The U.S. Patent and Trademark Office (USPTO) has now issued final rules and examination guidelines for implementation of the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA) that take effect on March 16, 2013. Changes to Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11024 (USPTO Feb. 14, 2013) (“Final FITF Rules”); Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059 (USPTO Feb. 14, 2013) (“Final FITF Guidelines” or “Guidelines”).

As revised by the AIA, 35 U.S.C. § 102 provides the general standards for novelty and prior art in paragraph (a), and also provides certain exceptions in paragraph (b). Under these exceptions, certain disclosures made one year or less before a claim’s effective filing date may not qualify as prior art. In particular, § 102(b)(1)(A) provides essentially that a disclosure traceable to an inventor¹ is not prior art, and § 102(b)(1)(B) provides essentially that another’s disclosure is not prior art if there was an earlier “shielding” disclosure of the subject matter traceable to an inventor. Notably, for the § 102(b)(1)(B) exception to be relevant, an inventor’s prior disclosure must not itself qualify as prior art, meaning that it must also have occurred one year or less before the effective filing date. See Final FITF Guidelines, 78 Fed. Reg. at 11076.

The Final FITF Guidelines provide the USPTO’s interpretation of the AIA and the Final FITF Rules, including § 102(b)(1) and 37 C.F.R. § 1.130, but like the Manual of Patent Examining Procedure do not constitute official rulemaking or have the force of law. 77 Fed. Reg. at 11059. Nonetheless, the Guidelines reflect a clarified and broader interpretation of when the § 102(b)(1)(B) “grace period” can be relied upon than the version of the Guidelines originally proposed in July 2012. The earlier-proposed Guidelines had stated flatly that “the exception under 35 U.S.C. 102(b)(1)(B) does not apply” if there “are mere insubstantial changes, or only trivial or obvious variations” between the putative prior art and an inventor’s prior disclosure. 77 Fed. Reg. at 43767. This interpretation, if adopted, would probably have made the § 102(b)(1)(B) grace period essentially unavailable unless the subsequent disclosure was a virtual replica of an inventor’s previous disclosure. In contrast, the Final FITF Guidelines state the following:

  • “There is no requirement . . . that the mode of disclosure by” an inventor “be the same as the mode of disclosure of the intervening” disclosure. For example, the former could be a technical article and the latter could be a sale or public use, or vice versa.
  • Where an inventor “had publicly disclosed elements A, B, and C, and a subsequent” disclosure contains “elements A, B, C, and D, then only element D” of the intervening disclosure “is available as prior art.” (Emphasis added.)
  • If a subsequent disclosure “is simply a more general description” of subject matter previously publicly disclosed by an inventor, the § 102(b)(1)(B) exception applies, such as if an inventor “had publicly disclosed a species, and a subsequent intervening” disclosure simply contains “a genus (i.e., provides a more generic disclosure of the species).” The disclosure of an “alternative species not also disclosed” by an inventor would, however, “be available as prior art.” 78 Fed. Reg. at 11077.

Thus, according to the Final FITF Guidelines, the § 102(b)(1)(B) exception can apply despite the presence of certain differences between an inventor’s disclosure and a subsequent intervening disclosure. Nonetheless, it remains unclear how the grace period will be applied in practice, so practitioners may want to avoid relying on it, except in rare circumstances. Instead of making a public disclosure and relying on the § 102(b)(1)(B) grace period, filing a fully enabled U.S. provisional or foreign priority application to establish an early effective filing date would provide far more certainty and protection. Consider, for example, a scenario where an inventor publicly discloses subject matter that is later identically claimed, but an intervening public disclosure is made between the inventor’s public disclosure and the inventor’s filing date. Assume the intervening disclosure contains an alternative species, which differs slightly from the inventor’s first disclosure. The alternative species may well render the inventor’s claim obvious, and may not be subject to disqualification under the grace period. According to the USPTO, whether the exception of § 102(b)(1)(B) applies “does not involve a comparison of the subject matter of the claimed invention to either the subject matter disclosed by” an inventor or by the intervening disclosure. 78 Fed. Reg. at 11077. Rather, the inquiry is limited to whether the subject matter of the intervening disclosure was previously publicly disclosed by an inventor. Id. Additionally, there is no guarantee that a court would adopt the broader USPTO interpretation from the Final FITF Guidelines as opposed to a narrower interpretation, such as the interpretation that the USPTO initially proposed. In contrast, obtaining the earliest possible effective filing date would prevent all subsequent disclosures, such as of an alternative species, from qualifying as prior art under § 102(a)(1).

