The Impact of the America Invents Act on the Definition of Prior Art

By Gene Quinn
October 3, 2012

The America Invents Act (AIA) has now gone through its second phase of implementation.  Initially there were few things that went into effect over the initial 90 days after President Obama signed the legislation into law.  The first major wave of the AIA took effect on September 16, 2012.  See, for example, Citation of Prior Art, Supplemental Examination, Oath/Declaration and Post-Grant Review et al. The most significant of the changes to U.S. patent law, namely the shift from first to invent to first to file, will not take place until March 16, 2013.  This is a monumental change to U.S. patent law so it is never too early to discuss the many issues that will present with this shift.

The first and most obvious place to begin any discussion of the shift to first to file is with a very basic question: What is prior art?  This is anything but an easy, straight forward question even under first to invent laws that we know so well and have been familiar with virtually throughout the entire history of the United States.  The complexity in what seems an otherwise simple question stems from the fact that prior art is defined by statute.  There is no common sense way to conceptualize what is, or what is not, prior art.

The trouble with explaining what prior art is stems from the fact that everyone already thinks they know what it is. Conceptually we do not want to issue patents for inventions that are not considered new, which seems fair enough. The trouble is defining what is “new.” Prior art must be a reference of some type (i.e., a patent or a printed publication) or some type of knowledge or event (i.e., public knowledge, public use or a sale of a product) that demonstrates that the invention in question is not new.  This very basic definition of prior art will remain the same even after the U.S. converts to first to file.  But as with virtually everything in the patent space, generalizations do not get you far.  Understanding lies in comprehension of the specifics and nuances.

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Under U.S. first to invent law, which will apply to all patent applications filed on or before March 15, 2013, not all references, knowledge or events that can demonstrate that an invention is “old” or already known can be used by examiners or during litigation against an invention. Lets identify some definitive rules pertaining to novelty:

  • If the invention in question was described in a patent issued anywhere in the world prior to the patent applicant inventing it, then no patent can be obtained.
  • If the invention in question was described in a printed publication published anywhere in the world prior to the patent applicant inventing it, then no patent can be obtained.
  • If the invention were publicly known in the US, but not necessarily patented or published, prior to the patent applicant inventing it, then no patent can be obtained.

In each of these three cases we would say that the earlier reference or knowledge is prior art that prevents a patent from now issuing.

Now some more rules pertaining to what are known as statutory bars:

  • If the invention in question was described in a patent issued anywhere in the world more than 12 months prior to a US application being filed, then no patent can be obtained.
  • If the invention in question was described in a printed publication published anywhere in the world more than 12 months prior to a US application being filed, then no patent can be obtained.
  • If the invention in question was publicly used in the US more than 12 months prior to a US application being filed, then no patent can be obtained.
  • If the device, machine or compound in question was offered for sale in the US more than 12 months prior to a US application being filed, then no patent can be obtained.

In each of these cases we would also say that the earlier reference, knowledge or event is prior art that prevents a patent from now issuing, but this time not because the invention was not new, but rather because an application was made in the US too late.

One significant change to the law relates to statutory bars. The United States will not be converting to a pure novelty regime, but the so-called grace period is going to be so significantly reduced that it would seem to be completely useless, at least based on the proposed USPTO interpretation of the grace period.  See Defending the USPTO Interpretation of the New Grace Period. Inventors and corporations are going to be best served by not only wanting to be the first to conceive of an invention, but also the first to file a patent application.  In the event that a party does not want to file a patent application but wants to make it impossible for another party to obtain a patent then they should race to publish what they have discovered.  It is an over-broad statement to say that an application can never mature into a patent if there is a patent, publication or information made public prior to the filing of the patent application, but it will be the extraordinary exceptional case where a patent can be obtained after anyone — whether the inventor or third-parties — has done something to disclose the invention prior to filing an application for patent.

But will this influence the way that prior art is searched?  “No, it won’t change the way we do searches because it is our job to find whatever we can,” says Pat Walsh, co-found of the patent research company Walsh IP.  “Once the U.S. goes to first to file virtually everything we find should be prior art if an application has not been filed. Based on how the USPTO seems to interpret the statutory grace period it would be an extreme case where what we find wouldn’t be prior art. So our job will remain collecting the best, closest prior art we can find.”

While the search for prior art won’t likely be impacted, the value of the prior art located will be dramatically impacted according to Ken Hattori, partner in the Washington, D.C. firm of Westerman, Hattori, Daniels & Adrian, LLP. “US patents with a foreign priority claim will become tremendously stronger as prior art,” says Hattori.  “The subject matter disclosed in the US patent has an effectively filed date as priority date since the Hilmer doctrine is eliminated.”  This is significant because “there will be no Section 112 requirement for the description of the subject matter disclosed in the foreign specification.  Thus, the subject matter in a prior art US patent or application will go back to the foreign filing date as a reference.”

