences between the subject matter in the prior art disclosure that is
relied upon under AIA 35 U.S.C. 102(a) and the subject matter previously
publicly disclosed by the inventor are mere insubstantial changes, or only
trivial or obvious variations. See Examination Guidelines for Implementing
the First Inventor To File Provisions of the Leahy-Smith America Invents
Act, 77 FR at 43767 and 43769. The Office also received a number of
comments on this issue. These examination guidelines maintain the identical
subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and
102(b)(2)(B). However, these examination guidelines also clarify that there
is no requirement that the mode of disclosure by an inventor or joint
inventor (e.g., publication, public use, sale activity) be the same as the
mode of disclosure of the intervening disclosure, and also does not require
that the disclosure by the inventor or a joint inventor be a verbatim or
ipsissimis verbis disclosure of the intervening disclosure. In addition,
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these examination guidelines also clarify that if subject matter of the
intervening disclosure is simply a more general description of the subject
matter previously publicly disclosed by the inventor or a joint inventor,
the exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter
of the intervening disclosure. The specific comments on this issue are also
discussed in greater detail in the Responses to Specific Comments section.
Responses to Specific Comments:
Comment 1: One comment suggested that Office actions clearly indicate
whether an application is examined under the pre-AIA first to invent
provisions or the AIA first inventor to file provisions, and provide the
reasons the pre-AIA first to invent provisions or the AIA first inventor
to file provisions apply to the application.
Response: The Office plans to indicate in the Office's Patent
Application Locating and Monitoring (PALM) system whether the Office is
treating an application as subject to pre-AIA 35 U.S.C. 102 and 103 (a
pre-AIA application) or AIA 35 U.S.C. 102 and 103 (an AIA application).
Members of the public may access this information via the Patent
Application Information Retrieval (PAIR) system. Furthermore, form
paragraphs for use in Office actions will be developed which will identify
whether the provisions of pre-AIA 35 U.S.C. 102 and 103 or AIA 35 U.S.C.
102 and 103 apply if there is a rejection based upon 35 U.S.C. 102 or 103.
The Office does not plan to provide a specific explanation in an Office
action of why the pre-AIA first to invent provisions or the AIA first
inventor to file provisions apply to an application unless the matter is
called into question.
Comment 2: One comment suggested that in determining whether an
application is an AIA application or a pre-AIA application, a procedure
should be available to ensure that disputes concerning whether an
application is an AIA application or a pre-AIA application are readily
resolved.
Response: The Office plans to have staff in each Technology Center who
are able to assist Office personnel in determining whether the application
is a pre-AIA application or an AIA application. If an issue arises during
the course of examination about whether the application is a pre-AIA
application or an AIA application, Office personnel may consult with these
staff members. If a disagreement between the applicant and an examiner
cannot be resolved informally and results in a rejection that would
otherwise be inapplicable, the applicant may respond to the merits of the
rejection with an explanation of why the Office's treatment of the
application as a pre-AIA application or an AIA application is improper.
Ultimately, if there is a disagreement between the applicant and an
examiner as to whether the application is subject to pre-AIA 35 U.S.C. 102
and 103 or AIA 35 U.S.C. 102 and 103, and the propriety of a rejection
turns on the resolution of this question, the disagreement would need to be
resolved on appeal.
Comment 3: One comment questioned whether a patent is valid if examined
under the wrong prior art regime.
Response: The bases for invalidity are specified in 35 U.S.C. 282(b) and
have not changed with implementation of the AIA, except for the removal of
best mode as a grounds to cancel, invalidate, or render unenforceable a
claim of a patent. Specifically, AIA 35 U.S.C. 282(b) provides the
following bases for invalidity: (1) Noninfringement, absence of liability
for infringement, or unenforceability; (2) invalidity of the patent or any
claim in suit on any ground specified in part II of title 35, United States
Code, as a condition for patentability; (3) invalidity of the patent or any
claim in suit for failure to comply with: (A) Any requirement of 35 U.S.C.
112, except that the failure to disclose the best mode shall not be a basis
on which any claim of a patent may be canceled or held invalid or otherwise
unenforceable; or (B) any requirement of 35 U.S.C. 251; and (4) any other
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fact or act made a defense by title 35.
Comment 4: One comment took issue with the use of the phrases "claimed
invention" and "claim to a claimed invention" in the proposed examination
guidelines. The comment argued that AIA 35 U.S.C. 100(j), 102, and 103 use
phrase "claimed invention," and that the phrase "a claim to a claimed
invention" is used only in section 3(n) of the AIA (the effective date
provisions for section 3).
Response: The examination guidelines have been revised to use the phrase
"claimed invention" when discussing the provisions of AIA 35 U.S.C. 100(j),
102, and 103.
Comment 5: One comment suggested clearly differentiating between "claim"
in the sense of a claim to a claimed invention and "claim" in the sense of
a benefit or priority claim.
Response: With respect to a claimed invention, the examination
guidelines use the phrase "claimed invention" or the phrase "a claim to a
claimed invention." With respect to a claim to priority or benefit under 35
U.S.C. 119, 120, 121, or 365, the examination guidelines use the term
"claim" along with either benefit or priority in the same sentence to
distinguish a benefit or priority claim from a claimed invention.
Comment 6: Several comments suggested that the examination guidelines
maintain the status quo with respect to the terms "on sale" and "public
use" to force issues such as whether secret sales qualify as prior art to
the courts as soon as possible. Another comment suggested that the Office
serves a gatekeeper role and that ultimately the courts will provide
clarity on open legal questions presented by the AIA. Thus, the comment
recommended that the Office construe the statute in a manner biased against
applicants so that issues concerning the meaning of AIA 35 U.S.C. 102 and
103 quickly and expeditiously move to the courts for resolution.
Response: The Office appreciates that the courts may ultimately address
questions concerning the meaning of AIA 35 U.S.C. 102 and 103. However, as
a practical matter, the Office needs to provide examination guidelines so
that the public is aware of how the Office will apply AIA 35 U.S.C. 102 and
103. The Office considers its interpretation of AIA 35 U.S.C. 102 and 103
as set forth in these examination guidelines to be the correct
interpretation of AIA 35 U.S.C. 102 and 103 based upon the statutory
language of the AIA and its legislative history.
Comment 7: A number of comments suggested that public availability
should be a requirement for "on sale" activities under AIA 35 U.S.C.
102(a)(1), and that non-public uses and non-public sales or offers for sale
do not qualify as prior art under the AIA. The comments suggesting that
public availability should be a requirement for "on sale" activities under
AIA 35 U.S.C. 102(a)(1) gave the following reasons: (1) The catch-all
phrase "otherwise available to the public" in AIA 35 U.S.C. 102(a)(1) and
case law cited in the legislative history of the AIA supports the view that
"available to the public" should be read as informing the meaning of all of
the listed categories of prior art in AIA 35 U.S.C. 102(a)(1); (2) the
removal of derivation under pre-AIA 35 U.S.C. 102(f) and prior invention
under pre-AIA 35 U.S.C. 102(g) as prior art indicates that the AIA intended
to do away with "secret" prior art; (3) public availability is the intent
of AIA, and for the Office to construe the statute otherwise would erode
the availability of patent protection in the United States, and weaken the
economy; (4) interpreting the "on sale" provision to require public
availability is good public policy in that it would lower litigation costs
by simplifying discovery, and would reduce unexpected prior art pitfalls
for inventors who are not well-versed in the law.
Several comments, however, suggested that the legislative history of the
AIA is insufficient to compel the conclusion that Congress intended to
overturn pre-AIA case law 3 holding that an inventor's non-public sale
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before the critical date is a patent-barring "on sale" activity as to that
inventor. One comment suggested that commercial uses that are not
accessible to the public are nonetheless disqualifying prior art because
Metallizing Engineering 4 and other pre-AIA case law interpreting "public
use" and "on sale" continue to apply under the AIA, and do not require
public availability. The comment further suggested that commercial uses
that are accessible to the public, even if such accessibility is not
widespread, are disqualifying prior art to all parties. Another comment
suggested that Metallizing Engineering and other forfeiture doctrines
should be preserved because they serve important public policies. Another
comment suggested that if the Office does adopt the position that
Metallizing Engineering is overruled, and that any sale under AIA 35 U.S.C.
102(a)(1) must be public, the Office should promulgate a rule requiring
that any secret commercial use of the claimed invention more than one year
prior to the effective filing date be disclosed to the Office. Another
comment indicated that sales between joint ventures and sales kept secret
from the "trade" should still be considered prior art under AIA 35 U.S.C.
102(a)(1).
One comment suggested that under AIA 35 U.S.C. 102(a)(1) there are two
general categories of prior art, with each having subcategories: The first
category is patents and printed publications, and the second category is
"on sale," "public use," or "otherwise available to the public." The
comment suggested that "otherwise available to the public" clause only
modifies the second category: "public use" and "on sale."
Response: The starting point for construction of a statute is the
language of the statute itself. 5 A patent is precluded under AIA 35 U.S.C.
102(a)(1) 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." AIA 35
U.S.C. 102(a)(1) contains the additional residual clause "or otherwise
available to the public." Residual clauses such as "or otherwise" or "or
other" are generally viewed as modifying the preceding phrase or phrases. 6
Therefore, the Office views the "or otherwise available to the public"
residual clause of the AIA's 35 U.S.C. 102(a)(1) as indicating that secret
sale or use activity does not qualify as prior art. 7
The Office's interpretation of AIA 35 U.S.C. 102(a)(1) also ensures that
the AIA grace period can extend to all of the documents and activities
enumerated in AIA 35 U.S.C. 102(a)(1) that would otherwise defeat
patentability. In addition, this interpretation avoids the very odd
potential result that the applicant who had made his invention accessible
to the public for up to a year before filing an application could still
obtain a patent, but the inventor who merely used his invention in secret
one day before he filed an application could not obtain a patent. Finally,
the Office's interpretation is consistent with the interpretation that was
clearly expressed by the bicameral sponsors of the AIA during the
congressional deliberations on the measure. 8
With respect to suggestions concerning what information concerning
patentability must be disclosed to the Office (secret commercial sale or
use), 37 CFR 1.56 provides that applicants have a duty to disclose all
information known to be material to patentability as defined in 37 CFR
1.56, and there is no reason to treat public or non-public commercial sale
or use or activity differently from other information.
With respect to comments that Metallizing Engineering and other
forfeiture doctrines should be preserved because they serve important
public policies, the Office notes that the choice of which public policies
to pursue through the definition of prior art is made by Congress, not by
the Office. Also, some of the purposes ascribed to these doctrines in case
law appear to be ill-suited to or inconsistent with the AIA. The problem of
delayed filing of applications is unique to pre-AIA 35 U.S.C. 102, under
which an applicant can rely on a secret invention date in order to
establish a priority date.
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Comment 8: A comment suggested that offers for sale must be public in
order to constitute prior art under AIA 35 U.S.C. 102(a)(1) and that an
offer for license is not an offer for sale.
Response: The case law distinguishing between offers for sale and offers
for license under pre-AIA 35 U.S.C. 102(b) is equally applicable under AIA
35 U.S.C. 102(a)(1) as the AIA did not amend 35 U.S.C. 102 to change the
treatment of the prior art effect of an offer for license. The U.S. Court
of Appeals for the Federal Circuit (Federal Circuit) has held that "a
'license' that merely grants rights under a patent cannot per se trigger
the application of the on-sale bar," 9 and that "[a]n offer to enter into a
license under a patent for future sale of the invention covered by the
patent when and if it has been developed * * * is not an offer to sell the
patented invention that constitutes an on-sale bar." 10 If a transaction or
offer with respect to an invention constitutes licensing within the meaning
of these cases, the offer or transaction does not implicate the on sale
bar. However, if the licensing of an invention makes the invention
available to the public, patentability would be independently barred by the
residual clause of AIA 35 U.S.C. 102, which precludes patenting of a
claimed invention that was "available to the public" more than one year
before the effective filing date of the claimed invention.
Comment 9: One comment requested guidance on what might be required for
showing disclosure of a previously secret process to produce an "on sale"
product, e.g., through reverse engineering.
Response: Any rejection of a claim under AIA 35 U.S.C. 102 requires
evidence of a prior disclosure of the claimed invention via a document or
activity as defined in AIA 35 U.S.C. 102(a)(1), or evidence that the
claimed invention was effectively filed prior to the effective filing date
of the application under examination as defined in AIA 35 U.S.C. 102(a)(2).
Thus, any rejection of a claim under AIA 35 U.S.C. 102(a)(1) on the basis
of a prior disclosure of the claimed invention via a sale or an offer for
sale of a product produced by a previously secret process (e.g., a
situation in which the public could learn the claimed process by examining
the product) would need to be supported by some amount of documentary
evidence or an affidavit or declaration. However, once any potentially
patent-defeating sale or use is shown, evidence as to whether that sale or
use made the invention available to the public should be accessible to the
applicant and it is thus appropriate to require the applicant to come
forward with that evidence. 11
Comment 10: Several comments suggested that a public use or sale need
not be enabling to constitute prior art under AIA 35 U.S.C. 102(a)(1).
Response: The case law provides that the enablement inquiry is
applicable to the question of whether a claimed invention is described in a
patent, published patent application, or printed publication, but is not
applicable to the question of whether a claimed invention is "in public
use" or "on sale." 12 The Office does not view the AIA as changing this
principle of pre-AIA case law.
Comment 11: One comment sought clarification on whether a "motion for
sale" was included with the prior art category of "on sale."
Response: Insofar as a "motion for sale" is equal to an "offer for
sale," the Office understands that the pre-AIA case law on "offers for
sale" would equally apply under the AIA. The on sale provision of pre-AIA
35 U.S.C. 102(b) is triggered if the invention is both: (1) The subject of
a commercial offer for sale; and (2) ready for patenting. 13 Traditional
contract law principles are applied when determining whether a commercial
offer for sale has occurred. 14
Comment 12: One comment questioned whether the experimental use
exception to public use would continue under the AIA first inventor to file
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provisions.
Response: Under pre-AIA case law, the experimental use exception negates
a use that would otherwise defeat patentability. Neither the AIA nor its
legislative history expressly addresses whether the experimental use
exception applies to a public use under AIA 35 U.S.C. 102(a)(1), or to a
use that makes the invention available to the public under the residual
clause of AIA 35 U.S.C. 102(a)(1). Because this doctrine arises
infrequently before the Office, and is case-specific when it does arise,
the Office will approach this issue when it arises on the facts presented.
Comment 13: One comment sought elaboration on what constitutes "publicly
available" within the context of 35 U.S.C. 102(a)(1). The comment sought
input on the transitory nature of on-line materials, economic factors
regarding accessibility to public materials, restrictions on access, and
password or user agreement access to on-line materials.
Response: MPEP § 2128 discusses whether material that is posted on the
Internet or that is challenging to access is sufficiently accessible to the
public to be considered a "printed publication" under pre-AIA 35 U.S.C.
102. Since the "otherwise available to the public" clause of AIA 35 U.S.C.
102(a)(1) encompasses these materials, the case law on whether material is
available and accessible as discussed in MPEP § 2128 will guide the Office
and the public in making determinations as to whether any particular
disclosure is sufficiently publicly available under the "otherwise
available to the public" clause of AIA 35 U.S.C. 102(a)(1). The Federal
Circuit recently reiterated that the ultimate question is whether the
material was "available to the extent that persons interested and
ordinarily skilled in the subject matter or art[,] exercising reasonable
diligence, can locate it." 15 The determination of whether material was
publicly available does not turn on the logistical or economic issues a
person would face in gaining access to the material. For example, material
whose distribution was restricted to persons involved in a specific project
was considered not publicly accessible, 16 but material housed in a library
that provides access to the public was considered publicly accessible even
though a person would need to engage in considerable travel to actually
gain access to the material. 17
Comment 14: One comment questioned whether, in order for a WIPO
publication to be considered prior art under AIA 35 U.S.C. 102(a)(2), the
PCT application must enter the national stage in the United States
(analogous to the requirement for a WIPO publication to enter the national
stage in Japan in order to be considered prior art as of its priority date
in Japan). The comment also suggested that if a WIPO publication will be
prior art as of its priority date under AIA 35 U.S.C. 102(a)(2) when
published in any language, the Office should provide a translation to the
applicant against whose claims the WIPO publication has been cited.
Response: Under AIA 35 U.S.C. 102(a)(2), a person shall be entitled to a
patent unless the claimed invention was described in an application for
patent that was published or "deemed published" pursuant to 35 U.S.C.
122(b). In accordance with 35 U.S.C. 374, the WIPO publication of a PCT
international application designating the United States is deemed a
publication under 35 U.S.C. 122(b). Thus, the Office cannot set forth an
interpretation that a WIPO publication can be prior art under AIA 35 U.S.C.