The Final FITF Rules also revise 37 C.F.R. § 1.130 (Rule 130) in light of § 102(b)(1). Paragraph (a) provides that a declaration can be submitted to disqualify a disclosure by showing that it was made by or obtained directly or indirectly from the inventor or a joint inventor. Paragraph (b) provides that a declaration can be submitted to disqualify prior art by establishing prior disclosure under § 102(b)(1)(B). Such a declaration “must identify the subject matter publicly disclosed and provide the date” of disclosure. 37 C.F.R. § 1.130(b). Additionally, if the disclosure was in a printed publication, a copy must be provided; otherwise, the declaration “must describe the subject matter with sufficient detail and particularity to determine what subject matter had been disclosed on that date . . . .” Id. It is unclear what amount of evidence will be required to satisfy the amended Rule 130 requirements for disqualifying an otherwise prior art disclosure from applying in a given instance, but certainly collecting and arguing this evidence will frequently be more difficult than the Rule 131 “swearing behind” practice employed in pre-AIA (first-to-invent) applications to allege earlier invention.

Paragraph (c) of the amended Rule provides that Rule 130 declarations are unavailable against a rejection based on disclosures made more than a year before the effective filing date and may not be available against a rejection based on a U.S. patent or published application naming another inventor, where the patent or application claims substantially the same subject matter. In this case, if the subject matter claimed by the other named inventor was obtained from the inventor of the rejected claim, then relief may be had through a derivation proceeding. Paragraph (d) provides that revised Rule 130 applies to any application or patent containing a claim with an effective filing date on or after March 16, 2013, or a specific reference under 35 U.S.C. §§ 120, 121, or 365(c) (essentially, a domestic or PCT priority claim) to any patent or application that contains, or that contained at any time, such a claim.

Final Rule 130 has several differences from the version the USPTO initially proposed. Compare 77 Fed. Reg. 43742, 43758-59 (USPTO July 26, 2012) (proposed version of Rule 130) with 78 Fed. Reg. at 11058 (final Rule 130). In particular, the USPTO omitted a requirement for “a satisfactory showing that the inventor or a joint inventor is the inventor of the subject matter of the earlier disclosure.” In its accompanying remarks, the USPTO stated that in response to public comments on the proposed rules, it revised and streamlined Rule 130 to more closely track the statutory language and to set forth only procedural requirements, and it recognized that, in some cases, it would be readily apparent that the inventor or a joint inventor is the inventor of the subject matter of the earlier disclosure, e.g., based on authorship of a publication. 78 Fed. Reg. at 11044. The Final FITF Guidelines also state that the sufficiency of evidence in or accompanying a Rule 130 declaration will be evaluated on a case-by-case basis. See, e.g., 78 Fed. Reg. at 11076. Such case-by-case treatment is generally consistent with current practice concerning disqualification of an inventor’s own prefiling disclosure.

Additionally, the USPTO dropped a provision of the proposed rule stating that the USPTO “may require” the filing of a derivation petition where a declaration asserts that subject matter in a U.S. patent or published application naming another inventor was obtained from the inventor or a joint inventor of the claimed subject matter. Instead, paragraph (c) provides that Rule 130 “may not be available” under such circumstances. The USPTO remarked that under the final rule, an applicant or patent owner has discretion as to whether to file a derivation petition. 77 Fed. Reg. at 11045. While it is true that the USPTO cannot require the filing of a derivation petition under final Rule 130, doing so may nonetheless be the only remaining means for disqualifying certain references when Rule 130 is held inapplicable.