What does that mean? First, it means that perhaps the most significant change to U.S. patent law relates to the value of foreign prior art.  In patent circles what Hattori is referring to is known as the elimination of the Hilmer doctrine.  Under the Hilmer doctrine, you could use your foreign priority date to get behind prior art that surfaced between your foreign date and U.S. filing date.  However, your foreign filing date was not considered to be a prior art date that a patent examiner could use against others.  Hilmer has been eliminated by the AIA, so prior art will now include all kinds of foreign filing as of their foreign filing date, thus meaning that foreign patent applications and issued foreign patents will be stronger prior art against U.S. patents and pending applications.  In other words, it will be much harder for a U.S. applicant to overcome earlier filed foreign patent applications.  It also means it will be easier to subsequently challenge issued U.S. patents based on foreign patents and publications.

I agree with Walsh and Hattori.  Research will not be affected by the shifting definition of what is prior art because prior art researchers still looking for the closest, oldest articulation of an invention.  Similarly, once foreign prior art is found it will be substantially stronger from a challenge perspective.  What this means is that companies, both innovators and those who want to get around patents or seek to invalidate them need to pay attention to the changing landscape.

Peter Vanderheyden, Chief Product Officer at Article One Partners, told me that he anticipates that thanks to the AIA there will be increased interest in finding prior art at earlier and earlier stages.  This stems from the variety of new ways to challenge a patent after grant, as well as the various ways to submit prior art during prosecution to be considered by the examiner.  The recent September 16, 2012, implementation of AIA phase 2 ushered in new challenges and ways to submit prior art.  This should force companies to pay more attention to their own applications, but also to the applications and newly minted patents owned by competitors.

“Clients must pay attention to them so they can address potential problems economically, long before the only option that remains is expensive and painful patent litigation,” said Vanderheyden. “In the end that really was what the legislation was trying to accomplish — increase patent quality and decrease the litigious nature of the industry.”

Indeed, Vanderheyden is correct. While the cost of filing a post grant review, inter partes review or reexamination will cost more than many in the industry would have liked, it still represents only a small fraction of the overall cost of a patent litigation. According to the AIPLA the attorneys fees alone in a patent litigation can be anticipated to range on average between $2.5 to $5 million.

Of course, the cost of challenging low quality patents can be even further minimized if you can find the prior art quickly and submit it for consideration by the patent examiner during prosecution of the application. The third party pre-issuance submission of prior art provides an excellent opportunity to stop low quality claims from issuing, but you have to act quickly. The preissuance submissions by third parties applies to any patent application (filed before, on or after September 16, 2012). § 1.290(b) sets forth the rules relative to the deadline for filing a preissuance third-party submission. A third-party submission must be filed prior to the earlier of: (1) The date a notice of allowance; or (2) The later of: (i) 6 months after the date on which the application is first published by the USPTO, or (ii) The date of the first rejection of any claim by the examiner.

So what will attorneys tell their clients?  “I am going to tell clients to prepare for the likelihood that the definition of what is prior art will change and evolve over time through litigation,” says Beth Hutchens, who is a frequent guest contributor here on IPWatchdog.com and managing attorney at Hutchens Law Offices. “While we wait for the inevitable litigation to work its way through the courts, I’m certain there will be some adventures in prosecution as Examiners get use to the new system as well.”

There will certainly be growing pains, and ultimately at the end of the day litigation will be needed to understand the nuances of the new regime.  Unfortunately, for whatever reason Congress did not use terminology in the AIA that is consistent with the terminology used currently.  We think we know that is and is not going to qualify as prior art based on history, experience and common understanding.  That being said, it is always possible (if not likely) that there will be a few curve balls along the way.

But for the time being here are the things that everyone needs to understand about the new prior art regime that will go into effect on March 16, 2012:

  • The “grace period” will be so narrow that it will be useless to rely upon.
  • The way prior art is researched will not change.
  • The effect of foreign prior art in the U.S. will dramatically change, with foreign filings being considered prior art as of a much earlier date than under current law.

We are entering a brave new world where prior art will be more valuable the earlier it is found because finding it early will afford cheaper means to challenge low quality patents and patent claims.  For those that ignore the new mechanisms they will find themselves fighting the same expensive patent litigations in various jurisdictions and in front of various tribunals.

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 and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments.

  1. TINLA IANYL October 4, 2012 11:25 am

    Gene,

    I had a question in the comments of your “defending the USPTO interpretation …” Article that I suppose was posed to late to garner your attention. Since we are revisiting the topic now, may I pose it again. Here it is:

    “Gene, correct me if I’m wrong, but doesn’t your interpretation effectively construe part B in such a way as to entirely read it out of the statute? If not, then what, in your view, does part B add?”

    Thank-you.

  2. Gene Quinn October 4, 2012 3:39 pm

    TINLA IANYL-

    Let me start by giving the statute:

    “A disclosure made 1 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—

    (A) 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

    (B) 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.”

    I don’t think my interpretation reads (B) as a nullity.

    (A) covers the scenario where the disclosure was that of the inventor.

    (B) covers the situation where the subject matter disclosed by the inventor was subsequently published by another who directly or indirectly obtained the subject matter from the inventor.

