The America Invents Act (AIA), also known as the Leahy-Smith Act, implements fundamental changes to the patentability statutes including, most importantly, 35 U.S.C. § 102 and 35 U.S.C. § 103, and shifts from rewarding the first inventor to invent to rewarding the first inventor to file (FTF) a patent application. Importantly, the revised statutes implementing FTF are not effective until March 16, 2013 and will be applicable to patent applications and patents resulting from patent applications filed on or after this date.[1]

Amendments to 35 U.S.C. § 102(a)

Changes to 35 U.S.C. § 102 pursuant to the AIA are shown below and discussed by section. Initially, 35 U.S.C. § 102(a) is amended as follows:

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -

(a) Novelty; Prior Art - A person shall be entitled to a patent unless

  1. the claimed invention was known or used by others in this country, or patented or described in a printed publication, in this or a foreign country, before the invention thereof by the applicant for patent, 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.

35 U.S.C. § 102(a) is now essentially inclusive of all novelty defeating disclosures. More particularly, 35 U.S.C. § 102(a)(1) references the entirety of the non-patent disclosures which may destroy novelty if they occur before the effective filing date of the claimed invention. The notable differences from existing statutes are the absence of territorial restrictions of any kind and the addition of the amorphous language “otherwise available to the public.” The removal of territorial or geographic restrictions is relatively straightforward. The definition of what qualifies as “otherwise available to the public” is likely to be interpreted to be loosely equivalent to the “known or used by others” language from the currently in force version of 102(a). The author takes the personal position in this article that the universe of non-patent prior art is not reduced under the AIA and does include, for example, secret sales activity and quasi-secret “public” uses in accordance with existing interpretations.

The language in 35 U.S.C. § 102(a)(2) refers to the patent-related disclosures which may destroy novelty. This includes disclosures in patents or applications for patent which name a different inventive entity and were effectively filed before the effective filing date of the claimed invention. Importantly, it is the language in 35 U.S.C. § 102(a)(2) which operates to shift the patent system from first-to-invent to first-to-file since this provision allows a first filed application to be prior art against a second filed application without regard to who was first to actually invent.

Amendments to 35 U.S.C. § 102(b)

35 U.S.C. § 102(b) has been completely replaced to define exceptions to what would otherwise be a novelty defeating disclosure as set forth below:

(b) Exceptions-

  1. DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- 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.

  1. DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS - 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;

(B) 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

(C) 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.

The exceptions fall into two categories: exceptions to non-patent related disclosures recited in 35 U.S.C. § 102(b)(1) which refers explicitly back to 35 U.S.C. § 102(a)(1) and exceptions to patent-related disclosures recited in 35 U.S.C. § 102(b)(2) which refers explicitly back to 35 U.S.C. § 102(a)(2). The following examples are illustrative of the various grace periods and situations wherein a first inventor is not be barred from patenting under 35 U.S.C. § 102(a)(1) or (2).

Click here to see diagram (s)

Accordingly, a public disclosure by Inventor A, e.g., publication, can preserve rights of Inventor A in the case of third party independent disclosures occurring after invention by Inventor A, but prior to filing of a patent application by Inventor A. This creates a quasi-swear behind situation. More specifically, though the amended patentability statutes no longer allow Inventor A to swear behind prior art with a showing of earlier invention, Inventor A may be able to swear behind prior art by showing earlier disclosure by Inventor A or even earlier disclosure by a third party who derived the disclosure from Inventor A. In the opinion of the author, public disclosure of the invention by the inventor prior to filing will not and should not be used as a preservation tactic unless Inventor A has no intention to file for patent protection and only wishes to bar others from doing so. Instead, the existence of a previous public disclosure will be used to overcome rejections based on intervening third party disclosures. In the author’s opinion, any written disclosure by Inventor A should be filed first as a patent application, e.g., provisional, or at least filed as a patent application in parallel with a non-patent disclosure, e.g., publication. Importantly pre-filing disclosures may forfeit patent protection in foreign jurisdictions where absolute novelty is required.

The author takes a second personal position on the interpretation of what qualifies as a saving disclosure. The author submits that there is a distinction between saving disclosures by the inventor under 35 U.S.C. § 102(b)(1)(B) and 35 U.S.C. § 102(b)(2)(B) and saving disclosures by the inventor under U.S.C. § 102(b)(1)(A) and 35 U.S.C. § 102(b)(2)(A). More particularly, if a third party files for a patent application first or otherwise discloses without derivation from Inventor A, only “public disclosures” by Inventor A can be used to swear behind the earlier filing or disclosure. This arguably removes, for example, secret commercial uses by the inventor from being available as a saving disclosure as these are not public disclosures. On the contrary, an inventor’s secret commercial use will not be prior art under 35 U.S.C. § 102(b)(1)(A) and 35 U.S.C. § 102(b)(2)(A), where there is no intervening third party application filing or other underived disclosure for the same invention. The following examples are illustrative of situations wherein a first inventor is barred under 35 U.S.C. § 102(a)(1) or (2).

Click here to view diagram(s)

In this second example, in the author’s opinion, Inventor A does not receive a patent because Inventor B’s published article is prior art. Inventor A cannot swear behind Inventor B’s published article because the secret commercialization by Inventor A is not a public disclosure as required for the exception under 35 U.S.C. § 102(b)(1)(B). Instead, Inventor B would receive the patent since Inventor B’s public article does meet the exception criteria under 35 U.S.C. § 102(b)(2)(B).

Amendments to 35 U.S.C. § 102(c) 3

5 U.S.C. § 102(c) has wholly been replaced with the following:

(c) 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--

  1. the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
  2. the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and 
  3. the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

This section defines the criteria for determining when disclosed and claimed subject matter is deemed to have been “owned by the same person or subject to obligation of assignment to the same person” for purposes of applying the exception articulated in 35 U.S.C. § 102(b)(2)(C). This section is intended to further the purposes set forth in the Cooperative Research and Technology Enhancement Act of 2004 (Public Law 108-453; the ‘CREATE Act’).[2]

Amendments to 35 U.S.C. § 102(d)

As is the case with 35 U.S.C. § 102(c), 35 U.S.C. § 102(d) has been wholly replaced with the following:

(d) 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 section 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 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.’

The new 35 U.S.C. § 102(d) bears no relation to the existing subsection. Under the AIA, 35 U.S.C. § 102(d) is intended to articulate the circumstances wherein an effective filing date may in fact be the date of an earlier filed application to which the present application or patent claims priority or benefit. As is the case with current law, an earlier effective filing date will only be available for subject matter that is described in the earlier filed application.

Finally, subsections (e), (f) and (g) of existing section 35 U.S.C. § 102 will no longer be applicable to applications filed on or after March 16, 2013.

Amendments to 35 U.S.C. § 103

As expected, 35 U.S.C. § 103 is also revised in accordance with the changes to 35 U.S.C. § 102 discussed above. As of March 16, 2013, 35 U.S.C. § 103 will consist of a single paragraph, with subsections (b) and (c) of the current version removed. One interesting note is that under the revised version of 35 U.S.C. § 103, skill in the art is measured just before effective filing date and not at the time the invention was made.