102(a)(2) only if the PCT application enters the national stage in the
United States because that interpretation would conflict with AIA 35 U.S.C.
102(a)(2) and 35 U.S.C. 374. Patent documents and non-patent-literature are
prior art under pre-AIA 35 U.S.C. 102(a) and 102(b) regardless of the
language of the publication. Although the Office does not currently provide
translations as a matter of course for non-English-language patent
documents and non-patent-literature, translation services are available to
Office personnel for use on a case-by-case basis. See MPEP § 901.05(d). If
an Office action relies upon a document in a language other than English, a
translation (machine or human) will be made of record if necessary for the
record to be clear as to the precise facts relied upon in support of the
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rejection. See MPEP § 706.02 (section II).
Comment 15: One comment suggested that the Office adopt a process to
avoid granting a patent on a later-filed application claiming subject
matter disclosed in an earlier-filed application by another.
Response: The Office is in the process of developing a Patents
End-to-End (PE2E) patent application processing system that will permit
Office personnel to text search pending applications that have not yet been
published, which will help avoid granting a patent on a later-filed
application claiming subject matter disclosed in an earlier-filed
application by another. However, in the event that a patent is issued on a
later-filed application claiming subject matter disclosed in an
earlier-filed application, the applicant in the earlier-filed application
may request early publication of the application under 37 CFR 1.219 and
cite the resulting patent application publication in the file of the
later-filed application under 35 U.S.C. 301 and 37 CFR 1.501.
Comment 16: One comment requested clarification as to whether the Office
will continue to apply the Hilmer 18 doctrine to pre-AIA applications.
Response: Under the "Hilmer doctrine," the foreign priority date of a
U.S. patent (or U.S. patent application publication) may not be relied upon
in determining the date that the U.S. patent (or U.S. patent application
publication) is effective as prior art under pre-AIA 35 U.S.C. 102(e). AIA
35 U.S.C. 102(d) eliminates the Hilmer doctrine. The "Hilmer doctrine" as
discussed in MPEP § 2136.03 remains applicable to pre-AIA applications
because AIA 35 U.S.C. 102(d) does not apply to pre-AIA applications.
Comment 17: One comment expressed concern that Office personnel would
rely on a foreign priority date as the applicable prior art date for
rejecting a claim in an application under examination solely because the
prior art patent document reference was "entitled to claim priority to, or
benefit of" a prior-filed application. The comment suggested use of machine
translations to ensure proper reliance on the earlier filing date.
Response: The issue is similar to the current situation in which a U.S.
patent or U.S. patent application publication claims the benefit under 35
U.S.C. 119(e) of a provisional application, except that foreign priority
applications are originally filed in a foreign patent office and may be in
a language other than English. The Office is revising 37 CFR 1.55 in a
separate action (RIN 0651-AC77) to ensure that a copy of a foreign priority
application (a certified copy from the foreign patent office, an interim
copy from the applicant, or a copy via a priority document exchange
program) is available for situations in which a U.S. patent or U.S. patent
application publication has a prior art effect as of the filing date of a
foreign priority application. As discussed previously, if an Office action
relies upon a document in a language other than English, a translation
(machine or human) will be made of record if necessary for the record to be
clear as to the precise facts relied upon in support of the rejection. See
MPEP § 706.02 (section II).
Comment 18: One comment suggested that when applying prior art as of its
earliest effective filing date to a claim in an application under 35 U.S.C.
102(a)(2), the applicant should be able to rebut the rejection by
establishing that the subject matter relied upon for the rejection is not
supported in the earlier filed application from which a benefit or priority
is sought and hence may not be prior art under AIA 35 U.S.C. 102(a)(1) or
102(a)(2).
Response: AIA 35 U.S.C. 102(d) provides that for purposes of determining
whether a patent or application for patent is prior art to a claimed
invention under AIA 35 U.S.C. 102(a)(2), the patent or application shall be
considered to have been effectively filed, with respect to any subject
matter described in the patent or application, as of the earlier of the
actual filing date of the patent or the application for patent, or the
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filing date of the earliest application that describes the subject matter
and for which the patent or application for patent is entitled to claim a
benefit or right of priority under 35 U.S.C. 119, 120, 121, or 365. Thus,
if an applicant believes the subject matter relied on in a rejection under
AIA 35 U.S.C. 102(a)(2) is not supported by a prior application for which
benefit or priority is claimed under 35 U.S.C. 119, 120, 121, or 365, it is
appropriate for the applicant to argue that the application does not
contain support for the subject matter and that the patent or application
is available as prior art under AIA 35 U.S.C. 102(a)(2) only as of the
benefit or priority date of the earliest application that does describe the
subject matter. This is similar to current practice under pre-AIA 35 U.S.C.
102(e). 19
Comment 19: One comment suggested that the level of enablement for a
prior art reference to be applicable to the claims of an application as
described by the Office in accordance with Donohue 20 fails to consider a
line of cases that Donohue recognizes.
Response: The Office cited to Donohue simply to indicate the level of
enablement required for a prior art reference to anticipate a claim in an
application. The Office does not view the AIA as changing the pre-AIA
enablement requirement for prior art references.
Comment 20: One comment indicated that the examination guidelines were
overly broad with respect to admissions as prior art. Another comment urged
that the treatment of admissions, especially to transition applications
(applications filed on or after March 16, 2013, that claim priority to or
the benefit of the filing date of an earlier application that was filed
prior to March 16, 2013), be treated on a case-by-case basis.
Response: The Office included a discussion of admissions as prior art in
the examination guidelines simply to indicate that the Office does not view
the AIA as changing the status quo with respect to the use of admissions as
prior art. The Office's position on the use of admissions as prior art is
discussed at MPEP § 2129.
Comment 21: One comment questioned how the time of day of a sale in a
foreign jurisdiction would be determined for purposes of prior art.
Response: As with current practice under pre-AIA 35 U.S.C. 102, the
Office does not take time of day into consideration in making
determinations of activities or documents that constitute prior art under
AIA 35 U.S.C. 102(a)(1).
Comment 22: One comment supported the Office's interpretation of the
evidence needed to establish reliance on the AIA 35 U.S.C. 102(b)(1)(A) and
102(b)(2)(A) provisions relating to showing that the subject matter of a
disclosure was obtained directly or indirectly from an inventor or a joint
inventor.
Response: The Office has adopted 37 CFR 1.130(a) as a mechanism for an
applicant to submit information to establish the facts and evidence when
necessary to rely upon the exception provisions in AIA 35 U.S.C.
102(b)(1)(A) or 102(b)(2)(A). The showing should provide facts, not
conclusions, to show that the disclosure, although not made directly by the
inventor or joint inventor, originated with the inventor or joint inventor.
Comment 23: One comment suggested that when there are any discrepancies
in inventorship on an application as compared to authorship of a prior art
publication that is potentially excepted as prior art under AIA 35 U.S.C.
102(b)(1)(A), an applicant should be required to present a showing that the
publication is not available as prior art even when it is apparent that the
prior art disclosure is a grace period disclosure from an inventor. Several
comments indicated that a grace period publication should be treated under
the exception in AIA 35 U.S.C. 102(b)(1)(A) when there is any overlap
between authorship and inventorship.
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Response: AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period
disclosure "shall not be prior art" to a claimed invention if "the
disclosure was made 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." When the Office can readily ascertain by
examination of inventorship and authorship that a certain disclosure falls
under AIA 35 U.S.C. 102(b)(1)(A), the Office will not apply such a document
in a prior art rejection. Alternatively, when there are additional named
individuals on a prior art publication as compared to the inventors named
on a patent application, it is incumbent upon the applicant to provide a
satisfactory showing that the additional named authors did not contribute
to the claimed subject matter. 21
Comment 24: One comment requested clarification on what constitutes an
"unequivocal" statement from the inventor or a joint inventor that he/she
invented the subject matter of a publication such that the publication is
not prior art in accordance with AIA 35 U.S.C. 102(b)(1)(A), and requested
clarification on what constitutes a "reasonable explanation" to explain the
presence of additional authors on the publication. Another comment
suggested that the examination guidelines should define as precisely as
possible what is needed to establish that a disclosure originated with an
inventor, and questioned the intent of the statement in the examination
guidelines that an unequivocal assertion may be accepted in the absence of
evidence to the contrary. The comment also suggested that the examination
guidelines should make clear whether or not evidence that a disclosure
originated from the inventor will be rejected if it is not initially
presented. Several comments requested examples of acceptable affidavits or
declarations under 37 CFR 1.130.
Response: The evidence required to show that a disclosure originated
with the inventor or a joint inventor (e.g., whether an "unequivocal"
statement from the inventor or a joint inventor is sufficient, or an
explanation is a reasonable explanation of the presence of additional
authors on the publication) is necessarily a case-by-case determination.
Given the fact-specific nature of affidavits and declarations, the Office
cannot provide a "template" of an acceptable affidavit or declaration under
37 CFR 1.130. However, the case law on pre-AIA 35 U.S.C. 102(a) and (e)
contains examples of affidavits or declarations that were found acceptable
to show that a disclosure originated with the inventor. 22 There is no
requirement that such evidence be present on filing, although early
presentation will streamline prosecution.
Comment 25: One comment stated that to address situations where there
are overlapping inventors between an application under examination and a
prior art reference under AIA 35 U.S.C. 102(a)(2), a declaration to
attribute certain inventive activities from the prior art to the named
inventors should be a viable mechanism to overcome a rejection on this
basis.
Response: Under pre-AIA 35 U.S.C. 102, attribution of inventive
activities to disqualify prior art references was permitted pursuant to 37
CFR 1.132, as discussed in MPEP §§ 716.10 and 2131.01. The Office is
promulgating a new 37 CFR 1.130 to provide for the disqualification of a
disclosure as prior art on the basis of attribution (37 CFR 1.130(a)) or a
prior public disclosure of the inventor's or a joint inventor's own work
(37 CFR 1.130(b)) under AIA 35 U.S.C. 102(b). An applicant may establish
attribution of a cited prior art reference to the inventor or joint
inventor via an affidavit or declaration under 37 CFR 1.130(a).
Comment 26: One comment questioned whether a publication of a foreign
patent application during the year preceding the filing of a patent
application could qualify as AIA 35 U.S.C. 102(a)(1) prior art that is
potentially excepted under AIA 35 U.S.C. 102(b)(1)(A) if it is "a
disclosure [during the grace period] by another who obtained the subject
matter directly or indirectly from the inventor or joint inventor."
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Response: An applicant may establish that the foreign patent application
publication was by another who obtained subject matter disclosed in the
foreign patent application publication directly or indirectly from the
inventor or joint inventor via an affidavit or declaration under 37 CFR
1.130(a).
Comment 27: One comment questioned whether an assignee, to whom the
inventors are obligated to assign their rights, who was selling a product
within the scope of the inventor's claims during the grace period, would be
able to rely on the AIA 35 U.S.C. 102(b)(1)(A) provisions that the
"disclosure was made by another who obtained the subject matter directly or
indirectly from the inventor or joint inventor."
Response: A sale by an assignee, to whom the inventors are obligated to
assign their rights, may qualify as a sale "by another who obtained the
subject matter disclosed directly or indirectly from the inventor or a
joint inventor" within the meaning of AIA 35 U.S.C. 102(b)(1)(A).
Comment 28: One comment indicated that the Office's guidelines regarding
the reliance on the AIA 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A) exception
appear to apply to any inventor or inventor-originated disclosure which is
prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2) regardless of the
relationship of the disclosed subject matter and the claimed invention.
Response: Strictly speaking, neither AIA 35 U.S.C. 102(b)(1)(A) nor
102(b)(2)(A) requires a relationship between "the subject matter disclosed"
and the claimed invention. As a practical matter, however, if the subject
matter disclosed (e.g., contained in a publication that would qualify as
prior art under 35 U.S.C. 102(a)) is not relevant to the claimed invention,
there will be no occasion to inquire into whether the disclosure could be
disqualified as prior art under 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A).
Comment 29: One comment interpreted the provisions of AIA 35 U.S.C.
102(b)(2)(A) as requiring not only that the subject matter disclosed be
"obtained directly or indirectly from the inventor or a joint inventor,"
but also that the disclosure upon which the rejection is based in the
application under examination be owned by the same entity.
Response: This interpretation appears to combine the provision of AIA
35 U.S.C. 102(b)(2)(A) with the common ownership disqualification provision
of AIA 35 U.S.C. 102(b)(2)(C). Each of subparagraph (A) and subparagraph
(C) of AIA 35 U.S.C. 102(b)(2) stands alone and forms an independent basis
for disqualifying references that otherwise qualify as prior art under 35
U.S.C. 102(a)(2).
Comment 30: A number of comments, including comments from a number of
universities and university groups, opposed the Office's interpretation of
the subparagraph (B) provision of AIA 35 U.S.C. 102(b)(1) or 102(b)(2) (the
subparagraph (B) provision), requiring that the subject matter previously
publicly disclosed by the inventor be identical to the subject matter of
the disclosure to be disqualified under the subparagraph (B) provision
(identical subject matter approach). The comments opposing the Office's
interpretation of the subparagraph (B) provision stated that: (1) The
Office's identical subject matter approach is not supported by a reasonable
reading of the statute and is contrary to the intent of the AIA; (2) the
Office's identical subject matter approach violates the superfluity canon
of statutory construction as it would render the provision worthless; (3)
the Office's identical subject matter approach is disadvantageous to
inventors who must seek venture capital, and to academics who must publish
their results; (4) the Office's identical subject matter approach is
unworkable due to the ease with which the Internet can be fraudulently used
to publish trivial variations of an inventor's disclosed work, thereby
depriving him or her of patent protection; and (5) the Office's identical
subject matter approach is unworkable because even those acting in good
faith, such as by publishing an editorial commenting on a disclosed
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invention, may create prior art which would deprive an inventor of a patent
on his or her invention. Several comments suggested that the Office's
interpretation of the subparagraph (B) provision is an unwarranted
extrapolation of the statute that constitutes substantive rulemaking, fails
to maintain the bedrock of separation of powers, is contrary to the intent
and function of the grace period, and exceeds the intended scope for
interpretive rules.
The Office of Advocacy of the Small Business Administration
(SBA-Advocacy) also indicated that it has heard from many patent
stakeholders (within the university-based and non-profit research
community, as well as the startup inventor community) that they have
concerns with the Office's interpretation of the subparagraph (B) provision
(discussed previously) and suggested there are alternative legal
interpretations of the subparagraph (B) provision that would address these
concerns. SBA-Advocacy encouraged the Office to examine the merits of
alternative interpretations of the subparagraph (B) provision.
Several comments, by contrast, suggested that the proposal to require
identity of disclosure in order for an inventor to invoke the subparagraph
(B) provision is appropriate and entirely consistent with the intent of the
AIA. According to these comments, the intent of the AIA was to provide a
grace period with regard to inventor-originated disclosures, but not with
regard to independently created third-party disclosures (except in the
unlikely event of identity of disclosure). The comments stated that to
provide a grace period for non-identical subject matter would thwart the
intent to create a first inventor to file system, as well as the intent to
provide a system that moves toward harmonizing U.S. patent law with the
laws of other countries. Several comments suggested that the simplicity of
the Office's interpretation of the subparagraph (B) provision, i.e., not
permitting variations between the shielding disclosure and the cited prior
art disclosure in order for the exception to apply, was appropriate and
would reduce litigation costs.
Response: As discussed previously, the starting point for construction
of a statute is the language of the statute itself. 23 Subparagraph (B) of
each of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) provides that certain
disclosures shall not be prior art if "the subject matter disclosed had,
before such disclosure [or before such subject matter was effectively filed
under 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." Subparagraph (B) of each
of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) uses a single instance of the
phrase "the subject matter" to describe both the content of the prior art
disclosure and the content of the inventor's previous public disclosure. If
"the subject matter" disclosed in the prior art varies from "the subject
matter" that had been previously 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), there are
two discrete subject matters. The single instance of the phrase "the
subject matter" in subparagraph (B) of each of AIA 35 U.S.C. 102(b)(1) and
102(b)(2) cannot reasonably be read as concurrently describing two discrete
subject matters. Therefore, the single instance of the phrase "the subject
matter" in subparagraph (B) of each of AIA 35 U.S.C. 102(b)(1) and
102(b)(2) cannot reasonably be interpreted as including variations within
its ambit.
Next, other provisions in title 35 (pre-AIA and as amended by the AIA),
help to inform the meaning of the phrase "the subject matter" in
subparagraph (B) as like words in the same statute are presumed to carry
the same meaning. 24 AIA 35 U.S.C. 100 defines inventor and joint inventor
or coinventor with respect to the individual or individuals "who invented
or discovered the subject matter of the invention," and defines "claimed
invention" as "the subject matter defined by a claim in a patent or an
application for a patent." 25 35 U.S.C. 112(b) provides that "[t]he
specification shall conclude with one or more claims particularly pointing
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out and distinctly claiming the subject matter which the inventor or a
joint inventor regards as the invention." 26 The phrase "the subject
matter" has never been read to permit the inclusion of variations within
its ambit in these provisions, or in any other provision in title 35. In
addition, pre-AIA title 35 and the AIA contain a modifier such as
"substantially" where variation between subject matter is contemplated
(e.g., pre-AIA 35 U.S.C. 135(b)(1), 27 AIA 35 U.S.C. 135(a), 28 35 U.S.C.
