USPTO Publishes Proposed First to File Examination Guidelines

Earlier today the United States Patent and Trademark Office published proposed examination guidelines to implement the first-to-file changes of the America Invents Act (AIA), which go into effect on March 16, 2013.  The USPTO also published proposed rule changes to implement first to file in the Federal Register this morning as well.

At least over the last  year there has been great debate on IPWatchdog and elsewhere about the meaning of the new grace period under the AIA.  I have been explaining that under the US first to file system the inventor will still have a personal grace-period, but that the grace-period is personal and relates only to the inventor’s own disclosures, or the disclosures of others who have derived from the inventor. Further, I have explained that disclosures of third-parties who independently arrived at the invention will be used against the inventor. Said another way, there is no grace-period relative to third party, independently created disclosures.

Notwithstanding, some have taken the position that if the inventor discloses then that inventor has an absolute right to file a patent application within 12 months and nothing that anyone else does could be considered prior art against them.  This line of thinking says that an inventor disclosure creates an indefeatable option to file a patent application within 12 months.  That isn’t what the statute says, and would completely undermine any “first to file” aspects of the new law, but there were those who believed it nevertheless.

[Varsity-1-text]

Now that the USPTO has come out with examination guidelines we find out the truth.  I was right all along.  It isn’t yet time to collect on the bets, but the USPTO has now provided clear guidance on their interpretation of first to file and what the grace period covers.  Anyone who continues to believe that disclosure inoculates an inventor from subsequent prior art had better make sure their malpractice premiums are paid up!

The Examination Guidelines explain in relevant part:

The AIA in 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior art provisions of 35 U.S.C. 102(a)(1). These exceptions limit the use of an inventor’s own work as prior art, when the inventor has publicly disclosed the work either directly or indirectly. The provisions of 35 U.S.C. 102(b)(1)(A) indicate that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) One year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.

The Examination Guidelines then go on to specifically deal with how the grace period relates to an inventor disclosure:

Grace period inventor disclosure: 35 U.S.C. 102(b)(1)(A) first provides that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if: (1) The disclosure is made one year or less before the effective filing date of the claimed invention; and (2) was made by the inventor or a joint inventor. Thus, a disclosure that would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) shall not be prior art if the disclosure is made one year or less before the effective filing date of the claimed invention, and the written record of the patent application shows that the disclosure is by the inventor or a joint inventor. What is necessary to show that the disclosure is by the inventor or a joint inventor requires case-by-case treatment, depending upon whether it is apparent from the disclosure or the patent application specification that the disclosure is by the inventor or a joint inventor.

The Examination Guidelines then go on to specifically deal with how the grace period relates to a non-inventor disclosure:

Grace period non-inventor disclosure: 35 U.S.C. 102(b)(1)(A) also provides that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) One year or less before the effective filing date of the claimed invention; and (2) by another who obtained the subject matter directly or indirectly from the inventor or a joint inventor. Thus, if the disclosure upon which the rejection is based is by someone who obtained the subject matter from the inventor or a joint inventor, the inventor could provide an affidavit or declaration which may overcome the rejection.

Then the Examination Guidelines specifically deal with 102(b)(1)(B), saying:

The AIA in 35 U.S.C. 102(b)(1)(B) provides additional exceptions to the prior art provisions of 35 U.S.C. 102(a)(1). These exceptions disqualify a disclosure that occurs after a public disclosure by the inventor, joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor…

[T]he exception in 35 U.S.C. 102(b)(1)(B) requires that the subject matter in the prior disclosure being relied upon under 35 U.S.C. 102(a) be the same ‘‘subject matter’’ as the subject matter publicly disclosed by the inventor before such prior art disclosure for the exception in 35 U.S.C. 102(b)(1)(B) to apply. Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.

Therefore, not only do independently created disclosures present a prior art problem for inventors, but the personal grace period exception is available only when the subject matter disclosed by the inventor (or joint inventor or one in privity) is identical without any variations — even trivial variations.

Still further, the Examination Guidelines go on to address 102(b)(2)(A), saying:

Non-Inventor Disclosure Exception: 35 U.S.C. 102(b)(2)(A) provides that a disclosure which would otherwise qualify as prior art under 35 U.S.C. 102(a)(2) is not prior art if the disclosure was made by another who obtained the subject matter directly or indirectly from the inventor or a joint inventor.

The Examination Guidelines go on to address 102(b)(2)(B), saying:

Specifically, 35 U.S.C. 102(b)(2)(B) indicates that certain disclosures are not prior art if the disclosure of the subject matter of the claimed invention to be disqualified was made after a disclosure of the subject matter by the inventor or a joint inventor or after a disclosure of  the subject matter by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. In other words, an inventor, joint inventor, or someone who obtained the subject matter directly or indirectly from the inventor or joint inventor, disclosed the subject matter before the disclosure of the subject matter on which the rejection is based.

Further still, those who thought that affidavit practice would go away will be surprised.  The USPTO has been discussing the fact in various forums that there would be affidavit practice because it will be necessary for an inventor who claims one of the aforementioned exceptions to demonstrate that the prior art was either their own disclosure or derived from their own disclosure.  The Proposed Rule Changes explain:

The Office is providing for the submission of affidavits or declarations showing that: (1) A disclosure upon which a claim rejection is based was by the inventor or joint inventor or by a party who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (2) there was a prior public disclosure 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 now seems overwhelming evidence that the grace period afforded under the AIA is extremely limited and simply should not be relied upon by inventors.  We have a FIRST TO FILE system.

As you can imagine, there is much to be digested in these proposed rules and proposed examination guidelines.  We will no doubt be circling back and taking a deeper look, but at first glance I don’t see any surprises.

For those who wish to submit comments, they must be received on or before October 5, 2012. Comments should be sent by electronic mail message over the Internet addressed to: [email protected]. Comments may also be submitted by postal mail addressed to: Mail Stop Comments— Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, marked to the attention of Susy Tsang- Foster, Legal Advisor, Office of Patent Legal Administration.