USPTO Publishes Proposed First to File Examination Guidelines

By Gene Quinn
July 26, 2012

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: fitf_rules@uspto.gov. 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.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 16 Comments comments.

  1. EG July 26, 2012 11:37 am

    Gene,

    Thanks for the info on the proposed AIA “first to file” regime rules. The most worrisome aspect I’ve seen so far is that, for nonprovisional applications filed on or after March 16, 2013 and which claim the benefit of a foreign, nonprovisional or provisional priority date before March 16, 2013, the applicant must provide a statement (within certain designated periods) whether such a nonprovisional contains “at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013.” In addition, there is also provided that if such a nonprovisional does not contain such a claim, but also discloses subject matter not also disclosed in the foreign, nonprovisional or provisional priority application, the applicant must provide a statement that the nonprovisional includes such subject matter. See proposed amendment to 1.55(a)(4).

    Requiring the applicant to make such statements is, in my opinion, problematic, especially with regard the second “disclosed but unclaimed subject matter” basis for this requirement. The asserted basis for this requirement is that, if the USPTO is required to make such a determination, “examination costs will significantly increase.” But nowhere do I see a reference to the AIA statute for the authority of the USPTO to impose such a requirement.

  2. MaxDrei July 26, 2012 12:24 pm

    Fascinating stuff. Many were wondering just how to reconcile a US-style grace period with First to File. Now we see how the USPTO is going to manage.

    I’m wondering about Chinese Whispers ie stuff that has originated with A, the true and first inventor, suffers engarblement, and is then re-published, and that re-publication occurs before A files. How does one decide whether the garbled subject matter of the re-publication is the “same”?

    I ask because since 1978 the EPO has been deciding whether the invention disclosed in a Paris Convention priority document is the “same” as the subject matter claimed in the pending application or granted patent. That argument, what exactly is meant by “same”, is still ongoing, even though the comparison is confined to a microscopic picking apart of the respective text of just two historical dated documents.

  3. Gene Quinn July 26, 2012 12:43 pm

    Max-

    I don’t know what will ultimately be the law on the point… we undoubtedly have years to a full answer if we ever get one that is concrete enough to be satisfying. For now it looks like “same” needs to be exact. If there are variations, no matter how trivial, then the grace period would not apply. Of course, that only raises more questions.

    -Gene

  4. Stan E. Delo July 28, 2012 11:06 am

    Max-

    I am reminded of the Doctrine of Equivalents (Equivalence?) here in the US. I am not really sure exactly what that is, since I was still pretty clueless when it was being discussed on InventNet about ten years ago.

  5. Ron Hilton July 29, 2012 9:30 pm

    I am glad to see that you now concede that 102(b)(1)(B) would provide some prior-art immunity, albeit very limited, to subsquent non-inventor disclosures (i.e. by an _independent_ third party). However, you continue to maintain a strawman in suggesting that such an interpretation equates to an over-reliance on the grace period, which was never my position. Rather, as I have repeatedly tried to explain, while it has always been unwise to rely upon the grace period, and becomes even moreso under AIA, I would not discourage a client from filing as soon as possible after a premature disclosure by themselves or others if there were any chance that the grace period might apply.

  6. Blind Dogma July 29, 2012 11:24 pm

    Ron,

    What part of “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.” do you feel is a concession that you speak of?

  7. Ron Hilton July 29, 2012 11:44 pm

    The part that discusses “how the grace period relates to a non-inventor disclosure.” As much as the USPTO apparently dislikes the provision for non-inventor disclosure, and proposes to interpret it as narrowly as possible, even they could not deny that it does in fact exist in the statute.

  8. Stan E. Delo July 30, 2012 2:04 am

    Ron writes in small part;

    “even they could not deny that it does in fact exist in the statute.”

    What kind of gobbeldy gook is this? Why should you care about *grace periods* at all? You seemingly would like to *free source* software just because it will be more convenient for you. Why do you attend here? Just to find out where to swipe the next new codes? I suspect the latter is the real truth, whether you will admit it or not. Go Invent Something!

  9. Blind Dogma July 30, 2012 7:27 am

    Must be that same verbatim protection that even a trivial or obvious change destroys.

    Yes, I could see where that comes in handy.

    /off sarcasm

  10. Ron Hilton July 30, 2012 11:24 am

    Stan,

    You must be confusing me with someone else. I said nothing about free software. I built one successful startup company and am working on a second based upon patented commercial software. Speaking of startups, how is your wind energy venture going?

  11. Ron Hilton July 30, 2012 11:38 am

    There has never been any question that the grace period in AIA is significantly weakened, and the proposed USPTO interpretation weakens it even further. Having said that, it can still serve a useful purpose for inexperienced inventors who unwisely make a disclosure without filing first. That’s why it’s called a “grace” period – not something to be relied on as the standard operating procedure, but as a potential remedy for premature disclosure. The third-party provision can help protect against the effects of unauthorized propagation of the disclosure by non-inventors without having to prove derivation. My point has always been that the interests of a client in this unfortunate but very possible situation would not be well served by advising them to abandon the invention. The “grace period” gives them a potential out, and to deny that it exists would deprive them of that option.

  12. Stan E. Delo July 30, 2012 8:13 pm

    Ron-

    Oops! Sorry about that! Right now I am developing the production prototype, casting patterns and a few other things now that I finally have some money coming in after being out of work for about 6 months. The idea is to be able to offer a sort of turn-key licensing agreement to make the license more valuable and attractive. Otherwise I will have to boot-strap my way into production a little at a time unless I can find an angel investor.

  13. Ron Hilton July 30, 2012 9:06 pm

    It’s always good to approach a start-up with a bootstrap mentality. It keeps you focused on the right things from a business perspective and makes it a more attractive investment if and when you need outside capital.

  14. Stan E. Delo July 30, 2012 9:38 pm

    I think I have already found 2 ideal licensing prospects, and one of them recently stopped production on one of their turbine lines, which ironically enough was nearly exactly the same diameter as my first14-foot production version will be. They had about 30 protos they were testing, using a new type of PM generator they have a patent on. That way I could just build new rotors to sell them that could be a direct bolt-on option for them, and make a Lot more profit than licensing my rotor technology to them. They already have the marketing all done, and I could just send them rotors as or if they need them. Maybe even a West Coast installation outlet for them, as they are in Vermont. Now That would be a really fun job!

    Stan~

  15. Ron Hilton July 31, 2012 12:35 am

    Build vs. license is kind of like bootstrap vs. capital. The former require more time and effort but could yield a greater return, and at least put one in a stronger position to do the latter.