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Prior Art Under America Invents: The USPTO Explains First to File


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: October 4, 2011 @ 6:16 pm
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By now virtually everyone in the patent and innovation communities knows that on September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act.  This is an enormous change to U.S. patent laws, likely the largest change in U.S. patent law since at least 1790.  The last major re-write was in 1952, and that wasn’t a re-write so much as a codification of case law that had developed over the previous decades.  This is a major change and one that must be thoroughly and completely respected in terms of breadth and depth.

A lot of arguing has been going on here on IPWatchdog.com about certain portions of the so-called first to file provisions contained in the Act.  Truthfully, the new 102(b)(1)(B) is not written as clear as it probably could be, but I have steadfastly maintained that it provides only a personal grace-period, nothing more.  Many have criticized me at great lengths, and some have even told me via private e-mail they have stopped reading IPWatchdog because I am dead wrong.  I have even had a variety of entertaining discussions with Staffers on the Hill and a variety of senior attorneys and high ranking corporate counsel.  Notwithstanding those who vehemently disagree with me, with every new statement made by the United States Patent and Trademark Office my position seems to be further confirmed.

The grace-period provided to inventors is only a personal grace-period and subsequent disclosure that is not derived from the inventor will create a statutory bar to patentability.  My source?  The United States Patent and Trademark Office.

Right after the AIA was enacted the USPTO provided a PDF document titled America Invents Act, Potential Items for Patents.  The document was really an early call for comments from the USPTO, identifying issues and requesting those that wish to comment to submit comments that would be considered as they go about the business of rulemaking and/or providing guidance to patent examiners.  In this document the USPTO said:

the 1 yr grace period exceptions in 35 U.S.C. 102(b) (to 35 U.S.C. 102(a)) limited to disclosures by an inventor or another who obtained it from the inventor.

Many dismissed this early signal from the USPTO because it was just a statement of issues.  Still, I thought it curious that the Office wasn’t interested in comments relative to what some were construing as a 12 month option to file a patent without any subsequent disclosure being considered prior art.  Surely if that were how the USPTO were reading the exclusions in 102(b)(1) they would have wanted comments discussing the particulars.


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More recently, however, the Office has published an even more detailed statement about the parameters of the first to file system now in place, which will take effect on March 16, 2011.  Under the heading “First to File” the Patent Examination page that is a part of the growing AIA Implementation Information on the USPTO website says:

The First Inventor to File (FITF) provisions transition the U.S. to a first-inventor-to-file system from a first-to-invent system, while including a 1-year grace period for disclosures by (or derived from) applicant. Prior art disclosures made publicly available one year or less before the effective filing date can be overcome by applicant showing (1) the prior art disclosure was by another who obtained the disclosed subject matter from the applicant (a deriver), or (2) the applicant or a deriver publicly disclosed the subject matter before the date of the prior art disclosure. The effective filing date for a claimed invention in an application now includes the filing date of a prior foreign application if applicant is entitled to foreign priority and thus, in this situation, the 1-year grace period will be measured from the foreign priority date claimed. A prior disclosure of the invention which is publicly available more than one year before the effective filing date of an application continues to be a statutory bar. Prior public use or sale is no longer limited to the U.S. For prior art purposes, U.S. patents and patent application publications are available as prior art as of any foreign priority date, provided that the subject matter being relied upon is disclosed in the foreign priority application. Applicants can now rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. 102. In addition, derivation proceedings are established in place of interference proceedings for FITF applications and patents. The FITF provisions take effect on March 16, 2013. 35 U.S.C. 102 and 103 in effect before March 16, 2013 will apply to applications filed before March 16, 2013, and continuations and divisionals of such applications. 35 U.S.C. 102 and 103 in effect on March 16, 2013, will apply to any application that ever contains a claim that has an effective filing date on or after March 16, 2013. 35 U.S.C. 102(g) in effect before March 16, 2013, will apply if the application ever contains a claim that has an effective filing date before March 16, 2013.

(emphasis added).

I have been arguing that 102(b)(1)(A) discussed “the disclosure” and 102(b)(1)(B) discussed “the subject matter disclosed,” which are two different things intended to cover two different scenarios.  Others have argued that 102(b)(1)(B) says that once an inventor discloses then he/she has up to 12 months to file a patent application and any subsequent disclosure of the same invention — under (A) — or any subsequent disclosure of the same subject matter — under (B) — could not be used against the disclosing inventor.  Such a reading always seemed tortured to me.  If that is the case then why discuss derivation in (B) at all?

