Introduction

As the United States moves to a first-inventor-to-file patent system, some have voiced concerns that the transition will create a “race to the Patent Office”. The America Invents Act seeks to address these concerns by establishing exceptions, enumerated under new Section 102(b) of the Patent Act, to the new Novelty and Prior Art provisions of Section 102(a). These exceptions disqualify otherwise applicable prior art under certain circumstances when made by the inventor or joint inventor or another who obtained the subject matter from the inventor or joint inventor. As a result, patent rights may ensure cases be awarded to the first to publish and not necessarily the first to file.

First-Inventor-to-File

The United States is scheduled to implement a first-inventor-to-file patent system on March 16, 2013, through the enactment of the Leahy-Smith America Invents Act (AIA).1 The AIA is the product of repeated attempts by patent reform advocates to transition the United States away from a first-to-invent system.2 Proponents of first-inventor-to-file argue that this transition “modernize[s] and harmonize[s] our patent system with our international trading partners.”3 These proponents further contend that such transition “increase[s] predictability by creating brighter lines to guide patent applicants and Patent Office examiners”,4 and leads to improved examining efficiency.5

As part of the first-inventor-to-file transition, the AIA re-writes the novelty and prior art requirements under Section 102 of the Patent Act. Under AIA-amended Section 102(a), an application satisfies the novelty requirements for patentability 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 section 151, or in an application for patent published or deemed published under section 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. 6

The U.S. Patent and Trademark Office (USPTO) describes the changes as significant, inasmuch as Section 102(a) now “make[s] no mention of the date of the invention, but instead concern[s] documents that existed or activities that occurred ‘before the effective filing date of the claimed invention.’”.7

Concerns of Small Inventors and Universities

Some opponents of the first-inventor-to-file system argued that that such a system would “incentivize inventors to ‘race to the Patent Office,’ to protect as many of their ideas as soon as possible so they are not beaten to the punch by a rival.”8 Independent inventors, startups, and small businesses were identified as those most harmed by a first-inventor-to-file system, because they lack the resources to compete in that race to the Patent Office.9

Others shared a different concern. This group contended that a first-inventor-to-file system harms inventors who discuss their inventions with colleagues or publish them in journals before filing their applications.10 This impact was of particular concern in the case of inventions by university professors.11

One aim of the AIA was to protect against the concerns of many small inventors and universities, by establishing exceptions to the new novelty and prior art provisions under Section 102(a).12

A One-Year Grace Period Following Public Disclosure For Filing an Application

Unlike the first-inventor-to-file systems in Europe and Japan, the first-inventor-to-file system implemented in the United States provides an inventor with a conditional oneyear grace period.13 This grace period is enumerated in AIA-amended Section 102(b) of the Patent Act.14

The grace period is intended to provide an inventor “who publishes his invention, or discloses it at a trade show or academic conference, or otherwise makes it publically available, . . . an absolute right to priority if he files an application within one year of his disclosure.”15 The grace period thus accords inventors “a safe harbor of 1 year . . . to go out and market their inventions before having to file for their patent.”16

The purpose of the grace period is two-fold. First, the grace period ensures that an inventor’s own publication or disclosure within this period cannot be used against him or her as prior art but would still act as prior art against another patent application.17 The grace period accords leeway so that “small inventors and others will not accidentally stumble into a bar by their pre-filing actions.”18

In addition, the grace period ensures that “once the U.S. inventor discloses his invention, no subsequent prior art can defeat the invention.”19 Indeed, Congressman Smith, a lead sponsor of the AIA, remarked that “[i]nventors who have made such disclosures are protected during the grace period not only from their own disclosure but from other prior art that follows their disclosure. This is an important protection we offer in our bill.”20

The grace period thus encourages early disclosure of new inventions, regardless of whether an inventor ultimately seeks patent protection.21 As Senator Klobuchar remarked, the grace period would “encourage cross-pollination of ideas and eliminate concerns about discussing inventions with others before a patent application is actually filed.”22 And as Senator Kyl observed, the exception under Section 102(b) “effectively creates a ‘first to publish’ rule that protects those inventors who choose to disclose their invention.”23 The grace period has led some of the nation’s top research universities to support the AIA.24

Prior Art Exception by Inventor’s Earlier Public Disclosure

Some of the more noteworthy aspects of AIA-amended Section 102(b) are the provisions in Sections 102(b)(1)(B) and 102(b)(2)(B). When their requirements are met, an otherwise applicable prior art disclosure dated prior to the application’s effective filing date may be removed if subsequent to an inventor’s earlier public disclosure. These potential prior art disclosures are known as “intervening disclosures” when referring to the Section 102(b) exceptions.

