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Tackling Title 35 - Part 3: AIA 102



In the last installment of Tackling Title 35, we discussed the pre-AIA version of 35 USC 102. Now we are going to turn to the version of the law that we have to work with presently, which is commonly called AIA 102. We discussed the AIA in a bit more detail in the first segment of this mini-series, but two big changes are are the "first to file" rule, and the expansion of what can be considered prior art.

There are a ton of detailed, divisive opinions about the AIA and its effects on patenting in the United States, and I feel completely unqualified to weigh in with the level of understanding that I have currently. But one thing to understand as someone entering the world of patents is that a vast majority of other countries are under the first to file mentality, so this change has a lot to do with adopting an international perspective. This can also be gleaned from the expansion of what is considered foreign work via 102(b) below. The peculiar thing is that while in these ways we became more standard with the rest of the world, the grace period in 102(b) is unique to the United States.

102(a) 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 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.

The goal of AIA 102(a) is to capture 102(a), (b), and (e) of the pre-AIA version of the law. Note that now there is this concept of a single Effective Filing Date to get behind when it comes to foreign work. One big thing to notice is the difference between the verbiage in 102(b) above, and pre-AIA 102(e)(1):

102(e) the invention was described in —

  1. an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or

Notice how pre-AIA 102(e)(1) says an application for patent, by another filed in the United States. AIA 102(a)(2) on the other hand, just says a patent application that satisfies 122(b). This change to the law is arguably more significant than the change to "first to file".

The other thing to mention is that 102(a)(1) makes secret sales exceptional to being prior art through the words "otherwise available to the public" ending the list of elements that comprise prior art. A secret sale would not be made available to the public.

102(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.
  • (2) 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.

So, you are looking at this block and thinking, man this is a lot of words, but it is really not as much substance as you might think. A lot of this is just giving the inventor or co-inventors a one year grace period from a first disclosure to file a patent. This grace period comes in the form of a 37 CFR 1.130 affidavit, title the Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act. 102(b)(2) expands this to joint inventors, as well as inventors under the same owner.

102(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.

102(c) is going to make it easier for third-parties to have defined ownership of the patent under joint agreements. Remember the three stipulations to this section, as that is the kind of material that will come up. The joint agreement needs to be clearly defined by the filing date, the claimed invention must be a result of the joint research agreed upon, and all the names involved in the agreement are disclosed. This last part can and does get amended after the original filing in certain instances.

102(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), 365(b), 386(a), 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), 386(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.

This section defines the Effective Filing Date of Prior Art under 102(a)(2). Basically it says that the Effective Filing Date of Prior Art is either the date that application was filed, or else it is the earliest filing date of subject matter being claimed by that patent's application. So, if Patent 2 references a PCT which was filed in Croatia and prior to the filing date of Patent 2, its filing date is the filing date of Patent 1.

I hope that you enjoyed this installment of Tackling Title 35. From what I have heard, this material is a significant target for exam problems, so I will try to amend it as I come across problems that seem to be common. In the next post, we will discuss 103 and get into 112.




Author


Ted Rand