154(d)(2), 29 and 35 U.S.C. 252 30). The absence of the "substantially"
modifier or similar terminology in subparagraph (B) of each of AIA 35
U.S.C. 102(b)(1) and 102(b)(2) further supports the conclusion that this
provision does not contemplate variation in subject matter.
Additionally, the Office's interpretation of this provision is
consistent with the canon of statutory construction requiring effect to be
given to every clause and every word of a statute where possible. 31 The
Office's interpretation of the subparagraph provision (B) gives effect to
each clause and each word in the subparagraph (B) provision. To reach the
alternative interpretations proffered by the comments, the Office would
need to ignore or re-write the words of the subparagraph (B) provision.
Specifically, the Office would be required to re-draft the subparagraph (B)
provision to provide that a disclosure shall not be prior art if
"substantially the same subject matter disclosed had, before such
disclosure, or before such subject matter was effectively filed, 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" to embrace variations of the subject matter,
and would be required to re-draft the subparagraph (B) provision to provide
that a disclosure shall not be prior art if, "the claimed invention had,
before such disclosure, or before such subject matter was effectively
filed, 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," to embrace "any disclosure" or any
subject matter disclosed after a disclosure of the claimed invention. The
Office, however, has no authority to enforce concepts that simply do not
square with the express language of subparagraph (B) of each of 35 U.S.C.
102(b)(1) and 102(b)(2). 32 Further, the legislative history of
subparagraph (B) of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) is inconclusive
with respect to what is embraced by the phrase "the subject matter."
Committee Report 112-98 indicates that 35 U.S.C. 102(b) "preserves the
grace period, ensuring that during the year prior to filing, an invention
will not be rendered unpatentable based on any of the inventor's own
disclosures, or any disclosure made by any party after the inventor has
disclosed his invention to the public." 33 The legislative history of
subparagraph (B) of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) does not
definitively specify whether "any disclosure" means "any disclosure" of the
same subject matter, "any disclosure" of the same or substantially the same
subject matter, "any disclosure" of the subject matter of the claimed
invention, or "any disclosure" of any subject matter. 34
The Office has considered the alternative interpretations of the
subparagraph (B) provision submitted in the public comment. The Office has
clarified, in response to the public and SBA-Advocacy comment, that: (1)
There is no requirement that the mode of disclosure by an inventor or joint
inventor be the same as the mode of disclosure of an intervening disclosure
(e.g., inventor discloses his invention at a trade show and the intervening
disclosure is in a peer-reviewed journal); (2) there is no requirement that
the disclosure by the inventor or a joint inventor be a verbatim or
ipsissimis verbis disclosure of an intervening disclosure in order for the
exception based on a previous public disclosure of subject matter by the
inventor or a joint inventor to apply; and (3) the exception applies to
subject matter of the intervening disclosure that is simply a more general
description of the subject matter previously publicly disclosed by the
inventor or a joint inventor. The more expansive alternative
interpretations of the subparagraph (B) provision, however, are not
supported by the language of the subparagraph (B) provision for the reasons
stated in the responses to this comment and the comments that follow.
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Comment 31: One comment indicated a need for clarification on what
constitutes an insubstantial or trivial difference (and what constitutes
"same subject matter") and suggested that mere wording changes should not
be interpreted too strictly. Several comments suggested that slight
variations or differences in wording should be permitted when relying on
the subparagraph (B) provision of AIA 35 U.S.C. 102(b)(1) and 102(b)(2).
Another comment similarly suggested that the subparagraph (B) provision
should, to the extent the subject matter in the reference is within the
scope of the inventor's public disclosure, shield the inventor from
citation of the intervening prior art.
Response: The Office understands that not all inventors refer to the
same inventive concepts using the exact same language. The Office is
clarifying in these examination guidelines that the subparagraph (B)
provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) do not require that
the mode of disclosure by an inventor or joint inventor (e.g., publication,
public use, sale activity) be the same as the mode of disclosure of the
intervening disclosure, and also does not require that the disclosure by
the inventor or a joint inventor be a verbatim or ipsissimis verbis
disclosure of the intervening disclosure. In addition, the Office is also
clarifying that if subject matter of the intervening disclosure is simply a
more general description of the subject matter previously publicly
disclosed by the inventor or a joint inventor, the exception in AIA 35
U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening
disclosure.
Comment 32: Several comments suggested using approaches to the
subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) akin
to that of 37 CFR 1.131, in that an intervening disclosure would be
disqualified as prior art if the inventor's prior disclosure disclosed
either the entire invention as claimed, or as much of the invention as was
disclosed in the intervening disclosure. Several comments suggested that
the subparagraph (B) provisions should apply if the inventor's disclosure
discloses at least as much of the claimed invention as is disclosed in the
intervening disclosure. Another comment suggested that an acceptable
standard for determining whether claimed subject matter was described for
the purpose of the subparagraph (B) provisions is whether one of ordinary
skill in the art would have considered the claimed subject matter to have
been described in the disclosure.
Response: Pre-AIA 35 U.S.C. 102(a) provided that a person was not
entitled to a patent if "the invention was known or used by others in
this country, or patented or described in a printed publication in this
or a foreign country, before the invention thereof by the applicant for
patent" (emphasis added). Thus, under pre-AIA 35 U.S.C. 102(a), an
applicant could disqualify (or antedate) a grace period disclosure by
showing that the disclosure was the inventor's own work or that the
disclosure was after the applicant's date of invention. AIA 35 U.S.C.
102(b) retains the pre-AIA principle that an applicant may disqualify a
grace period disclosure by showing that the disclosure was the inventor's
or a joint inventor's own work (AIA 35 U.S.C. 102(b)(1)(A)), but does not
retain the principle that an inventor may antedate a grace period
disclosure by showing that the disclosure was after the applicant's date of
invention. Since the AIA does not retain the principle of pre-AIA 35 U.S.C.
102(a) that a grace period disclosure that does not represent the
inventor's own work may be antedated by showing prior invention by the
inventor, the pre-AIA 35 U.S.C. 102(a) case law and concepts pertaining to
the antedating of a grace period disclosure that does not represent the
inventor's own work by showing prior invention by the inventor is not
instructive with respect to the applicability of the subparagraph (B)
provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2). Instead, under the
subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2), the
question is whether the subject matter disclosed had, before such
disclosure was made or before such subject matter was effectively filed,
been publicly disclosed by the inventor or a joint inventor or another who
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obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. 35
The subparagraph (B) provisions do not provide for an analysis of what
subject matter is claimed in order to determine when the subparagraph (B)
provisions apply. An intervening grace period disclosure would be
disqualified under the subparagraph (B) provisions if the inventor's prior
public disclosure disclosed as much of the subject matter of the invention
as was disclosed in the intervening disclosure. This, however, is a
comparison of the subject matter of the inventor's prior public disclosure
and the subject matter of the intervening disclosure as provided for in the
subparagraph (B) provisions, and is not a comparison of the subject matter
of inventor's prior public disclosure with the claimed invention.
Additionally, any subject matter disclosed by the intervening disclosure
not also disclosed in the inventor's prior public disclosure would not be
disqualified under the subparagraph (B) provisions.
Comment 33: One comment stated that the identical disclosure approach to
the subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) is
not consistent with treating the inventor's disclosure as if it were a
patent application. The comment stated that a broad disclosure can support
broad claims, and that later disclosure of a species within the claimed
genus does not defeat patentability of the genus. Another comment suggested
that the Office treat inventor disclosures like provisional applications
under the subparagraph (B) provisions, such that any claimed feature that
had been disclosed by the inventor is insulated from attack by an
intervening disclosure.
Response: The subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and
102(b)(2) do not provide for an inventor's public disclosure prior to
filing a patent application to be treated as if it were the filing of a
patent application.
Comment 34: One comment suggested that there is "asymmetry" between
patent-defeating derivation proceedings under AIA 35 U.S.C. 135 and the
subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2), and
indicated that the Federal courts have set forth rules to achieve symmetry
in cases addressing pre-AIA 35 U.S.C. 102(g) and 37 CFR 1.131 practice.
One comment suggested that the term "subject matter" in the subparagraph
(B) provisions should be interpreted as it is when deciding to institute an
interference proceeding, and that the phrase need not require identical
disclosures in order for the exception to apply.
Response: There is "asymmetry" between patent defeating derivation
proceedings under AIA 35 U.S.C. 135 and the subparagraph (B) provisions of
AIA 35 U.S.C. 102(b)(1) and 102(b)(2) due to the express statutory language
differences between these provisions. AIA 35 U.S.C. 135 applies to a claim
to an invention that is the "same or substantially the same" as a claim of
an earlier application. As discussed previously, the subparagraph (B)
provisions do not modify "the subject matter" with the phrase
"substantially the same." Given this statutory language difference, it
would not be appropriate to interpret subparagraph (B) of AIA 35 U.S.C.
102(b)(1) and 102(b)(2) to provide symmetry with AIA 35 U.S.C. 135.
Comment 35: One comment requested clarification regarding what
constitutes a public disclosure as compared to a disclosure within the
meaning of the description of the prior art exception under AIA 35 U.S.C.
102(b)(1)(B). Another comment indicated that it is unclear what would
constitute an earlier "public disclosure" by the inventor in order to rely
on the AIA 35 U.S.C. 102(b)(1)(B) exception to shield the applicant from
prior art that is available before the effective filing date but after the
inventor's own public disclosure. The comment specifically questioned if a
public oral disclosure would be such a public disclosure.
Response: In order for an inventor to be able to rely on an earlier
disclosure under AIA 35 U.S.C. 102(b)(1)(B) (including an earlier oral
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disclosure), some evidence is necessary to show that the subject matter
relied upon for the rejection had been previously publicly disclosed by the
inventor. Whether a "disclosure" is a "public disclosure" such that it
constitutes prior art under AIA 35 U.S.C. 102(a)(1) is a case-by-case
analysis which is governed by the case law discussed in MPEP §§ 2126
through 2128.
Comment 36: One comment suggested that there is no justification for
requiring that an inventor's prior public disclosure to another be enabling
of anything.
Response: An affidavit or declaration under 37 CFR 1.130(a) or (b) need
not demonstrate that the disclosure by the inventor, a joint inventor, or
another who obtained the subject matter disclosed directly or indirectly
from an inventor or a joint inventor was an "enabling" disclosure of the
subject matter within the meaning of 35 U.S.C. 112(a). The question under
AIA 35 U.S.C. 102(b) is whether: (1) The disclosure in question was made by
the inventor or a joint inventor, or the subject matter disclosed was
obtained directly or indirectly from the inventor or a joint inventor (37
CFR 1.130(a)); 36 or (2) the subject matter disclosed had, before such
disclosure was made or before such subject matter was effectively filed,
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 (37 CFR 1.130(b)). 37
Comment 37: One comment requested clarification on how to show
communication so as to enable one of ordinary skill in the art to make and
use the invention when relying on the grace period inventor-originated
disclosure exception (AIA 35 U.S.C. 102(b)(1)(A)) to disqualify prior art.
Response: The Office has revised the guidance on the grace period
inventor-originated disclosure exception to indicate that what is required,
within one year prior to the effective filing date, is communication of the
subject matter by the inventor or a joint inventor prior to its disclosure
by a non-inventor. The level of communication in the inventor's or joint
inventor's disclosure need not be sufficient to teach one of ordinary skill
how to make and use so as to comply with 35 U.S.C. 112(a).
Comment 38: One comment questioned what action an applicant could take
when the applicant suspects that the prior art is derived from the
applicant's own work, but the deriver has not submitted an application. The
comment stated that the information necessary to show derivation is the
state of mind of the deriver, and that the applicant does not always have
access to the information to support a showing of derivation.
Response: Unless the other party (the suspected deriver) has submitted
his or her own application, the issue for the applicant is disqualifying
the prior art under AIA 35 U.S.C. 102(b) rather than showing derivation
under AIA 35 U.S.C. 135. If the prior art disclosure was made one year or
less before the effective filing date of the claimed invention, the
applicant may submit an affidavit or declaration under 37 CFR 1.130 to show
that the disclosure was by a party who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor and
thus disqualify the prior art under 35 U.S.C. 102(b)(1)(A). As discussed in
these examination guidelines, this does not require a showing of derivation
under AIA 35 U.S.C. 135.
Comment 39: One comment suggested that prior art that is disqualified
under AIA 35 U.S.C. 102(b)(2)(C) cannot be properly used to show the state
of the art for purposes of, e.g., a lack of enablement rejection. The
comment stated that the Office's position is in conflict with the MPEP.
Response: MPEP § 2124 indicates that documents published after the
effective filing date may be used to show factual evidence regarding the
factors needed to establish that undue experimentation would have been
needed to make and use the invention. A document under AIA 35 U.S.C.
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102(a)(2) by its very nature meets this criteria, i.e., it is a publication
after the critical date which can be used as evidence to support a lack of
enablement rejection by providing facts relevant to the weighing of the
Wands factors 38 to support a 35 U.S.C. 112(a) lack of enablement
rejection.
Comment 40: One comment suggested that the AIA 35 U.S.C. 102(b)(2)(C)
provisions apply to prior art that qualifies under both AIA 35 U.S.C.
102(a)(1) and 102(a)(2) because there is no language in the statute which
says that the AIA 35 U.S.C. 102(b)(2)(C) provision "only" applies to prior
art under AIA 35 U.S.C. 102(a)(2) art.
Response: The introductory language of AIA 35 U.S.C. 102(b)(2) provides
that: "[a] disclosure shall not be prior art to a claimed invention under
[AIA 35 U.S.C. 102(a)(2)] if * * * ." Thus, by the terms of AIA 35 U.S.C.
102(b)(2), the provisions of subparagraphs (A), (B), and (C) of 35 U.S.C.
102(b)(2) apply only to disclosures under AIA 35 U.S.C. 102(a)(2). If a
patent or published application qualifies as prior art under both AIA 35
U.S.C. 102(a)(1) and AIA 35 U.S.C. 102(a)(2), the disqualification under
AIA 35 U.S.C. 102(b)(2)(C) would remove the patent or published application
with respect to the patent or published application qualifying under AIA 35
U.S.C. 102(a)(2). Such a patent or published application would still
qualify as prior art under AIA 35 U.S.C. 102(a)(1). The proposed
examination guidelines indicated that AIA 35 U.S.C. 102(b)(2) provides an
exception only for prior art under AIA 35 U.S.C. 102(a)(2). The proposed
examination guidelines did not state that a disclosure must qualify as
prior art only under AIA 35 U.S.C. 102(a)(2) in order for the AIA 35 U.S.C.
102(b)(2) exception to apply.
Comment 41: One comment indicated that the description of Hazeltine 39
regarding interpretation of the AIA 35 U.S.C. 103 provisions is in conflict
with the statutory language, in that the AIA shifted the temporal focus
from the invention date to effective filing date.
Response: In Hazeltine, the U.S. Supreme Court held that a U.S. patent
that qualified as prior art only under pre-AIA 35 U.S.C. 102(e) may be used
in combination with other prior art to show that a claimed invention was
obvious under pre-AIA 35 U.S.C. 103, notwithstanding that the disclosure of
such U.S. patent may not have been known or available to the public on the
date of invention or the effective filing date of the claimed invention. 40
The Office agrees that the temporal focus has shifted from the invention
date to effective filing date. However, the principle in Hazeltine that
certain prior art under 35 U.S.C. 102 that may not be publicly available on
the critical date (i.e., prior art under pre-AIA 35 U.S.C. 102(e) or prior
art under AIA 35 U.S.C. 102(a)(2)) is also applicable under AIA 35 U.S.C.
103.
Comment 42: A comment stated that 35 U.S.C. 115, which requires an oath
or declaration by the inventor, is a more appropriate section than 35
U.S.C. 101 on which to base a rejection for failure to name the appropriate
inventor. Another comment indicated that the case law on 35 U.S.C. 101 is
not straightforward and hence might not be the appropriate avenue to
resolve disputes regarding the proper naming of inventors.
