2153.01(b) Grace Period Inventor-Originated Disclosure Exception [R-10.2019]
[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.]
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 excepted 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.