Prior Art Under America Invents: The USPTO Explains First to File
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Oct 4, 2011 @ 6:16 pm
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.
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.
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!
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.