Response: In addition to requiring an inventor's oath or declaration
from each inventor, AIA 35 U.S.C. 115(a) provides that "[a]n application
for patent that is filed under section 111(a) or commences the national
stage under section 371 shall include, or be amended to include, the name
of the inventor for any invention claimed in the application." While
pre-AIA 35 U.S.C. 115 has not previously served as a statutory basis for
rejecting a claim for failure to name the proper inventorship, pre-AIA 35
U.S.C. 115 did not require that an application include, or be amended to
include, the name of the inventor for any invention claimed in the
application. Therefore, until the courts clarify which, if any, statute
forms the basis for rejecting a claim where the application fails to
include, or has not been amended to include, the name of the inventor(s),
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the Office considers a rejection under both 35 U.S.C. 101 41 and 115 the
best course of action. To the extent that there is a concern that the
recent case law surrounding 35 U.S.C. 101 is unclear, the Office notes that
this recent case law pertains only to subject matter eligibility, not to
the application of 35 U.S.C. 101 to the inventorship question, and thus
this case law would not aggravate the complexity of inventorship disputes.
Comment 43: One comment requested clarification from the Office
regarding the use of a derivation proceeding where improper inventors are
named in a patent.
Response: If a patent is issued to someone other than the inventor, a
patent applicant can file a petition for derivation with respect to the
issued patent pursuant to 35 U.S.C. 135. The Office has implemented the
patent derivation proceedings provided for in the AIA in a separate
rulemaking. See Changes To Implement Derivation Proceedings, 77 FR 56068
(Sept. 11, 2012). Additional information concerning patent derivation
proceedings is available on the AIA micro site (under Inter Partes
Disputes) on Office's Internet Web site at
http://www.uspto.gov/aia_implementation/bpai.jsp#heading-4.
Comment 44: One comment requested clarification on how a defense of
derivation could be used to invalidate a patent. The comment requested
clarification on how a minor variation derived from one inventor and
claimed by another could be invalidated under 35 U.S.C. 101.
Response: A patent applicant can use the provisions of 35 U.S.C. 135 to
resolve derivation issues with a patent owner. Similarly, a patent owner
can use the provisions of 35 U.S.C. 291 to resolve derivation issues with
another patent owner. If the issue is one of inventorship in a granted
patent, a party may raise the issue of compliance with 35 U.S.C. 101 before
the Patent Trial and Appeal Board in a post-grant proceeding or before a
Federal court involving patent infringement as a defense under 35 U.S.C.
282.
Comment 45: One comment took issue with the Office's interpretation of
the effective date provisions indicating application of pre-AIA 35 U.S.C.
102(g) provisions to applications examined under AIA 35 U.S.C. 102 and 103
where the application contains claims supported by a pre-AIA application.
Response: Section 3(n)(1) of the AIA provides that amendments made by
section 3 of the AIA "shall apply to any application for patent, and to any
patent issuing thereon" that contains or contained at any time: (1) A claim
to a claimed invention that has an effective filing date that is on or
after March 16, 2013; or (2) 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 such a claim. Section 3(n)(2) of the AIA provides that the provisions
of 35 U.S.C. 102(g), 135, and 291 as in effect on March 15, 2013, "shall
apply to each claim of an application for patent, and any patent issued
thereon," for which the amendments made by section 3 of the AIA also apply,
if such application or patent contains or contained at any time: (1) A
claim to an invention having an effective filing date that occurs before
March 16, 2013; or (2) 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
such a claim. While the "shall apply to" language of sections 3(n)(1) and
3(n)(2) is not parallel, section 3(n)(2) does indicate that the provisions
of 35 U.S.C. 102(g), 135, and 291 as in effect on March 15, 2013, shall
apply to "each claim" of an application for patent, and not simply the
claim or claims having an effective filing date that occurs before March
16, 2013, if the condition specified in section 3(n)(2) occurs. Therefore,
"each claim" of an application presenting a claim to a claimed invention
that has an effective filing date before March 16, 2013, but also
presenting claims to a claimed invention that has an effective filing date
on or after March 16, 2013, is subject to AIA 35 U.S.C. 102 and 103 and is
also subject to the provisions of 35 U.S.C. 102(g), 135, and 291 as in
effect on March 15, 2013.
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Comment 46: Several comments opposed changing from a "first to invent"
system to a "first inventor to file" system, arguing that a "first inventor
to file" system favors large corporations and negatively impacts
independent inventors, small businesses, entrepreneurs, and technical
professionals, and will have a significant economic impact on a substantial
number of small entities. Several comments suggested that the examination
guidelines are an economically significant guidance document and must
comply with the requirements of the Good Guidance Bulletin 42 of the Office
of Management and Budget (OMB) for economically significant guidance
documents. One comment suggested that the examination guidelines are an
economically significant guidance document because the conversion of the
U.S. patent system from a "first to invent" to a "first inventor to file"
system is arguably one of the most comprehensive overhauls of the U.S.
patent system since its inception. Another comment cited statements by the
AIA's legislative sponsors and Administration officials and several
articles concerning the first inventor to file system, and argued that the
Office, in its implementation of the first inventor to file system, has
ignored a number of economic effects, such as: (1) Loss of access to
investment capital; (2) diversion of inventor time into patent
applications; (3) weaker patent protection due to hasty filing; (4) higher
patent prosecution costs due to a hastily prepared initial application; (5)
higher abandonment rates; and (6) changes in ways of doing business.
Several comments suggested that the Office's interpretation of certain
provisions of the AIA is an unwarranted extrapolation of the statute that
constitutes substantive rulemaking.
Response: The U.S. patent system is converted from a "first to invent"
to a "first inventor to file" system by operation of section 3 of the AIA
regardless of whether the Office issues or publishes examination
guidelines. The Office must revise its practices to be consistent with
the changes in "first inventor to file" provisions of section 3 of the AIA
to conform to the new patent laws. In doing so, these examination
guidelines do not modify the conditions of patentability specified in AIA
35 U.S.C. 102 and 103 and do not change the rights and obligations
specified in AIA 35 U.S.C. 102 and 103 based upon the Office's view of what
would be a better policy choice. Rather, these examination guidelines
simply set out examination guidelines for Office personnel in order to
explain AIA 35 U.S.C. 102 and 103 based upon the Office's understanding of
the provisions of AIA 35 U.S.C. 102 and 103 as written by Congress, and
place the public on notice of those examination guidelines. Therefore,
these examination guidelines do not amount to substantive rulemaking. 43
The discussion of the significance or impacts of section 3 of the AIA by
the AIA's legislative sponsors and Administration officials, in articles
concerning the first inventor to file system, and in the discussions in the
comments relating to the impacts of the adoption of a first inventor to
file system, pertains to the changes in section 3 of the AIA per se and not
to these examination guidelines. The examination guidelines have been
reviewed by OMB as a significant guidance document, but the examination
guidelines are not considered to be economically significant as that term
is defined in the Good Guidance Bulletin.
Comment 47: One comment suggested that the examination guidelines should
state their precise legal effect. The comment suggested that the Office
lacks the statutory authority to issue an interpretation of this statute,
and as such the examination guidelines should make clear that they are only
examination guidelines, not an interpretation. The comment further
suggested that the examination guidelines should indicate that they have no
binding effect on the public or on the courts and are not entitled to
Chevron 44 deference, but that under 35 U.S.C. 3(a) and the Good Guidance
Bulletin the examination guidelines are binding on Office employees and
should be reviewable by petition under 37 CFR 1.181.
Response: As discussed previously, these examination guidelines do not
constitute substantive rulemaking and do not have the force and effect of
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law. However, the Office has the authority to publish a notice setting out
its interpretation of substantive patent law under 35 U.S.C. 101, 102, 103,
112, or other section of title 35, regardless of whether such
interpretation has the force and effect of law. 45 These examination
guidelines have been developed as a matter of internal Office management
and (like the discussion of patentability in general in MPEP chapter 2100
and the Good Guidance Bulletin 46) do not create any right or benefit,
substantive or procedural, enforceable by any party against the Office.
These examination guidelines are not "binding" on the public or Office
personnel in that 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. The question of the level of deference to
which the examination guidelines are entitled is not a patent examination
issue.
Comment 48: One comment questioned whether the amendments to 35 U.S.C.
102 and 103 in the AIA applied to plant applications and patents. The
comment suggested that the Office make an exception for plant applications
and patents and also continue to apply the one year grace period to plant
applications and patents.
Response: 35 U.S.C. 161 provides that the provisions of 35 U.S.C.
relating to patents for inventions shall apply to patents for plants,
except as otherwise provided. There is nothing in section 3 of the AIA that
provides for an exception for plant applications and patents with respect
to any of the provisions of AIA 35 U.S.C. 102 and 103. Thus, the provisions
of AIA 35 U.S.C. 102 and 103 (including the one-year grace period in AIA 35
U.S.C. 102(b)(1)(A) for inventor disclosures) are applicable to plant
applications and patents.
Comment 49: Several comments requested that the Office provide examples,
or suggested hypothetical situations for the Office to use as examples.
Response: The Office will post examples on the AIA micro site on
Office's Internet Web site.
Comment 50: One comment requested clarification regarding the meaning of
"first inventor to file," specifically the terms "first," "inventor," and
"to file."
Response: The phrase "First Inventor to File" is simply the title of
section 3 of the AIA. The conditions for patentability based upon novelty
and nonobviousness are set forth in AIA 35 U.S.C. 102 and 103, which do not
always result in the first inventor to file an application being entitled
to a patent (e.g., AIA 35 U.S.C. 102(a)(1) precludes an inventor who is the
first person to file an application for patent, but who published an
article describing the claimed invention more than one year before the
application was filed, from being entitled to a patent). Thus, it is
appropriate for these examination guidelines to place the focus on the
provisions of AIA 35 U.S.C. 102 and 103, rather than on the meaning of the
terms "first," "inventor," and "to file."
Examination Guidelines for 35 U.S.C. 102 and 103 as
Amended by the First Inventor To File Provisions of the
Leahy-Smith America Invents Act
I. Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA
The AIA continues to employ 35 U.S.C. 102 to set forth the scope of
prior art that will preclude the grant of a patent on a claimed invention,
but adjusts what qualifies as such prior art. Specifically, the AIA sets
forth what qualifies as prior art in two paragraphs of 35 U.S.C. 102(a).
AIA 35 U.S.C. 102(a)(1) provides that 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
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effective filing date of the claimed invention. AIA 35 U.S.C. 102(a)(2)
provides that 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. AIA 35 U.S.C. 102(b) sets forth exceptions to prior art
established in AIA 35 U.S.C. 102(a). Specifically, AIA 35 U.S.C. 102(b)(1)
sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a)(1),
and AIA 35 U.S.C. 102(b)(2) sets forth exceptions to prior art established
in AIA 35 U.S.C. 102(a)(2).
The AIA also provides definitions in 35 U.S.C. 100 of the meaning of the
terms "claimed invention," "effective filing date," "the inventor," and
"joint inventor" (or "coinventor"). The AIA defines the term "claimed
invention" in 35 U.S.C. 100(j) 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 the 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. The AIA defines the term "the inventor" as the
individual or if a joint invention, the individuals collectively who
invented or discovered the subject matter of the invention in 35 U.S.C.
100(f), and 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 in 35 U.S.C. 100(g).
As discussed previously, AIA 35 U.S.C. 102(a)(1) provides that 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. 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.
AIA 35 U.S.C. 102(b)(1) provides 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 (grace period) after a first
disclosure of an invention within which the inventor, assignee, obligated
assignee, or other party having sufficient interest may file a patent
application. The one-year grace period in AIA 35 U.S.C. 102(b)(1) is
measured from the filing date of the earliest U.S. or foreign patent
application to which a proper benefit or priority claim as to such
invention has been asserted in the patent or application. Notably, the
one-year grace period in pre-AIA 35 U.S.C. 102(b) is measured from only the
filing date of the earliest application filed in the United States
(directly or through the PCT).
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
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of 37 CFR 1.131).
As discussed previously, AIA 35 U.S.C. 102(a)(2) provides that a person
is not entitled to a patent if the claimed invention was described in a
U.S. patent, a U.S. patent application publication, or an application for
patent deemed published under 35 U.S.C. 122(b), 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 an application for patent
deemed published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C.
102(a)(2). Thus, under the AIA, WIPO publications of PCT applications that
designate the United States are treated as U.S. patent application
publications for prior art purposes, regardless of the international filing
date, whether they are published in English, or whether the PCT
international application enters the national stage in the United States.
Accordingly, a U.S. patent, a U.S. patent application publication, or a
WIPO publication of a PCT application (WIPO published application) that
designates the United States, that names another inventor and was
effectively filed before the effective filing date of the claimed
invention, is prior art under AIA 35 U.S.C. 102(a)(2). Under pre-AIA 35
U.S.C. 102(e), a WIPO published application designating the United States
is treated as a U.S. patent application publication only if the PCT
application was filed on or after November 29, 2000, and published under
PCT Article 21(2) in the English language. 47 AIA 35 U.S.C. 102(d) 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 AIA 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 earliest 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 of, or priority to, 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, 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 application to which benefit or priority is claimed and which
the subject matter relied upon, regardless of whether the earliest such
application is a U.S. provisional or nonprovisional application, an
international (PCT) application, or a foreign patent application.
AIA 35 U.S.C. 102(b)(2)(A) and (B) provide 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 another who obtained the subject matter disclosed from
the inventor or a joint inventor; or (2) the inventor or a joint inventor,
or another who obtained the subject matter disclosed from an inventor or
joint inventor, had publicly disclosed the subject matter before the
effective filing date of the U.S. patent, U.S. patent application
publication, or WIPO published application.
Additionally, AIA 35 U.S.C. 102(b)(2)(C) provides 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.
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102(a)(2) if, not later than the effective filing date 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 an obviousness analysis under 35
U.S.C. 103 to prior art that was commonly owned at the time the claimed
invention was made, and which qualified as prior art only under pre-AIA 35
U.S.C. 102(e), (f), and/or (g). Thus, the AIA provides that certain prior
patents and published 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 prior art under AIA 35 U.S.C. 102(a)(2), 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 AIA 35 U.S.C. 102(a)(1), by a co-worker or
collaborator is prior art under AIA 35 U.S.C. 102(a)(1) unless it falls
within an exception under AIA 35 U.S.C. 102(b)(1), regardless of whether
the subject matter of the prior disclosure and the claimed invention was
commonly owned not later than the effective filing date of the claimed
invention.
The AIA eliminates 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 the
AIA, abandonment of the invention or premature foreign patenting is not
relevant to patentability. Prior invention by another is likewise not
relevant to patentability under the AIA 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 through a rejection under 35 U.S.C. 101 48 and 35
U.S.C. 115. 49
AIA 35 U.S.C. 102(c) provides for common ownership of subject matter
made pursuant to joint research agreements. Under 35 U.S.C. 100(h), the
term "joint research agreement" as used in AIA 35 U.S.C. 102(c) 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. 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.
AIA 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 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. In addition, AIA 35 U.S.C. 103 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
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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 AIA 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.
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 claim to 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 that
contains or contained at any time a claim to a claimed invention that has
an effective filing date that is on or after March 16, 2013. 50 AIA 35
U.S.C. 102 and 103 also apply to any patent resulting from an application
to which AIA 35 U.S.C. 102 and 103 were applied. 51
The AIA provides that the provisions of pre-AIA 35 U.S.C. 102(g) 52
apply to each claim of an application for patent if the patent application:
(1) Contains or contained at any time a claim to 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 claim to a claimed
invention that has an effective filing date before March 16, 2013. 53
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. 54
If an application (1) contains or contained at any time a 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
that ever contained 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 that ever contained 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, and each claimed invention in
the application is also subject to pre-AIA 35 U.S.C. 102(g).
II. Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)
AIA 35 U.S.C. 102(a) defines the prior art that will preclude the grant
of a patent on a claimed invention unless an exception in AIA 35 U.S.C.
102(b) is applicable. Specifically, AIA 35 U.S.C. 102(a) 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. 55
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 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 whenever a claim for a patent is rejected or an objection
or requirement is made, the Office shall notify the applicant thereof and
state the reasons for such rejection, objection, or requirement, and
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provide such information and references as may be useful to the applicant
in judging of the propriety of continuing the prosecution of the
application. 56
The categories of prior art documents and activities are set forth in
AIA 35 U.S.C. 102(a)(1) and (a)(2). These documents and activities are used
to determine whether a claimed invention is novel or nonobvious. 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
AIA 35 U.S.C. 102(a)(1) may be competent evidence of a previous public use,
sale activity, or other availability of a claimed invention to the public
where the public use, sale activity, or other public availability does have
a sufficiently early date to qualify as prior art under AIA 35 U.S.C.
102(a)(1). 57
AIA 35 U.S.C. 102(b) sets out exceptions to AIA 35 U.S.C. 102(a), in
that prior art that otherwise would be included in AIA 35 U.S.C. 102(a)
shall not be prior art if it falls within an exception in AIA 35 U.S.C.
102(b).
Exceptions to the categories of prior art defined in AIA 35 U.S.C.