While the AIA amends Section 102(b) to establish the initial framework for these exceptions, the particulars were left to the USPTO’s rulemaking functions. On February 14, 2013, the USPTO promulgated its final Examination Guidelines for Implementing the First Inventor To File Provisions of the Leahy-Smith America Invents Act (“Final Examination Guidelines”).25 These Final Examination Guidelines followed an earlier promulgation of proposed guidelines and two notice-and-comment periods.26

The Final Examination Guidelines promulgate rules and procedures for the USPTO’s examination of applications under the first-inventor-to-file system, including various requirements for satisfying the exceptions under Section 102(b)(1)(B) and 102(b)(2)(B) of the Patent Act.

Content and Mode of Disclosures Under Section 102(b)(1)(B)

Section 102(b)(1)(B) relates to intervening disclosures made one year or less before the effective filing date of a claimed invention. As Senator Leahy acknowledged, this particular sub-section:

… is designed to work in tandem with [sub-section] 102(b)(1)(A) to make a very strong grace period for inventors that have made a public disclosure before seeking a patent. Inventors who have made such disclosures are protected during the grace period, not only from their own disclosure, but also from disclosures by others that are made after their disclosure.27

Under the Final Examination Guidelines, the exceptions under Sections 102(b)(1)(B) and 102(b)(2)(B) apply only when the subject matter of the inventor’s earlier public disclosure is the same as the subject matter of the prior art disclosure.28 Applying statutory construction of Sections 102(b)(1)(B) and 102(b)(2)(B), the Final Examination Guidelines note the importance of the phrase “the subject matter” in describing both the content of the prior art disclosure and the content of the inventor’s previous public disclosure.29 The Final Examination Guidelines reasoned that if the subject matter in the prior art disclosure varies from the subject matter of the inventor’s previous disclosure, there are then two discrete subject matters.

The Final Examination Guidelines declined requests to relax its strict interpretation of Sections 102(b)(1)(B) and 102(b)(2)(B), even refusing to apply the exception for “substantially” identical subject matters.30 The Final Examination Guidelines reasoned that the “substantially” modifier is already used in instances throughout the Patent Act where variation in subject matter is contemplated.31 As the “substantially” modifier is absent in the Section 102(b) provisions, such provisions do not contemplate variation in subject matter.32

While “substantially identical subject matter” is insufficient, the disclosure by the inventor need not be a verbatim duplication of the intervening grace period disclosure.33

The Final Examination Guidelines also clarify that the prior disclosure by the inventor need not be of the same mode as the intervening disclosure.34 That is, the inventor’s mode of disclosure (e.g., patenting, publication, public use, or sale activity) for the prior disclosure may be different from that for the intervening disclosure.35

An intervening disclosure that is simply a more general description of the subject matter previously publically disclosed by the inventor satisfies the statute and is not prior art.36 For instance, if the intervening disclosure discloses a genus while the inventor’s prior disclosure discloses a species of the genus, the exception applies.37 Yet the converse does not always hold true. If the inventor’s prior disclosure discloses a genus and the intervening disclosure is a species of the genus, the exception does not apply and the intervening disclosure of the species would be available as prior art.38 Further, if the intervening disclosure is of elements A, B, C, and D, and the inventor’s previous public disclosure is of elements A, B, and C, only the element D portion of the intervening disclosure is not subject to the exception and is available as prior art under Section 102(a)(1).39

As noted in the Final Examination Guidelines, it is important that the inventor’s previous public disclosure, while pre-dating the intervening disclosure, must still be within the one-year grace period.40 Otherwise, not only would that early public disclosure not disqualify other prior art under Section 102(b)(1)(B), but that inventor’s own previous public disclosure would serve as prior art against his application under Section 102(a)(1).