102(b)(1)(B) means the following to me:

  • the subject matter disclosed — i.e., the subject matter related of the inventor’s disclosure
  • had before such disclosure — i.e., before the disclosure by the inventor
  • been publicly disclosed by the inventor or joint inventor or another — i.e., 102(b)(1)(B) only applies to when an invention was previously disclosed
  • who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

So for 102(b)(1)(B) you have to have the inventors invention being disclosed by either the inventor, joint-inventor or someone who derived. Then subsequent disclosures of related subject matter are not prior art if they were obtained directly or indirectly from the inventor or a joint inventor.  Such access from the inventor or joint inventor could presumably come from the requisite disclosure mentioned in (B).

It seems to me that so many were trying to turn this first to file system into a first to publish system. Granted, that is what Senator Jon Kyl (R-AZ) explained the AIA meant in the legislative history, which prompted me to caution against relying on the legislative history.  See America Invents: Lies, Damn Lies and Legislative History.  For those who have actually watched the AIA made into law it is clear that the legislative history contains a lot of statements that are simply false on their face, a number of statements that should properly be characterized as mischaracterizations and few purely true statements.

I’m not really sure how or why so many are so convinced that the AIA is a first to publish statute that gives the inventor who discloses an option to file a patent application for up to 12 months without any subsequent disclosure being prior art.  First, we went through this ad nauseum with many complaining that issues of derivation would be commonplace and more difficult than interference proceedings, despite that fact that a “derivation proceeding” will likely be quite rare.  You see, derivation will come up in virtually all cases and will be what 131 affidavit practice morphs into; but we knew that and discussed that within the community for quite a while. In fact, many of us railed against he fact that the grace period wasn’t much of a grace period at all because it was only personal to the inventor, and subsequent independent disclosure would prevent the inventor from obtaining a patent. We went through all that because of 102(b)(1)(B) not covering subsequent independent disclosure.

If (B) gives a blanket exclusion to subject matter, which cannot be used as prior art after a disclosure by an inventor, that would lead to nearly ridiculous results.  Imagine for example that an inventor discloses a specific embodiment of a coffee cup and then subsequently another who did not derive independently comes up with and discloses a coffee cup with a lid. If (B) does more than relate to a personal grace-period the subsequent disclosure could not be used against the first to publish inventor as prior art because it relates to the same “subject matter.” That would mean that the inventor could incorporate the cup and the lid into his/her patent application and obtain claims.  You might be tempted to say that is impossible, but if the cup with the lid is not prior art then under what rationale could an examiner issue a good rejection?  This would lead to results that turn the patent system upside down, and was clear evidence to me that those arguing that 102(b)(1)(B) excluded out subsequent independently disclosed inventions was fanciful at best.

The way 102(b)(1)(B) makes the most sense to me, and the way the USPTO seems to be interpreting it, is as saying you cannot learn from the inventor’s disclosure and then subsequently disclose something additional which would be used as prior art against the inventor. So the inventor gets a grace period for the invention disclosed and any subsequent disclosure that relates to subject matter “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.”  This is, after all, what the express terms of 102(b)(1)(B) says.

I’m sure there will still be some that will continue to say that I am wrong, which doesn’t bother me in the least.  I already have some friendly “action” on the ultimate interpretation of 102(b)(1), and I am always happy to take on some additional friendly “action.”  I am convinced I am correct and it seems that the USPTO is clearly leaning in that direction, notwithstanding the legislative history that suggests otherwise.  But don’t let me dissuade you from offering to buy me dinner or giving me a case of free beer should I be ultimately correct!

Cheers!

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Posted in: Congress, Gene Quinn, IP News, IPWatchdog.com Articles, Patent Reform, Patents, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

13 comments
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  1. Gene:

    Inasmuch as we worked this out over cocktails, along with a 3-ring annotated binder copy of the AIA in New York (what fun!), it seems to me that slightly tipsy is the best way to appropriate a deep understanding of the AIA. Completely sober leads to too much distraction and gnashing of teeth. More of this sort of thing, ie, mis-understood exceptions, etc., will come to light as we go along and each of the PTO and CAFC weigh in.