102(a)(1) are provided in AIA 35 U.S.C. 102(b)(1). Specifically, AIA 35
U.S.C. 102(b)(1) 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 a 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." 58
Exceptions to the categories of prior art defined in AIA 35 U.S.C.
102(a)(2) are provided in AIA 35 U.S.C. 102(b)(2). Specifically, AIA 35
U.S.C. 102(b)(2) 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." 59
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 (collectively,
"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 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
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catch-all "otherwise available to the public" category of prior art is
added.
A. Effective Filing Date of the Claimed Invention
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 activities that occurred
"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 earliest 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. 60 Thus, the one-year grace period in AIA 35 U.S.C. 102(b)(1) is
measured from the filing date of any 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 filing date of the earliest application
filed in the United States (directly or through the PCT).
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-[agrave]-vis the prior art remains unchanged by the
AIA. 61 However, it is important to note that although prior art is applied
on a claim-by-claim basis, the determination of whether pre-AIA 35 U.S.C.
102 and 103 or AIA 35 U.S.C. 102 and 103 apply is made on an
application-by-application basis. Section VI discusses the applicability
date provisions of section 3 of the AIA.
Finally, the AIA provides that the "effective filing date" for a claimed
invention in a reissued 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. 62
B. Provisions Pertaining to Disclosures Before the Effective Filing Date of
the Claimed Invention
1. Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a
Printed Publication, or in Public Use, on Sale, or Otherwise Available to
the Public)
Prior art documents and activities which may preclude patentability are
set forth in AIA 35 U.S.C. 102(a)(1). 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. These examination guidelines will
discuss each prior art document and activity that might preclude
patentability under AIA 35 U.S.C. 102(a)(1) in turn.
a. 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, AIA 35
U.S.C. 102(a)(1) precludes the grant of a patent on the claimed invention.
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The effective date of the patent for purposes of determining whether the
patent qualifies as prior art under AIA 35 U.S.C. 102(a)(1) is the grant
date of the patent. There is an exception to this rule if the patent is
secret as of the date the rights are awarded. 63 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. 64 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.
Although an invention may be described in a patent and not claimed
therein, the grant date 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 a claimed invention under
examination is not available as prior art against that invention under AIA
35 U.S.C. 102(a)(1), but could be available as prior art under AIA 35
U.S.C. 102(a)(2).
b. 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 available as prior art under AIA 35
U.S.C. 102(a)(1). 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 extent to which a claimed invention must be described for a
prior art document to anticipate the 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 AIA 35 U.S.C. 102(a)(1) and (a)(2) require only that the
claimed invention be "described" 65 in a prior art document (patent,
published patent application, or printed publication). The two basic
requirements that must be met by a prior art document in order to describe
a claimed invention such that it is anticipated 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." 66 Second, a person of ordinary skill in the art must
have been enabled to make the invention without undue experimentation. 67
Thus, in order for a prior art document to describe a claimed invention
such that it is anticipated under AIA 35 U.S.C. 102(a)(1) or (a)(2), 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 requirement
that a prior art document meet the "how to use" requirement of 35 U.S.C.
112(a) in order to qualify as prior art. 68 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 prior art
document explicitly disclose information within the knowledge of such a
person. 69
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 AIA 35 U.S.C. 102(a)(1) or (a)(2). 70 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 document to describe a claimed invention under AIA 35 U.S.C.
102(a)(1) or (a)(2), the prior art document need only describe and enable
one skilled in the art to make a single species or embodiment of the
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claimed invention. 71
An anticipatory description it is not required in order for a disclosure
to qualify as prior art, unless the disclosure is being used as the basis
for an anticipation rejection. In accordance with pre-AIA case law
concerning obviousness, a disclosure may be cited for all that it would
reasonably have made known to a person of ordinary skill in the art. Thus,
the description requirement of AIA 35 U.S.C. 102(a)(1) and (a)(2) does not
preclude an examiner from applying a disclosure in an obviousness rejection
under AIA 35 U.S.C. 103 simply because the disclosure is not adequate to
anticipate the claimed invention under AIA 35 U.S.C. 102(a)(1) or (a)(2).
c. In public use. Under pre-AIA 35 U.S.C. 102(b), that an invention was
"in public use" precluded the grant of a patent only if such public use
occurred "in this country."
Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on
where prior public use or public availability occurs. 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).
The pre-AIA case law also indicates that a public use will bar
patentability if the public use occurs before the critical date 72 and the
invention is ready for patenting. 73 Under pre-AIA 35 U.S.C. 102(b), the
uses of an invention before the patent's critical date that constitute a
"public use" fall into two categories: The use either "(1) was accessible
to the public; or (2) was commercially exploited." 74 Whether a use is a
pre-AIA 35 U.S.C. 102(b) public use also depends on who is making the use
of the invention. "[W]hen an asserted prior use is not that of the
applicant, [pre-AIA 35 U.S.C.] 102(b) is not a bar when that prior use or
knowledge is not available to the public." 75 In other words, a use by a
third party who did not obtain the invention from the inventor named in the
application or patent is an invalidating use under pre-AIA 35 U.S.C. 102(b)
only if it falls into the first category: That the use was accessible to
the public. On the other hand, "an inventor's own prior commercial use,
albeit kept secret, may constitute a public use or sale under [pre-AIA 35
U.S.C.] 102(b), barring him from obtaining a patent." 76 Also, an inventor
creates a public use bar under pre-AIA 35 U.S.C. 102(b) when the inventor
shows the invention to, or allows it to be used by, another person who is
"under no limitation, restriction, or obligation of confidentiality" to the
inventor. 77
Further, under pre-AIA 35 U.S.C. 102(a), "in order to invalidate a
patent based on prior knowledge or use" by another in this country prior to
the patent's priority date, "that knowledge or use must have been available
to the public." 78 Patent-defeating "use," under pre-AIA 35 U.S.C. 102(a),
includes only that "use which is accessible to the public." 79
As discussed previously, public use under AIA 35 U.S.C. 102(a)(1) is
limited to those uses that are available to the public. The public use
provision of AIA 35 U.S.C. 102(a)(1) thus has the same substantive scope,
with respect to uses by either the inventor or a third party, as public
uses under pre-AIA 35 U.S.C. 102(b) by unrelated third parties or uses by
others under pre-AIA 35 U.S.C. 102(a).
As also discussed previously, once an examiner becomes aware that a
claimed invention has been the subject of a potentially public use, the
examiner may require the applicant to provide information showing that the
use did not make the claimed process accessible to the public.
d. On sale. The pre-AIA case law indicates that on sale activity will
bar patentability if the claimed invention was: (1) The subject of a
commercial sale or offer for sale, not primarily for experimental purposes;
and (2) ready for patenting.80 Contract law principles apply in order to
determine whether a commercial sale or offer for sale occurred. In
addition, the enablement inquiry is not applicable to the question of
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whether a claimed invention is "on sale" under pre-AIA 35 U.S.C.
102(b). 81 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
that the sale must make the invention available to the public. 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.
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 where the sale or offer for sale may occur. When formulating a
rejection, Office personnel should consider evidence of sales activity,
regardless of where the sale activity took place.
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. AIA 35 U.S.C.
102(a)(1) uses the same "on sale" term as pre-AIA 35 U.S.C. 102(b). The "or
otherwise available to the public" residual clause of AIA 35 U.S.C.
102(a)(1), however, indicates that AIA 35 U.S.C. 102(a)(1) does not cover
secret sales or offers for sale. For example, an activity (such as a sale,
offer for sale, or other commercial activity) is secret (non-public) if it
is among individuals having an obligation of confidentiality to the
inventor. 82
e. Otherwise available to the public. AIA 35 U.S.C. 102(a)(1) 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 AIA 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, 83 a poster display or other information disseminated
at a scientific meeting,84 subject matter in a laid-open patent
application, 85 a document electronically posted on the Internet, 86 or a
commercial transaction that does not constitute a sale under the Uniform
Commercial Code. 87 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 to the public" provision of AIA 35 U.S.C.
102(a)(1), provided that the claimed invention is made sufficiently
available to the public.
f. 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 AIA 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 AIA 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
AIA 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1).
g. 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 AIA 35 U.S.C. 102. 88 For a
discussion of admissions as prior art, see generally MPEP § 129.
h. The meaning of "disclosure." The AIA does not define the term
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"disclosure," and AIA 35 U.S.C. 102(a) does not use the term "disclosure."
AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state conditions under
which a "disclosure" that otherwise falls within AIA 35 U.S.C. 102(a)(1) or
102(a)(2) is not prior art under AIA 35 U.S.C. 102(a)(1) or 102(a)(2). 89
Thus, the Office is treating the term "disclosure" as a generic expression
intended to encompass the documents and activities enumerated in AIA 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).
2. Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C.
102(a)(1)
a. Prior art exception under AIA 35 U.S.C. 102(b)(1)(A) to AIA 35 U.S.C.
102(a)(1) (grace period inventor or inventor-originated disclosure
exception). AIA 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior art
provisions of AIA 35 U.S.C. 102(a)(1). These exceptions limit the use of an
inventor's own work as prior art, when the inventor's own work has been
publicly disclosed by the inventor, a joint inventor, or another who
obtained the subject matter directly or indirectly from the inventor or
joint inventor. AIA 35 U.S.C. 102(b)(1)(A) provides that a disclosure which
would otherwise qualify as prior art under AIA 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 disclosures") 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 inventor-originated
disclosures"). Section II.A. of these examination guidelines discusses the
"effective filing date" of a claimed invention.
i. Grace period inventor disclosure exception. AIA 35 U.S.C.
102(b)(1)(A) first provides that a disclosure which would otherwise qualify
as prior art under AIA 35 U.S.C. 102(a)(1) may be disqualified as prior art
if the disclosure is made: (1) One year or less before the effective filing
date of the claimed invention; and (2) by the inventor or a joint inventor.
Thus, a disclosure that would otherwise qualify as prior art under AIA 35
U.S.C. 102(a)(1) will not be treated as prior art by Office personnel if
the disclosure is made one year or less before the effective filing date of
the claimed invention, and the evidence shows that the disclosure is by the
inventor or a joint inventor. What evidence 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 itself
or the patent application specification that the disclosure is by the
inventor or a joint inventor.
Office personnel will not apply a disclosure as prior art under AIA 35
U.S.C. 102(a)(1) if it is apparent from the disclosure itself that it is by
the inventor or a joint inventor. Specifically, Office personnel will not
apply a disclosure as prior art under AIA 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 AIA 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
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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 AIA 35
U.S.C. 102(a)(1).
The Office is also revising the rules of practice in a separate action
(RIN 0651-AC77) to provide that applicants can include a statement of any
grace period inventor disclosures in the specification (37 CFR 1.77(b)(6)).
An applicant is not required to use the format specified in 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 expedite examination of the
application and save applicants (and the Office) the costs related to an
Office action and reply. If the patent application specification contains a
specific reference to a grace period inventor disclosure, the Office will
consider it apparent from the 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).
The Office is also revising the rules of practice in a separate action
(RIN 0651-AC77) to provide a mechanism for filing an affidavit or
declaration (under 37 CFR 1.130) to establish that a disclosure is not
prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C.
102(b). In the 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, the applicant may establish by way of an
affidavit or declaration that a grace period disclosure is not prior art
under AIA 35 U.S.C. 102(a)(1) because the disclosure was by the inventor or
a joint inventor. Section II.D.1. of these examination guidelines discusses
the use of affidavits or declarations to show that the disclosure was made
by the inventor or a joint inventor under the exception of AIA 35 U.S.C.
102(b)(1)(A) for a grace period inventor disclosure.
ii. Grace period inventor-originated disclosure exception. AIA 35 U.S.C.
102(b)(1)(A) also provides that a disclosure which would otherwise qualify
as prior art under AIA 35 U.S.C. 102(a)(1) may be disqualified as 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 a disclosure upon which the rejection is based is by
someone who obtained the subject matter from the inventor or a joint
inventor, and was made one year or less before the effective filing date of
the claimed invention, the applicant may establish by way of an affidavit
or declaration that the disclosure is not prior art under AIA 35 U.S.C.
102(a)(1) because the disclosure was by another who obtained the subject
matter directly or indirectly from the inventor or a joint inventor.
Section II.D.3. of these examination guidelines discusses the use of
affidavits or declarations to show that a disclosure was by another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor under the exception of AIA 35 U.S.C.
102(b)(1)(A) for a grace period inventor-originated disclosure.
b. Prior art exception under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 U.S.C.
102(a)(1) (inventor or inventor-originated prior public disclosure
exception). AIA 35 U.S.C. 102(b)(1)(B) provides additional exceptions to
the prior art provisions of AIA 35 U.S.C. 102(a)(1). These exceptions
disqualify a disclosure of subject matter that occurs after the subject
matter had been publicly disclosed by the inventor, a joint inventor, or
another who obtained the subject matter directly or indirectly from the
inventor or joint inventor. Specifically, AIA 35 U.S.C. 102(b)(1)(B)
provides that a disclosure which would otherwise qualify as prior art under
AIA 35 U.S.C. 102(a)(1) (patent, printed publication, public use, sale, or
other means of public availability) may be disqualified as prior art if:
(1) The disclosure was made one year or less before the effective filing
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date of the claimed invention; and (2) the subject matter disclosed had
been previously publicly disclosed by the inventor, a joint inventor, or
another who obtained the subject matter directly or indirectly from the
inventor or joint inventor. The previous public disclosure of the subject
matter by the inventor, a joint inventor, or another who obtained the
subject matter directly or indirectly from the inventor or joint inventor
must itself be a disclosure within the one-year grace period (i.e., be
either a grace period inventor disclosure by the inventor or a joint
inventor or be a grace period inventor-originated disclosure by another who
obtained the subject matter directly or indirectly from the inventor or
joint inventor). Otherwise, the previous public disclosure of the subject
matter would qualify as prior art under AIA 35 U.S.C. 102(a)(1) that could
not be disqualified under AIA 35 U.S.C. 102(b)(1). Section II.A. of these
examination guidelines discusses the "effective filing date" of a claimed
invention. Section II.D.2. of these examination guidelines discusses the
use of affidavits or declarations to show that the subject matter disclosed
had, before such disclosure, been publicly disclosed by the inventor or a
joint inventor, and section II.D.3. of these examination guidelines
discusses the use of affidavits or declarations to show that another
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor.
The exception in AIA 35 U.S.C. 102(b)(1)(B) applies if the "subject
matter disclosed [in the intervening disclosure] had, before such
[intervening] disclosure, been publicly disclosed by the inventor or a
joint inventor * * * ." 90 The exception in AIA 35 U.S.C. 102(b)(1)(B)
focuses on the "subject matter" that had been publicly disclosed by the
inventor or a joint inventor. There is no requirement under AIA 35 U.S.C.
102(b)(1)(B) that the mode of disclosure by the inventor or a joint
inventor (e.g., patenting, publication, public use, sale activity) be the
same as the mode of disclosure of the intervening grace period disclosure.
There is also no requirement that the disclosure by the inventor or a joint
inventor be a verbatim or ipsissimis verbis disclosure of the intervening
grace period disclosure. 91 What is required for subject matter in an
intervening grace period disclosure to be excepted under AIA 35 U.S.C.
102(b)(1)(B) is that the subject matter of the disclosure to be
disqualified as prior art must have been previously publicly disclosed by
the inventor or a joint inventor.
The exception in AIA 35 U.S.C. 102(b)(1)(B) applies to the subject
matter in the disclosure being relied upon as prior art for a rejection
under AIA 35 U.S.C. 102(a)(1) (an intervening disclosure) that was also
publicly disclosed by the inventor or a joint inventor before such
intervening disclosure. The subject matter of an intervening grace period
disclosure that was not previously publicly disclosed by the inventor or a
joint inventor is available as prior art under AIA 35 U.S.C. 102(a)(1). For
example, the inventor or a joint inventor had publicly disclosed elements
A, B, and C, and a subsequent intervening grace period disclosure discloses
elements A, B, C, and D, then only element D of the intervening grace
period disclosure is available as prior art under AIA 35 U.S.C. 102(a)(1).
In addition, if subject matter of an intervening grace period disclosure
is simply a more general description of the subject matter previously
publicly disclosed by the inventor or a joint inventor, the exception in
AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter of the
intervening grace period disclosure. For example, if the inventor or a
joint inventor had publicly disclosed a species, and a subsequent
intervening grace period disclosure discloses a genus (i.e., provides a
more generic disclosure of the species), the intervening grace period
disclosure of the genus is not available as prior art under AIA 35 U.S.C.
102(a)(1). Conversely, if the inventor or a joint inventor had publicly
disclosed a genus, and a subsequent intervening grace period disclosure
discloses a species, the intervening grace period disclosure of the species
would be available as prior art under AIA 35 U.S.C. 102(a)(1). Likewise, if
the inventor or a joint inventor had publicly disclosed a species, and a
subsequent intervening grace period disclosure discloses an alternative
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species not also disclosed by the inventor or a joint inventor, the
intervening grace period disclosure of the alternative species would be
available as prior art under AIA 35 U.S.C. 102(a)(1).
