In this final post of our trilogy, we present a third scenario where the first-to-file regime under AIA offers previously unavailable opportunities for disqualifying certain prior art references.

The fact pattern is as follows:

  1. Inventor X made a novel base nanomaterial and filed a US patent application on January 1, 2009 (Application A), which was assigned to Company A.
  2. Also on January 1, 2009, Inventor X published her work in an academic journal.
  3. Subsequently, Inventor X joined Company B and, together with Inventor Y, made an improved nanomaterial. Inventor X and Inventor Y filed a US patent application on January 1, 2010 (Application B), which was assigned to Company B.
  4. Application A was published on July 1, 2010.

January 1, 2009 publication

Under §102(a) of pre-AIA patent law, the January 1, 2009 publication is a considered a disclosure “by others” against Application B, since Inventor X is considered a different inventive entity compared to Inventor X and Inventor Y together. Hence, under the first-to-invent regime, the January 1, 2009 publication qualifies as §102(a) prior art against Application B.

While certain tools such as §1.131 declaration and Katz declaration are available under the first-to-invent regime, they are unlikely to be helpful for disqualifying the January 1, 2009 publication from pre-AIA §102(a) prior art. The §1.131 declaration is in applicable in the present scenario as the invention of the improved material is made after the January 1, 2009 publication. The Katz declaration is also inapplicable as Inventor Y did not work on the base nanomaterial, and thus could not be added as a co-author of the January 1, 2009 publication. Therefore, under the first-to-invent regime, the applicant has no other options than convincing the Patent Office that the improved nanomaterial is novel and nonobvious over the base nanomaterial disclosed in the January 1, 2009 publication.

On the other hand, §102(b)(1)(A) of the AIA allows certain prior publication to be disqualified from prior art even if it is authored by a different inventive entity:

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….

Thus, under the first-to-file regime of the AIA, the January 1, 2009 publication, authored by a joint-inventor of Application B one year or less before its filing date, would be disqualified from prior art under §102(b)(1)(A).

Application A (filed January 1, 2009 and published July 1, 2010)

Under §102(e) of pre-AIA patent law, Applicant A, which (i) has a different inventive entity compared to Application B, and (ii) was filed before but published after the filing date of Application B, qualifies as “secret prior art” against Application B. Because Application A and Application B were not commonly owned, Application A cannot be disqualified under §103(c) even if it is only cited in an obviousness rejection.

§102(b)(2)(A) of the AIA, however, opens the door for disqualifying “secret prior art” obtained from a joint inventor:

A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor….

Since the subject matter of Application A is, of course, obtained from its sole inventor, Inventor X, Application A cannot be asserted as “secret prior” under the first-to-file regime against any application that includes Inventor X as a joint inventor. As a result, Application A would be disqualified from prior art against Application B under §102(b)(2)(A).

Therefore, in the scenario described above, it would be prudent for the applicant to consider deliberately entering the first-to-file regime by filing a Continuation-In-Part application claiming priority to Application B and including a new claim with an effective filing date on or after March 16, 2013. The new claim can be cancelled at any time post-filing, while the original claims will stay in the first-to-file regime and enjoy its unique advantages.

Concluding Remarks

In the 1999 film The Matrix, Neo is offered a choice between a blue pill, which allows him to stay in the old reality of the Matrix, or a red pill, which unplugs Neo from the Matrix to enter the “real world”. The unfamiliar “real world” might be quite painful in many aspects. However, in certain scenarios as described in our trilogy, the benefits could justify taking the red pill.