With this edition of McDermott’s IP Update, we observe the full implementation of the America Invents Act (AIA).  (See IP Update, Vol. 16, No. 1).  The new first-to-file regime applies to all applications filed after March 16, 2013.  Under this regime, other than for the grace period (and derivation) exception, prior art is now predicated on the effective date of the application.  Venerable legal concepts such as conception and reduction to practice now pass into history.  Among the other notable changes to the concept of prior art is that public use and on-sale activities are no longer limited to the United States. 

U.S. patent applications will continue to serve as prior art (as of its earliest priority date) upon publication or issuance.  Foreign applications (unless they have U.S. counterparts) only qualify as prior art as of their publication date.  For example, a published Canadian application will be considered prior art in the United States as of its publication date.  However, if a counterpart U.S. application is filed that claims priority to that Canadian application, when the U.S. application is published, it will be considered prior art as of its Canadian filing date.

Although the “old” § 103(c) is gone, entities that are active in filing cases still can avoid the consequences of attack by their own prior art using mechanisms provided by § 102(b)(2)(c) and 102(c).  Under those sections of the new § 102, a company’s prior-filed patent application will not count as prior art (for any reason) against the company’s later-filed application as long as the prior application has not published or issued by the filing date of the later application.  Further, if the later-filed application was developed as part of a joint research agreement, then the AIA negates the prior art status of prior-filed applications of any of the parties to the joint research agreement (as long as the prior applications were unpublished as of the filing date of the later application).

The new 35 U.S.C. § 102 provides in part 

  • Novelty; Prior Art.  A person shall be entitled to a patent unless (1) the claimed invention was patented; described in a printed publication; or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under § 151, or in an application for a patent published or deemed published under § 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
  • Exceptions.
    • Disclosures made one year or less before the effective filing date of the claimed invention.  A disclosure made one 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 (1) 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 (2) 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. 
    • Disclosures appearing in applications and patents.  A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if (1) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (2) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; or (3) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
  • Common Ownership Under Joint Research Agreements.  Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(c) if
    • The subject matter disclosed was developed and the claimed invention was made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.
    • The claimed invention was made as a result of activities undertaken within the scope of the joint research agreement.
    • The application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
  • Patents and Published Applications Effective as Prior Art.  For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application (1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or (2) if the patent or application for patent is entitled to claim a right of priority under § 119, 365(a) or 365(b), or to claim the benefit of an earlier filing date under section 120, 121 or 365(c), based upon one or more prior-filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.