Finally, AIA 35 U.S.C. 102(b)(1)(B) does not discuss "the claimed
invention" with respect to either the subject matter disclosed by the
inventor or a joint inventor, or the subject matter of the subsequent
intervening grace period disclosure. Any inquiry with respect to the
claimed invention is whether or not the subject matter in the prior art
disclosure being relied upon anticipates or renders obvious the claimed
invention. A determination of whether the exception in AIA 35 U.S.C.
102(b)(1)(B) is applicable to subject matter in an intervening grace period
disclosure does not involve a comparison of the subject matter of the
claimed invention to either the subject matter disclosed by the inventor or
a joint inventor, or to the subject matter of the subsequent intervening
grace period disclosure.
C. Provisions Pertaining to Subject Matter in a U.S. Patent or
Application for a U.S. Patent Effectively Filed Before the Effective Filing
Date of the Claimed Invention
1. Prior Art Under AIA 35 U.S.C. 102(a)(2) (U.S. Patents, U.S. Patent
Application Publications, and World Intellectual Property Organization
(WIPO) Publications of International Applications (WIPO Published
Applications))
AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents that
are available as prior art as of the date they were effectively filed with
respect to the subject matter relied upon in the document if they name
another inventor: (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) than under AIA
35 U.S.C. 102(a)(2).
a. WIPO published applications. AIA 35 U.S.C. 102(a)(2) explicitly
references U.S. patents and U.S. patent application publications. Moreover,
the WIPO publication of a PCT international application that designates the
United States is an application for patent deemed published under 35 U.S.C.
122(b) for purposes of AIA 35 U.S.C. 102(a)(2) under 35 U.S.C. 374. Thus,
under the AIA, WIPO publications of PCT applications that designate the
United States are treated as U.S. patent application publications for prior
art purposes, regardless of the international filing date, whether they are
published in English, or whether the PCT international application enters
the national stage in the United States. Accordingly, a U.S. patent, a U.S.
patent application publication, or a WIPO published application that names
another inventor and was effectively filed before the effective filing date
of the claimed invention, is prior art under AIA 35 U.S.C. 102(a)(2). This
differs from the treatment of a WIPO published application under pre-AIA 35
U.S.C. 102(e), where a WIPO published application is treated as a U.S.
patent application publication only if the PCT application was filed on or
after November 29, 2000, and published under PCT Article 21(2) in the
English language.
A U.S. patent, U.S. patent application publication, or WIPO published
application is prior art under AIA 35 U.S.C. 102(a)(1) if its issue or
publication date is before the effective filing date of the claimed
invention in question. 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 AIA 35 U.S.C.
102(a)(2) if it was "effectively filed" before the effective filing date of
the claimed invention in question with respect to the subject matter relied
upon to reject the claim. Section II.A. of these examination guidelines
discusses the "effective filing date" of a claimed invention. AIA 35 U.S.C.
102(d) sets forth the criteria to determine when subject matter described
in a U.S. patent, U.S. patent application publication, or WIPO published
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application was "effectively filed" for purposes of AIA 35 U.S.C.
102(a)(2).
b. Determining when subject matter was effectively filed under AIA 35
U.S.C. 102(d). AIA 35 U.S.C. 102(d) provides that a U.S. patent, U.S.
patent application publication, or WIPO published application is prior art
under AIA 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
(AIA 35 U.S.C. 102(d)(1)), or the filing date of a prior application to
which there is a priority or benefit claim (AIA 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. 92
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 of a claimed invention in AIA 35 U.S.C. 100(i)(1)(B),
and merely being entitled to claim priority to, or the benefit of, a
prior-filed application in the definition of effectively filed in AIA 35
U.S.C. 102(d). 93 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. 94 Thus, as was the case even prior to the AIA, 95
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.
AIA 35 U.S.C. 102(d) requires that a prior-filed application to which a
priority or benefit claim is made must describe the subject matter from the
U.S. patent, U.S. patent application publication, or WIPO published
application relied upon in a rejection. However, AIA 35 U.S.C. 102(d) does
not require that this description meet the requirements of 35 U.S.C.
112(a). As discussed previously with respect to AIA 35 U.S.C. 102(a)(1),
the Office does not view the AIA as changing the extent to which a claimed
invention must be described for a prior art document to anticipate the
claimed invention under AIA 35 U.S.C. 102.
The AIA also eliminates the so-called Hilmer doctrine. 96 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 U.S. 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 one or more prior-filed foreign or
international applications 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. 97 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.
c. Requirement of "names another inventor." To qualify as prior art
under AIA 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
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another inventor" requirement of AIA 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 AIA
35 U.S.C. 102(a)(2) unless an exception in AIA 35 U.S.C. 102(b)(2) is
applicable.
2. Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C.
102(a)(2)
a. Prior art exception under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 U.S.C.
102(a)(2) (inventor-originated disclosure exception). AIA 35 U.S.C.
102(b)(2)(A) provides an exception to the prior art provisions of AIA 35
U.S.C. 102(a)(2). This exception limits the use of an inventor's own work
as prior art, when the inventor's own work is disclosed in a U.S. patent,
U.S. patent application publication, or WIPO published application by
another who obtained the subject matter directly or indirectly from the
inventor or joint inventor.
Specifically, AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure
which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2)
may be disqualified as prior art if the subject matter disclosed was
obtained directly or indirectly from the inventor or a joint inventor.
Thus, if the subject matter in a U.S. patent, U.S. patent application
publication, or WIPO published application upon which the rejection is
based is by another who obtained the subject matter from the inventor or a
joint inventor, the applicant may establish by way of an affidavit or
declaration that a disclosure is not prior art under AIA 35 U.S.C.
102(a)(2). Section II.D.3. of these examination guidelines discusses the
use of affidavits or declarations to show that the disclosure was by
another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor under the exception of AIA 35 U.S.C.
102(b)(2)(A) for an inventor-originated disclosure.
b. Prior art exception under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 U.S.C.
102(a)(2) (inventor or inventor-originated prior public disclosure
exception). AIA 35 U.S.C. 102(b)(2)(B) provides additional exceptions to
the prior art provisions of AIA 35 U.S.C. 102(a)(2). These exceptions
disqualify subject matter that was effectively filed by another after the
subject matter had been publicly disclosed by the inventor, a joint
inventor, or another who obtained the subject matter directly or
indirectly from the inventor or joint inventor.
Specifically, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure
which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2)
(a U.S. patent, U.S. patent application publication, or WIPO published
application) may be disqualified as prior art if the subject matter
disclosed had been previously publicly disclosed by the inventor, a joint
inventor, or another who obtained the subject matter directly or indirectly
from the inventor or joint inventor. The previous public disclosure of the
subject matter by the inventor, a joint inventor, or another who obtained
the subject matter directly or indirectly from the inventor or joint
inventor must itself be a public disclosure (i.e., be either an inventor
disclosure by the inventor or a joint inventor or be an inventor-originated
disclosure by another who obtained the subject matter directly or
indirectly from the inventor or joint inventor). If a previous public
disclosure by the inventor or which originated with the inventor is not
within the grace period of AIA 35 U.S.C. 102(b)(1), it would qualify as
prior art under AIA 35 U.S.C. 102(a)(1), and could not be disqualified
under AIA 35 U.S.C. 102(b)(1). Section II.D.2. of these examination
guidelines discusses the use of affidavits or declarations to show that the
subject matter disclosed had, before such disclosure, been publicly
disclosed by the inventor or a joint inventor, and section II.D.3. of these
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examination guidelines discusses the use of affidavits or declarations to
show that another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor.
Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the
exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the "subject matter
disclosed [in the intervening disclosure] had, before such [intervening]
disclosure [was effectively filed], been publicly disclosed by the inventor
or a joint inventor * * *." 98 The exception in AIA 35 U.S.C. 102(b)(2)(B)
focuses on the "subject matter" that had been publicly disclosed by the
inventor or a joint inventor. There is no requirement under 35 U.S.C.
102(b)(2)(B) that the mode of disclosure by the inventor or a joint
inventor (e.g., patenting, publication, public use, sale activity) be the
same as the mode of disclosure of the intervening U.S. patent, U.S. patent
application publication, or WIPO published application. There is also no
requirement that the disclosure by the inventor or a joint inventor be a
verbatim or ipsissimis verbis disclosure of the intervening U.S. patent,
U.S. patent application publication, or WIPO published application. What is
required for subject matter in the intervening U.S. patent, U.S. patent
application publication, or WIPO published application to be excepted under
AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been
previously publicly disclosed by the inventor or a joint inventor or must
have originated with the inventor.
The exception in AIA 35 U.S.C. 102(b)(2)(B) applies to the subject
matter in the intervening U.S. patent, U.S. patent application publication,
or WIPO published application being relied upon for a rejection under AIA
35 U.S.C. 102(a)(2) that was also publicly disclosed by the inventor or a
joint inventor (or have originated with the inventor) before the date the
subject matter relied upon was effectively filed. The subject matter of an
intervening U.S. patent, U.S. patent application publication, or WIPO
published application that was not previously publicly disclosed by the
inventor or a joint inventor (or by another who obtained the subject matter
from the inventor or joint inventor) is available as prior art under AIA 35
U.S.C. 102(a)(2). For example, if the inventor or a joint inventor had
publicly disclosed elements A, B, and C, and a subsequent intervening U.S.
patent, U.S. patent application publication, or WIPO published application
discloses elements A, B, C, and D, then only element D of the intervening
U.S. patent, U.S. patent application publication, or WIPO published
application is available as prior art under AIA 35 U.S.C. 102(a)(2).
In addition, if subject matter of an intervening U.S. patent, U.S.
patent application publication, or WIPO published application is simply a
more general description of the subject matter previously publicly
disclosed by the inventor or a joint inventor, the exception in AIA 35
U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening U.S.
patent, U.S. patent application publication, or WIPO published application
disclosure. For example, if the inventor or a joint inventor had publicly
disclosed a species, and a subsequent intervening U.S. patent, U.S. patent
application publication, or WIPO published application discloses a genus
(i.e., provides a more generic disclosure of the species), the disclosure
of the genus in the intervening U.S. patent, U.S. patent application
publication, or WIPO published application is not available as prior art
under AIA 35 U.S.C. 102(a)(2). Conversely, if the inventor or a joint
inventor had publicly disclosed a genus, and a subsequent intervening U.S.
patent, U.S. patent application publication, or WIPO published application
discloses a species, the disclosure of the species in the subsequent
intervening U.S. patent, U.S. patent application publication, or WIPO
published application would be available as prior art under AIA 35 U.S.C.
102(a)(2). Likewise, if the inventor or a joint inventor had publicly
disclosed a species, and a subsequent intervening U.S. patent, U.S. patent
application publication, or WIPO published application discloses an
alternative species not also disclosed by the inventor or a joint
inventor, the disclosure of the alternative species in the intervening U.S.
patent, U.S. patent application publication, or WIPO published application
would be available as prior art under AIA 35 U.S.C. 102(a)(2).
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Finally, AIA 35 U.S.C. 102(b)(2)(B) does not discuss "the claimed
invention" with respect to either the subject matter disclosed by the
inventor or a joint inventor, or the subject matter of the subsequent
intervening U.S. patent, U.S. patent application publication, or WIPO
published application. Any inquiry with respect to the claimed invention is
whether or not the subject matter in the prior art disclosure being relied
upon anticipates or renders obvious the claimed invention. A determination
of whether the exception in AIA 35 U.S.C. 102(b)(2)(B) is applicable to
subject matter in an intervening U.S. patent, U.S. patent application
publication, or WIPO published application does not involve a comparison of
the subject matter of the claimed invention to either the subject matter
disclosed by the inventor or a joint inventor, or to the subject matter of
the subsequent intervening U.S. patent, U.S. patent application
publication, or WIPO published application.
c. Prior art exception under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 U.S.C.
102(a)(2) (common ownership or obligation of assignment). AIA 35 U.S.C.
102(b)(2)(C) provides an additional exception to the prior art provisions
of AIA 35 U.S.C. 102(a)(2). The exception of AIA 35 U.S.C. 102(b)(2)(C)
disqualifies subject matter disclosed in a U.S. patent, U.S. patent
application publication, or WIPO published application from constituting
prior art under AIA 35 U.S.C. 102(a)(2) if 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." 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 prior art.
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 AIA 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 AIA 35 U.S.C. 102(a)(2) is not
available as prior art under either AIA 35 U.S.C. 102 or 103. Under pre-AIA
35 U.S.C. 103(c), such prior art could preclude patentability under pre-AIA
35 U.S.C. 102, 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 exception 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 AIA 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 99 or
enablement. 100 Also, the AIA 35 U.S.C. 102(b)(2)(C) exception does not
apply to a disclosure that qualifies as prior art under AIA 35 U.S.C.
102(a)(1) (disclosures made before the effective filing date of the claimed
invention). 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.
The Office is also revising the rules of practice in a separate action
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(RIN 0651-AC77) to include provisions that pertain to commonly owned or
joint research agreement subject matter (37 CFR 1.104(c)(4) and (c)(5)).
37 CFR 1.104(c)(4) applies to an application that is subject to AIA 35
U.S.C. 102 and 103, and 37 CFR 1.104(c)(5) applies to an application that
is subject to pre-AIA 35 U.S.C. 102 and 103. Commonly owned subject matter
under AIA 35 U.S.C. 102 and 103 is treated under 37 CFR 1.104(c)(4)(i), and
commonly owned subject matter under pre-AIA 35 U.S.C. 102 and 103 is
treated under 37 CFR 1.104(c)(5)(i).
A clear and conspicuous statement by the applicant (or the applicant's
representative of record) that the claimed invention of the application
under examination and the subject matter disclosed in the U.S. patent, U.S.
patent application publication, or WIPO published application (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 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 the applicant's representative) could provide a similar
statement required to disqualify the cited prior art. The applicant may
present supporting evidence such as copies of assignment documents, but is
not required to do so. Furthermore, the Office will not request
corroborating evidence in the absence of independent evidence which raises
doubt as to the veracity of such a statement. The statement under AIA 35
U.S.C. 102(b)(2)(C) will generally be treated by Office personnel
analogously to statements made under pre-AIA 35 U.S.C. 103(c). 101
D. Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome
Prior Art Rejections
The Office is also revising the rules of practice in a separate action
(RIN 0651-AC77) to provide a mechanism in 37 CFR 1.130 for filing an
affidavit or declaration to establish that a disclosure that was not made
more than one year before the effective filing date of the claimed
invention is not prior art under AIA 35 U.S.C. 102(a) due to an exception
in AIA 35 U.S.C. 102(b). Under 37 CFR 1.130(a), an affidavit or declaration
of attribution may be submitted to disqualify a disclosure as prior art
because it was made by the inventor or a joint inventor, or by one who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. Under 37 CFR 1.130(b), an affidavit or
declaration of prior public disclosure may be submitted to disqualify an
intervening disclosure as prior art if: (1) 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 (2)
the subject matter disclosed had been publicly disclosed by the inventor or
a joint inventor before the date the subject matter in the U.S. patent,
U.S. patent application publication, or WIPO published application on which
the rejection is based was effectively filed.
1. Showing That the Disclosure Was Made by the Inventor or a Joint
Inventor
AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period disclosure shall
not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if
the disclosure was made by the inventor or a joint inventor. An applicant
may show that a disclosure was made by the inventor or a joint inventor by
way of an affidavit or declaration under 37 CFR 1.130(a) (an affidavit or
declaration of attribution). 102 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. 103 However, a mere statement from the
inventor or a joint inventor without any accompanying reasonable
explanation may not be sufficient where there is evidence to the
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contrary. 104 This is similar to the current process for disqualifying a
publication as not being by "others" discussed in MPEP § 2132.01, except
that AIA 35 U.S.C. 102(b)(1)(A) requires only that the disclosure be by the
inventor or a joint inventor.
2. Showing That the Subject Matter Disclosed Had Been Previously
Publicly Disclosed by the Inventor or a Joint Inventor
AIA 35 U.S.C. 102(b)(1)(B) provides that a grace period disclosure shall
not be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if
subject matter disclosed had, before such disclosure, been publicly
disclosed by the inventor or a joint inventor. Similarly, AIA 35 U.S.C.
102(b)(2)(B) provides that a disclosure shall not be prior art to a claimed
invention under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed
had, before such subject matter was effectively filed under AIA 35 U.S.C.
