2153 Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 102(a)(1) [R-11.2013]

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131-MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

See MPEP § 2153.01 for prior art exceptions based on grace period inventor or inventor-originated disclosures as provided for under AIA 35 U.S.C. 102(b)(1)(A). See MPEP § 2153.02 for prior art exceptions based on inventor or inventor-originated prior public disclosures.

2153.01 Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) To AIA 35 U.S.C. 102(a)(1) (Grace Period Inventor Or Inventor-Originated Disclosure Exception) [R-11.2013]

AIA 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(1). These exceptions limit the use of an inventor's own work as prior art, when the inventor's own work has been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor not more than one year before the effective filing date of the claimed invention. AIA 35 U.S.C. 102(b)(1)(A) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: (1) One year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor. MPEP § 2153.01(a) discusses issues pertaining to disclosures within the grace period by the inventor or a joint inventor ("grace period inventor disclosures") and MPEP § 2153.01(b) discusses issues pertaining to disclosures within the grace period by another who obtained the subject matter directly or indirectly from the inventor or joint inventor ("grace period inventor-originated disclosures"). MPEP § 2152.01 discusses the "effective filing date" of a claimed invention.

2153.01(a) Grace Period Inventor Disclosure Exception [R-11.2013]

AIA 35 U.S.C. 102(b)(1)(A) first provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) may be disqualified as prior art if the disclosure is made: (1) one year or less before the effective filing date of the claimed invention; and (2) by the inventor or a joint inventor. Thus, a disclosure that would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) will not be treated as prior art by Office personnel if the disclosure is made one year or less before the effective filing date of the claimed invention, and the evidence shows that the disclosure is by the inventor or a joint inventor. What evidence is necessary to show that the disclosure is by the inventor or a joint inventor requires case-by-case treatment, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is by the inventor or a joint inventor.

Office personnel will not apply a disclosure as prior art under AIA 35 U.S.C. 102(a)(1) if it is apparent from the disclosure itself that it is by the inventor or a joint inventor. Specifically, Office personnel will not apply a disclosure as prior art under AIA 35 U.S.C. 102(a)(1) if the disclosure: (1) was made one year or less before the effective filing date of the claimed invention; (2) names the inventor or a joint inventor as an author or an inventor; and (3) does not name additional persons as authors on a printed publication or joint inventors on a patent. This means that in circumstances where an application names additional persons as joint inventors relative to the persons named as authors in the publication (e.g., the application names as joint inventors A, B, and C, and the publication names as authors A and B), and the publication is one year or less before the effective filing date, it is apparent that the disclosure is a grace period inventor disclosure, and the publication would not be treated as prior art under AIA 35 U.S.C. 102(a)(1). If, however, the application names fewer joint inventors than a publication (e.g., the application names as joint inventors A and B, and the publication names as authors A, B and C), it would not be readily apparent from the publication that it is by the inventor (i.e., the inventive entity) or a joint inventor and the publication would be treated as prior art under AIA 35 U.S.C. 102(a)(1).

Applicants can include a statement designating any grace period inventor disclosures in the specification See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). An applicant is not required to use the format specified in 37 CFR 1.77 or identify any prior disclosures by the inventor or a joint inventor (unless necessary to overcome a rejection), but identifying any prior disclosures by the inventor or a joint inventor may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification contains a specific reference to a grace period inventor disclosure, the Office will consider it apparent from the specification that the prior disclosure is by the inventor or a joint inventor, provided that the prior disclosure does not name additional authors or joint inventors and there is no other evidence to the contrary. The applicant may also provide a copy of the grace period inventor disclosure (e.g., copy of a printed publication).

The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130 ) to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b). See MPEP § 717. In the situations in which it is not apparent from the prior disclosure or the patent application specification that the prior disclosure is by the inventor or a joint inventor, the applicant may establish by way of an affidavit or declaration that a grace period disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) because the prior disclosure was by the inventor or a joint inventor. MPEP § 2155.01 discusses the use of affidavits or declarations to show that the prior disclosure was made by the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(1)(A) for a grace period inventor disclosure.

2153.01(b) Grace Period Inventor-Originated Disclosure Exception [R-11.2013]

AIA 35 U.S.C. 102(b)(1)(A) also provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) may be disqualified as prior art if the disclosure was made: (1) one year or less before the effective filing date of the claimed invention; and (2) by another who obtained the subject matter directly or indirectly from the inventor or a joint inventor. Thus, if a prior disclosure upon which the rejection is based is by someone who obtained the subject matter from the inventor or a joint inventor, and was made one year or less before the effective filing date of the claimed invention, the applicant may establish by way of an affidavit or declaration that the prior disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) because the prior disclosure was by another who obtained the subject matter directly or indirectly from the inventor or a joint inventor. MPEP § 718 and MPEP § 2155.03 discuss the use of affidavits or declarations to show that a prior disclosure was by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(1)(A) for a grace period inventor-originated disclosure.