    Lets face it, each year cases evolve/trim/reorient the way statutory language is understood. This law will be no exception to the rule. It is just a shame that, right out of the gate, there will be some elements that will need fixing owing to flat-out mistatements made during the legislative process. This time, hopefully, those of us who work in the field and have the interests of the system at heart, and not just the interest of single stake holders, will have a chance to be called upon and heard.

    I hate to reference the past Speaker of the House on any issue, but she did have a point when she said, “we have to pass it to know what is in it.” Exactly.

  2. John,

    Us practitioners should probably read Section 3 of the AIA (which has the new 35 USC 102(b) provision) at least 20 times (instead of the at least 10 times recommended for the entire AIA). The nuances in this Section alone give me nightmares and Excedrin headaches, much like Hatch-Waxman (which I refer to as the “multi-headed hydra”).

  3. John,

    Before I forget, I also refer to the AIA as the “Abominable Inane Act.” What a sad excuse for so-called “patent law reform.” I predict we’ll rue the day Congress passed and Obama signed this malarkey.

  4. Gene,

    I must say that no other interpretation than yours occurred to me when I read the statute myself. As you said – if yours is not the correct interpretation, then we really haven’t created a FITF system at all.

  5. It seems to me that the “personal to the inventor” issue will first be tested in the software art units. A large fraction of the art cited in this area is less than a year old and inventors are going to have a strong incentive to get behind these young citations.

  6. Hey Gene, I tend to agree with you (I think). No drama, just my opinion here. I could be wrong…

    Here is my take. Previously, a “first-to-invent” standard permitted an applicant to antedate prior art with proof of earlier invention. Under AIA, a 1-year grace period will still apply for disclosures made only by the inventor(s) or someone who derived the inventor’s subject matter. Importantly, non-derived third party disclosures prior to application filing date can negate patentability. Thus, first-to-file is controlling. If inventors file ASAP – no worries.

    Put another way, the personal one-year grace period can be cut short by anticipating third-party disclosures that occur prior to filing at PTO.

  7. Mark,

    The focus may be on the software art units (whatever that means), but the focus should be on what the law means.

    The pivotal element under consideration is whether or not the protection afforded by an exception to the prior art Patent Defeating mechanism serves a meaningful or valuable end.

    If indeed the protection is one merely of “personal to the inventor,” then the protection is chimerical. The protection is defeated by another’s prefiling disclosure and that other merely claiming that the invention was independent – and then it will be up to the application to prove – without power of supeona – that derivation actually happened.

    The end result of this will be the opposite of the intended result (if I assume that the intended result was an enabling of pre-filing disclosure). The end result will be that any pre-filing disclosure runs the risk of announcing to others that their independent invention should be put into the public eye to defeat the applicant’s patent.

    Not to be overly alarmist, but this reading of the law will be a DO NOT DISCLOSE vibrant red flashing warning light to all my clients. If you disclose, your own disclosure won’t hurt you. Small consolation as the personal disclosure will still function as a call for others to disclose their independent inventions, which will still defeat the applicant’s attempt to obtain a patent.

  8. Gene:

    I’m having trouble understanding how the PTO’s latest explanation supports your position regarding 102(b)(1)(B). As you have quoted above, it says:

    “Prior art disclosures made publicly available one year or less before the effective filing date can be overcome by applicant showing….(2) the applicant or a deriver publicly disclosed the subject matter before the date of the prior art disclosure.”

    Nowhere does it say that these “prior art disclosures” must be made by the inventor or a deriver. Clearly, from the above, a prior art disclosure by a non-deriving third party less than one year before the effective filing date of my application can be overcome by my showing that I (or a deriver) publicly disclosed the same subject first.