102(a)(2), been publicly disclosed by the inventor or a joint inventor. An
applicant may show that the subject matter disclosed had been publicly
disclosed by the inventor or a joint inventor before the disclosure or
effective filing date of the subject matter on which the rejection was
based by way of an affidavit or declaration under 37 CFR 1.130(b) (an
affidavit or declaration of prior public disclosure). Specifically, the
affidavit or declaration must identify the subject matter publicly
disclosed and establish the date and content of their earlier public
disclosure. If the earlier public disclosure was a printed publication, the
affidavit or declaration must be accompanied by a copy of the printed
publication in accordance with 37 CFR 1.130(b)(1). 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, as required by 37 CFR 1.130(b)(2).
The manner of disclosure of subject matter referenced in an affidavit or
declaration under 37 CFR 1.130(b) is not critical. Just as the prior art
provision of AIA 35 U.S.C. 102(a)(1) encompasses any disclosure that
renders a claimed invention "available to the public," any manner of
disclosure may be evidenced in an affidavit or declaration under 37 CFR
1.130(b). That is, when using an affidavit or declaration under 37 CFR
1.130(b) to disqualify an intervening disclosure as prior art based on a
prior public disclosure by an inventor or a joint inventor, it is not
necessary for the subject matter to have been disclosed in the same manner
or using the same words. For example, the inventor or a joint inventor may
have publicly disclosed the subject matter in question via a slide
presentation at a scientific meeting, while the intervening disclosure of
the subject matter may have been made in a journal article. This difference
in the manner of disclosure or differences in the words used to describe
the subject matter will not preclude the inventor from submitting an
affidavit or declaration under 37 CFR 1.130(b) to disqualify the
intervening disclosure (e.g., a journal article) as prior art.
3. Showing That the Disclosure was Made, or That Subject Matter had Been
Previously Publicly Disclosed, by Another Who Obtained the Subject Matter
Disclosed Directly or Indirectly From the Inventor or a Joint Inventor
AIA 35 U.S.C. 102(b)(1)(A), 102(b)(1)(B), 102(b)(2)(A), and 102(b)(2)(B)
each provide similar treatment for disclosures of subject matter by another
who obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. Specifically, AIA 35 U.S.C. 102(b)(1)(A)
provides that a grace period disclosure shall not be prior art to a claimed
invention under AIA 35 U.S.C. 102(a)(1) if the disclosure was made by
another who obtained the subject matter disclosed directly or indirectly
from the inventor or a joint inventor, and AIA 35 U.S.C. 102(b)(2)(A)
provides that a disclosure shall not be prior art to a claimed invention
under AIA 35 U.S.C. 102(a)(2) if the subject matter disclosed was obtained
directly or indirectly from the inventor or a joint inventor. In addition,
AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) provide that a grace period
disclosure shall not be prior art to a claimed invention under AIA 35
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U.S.C. 102(a)(1), and that a disclosure shall not be prior art to a claimed
invention under AIA 35 U.S.C. 102(a)(2), if the subject matter disclosed
had, before such disclosure, been publicly disclosed by another who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor. An applicant may also show that another
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor in an affidavit or declaration under 37 CFR
1.130(a) or (b). Thus, an applicant may make use of a prior public
disclosure by another during the grace period if the applicant can
establish that subject matter disclosed originated with the inventor or a
joint inventor and that the subject matter was communicated by the inventor
or a joint inventor, directly or indirectly. Any documentation which
provides evidence of the communication of the subject matter by the
inventor or a joint inventor to the entity that made the disclosure of the
subject matter should accompany the affidavit or declaration.
4. Enablement
An affidavit or declaration under 37 CFR 1.130(a) or (b) need not
demonstrate that the disclosure by the inventor, a joint inventor, or
another who obtained the subject matter disclosed directly or indirectly
from an inventor or a joint inventor was an "enabling" disclosure of the
subject matter within the meaning of 35 U.S.C. 112(a). Rather, an affidavit
or declaration under 37 CFR 1.130 must show that: (1) The disclosure in
question was made by the inventor or a joint inventor, or the subject
matter disclosed was obtained directly or indirectly from the inventor or a
joint inventor (37 CFR 1.130(a)); 105 or (2) the subject matter disclosed
had, before such disclosure was made or before such subject matter was
effectively filed, 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 (37 CFR 1.130(b)). 106
5. Who may File an Affidavit or Declaration Under 37 CFR 1.130
In accordance with 37 CFR 1.130, the applicant or patent owner may
submit an affidavit or declaration. When an assignee, obligated assignee,
or person showing sufficient proprietary interest is the applicant under 35
U.S.C. 118 rather than the inventor, the inventor may sign an affidavit or
declaration under 37 CFR 1.130 to disqualify a disclosure of the invention
as prior art, but the declaration must be filed by a party having authority
to take action in the application. Authority to file papers in an
application generally does not lie with the inventor if the inventor is not
the applicant.
6. Situations in Which an Affidavit or Declaration Is Not Available
The provisions of 37 CFR 1.130 are not available if the rejection is
based upon a disclosure made more than one year before the effective filing
date of the claimed invention. The AIA retains the principle of the
one-year statutory time bar of pre-AIA 35 U.S.C. 102(b) in that a
disclosure more than one year before the effective filing date of a claimed
invention is prior art under the AIA's 35 U.S.C. 102(a)(1) that cannot be
disqualified under 35 U.S.C. 102(b)(1).
Additionally, the provisions of 37 CFR 1.130 may not be available if the
rejection is based upon a U.S. patent or U.S. patent application
publication of a patented or pending application naming another inventor
if: (1) The patent or pending application claims an invention that is the
same or substantially the same as the applicant's or patent owner's claimed
invention; and (2) the affidavit or declaration contends that an inventor
named in the U.S. patent or U.S. patent application publication derived the
claimed invention from the inventor or a joint inventor named in the
application or patent. The provisions of 37 CFR 1.130 are not available if
it would result in the Office issuing or confirming two patents containing
patentably indistinct claims to two different parties. 107 In this
situation, an applicant or patent owner may file a petition for a
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derivation proceeding pursuant to 37 CFR 42.401 et seq. (37 CFR 1.130(c)).
III. Joint Research Agreements
AIA 35 U.S.C. 102(c) provides three conditions that must be satisfied in
order for subject matter disclosed which might otherwise qualify as prior
art, and a claimed invention, to be treated as having been owned by the
same person or subject to an obligation of assignment to the same person in
applying the joint research agreement provisions of AIA 35 U.S.C.
102(b)(2)(C). 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. 108 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. 109 Second, the claimed invention must have
been made as a result of activities undertaken within the scope of the
joint research agreement. 110 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.111 Joint research agreement
subject matter under AIA 35 U.S.C. 102 and 103 is treated under 37 CFR
1.104(c)(4)(ii), joint research agreement subject matter under pre-AIA 35
U.S.C. 102 and 103 is treated under 37 CFR 1.104(c)(5)(ii). If these
conditions are met, the joint research agreement prior art is not available
as prior art under AIA 35 U.S.C. 102(a)(2).
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). 112 The major differences between AIA 35 U.S.C. 102(c) and the CREATE
Act are that: (1) 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 (2) the CREATE Act provisions only applied
to obviousness rejections and not to anticipation rejections.
In order to invoke a joint research agreement to disqualify a disclosure
as prior art, the applicant (or the applicant's representative of record)
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
provide a similar statement to disqualify the cited prior art as to the
issue of obviousness. 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 a disclosure that qualifies as prior art under AIA 35 U.S.C.
102(a)(1) (disclosures made before the effective filing date of the claimed
invention). 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.
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IV. Improper Naming of Inventors
Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws
still require the naming of the actual inventor or joint inventors of the
claimed subject matter. 113 The Office presumes that the named inventor or
joint inventors in the application are the actual inventor or joint
inventors be named on the patent. 114 Where an application names an
incorrect inventorship, the applicant should submit a request to correct
inventorship under 37 CFR 1.48. In the rare situation where it 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, Office
personnel should reject the claims under 35 U.S.C. 101 and 35 U.S.C.
115. 115
V. AIA 35 U.S.C. 103
AIA 35 U.S.C. 103 continues to set forth the nonobviousness requirement
for patentability. 116 There are, however, some important changes from
pre-AIA 35 U.S.C. 103.
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 claimed 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 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 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 in approach to the question of obviousness. 117
Further, AIA 35 U.S.C. 103 does not contain any provision similar to
pre-AIA 35 U.S.C. 103(b). 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, 118 the
need to invoke pre-AIA 35 U.S.C. 103(b) has been rare.
Finally, 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), and/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
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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, the common ownership, the obligation to
assign, or the joint research agreement must exist on or before the
effective filing date of the claimed invention, rather than on or before
the date the invention was made. If the provisions of AIA 35 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 (sometimes
referred to as obviousness-type) double patenting rejections.
Generally speaking, and with the exceptions noted herein, pre-AIA
notions of obviousness will continue to apply under the AIA. 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. 119 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 AIA 35 U.S.C. 103.120 Office personnel
should 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.
VI. Applicability Date Provisions and Determining Whether an Application Is
Subject to the First Inventor To File Provisions of the 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 (i.e., the
application is a pre-AIA application). Note that neither the filing of a
request for continued examination, nor entry into the national stage under
35 U.S.C. 371, constitutes the filing of a new application. Accordingly,
even if a request for continued examination under 37 CFR 1.114 is filed
after March 16, 2013, in an application that was filed before March 16,
2013, the application remains subject to pre-AIA 35 U.S.C. 102 and 103.
Similarly, a PCT application filed under 35 U.S.C. 363 before March 16,
2013, is subject to pre-AIA 35 U.S.C. 102 and 103, regardless of whether
the application enters the national stage under 35 U.S.C. 371 before or
after March 16, 2013.
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 claim to 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 claim to a claimed invention having an effective
filing date on or after March 16, 2013, AIA 35 U.S.C. 102 and 103 apply to
the application (i.e., the application is an AIA application). If there is
ever even a single claim to a claimed invention in the application having
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 claimed invention in
the application. This is the situation even if the remaining claimed
inventions all have an effective filing date before March 16, 2013, and
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even if the claim to a claimed invention having an effective filing date on
or after March 16, 2013, is canceled.
If an application filed on or after March 16, 2013, that did not
previously contain any claim to a claimed invention having an effective
filing date on or after March 16, 2013, (a pre-AIA application) is amended
to contain a claim to a claimed invention having an effective filing date
on or after March 16, 2013, the application becomes an AIA application (AIA
35 U.S.C. 102 and 103 apply to the application), provided that the newly
added claimed invention has support under 35 U.S.C. 112(a) in the
application filed on or after March 16, 2013. The application also remains
subject to AIA 35 U.S.C. 102 and 103 even if the claim to a claimed
invention having an effective filing date on or after March 16, 2013, is
subsequently canceled. If an amendment after an Office action causes the
application to change from being governed by pre-AIA 35 U.S.C. 102 and 103
(from being a pre-AIA application) to being governed by AIA 35 U.S.C. 102
and 103 (to being a AIA application), any new ground of rejection
necessitated by the change in applicable law would be considered a new
ground of rejection necessitated by an amendment for purposes of
determining whether the next Office action may be made final. 121
As 35 U.S.C. 132(a) 122 prohibits the introduction of new matter into
the disclosure, an application may not contain a claim to a claimed
invention that does not have support under 35 U.S.C. 112(a) in the
application (that is directed to new matter). Thus, an application cannot
"contain" a claim to a claimed invention that is directed to new matter
for purposes of determining whether the application ever contained a claim
to a claimed invention having an effective filing date on or after March
16, 2013.123 Therefore, an amendment (other than a preliminary amendment
filed on the same day as such application) seeking to add a claim to a
claimed invention that is directed to new matter in an application filed on
or after March 16, 2013, that, as originally filed, discloses and claims
only subject matter also disclosed in a previously filed pre-AIA
application to which the application filed on or after March 16, 2013, is
entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365,
would not change the application from a pre-AIA application into an AIA
application.
C. Applications Subject to the AIA but Also Containing a Claimed
Invention 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, each
claim must be patentable under AIA 35 U.S.C. 102 and 103, as well as
pre-AIA 35 U.S.C. 102(g), for the applicant to be entitled to a patent.
However, an application will not otherwise be concurrently subject to both
pre-AIA 35 U.S.C. 102 and 103 and AIA 35 U.S.C. 102 and 103.
For these reasons, when subject matter is claimed in an application
having priority to or the benefit of a prior-filed application (e.g.,
under 35 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.
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D. Applicant Statement in Transition Applications Containing a Claimed
Invention Having an Effective Filing Date on or After March 16, 2013
The Office is revising 37 CFR 1.55 and 1.78 in a separate action (RIN
0651-AC77) 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. 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.
February 11, 2013 TERESA STANEK REA
Acting Under Secretary of Commerce for Intellectual Property and
Acting Director of the United States Patent and Trademark Office
1 See Public Law 112-29, 125 Stat. 284 (2011).
2 All MPEP references are to MPEP (8th ed. 2001) (Rev. 9 Aug. 2012).
3 See D.L. Auld Co. v. Chroma Graphics, 714 F.2d 1144 (Fed. Cir. 1983) and
W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983).
4 Metallizing Engineering Co. v. Kenyon Bearing and Auto Parts, 153 F.2d
516 (2d Cir. 1946).
5 See United States v. Hohri, 482 U.S. 64, 69 (1987); Kelly v. Robinson,
479 U.S. 36, 43 (1986).
6 See Universal City Studios v. Reimerdes, 111 F.Supp. 2d. 294, 325
(S.D.N.Y. 2000) (the phrase "or otherwise traffic in" modifies the
preceding phrases "offer" and "provide"); Strom v. Goldman Sachs & Co., 202
F.3d 138, 146-47 (2nd. Cir. 1999) (the phrase "or any other equitable
relief" modifies at least the immediately preceding phrase "back pay"
demonstrating that Congress considered back pay a form of equitable
relief).
7 See 157 Cong. Rec. 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 to add a modifier at the end of a string of clauses, the modifier thus
added restricts the meaning of the preceding clauses.").
8 157 Cong. Rec. S1496 (Mar. 9, 2011) ("[S]ubsection 102(a) was drafted in
part to do away with precedent under current law that private offers for
sale or private uses or secret processes practiced in the United States
that result in a product or service that is then made public may be deemed
patent-defeating prior art. That will no longer be the case. In effect, the
new paragraph 102(a)(1) imposes an overarching requirement for availability
to the public, that is a public disclosure, which will limit paragraph
102(a)(1) prior art to subject matter meeting the public accessibility
standard that is well-settled in current law, especially case law of the
Federal Circuit."); 157 Cong. Rec. H4429 (June 22, 2011) ("[C]ontrary to
current precedent, in order to trigger the bar in the new 102(a) in our
legislation, an action must make the patented subject matter `available to
the public' before the effective filing date"). One commenter suggested
that Senator Leahy's remarks cannot be considered to be legislative history
because they appeared in the Congressional Record on the day after the
Senate acted on S. 23, the Senate version of the AIA. However, the bill
that was eventually enacted into law, H.R. 1249, was considered in both
the House and Senate after Senator Leahy's statement was printed in the
record. Also, the committee report for the bill that became law cites to
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Senator Leahy's remarks in its discussion of AIA 35 U.S.C. 102. See H.R.
Rep. No. 112-98 at 43, n.20 (2011). The same commenter also suggested that
AIA 35 U.S.C. 102(a) should not be construed to impose an overarching
public availability requirement because a bill that was introduced in
Congress six years earlier more clearly imposed such a standard, even
eliminating sales and uses entirely as independent bars to patentability.
The Office's role, however, is not to determine whether Congress could have
enacted a statute that is clearer and more forceful, but rather it is to
determine the most likely meaning of the statute that Congress actually did
enact.
9 See In re Kollar, 286 F.3d 1326, 1330 n.3 (Fed. Cir. 2002).
10 See Elan Corp., PLC v. Andrx Pharmaceuticals, Inc., 366 F.3d 1336, 1341
(Fed. Cir. 2004).
11 See TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d
965, 971 (Fed. Cir. 1984) ("[I]f a prima facie case is made of public use,
the patent owner must be able to point to or must come forward with
convincing evidence to counter that showing."); Star Fruits S.N.C. v. U.S.,
393 F.3d 1277, 1284 (Fed. Cir. 2005) ("So long as the request from the
examiner for information is not arbitrary or capricious, the applicant
cannot impede the examiner's performance of his duty by refusing to comply
with an information requirement which proceeds from the examiner's view of
the scope of the law to be applied to the application at hand. To allow
such interference would have the effect of forcing the Office to make
patentability determinations on insufficient facts and information. Such
conduct inefficiently shifts the burden of obtaining information that the
applicant is in the best position to most cheaply provide onto the
shoulders of the Office and risks the systemic inefficiencies that attend
the issue of invalid patents.").
12 See In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) ("the question is
not whether the sale, even a third party sale, `discloses' the invention at
the time of the sale, but whether the sale relates to a device that
embodies the invention") (citing J.A. La Porte, Inc. v. Norfolk Dredging
Co., 787 F.2d 1577, 1583 (Fed. Cir. 1986)); see also Zenith Elecs. Corp. v.