    Scenario for (B): There first has to have been a previous disclosure by the inventor due to language that says “had, before such disclosure, been publicly disclosed by the inventor”. If someone else then publishes an article disclosing the same subject matter having previously been disclosed then the exception in (B) would apply. But the USPTO is reading “subject matter disclosed” to mean that there cannot be any trivial variation. That part is very restrictive and what makes the grace period virtually useless.

    -Gene

  3. Mark Nowotarski October 4, 2012 4:32 pm

    That part is very restrictive and what makes the grace period virtually useless.

    I agree. I just sent in my comments to fitf_guidance@uspto.gov to the effect:

    “I cannot imagine any realistic scenario under the proposed guidelines where an inventor who has had his/her invention copied from a publication will be able to qualify for the exception under 35 U.S.C. 102(b)(1)(B). There will always be at least one insubstantial change or trivial or obvious variation between what an inventor publishes what a copier produces. “

  4. Gene Quinn October 4, 2012 6:11 pm

    Mark-

    I agree. Ultimately the USPTO’s interpretation may be deemed inappropriate in court, but to advise clients that they have any kind of useful grace period will come with enormous risk. I think everyone should be advising that we have pretty darn near an absolute novelty law.

    Cheers.

    -Gene

  5. Inventor0875 October 4, 2012 8:22 pm

    How does this apply to third party photos/videos that happened to be taken of an invention, despite efforts by the inventor to hide the invention/experiments/testing from others? Are they considered to be derived?

    What if photos/videos are posted (web) and then others generate text/comments/speculation about the photos/videos?

  6. Mark Nowotarski October 4, 2012 9:49 pm

    How does this apply to third party photos/videos that happened to be taken of an invention, despite efforts by the inventor to hide the invention/experiments/testing from others? Are they considered to be derived?

    Good question. Depending upon what evidence you have, it seems to me that you could make a case for at least “indirectly obtained from the inventor”. There is also the issue of theft of trade secrets.

    What if photos/videos are posted (web) and then others generate text/comments/speculation about the photos/videos?

    I think your best bet will still be to show derivation so that you can invoke 102(b)1(A). The evidence of derivation would be that the text/comments/speculation refer back to your original publication.

    The real vulnerability for inventors that I see would be posting a description of your invention on the internet, say on a crowdfunding site like Kickstarter, and then someone else makes another device inspired by yours, but not an exact copy. Then I think the USPTO is saying that the inspired copy will be cited against your patent application if you don’t file your application before the inspired copy goes public.

  7. Anon October 5, 2012 8:17 am

    One thing I think that is critically overlooked in the treatment of the new grace period is the the notions of the differences and distinctions between “prior art” for 102 and 103.

    It appears that the drafters only had 102 on their minds and thus wrote a law that addresses a grace period for the exact (i.e. all elements – and only all elements) thing that a first inventor has when publishing prior to filing. We have a Novelty Grace Period, but we do not have an Obviousness Grace Period.

    The problem of course is that variations on the theme (including any shallow and obvious variation) typically will also include the theme itself, and that the combination of items may often (almost always?) make each of the items obvious in view of each other. The desire to have the law overly objective results in an overly strict application of obvious bars eviscerate the Novelty Grace Period. If the second publisher does not on its face admit derivation from the first publisher, the law’s only recourse is to challenge the strict bar through a derivation procedure wherein the first publisher has to “prove a negative,” and has none of the information needed to prove that negative. Further, I am not sure this is fixable by a technical amendment, as the Grace Period is an intricate thing and making such work in a first to file environment is fraught with complications and trade-offs (I think any technical amendment would itself create other problems).

  8. TINLA IANYL October 9, 2012 10:43 am

    Gene,

    You said:

    “(B) covers the situation where the subject matter disclosed by the inventor was subsequently published by another who directly or indirectly obtained the subject matter from the inventor.

    Scenario for (B): There first has to have been a previous disclosure by the inventor due to language that says “had, before such disclosure, been publicly disclosed by the inventor”. If someone else then publishes an article disclosing the same subject matter having previously been disclosed then the exception in (B) would apply. But the USPTO is reading “subject matter disclosed” to mean that there cannot be any trivial variation. That part is very restrictive and what makes the grace period virtually useless.”

    Under that construction, isn’t it true that someone could take the inventor’s published article, scribble “and slap a coat of paint on it,” (or something equally trivial), make some photocopies, and hand them to some friends, and thus anticipate the later filed application? I doubt that the Federal Curcuit will accord the statute such an absurd construction, and I wouldn’t want to be the chicken little that told clients the sky was falling by defending such a construction as likely to prevail. The PTO may try to push it for a while, but will get embarrassed in the long run. Meanwhile, some applicants will get cheated by the PTO applying art that shouldnt apply, while some inventors will get cheated by attorneys telling them its too late to file, when it’s not. And some applicants will get cheated because they put off publishing until the app was filed, and someone else published or filed in the meantime.