2153.02 Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 U.S.C. 102(a)(1) (Inventor Or Inventor-Originated Prior Public Disclosure Exception) [R-11.2013]

AIA 35 U.S.C. 102(b)(1)(B) provides additional exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(1). These exceptions disqualify a disclosure of subject matter that occurs after the subject matter had been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. Specifically, AIA 35 U.S.C. 102(b)(1)(B) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) (patent, printed publication, public use, sale, or other means of public availability) may be disqualified as prior art if: (1) the disclosure was made one year or less before the effective filing date of the claimed invention; and (2) the subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. The previous public disclosure of the subject matter by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor typically will be a disclosure within the one-year grace period (i.e., be either a grace period inventor disclosure by the inventor or a joint inventor or be a grace period inventor-originated disclosure by another who obtained the subject matter directly or indirectly from the inventor or joint inventor). However, if the previous public disclosure of the subject matter was made outside the grace period, it would qualify as prior art under AIA 35 U.S.C. 102(a)(1) that could not be disqualified under AIA 35 U.S.C. 102(b)(1)(A). MPEP § 2152.01 discusses the "effective filing date" of a claimed invention. MPEP § 2155.02 discusses the use of affidavits or declarations to show that the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor, and MPEP § 2155.03 discusses the use of affidavits or declarations to show that the disclosure was made, or that the subject matter had been previously publicly disclosed, by another obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

The exception in AIA 35 U.S.C. 102(b)(1)(B) applies if the "subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure, been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor)." See 35 U.S.C. 102(b)(1)(B). The exception in AIA 35 U.S.C. 102(b)(1)(B) focuses on the "subject matter" that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under AIA 35 U.S.C. 102(b)(1)(B) that the mode of disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening grace period disclosure (e.g., patenting, publication, public use, sale activity). There is also no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening grace period disclosure. See In re Kao, 639 F.3d 1057, 1066 98 USPQ2d 1799, 1806 (Fed. Cir. 2011) (subject matter does not change as a function of how one chooses to describe it). What is required for subject matter in an intervening grace period disclosure to be excepted under AIA 35 U.S.C. 102(b)(1)(B) is that the subject matter of the disclosure to be disqualified as prior art must have been previously publicly disclosed by the inventor or a joint inventor (or by another who obtained the subject matter therefrom).

The exception in AIA 35 U.S.C. 102(b)(1)(B) applies to the subject matter in the intervening grace period disclosure being relied upon as prior art for a rejection under AIA 35 U.S.C. 102(a)(1) (an intervening disclosure) that was also publicly disclosed by the inventor or a joint inventor (or by another who obtained the subject matter therefrom) before such intervening disclosure. The subject matter of an intervening grace period disclosure that is not in the inventor or inventor-originated prior public disclosure is available as prior art under AIA 35 U.S.C. 102(a)(1). For example, if the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening grace period disclosure discloses elements A, B, C, and D, then only element D of the intervening grace period disclosure is available as prior art under AIA 35 U.S.C. 102(a)(1).

In addition, if subject matter of an intervening grace period disclosure is simply a more general description of the subject matter in the inventor or inventor-originated prior public disclosure, the exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening grace period disclosure. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening grace period disclosure discloses a genus (i.e., provides a more generic disclosure of the species), the intervening grace period disclosure of the genus is not available as prior art under AIA 35 U.S.C. 102(a)(1). Conversely, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening grace period disclosure discloses a species, the intervening grace period disclosure of the species would be available as prior art under AIA 35 U.S.C. 102(a)(1). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening grace period disclosure discloses an alternative species not also disclosed by the inventor or a joint inventor, the intervening grace period disclosure of the alternative species would be available as prior art under AIA 35 U.S.C. 102(a)(1).

Finally, AIA 35 U.S.C. 102(b)(1)(B) does not discuss "the claimed invention" with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent intervening grace period disclosure. Any inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention. A determination of whether the exception in AIA 35 U.S.C. 102(b)(1)(B) is applicable to subject matter in an intervening grace period disclosure does not involve a comparison of the subject matter of the claimed invention to either the subject matter in the inventor or inventor-originated prior public disclosure, or to the subject matter of the subsequent intervening grace period disclosure.