PDI Commc'n Sys., Inc., 522 F.3d 1348, 1356 (Fed. Cir. 2008) (a public use
itself need not be enabling).
13 See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998)
14 See Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1048 (Fed. Cir.
2001), and Group One, Ltd. v.v. Hallmark Cards, Inc., 254 F.3d 1041, 1047
(Fed. Cir. 2001); see also MPEP 2133.03(b).
15 See Voter Verified, Inc. v. Premier Election Solutions, Inc., 687 F.3d
1374, 1380 (Fed. Cir. 2012) (quoting SRI Int'l, Inc. v. Internet § Sys.,
Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) and Bruckelmyer v. Ground
Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)) (indicating that
indexing is a relevant factor, but not a prerequisite, to public
availability).
16 See Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 936 (Fed.
Cir. 1990).
17 See In re Lister, 583 F.3d 1307, 1313 (Fed. Cir. 2009) (explaining the
distinction between access to materials being restricted to authorized
persons as in Northern Telecom, and a person needing to take steps to gain
access to the materials, noting that significant travel that would have
been necessary for a person to gain access to the dissertation in In re
Hall, 781 F.2d 897 (Fed. Cir. 1986)).
18 See In re Hilmer, 359 F.2d 859 (CCPA 1966).
19 See MPEP § 2136.02 II and 2136.03 IV.
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20 In re Donohue, 766 F.2d 531 (Fed. Cir. 1985).
21 See In re Katz, 687 F.2d 450, 455 (CCPA 1982) (stating that it is
incumbent upon the appellant to provide a satisfactory showing which would
lead to a reasonable conclusion that appellant is the sole inventor where
there is a grace period publication listing individuals in addition to
appellant).
22 See, e.g., In re DeBaun, 687 F.2d 459 (CCPA 1982), In re Katz, 687 F.2d
450 (CCPA 1982), and In re Mathews, 408 F.2d 1393 (CCPA 1969).
23 See United States v. Hohri, 482 U.S. 64, 69 (1987); Kelly v. Robinson,
479 U.S. 36, 43 (1986).
24 See Brown v. Gardner, 513 U.S. 115, 118 (1994) (presumption that a given
term is used to mean the same thing throughout a statute).
25 See 35 U.S.C. 100(f), (g), and (j).
26 See 35 U.S.C. 112(b).
27 Pre-AIA 35 U.S.C. 135(b)(2) provides that "[a] claim which is the same
as, or for the same or substantially the same subject matter as, a claim of
an application published under section 122(b) of this title may be made in
an application filed after the application is published only if the claim
is made before one year after the date on which the application is
published."
28 Pre-AIA 35 U.S.C. 135(a) provides that "[a]ny such petition may be filed
only within the 1-year period beginning on the date of the first
publication of a claim to an invention that is the same or substantially
the same as the earlier application's claim to the invention, shall be made
under oath, and shall be supported by substantial evidence."
29 Pre-AIA 35 U.S.C. 154(d)(2) provides that "[t]he "right under [35 U.S.C.
154(d)(1)] to obtain a reasonable royalty shall not be available under this
subsection unless the invention as claimed in the patent is substantially
identical to the invention as claimed in the published patent application."
30 Pre-AIA 35 U.S.C. 252 provides that "[t]he surrender of the original
patent shall take effect upon the issue of the reissued patent, and every
reissued patent shall have the same effect and operation in law, on the
trial of actions for causes thereafter arising, as if the same had been
originally granted in such amended form, but in so far as the claims of the
original and reissued patents are substantially identical, such surrender
shall not affect any action then pending nor abate any cause of action then
existing, and the reissued patent, to the extent that its claims are
substantially identical with the original patent, shall constitute a
continuation thereof and have effect continuously from the date of the
original patent."
31 See Duncan v. Walker, 533 U.S. 167, 174 (2001) (quoting United States v.
Menasche, 348 U.S. 528, 538-39 (1955)).
32 See Shannon v. United States, 512 U.S. 573, 584 (1994) (no authority to
enforce concepts gleaned solely from legislative history that have no
statutory reference point).
33 See H.R. Rep. No. 112-98 at 73 (2011).
34 There are floor statements that discuss what would be encompassed by the
term "the subject matter" in subparagraph (B) of 35 U.S.C. 102(b)(1) and
102(b)(2). One can find support for the "same subject matter" standard (157
Cong. Rec. 1496-97 (Mar. 9, 2011) ("An additional clarification we have
been asked about deals with subparagraph 102(b)(1)(B) * * * . The inventor
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is protected not only from the inventor's own disclosure being prior art
against the inventor's claimed invention, but also against the disclosures
of any of the same subject matter in disclosures made by others being prior
art against the inventor's claimed invention under section 102(a) or
section 103--so long as the prior art disclosures from others came after
the public disclosure by the inventor.")), as well as for the "the subject
matter of the claimed invention" standard (157 Cong. Rec. 1370 (Mar. 8,
2011) ("Under the first subparagraph (B), at section 102(b)(1)(B), if an
inventor publicly discloses his invention, no subsequent disclosure made by
anyone, regardless of whether the subsequent discloser obtained the subject
matter from the inventor, will constitute prior art against the inventor's
subsequent application for patent in the United States. The parallel
provision at section 102(b)(2)(B) applies the same rule to subsequent
applications: If the inventor discloses his invention, a subsequently filed
application by another will not constitute prior art against the inventor's
later-filed application for patent in the United States, even if the other
filer did not obtain the subject matter from the first-disclosing
inventor.")). See also H.R. Rep. No. 110-314 at 57 (2007) (the provision
disqualifying prior art if "the subject matter had, before such disclosure,
been publicly disclosed by the inventor or a joint inventor or others who
obtained the subject matter disclosed directly or indirectly from the
inventor or a joint inventor" disqualifies any prior art under section
102(a)(1) if "the same subject matter" had already been publicly disclosed
by the inventor).
35 See 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B).
36 See 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A).
37 See 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B).
38 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). In Wands, the Federal
Circuit set forth the following factors to consider when determining
whether undue experimentation is needed: (1) The breadth of the claims; (2)
the nature of the invention; (3) the state of the prior art; (4) the level
of one of ordinary skill; (5) the level of predictability in the art; (6)
the amount of direction provided by the inventor; (7) the existence of
working examples; and (8) the quantity of experimentation needed to make or
use the invention based on the content of the disclosure.
39 See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252 (1965).
40 See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252, 256 (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).
41 The Office is also treating such a situation under 35 U.S.C. 101 because
35 U.S.C. 282 makes a distinction between a failure to comply with 35 U.S.C.
112 and a failure to comply with 35 U.S.C. 115, in that a failure to comply
with any requirement of 35 U.S.C. 112 (except the failure to disclose the
best mode) is listed in 35 U.S.C. 282(b)(3)(A) as a defense in any action
involving the validity or infringement of a patent, whereas a failure to
comply with 35 U.S.C. 115 is not discussed in 35 U.S.C. 282(b). In
addition, 35 U.S.C. 115(i)(3) provides that a patent shall not be invalid
or unenforceable based upon the failure to comply with a requirement under
35 U.S.C. 115 if the failure is remedied as provided under 35 U.S.C.
115(i)(1).
42 See Final Bulletin for Agency Good Guidance Practices, 72 FR 3432 (Jan.
25, 2007).
43 See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336 (Fed. Cir. 2008)
(explaining that in distinguishing between substantive and interpretative
rules, a rule is substantive when it affects a change in existing law or
policy that affects individual rights and obligations, where a rule which
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merely clarifies or explains existing law or regulations is
interpretative). As these examination guidelines are not substantive
rulemaking, but merely examination guidelines that set out the Office's
interpretation of 35 U.S.C. 102 and 103 as amended by the AIA, these
examination guidelines are exempt from the notice-and-comment requirements
of 5 U.S.C. 553(b) (or any other law) and the thirty day advance
publication requirement of 5 U.S.C. 553(d). See Cooper Techs., 536 F.3d at
1336-37 (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not
require notice and comment rulemaking for "interpretative rules, general
statements of policy, or rules of agency organization, procedure, or
practice") (quoting 5 U.S.C. 553(b)(A)); see also Mikkilineni v. Stoll, 410
Fed. Appx. 311, 313 (Fed. Cir. 2010) (Office's 2009 guidelines concerning
35 U.S.C. 101 are interpretive, rather than substantive, and are thus
exempt from the notice and comment requirements of 5 U.S.C. 553). As prior
notice and an opportunity for public comment are not required pursuant to 5
U.S.C. 553 or any other law, neither a regulatory flexibility analysis nor
a certification under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.)
is required. See 5 U.S.C. 603.
44 Chevron v. Natural Res. Def. Council, 467 U.S. 837 (1984).
45 See Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 930-31 (Fed. Cir.
1991); see also 35 U.S.C. 3(a)(2)(A) ("[t]he Director shall be responsible
for providing policy direction and management supervision for the Office
and for the issuance of patents and the registration of trademarks" and
"shall perform these duties in a fair, impartial, and equitable manner").
46 See Final Bulletin for Agency Good Guidance Practices, 72 FR 3432, 3440
(Jan. 25, 2007).
47 Under 35 U.S.C. 102(e) as amended by the American Inventors Protection
Act of 1999 (AIPA) (Pub. L. 106-113, 113 Stat. 1501 (1999) 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) was 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).
48 See 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").
49 See 35 U.S.C. 115 ("An application for patent that is filed under
section 111(a) or commences the national stage under section 371 shall
include, or be amended to include, the name of the inventor for any
invention claimed in the application.")
50 See Pub. L. 112-29, § 3(n)(1), 125 Stat. at 293.
51 See Pub. L. 112-29, § 3(n)(1), 125 Stat. at 293.
52 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
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it.
53 See Pub. L. 112-29, § 3(n)(2), 125 Stat. at 293.
54 See Pub. L. 112-29, § 3(n)(2), 125 Stat. at 293.
55 See 35 U.S.C. 102(a).
56 See 35 U.S.C. 132(a).
57 See In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994).
58 See 35 U.S.C. 102(b)(1).
59 See 35 U.S.C. 102(b)(2).
60 See 35 U.S.C. 100(i)(1).
61 See MPEP § 706.02(VI).
62 See 35 U.S.C. 100(i)(2).
63 See In re Ekenstam, 256 F.2d 321, 323 (CCPA 1958); see also MPEP §
2126.01.
64 See In re Carlson, 983 F.2d 1032, 1037 (Fed. Cir. 1992); see also MPEP
§ 2126.
65 See 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).
66 See 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).
67 See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing Impax
Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008),
and In re LeGrice, 301 F.2d 929, 940-44 (CCPA 1962)).
68 See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); see also In re
Schoenwald, 964 F.2d 1122, 1124 (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, 1382 (Fed. Cir. 2006) (stating that "proof of efficacy is not
required for a prior art reference to be enabling for purposes of
anticipation").
69 See In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985).
70 See Rasmussen v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. Cir.
2005).
71 See 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 687 (CCPA 1958).
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72 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.
73 See Invitrogen Corp. v. Biocrest Mfg. L.P., 424 F.3d 1374, 1379-80 (Fed.
Cir. 2005).
74 See American Seating Co. v. USSC Group, Inc., 514 F.3d 1262, 1267 (Fed.
Cir. 2008).
75 See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371
(Fed. Cir. 1998).
76 See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370
(Fed. Cir. 1998).
77 See American Seating Co. v. USSC Group, Inc., 514 F.3d 1262, 1267 (Fed.
Cir. 2008).
78 See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370
(Fed. Cir. 1998).
79 See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370
(Fed. Cir. 1998) (quoting Carella v. Starlight Archery, 804 F.2d 135, 139
(Fed. Cir. 1986)).
80 See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).
81 See In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994).
82 Cf. Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1325 (Fed.
Cir. 2009) (an invention is in public use if it is shown to or used by an
individual other than the inventor under no limitation, restriction, or
obligation of confidentiality to the inventor).
83 See, 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).
84 See, e.g, In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004),
Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104 (Fed.
Cir. 1985).
85 See, 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).
86 See, e.g, Voter Verified, Inc. v. Premier Election Solutions, Inc., 687
F.3d 1380-81 (Fed. Cir. 2012), In re Lister, 583 F.3d 1307 (Fed. Cir.
2009), and SRI Int'l, Inc. v. Internet Sec.Sys., Inc., 511 F.3d 1186 (Fed.
Cir. 2008).
87 See, e.g, Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed.
Cir. 2001).
88 See 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).
89 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)).
90 See 35 U.S.C. 102(b)(1)(B).
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91 See In re Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011) (subject matter does
not change as a function of how one chooses to describe it).
92 See 157 Cong. Rec. 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).
93 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 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. 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. 1370 (Mar. 8, 2011).
94 See 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 remained 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. 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 Inventor's Protection Act. See, e.g, Ex parte
Yamaguchi, 88 U.S.P.Q.2d 1606, 1610-12 (Bd. Pat. App. & Interf. 2008). In
In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010), the 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), so long as the
subject matter upon which the rejection was based was described in the
provisional application filing.
95 See MPEP § 2136.03 IV ("In other words, the subject matter used in the
rejection must be disclosed in the earlier-filed application in compliance
with 35 U.S.C. 112, first paragraph, in order for that subject matter to be
entitled to the earlier filing date under 35 U.S.C. 102(e)."); see also Ex
parte Yamaguchi, 88 U.S.P.Q.2d 1606, 1610-12 (Bd. Pat. App. & Interf. 2008)
(discussing the legislative displacement of In re Wertheim, 646 F.2d 527
(CCPA 1981), prior to enactment of the AIA by the provisional application
provisions of the Uruguay Round Agreements Act (URAA) (Pub. L. 103-465, 108
Stat. 4809 (1994)), and the eighteen-month publication provisions of the
American Inventor's Protection Act of 1999 (AIPA)).
96 As discussed previously, in In re Hilmer, 359 F.2d 859 (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.
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97 When examining an application to which the changes in 35 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
published 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).
98 See 35 U.S.C. 102(b)(2)(B).
99 See MPEP § 804.03 (prior art disqualified under the CREATE Act may be
the basis for a double patenting rejection).
100 See 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).
101 See MPEP § 706.02(l)(2)(II).
102 See In re Katz, 687 F.2d 450, 455 (CCPA 1982).
103 See In re DeBaun, 687 F.2d 459, 463 (CCPA 1982).
104 See Ex parte Kroger, 219 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).
105 See 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A).
106 See 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B).
107 See In re Deckler, 977 F.2d 1449, 1451-52 (Fed. Cir. 1992) (35 U.S.C.
102, 103, and 135 "clearly contemplate--where different inventive entities
are concerned--only one patent should issue for inventions which are either
identical to or not patentably distinct from each other") (quoting Aelony
v. Arni, 547 F.2d 566, 570 (CCPA 1977)).
108 See 35 U.S.C. 102(c)(1).
109 See 35 U.S.C. 100(h).
110 See 35 U.S.C. 102(c)(2).
111 See 35 U.S.C. 102(c)(3).
112 See 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 "[t]he 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.
113 See 35 U.S.C. 115(a) ("[a]n application for patent that is filed under
[35 U.S.C.] 111(a) or commences the national stage under [35 U.S.C.] 371
shall include, or be amended to include, the name of the inventor for any
invention claimed in the application").
114 See MPEP § 2137.01.
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115 As discussed previously, 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," while 35 U.S.C. 115 requires that "[a]n
application for patent that is filed under section 111(a) or commences the
national stage under section 371 shall include, or be amended to include,
the name of the inventor for any invention claimed in the application."
116 AIA 35 U.S.C. 103 provides: "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."
117 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
Pharms., 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.
118 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 35 U.S.C. 103(b)
rarely arose. Those cases continue to retain their validity under the AIA.
119 See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252, 256 (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).
120 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 the 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) ("Even if a reference discloses an inoperative device, it
is prior art for all that it teaches.").
121 See MPEP § 706.07(a).
122 35 U.S.C. 132(a) provides that "[n]o amendment shall introduce new
matter into the disclosure of the invention."
123 The MPEP set forth the following process for treating amendments that
are believed to contain new matter: (1) A new drawing should not be entered
if the examiner discovers that the drawing contains new matter (MPEP §
608.02); and (2) amendments to the written description or claims involving
new matter are ordinarily entered, but the new matter is required to be
canceled from the written description and the claims directed to the new
matter are rejected under 35 U.S.C. 112(a) (MPEP § 608.04). This process
for treating amendments containing new matter is purely an administrative
process for handling an amendment seeking to introduce new matter into the
disclosure of the invention in violation of 35 U.S.C. 132(a), and for
resolving disputes between the applicant and an examiner as to whether a
new drawing or amendment to the written description or claims would
actually introduce new matter into the disclosure of the invention.
[1388 OG 155]