As further noted in the Final Examination Guidelines, the subject matter of the claimed invention is irrelevant to the application of the Section 102(b)(1)(B) exception.41 No comparison of the subject matter of the claimed invention with either the subject matter disclosed by the inventor or the subject matter of the intervening disclosure is involved.42 Indeed, Section 102(b)(1)(B) makes no reference to “the claimed invention.”43

Content of Intervening Application, and Content/Mode of Inventor’s Prior Disclosure Under Section 102(b)(2)(B)

The Section 102(b)(2)(B) exception differs from the Section 102(b)(1)(B) exception primarily in its application to intervening disclosures that are U.S. patents, U.S. patent application publications, or WIPO published applications.44 That is, the 102(b)(2)(B) exception arises when a second inventor filed an application earlier than a first inventor filing his application, but the first inventor had disclosed his invention even earlier than the second inventor’s application filing date. Thus, the second inventor’s application is an intervening application.

Many rules and procedures are shared between the Section 102(b)(1)(B) and 102(b)(2)(B) exceptions. Indeed, the exception applies only to identical (but not necessarily verbatim) subject matter between the intervening patent document and the inventor’s prior disclosure. And, if the inventor’s prior disclosure discloses a genus and the intervening patent document discloses a species of the genus, the intervening patent disclosure of the species would still be available as prior art.45

However, there is one fundamental difference. The inventor’s prior disclosure may constitute valid prior art against the intervening application. This effectively awards the patent rights to an inventor who was not first-to-file.

The circumstances deepen further when the inventors of both the application and the intervening application have both publically disclosed their inventions prior to filing. For instance, Inventor A publically discloses his invention on January 1, but does not file his application until September 1. Meanwhile, Inventor B publically discloses his invention on June 1 and files his application on July 1.

In this instance, assuming that inventor A successfully proves that his January 1 disclosure was public and of identical subject matter, the Section 102(b)(2)(B) exception prevents inventor B’s application from being used as prior art against inventor A’s application. The Section 102(b)(1)(B) exception prevents inventor B’s earlier public disclosure from being used as prior art against inventor A’s application.

Meanwhile, inventor A’s earlier public disclosure remains applicable prior art against inventor B’s application, and may prevent inventor B from obtaining patent coverage.

Under these circumstances, the grace period substitutes the “race to the Patent Office” with a “race to publish.” This outcome is consistent with the purpose behind the grace period of encouraging early public disclosures.

Evidence to Establish Inventor’s Prior Public Disclosure

The Final Examination Guidelines also promulgated rules and regulations concerning the evidence required during prosecution to establish an inventor’s earlier public disclosure. 46 These requirements are enumerated 37 C.F.R. § 1.130(b).

Under Section 1.130(b), an applicant seeking to disqualify a disclosure as prior art based on an inventor’s prior public disclosure must submit an affidavit or declaration to establish such prior public disclosure. The affidavit or declaration must identify the subject matter publically disclosed by the inventor and provide the date such subject matter was publically disclosed by the inventor or joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.47

If the earlier public disclosure was made through a printed publication, the affidavit or declaration must be accompanied by a copy of the printed publication.48 Otherwise, the affidavit or declaration must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publically disclosed on the date by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.49

The USPTO will determine whether a disclosure constitutes a “public disclosure” on a case-by-case analysis, governed by case law discussed in the Manual of Patent Examining Procedure §§ 2126-2128.50

In instances where the applicant is an entity (such as an assignee) other than the inventor, the inventor may sign an affidavit or declaration under Section 1.130, but the affidavit or declaration must be filed by a party having authority to take action in the application.51 Such authority customarily lies with the applicant, and not with the inventor if the inventor is not the applicant.52

Section 1.130(b) also permits owners of patents under reexamination to submit an affidavit or declaration to establish prior public disclosure and render intervening prior art inapplicable.

Conclusion

An inventor’s early disclosure may be invaluable towards eliminating up to a year of otherwise applicable prior art. However, this protection is limited, since the subject matter in the prior art sought to be removed must be identical to that in the earlier public disclosure. In addition, inventors should remain cautious. Such early disclosure may impede their ability to secure patent coverage abroad.53 As the first-inventor-to-file system remains in its mere infancy in the United States, future case law will undoubtedly be developed in this unique and critical provision of patent law.