  9. First, the USPTO has not definitively addressed this controversy. Second, the USPTO is not the last word on what the law means. Of course I accept that the USPTO may apply the new 102 as Gene Quinn interprets it, but that does not mean it is a correct interpretation.
    If (as Quinn argues) the only 1-year exception is for disclosures made by the inventor or by another who derived the subject matter disclosed from the inventor, the 102(b)(1)(B) is superfluous. Section 102(b)(1)(A) covers all of the disclosures supposedly excepted. Quinn has argued that 102(b)!)(A) deals with “the disclosure” and 102(b)(1)(B) deals with “the subject matter disclosed” in the disclosure and so 102(b)1)(B) is not superfluous. However, by the terms 102(b)(1), only a “disclosure” made 1 year or less before the effective filing date is excluding as prior art. Under long established understandings, such a “disclosure” includes all of the subject matter disclosed in the disclosure. So again, 102(b)(1)(B) is superfluous.
    Quinn wants to interpret 102(b)(1)(B) as “the subject matter disclosed [in the disclosure by or derived from the inventor in section 102(b)(1)(A)]” while I and others interpret 102(b)1)(B) as “the subject matter disclosed [in the disclosure in 102(b)(1)—i.e. the disclosure to be excluded as prior art]”. Grammatically, because 102(b)(1)(A) and 102(b)(1)(B) are alternatives having the same and equal relationship to the preamble 102(b)(1), it does not make sense to choose an interpretation that requires 102(b)(1)(B) to be subservient to 102(b)(1)(A) when there is a perfectly valid interpretation of 102(b)(1)(B) that is consistent with it as a true and full alternative to 102(b)(1)(A).
    None of these arguments depend upon legislative history.
    The pros and cons of having a just a personal grace period for the inventor or of having a first to publish grace period are each valid, but they do not affect the interpretation of the law. I do not think that any of the consequences of a first to publish grace period are so ridiculous that the law cannot be interpreted as I do above. Congress has passed plenty of laws that have unintended consequences, but that does not invalidate them.
    I believe that Congress might have been trying to solve the problem of too-common derivation proceedings, but they chose language that can lead to other unfortunate results. But again, that does not make the law invalid.
    Regarding the cup with lid example, when the first to publish inventor files a patent application, the cup with lid variant is publicly available to be included in the application (just as all public information is and has always been available to be included in a patent application on the day of filing. The second to publish inventor can, under the new law, argue that the first inventor is not entitle to the cup with lid because it was derived from the second inventor. See new 35 USC 291 and 135. So the ridiculous result can be avoided.

  10. To all:

    When you read my article which Gene graciously posted (although he disagrees with at least one of my conclusions which is OK to as we’re talking about the Abominable Inane Act which is worded horribly in my view), there are other interpretations of 102(b)(1)(B). Unfortunately, because this provision won’t go into effect until March 16, 2013, we won’t know which interpretation is considered “correct” (I use “correct” advisedly) by the courts potentially for several years. Again, how I hate the AIA in all its shades and colors!

  11. I listened to the MBHB presentation given by Grant and Don Zuhn, which was excellent, and they addressed some of these issues pretty directly. They both lamented the lack of definitions for what amounts to *disclosure*, be it secret sales or just public use while testing where no details are disclosed?, what constitutes being *otherwise available to the public*, as in testing where anyone walking by can see the mechanism? Sounds a bit like Trade Secret time to me, which is really unfortunate in the greater scheme of things as far as I am concerned. It sounds like they will be archiving it on their web site very soon, and might be a good way to get an up-to-the minute look at things as they are developing.

    All the best,
    Stan~

  12. BTW-
    Their slide show also has actual *page numbers* of the original copy of the America Invents Act *legislation* for the relevant sections included, as in actually physically finding things, which I was struggling with before.

    SD~

  13. Imagine a society that until now has enjoyed, alone and exclusively, the privilege of living in a world of full color. Suddenly it is announced that the lights are going to go out, leaving that society in the same world as everybody else, one that is only black and white. There is public debate within the affected society, what the manifold consequences might be. That debate is followed in fascination by the denizens of the B&W world, who see nothing problematic about living in a B&W world, and marvel at the levels of fantasy exhibited by debaters who have never bothered to take a look at world B&W to find out for themselves.

    For example, on planet B&W, the concept of “made available to the public” is as old as the hills, and not in any way “difficult”. But keep debating it please. It adds to the gaiety of nations. And lawyers are paid to anticipate all possible eventualities. But don’t worry, it’s not going to be as bad as you suppose. On post-issue opposition, for example, if you have to show the PTO, at the outset, a greater than evens likelihood of success, how many are going to be filed. My 30 years of experience of post-issue oppositions at the EPO tells me that it will be vanishingly small numbers.

    Lots of terminology in the AIA has been borrowed from world B&W. That’s not a surprise, is it?