Perspicuous Points to Ponder for the Perilous AIA

On Thursday, February 14, 2013, the USPTO published its Final Rules and Final Examination Guidelines for implementing the America Invents Act (AIA), which has introduced sweeping changes to the U.S. patent laws, including a transition to the first inventor to file provisions. Among the more significant changes contained in the AIA are:

requirement that a sale must make the invention available to the public, thus a “secret” sale is not a prior art sale under 102(a)(1);
availability of public uses and sales anywhere in the world as potential prior art;
possible use of a foreign priority date of a U.S. patent publication as the effective prior art date for the U.S. patent publication;
restrictions on the one year grace period so that disclosures of third parties within the grace period may now be prior art; and
change of the timing of the common ownership to on or before the effective filing date of the claimed invention, as compared to at the time of the invention in the prior law.

Please click here for copies of the published rules and the published guidelines. Rather than summarize the complete rule changes, what follows is a discussion of a few issues that will be useful to understanding key changes to the law and the USPTO’s interpretation of them.

1. Relationship of prior inventor disclosure and intervening disclosure for the exception under 102(b)(1)(B) or 102(b)(2)(B):

(A) Identity of Disclosures:

In the proposed guidelines published last July, the USPTO proposed a strict interpretation of the prior art exceptions set forth in 102(b)(1)(B) and 102(b)(2)(B). Under the revised guidelines, the USPTO now indicates that identity will not be required. Specifically, the guidelines state that there is no requirement that a prior disclosure by an inventor (within the grace period) be a verbatim or ipsissimis verbis disclosure of an intervening disclosure by a third party in order for the 102(b)(1)(B) or 102(b)(2)(B) exception to prevent the intervening disclosure from becoming prior art.

(B) Species vs Genus:

The exception under 102(b)(1)(B) or 102(b)(2)(B) applies if the subject matter of the intervening disclosure is simply a more general description of the subject matter previously disclosed by the inventor or joint inventor. For example, the guidelines state that if the inventor or joint inventor had publicly disclosed a species, and a subsequent intervening disclosure discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus is not available as prior art. Conversely, if the inventor or joint inventor had publicly disclosed a genus, and a subsequent intervening disclosure discloses a species, the disclosure of the species is available as prior art.

(C) Multiple Elements:

As stated in the final guidelines, if the inventor or joint inventor had publicly disclosed (within the grace period) elements A, B and C, and a subsequent intervening disclosure discloses elements A, B, C and D, then element D – and only element D – is available as prior art against the application.

2. Relationship of 102(b)(1)(B) or 102(b)(2)(B) exceptions and claimed subject matter:

To determine whether the prior art exception of 102(b)(1)(B) or 102(b)(2)(B) applies, the inventor grace period disclosure (X) is compared to the intervening disclosure (Y). A comparison of either disclosure (X or Y) to the claims is not needed to determine if the exception applies.

3. Prior Art effect of a U.S. patent publication claiming priority of a foreign application:

AIA Section 102(a)(2) states that a U.S. patent or a U.S. pre-grant publication may be prior art against another inventor’s application if such patent or publication was “effectively filed” before the effective filing date of the another inventor’s application. According to the USPTO guidelines, for purposes of determining whether certain subject matter in such patent or application is prior art under 102(a)(2), the certain subject matter in such patent or application shall be considered to have been effectively filed as of the filing date of the earliest application that describes the certain subject matter and to which the patent or patent application meets the ministerial requirements of: (1) containing a priority or benefit claim to the prior-filed application; (2) being filed within the applicable filing period requirement (typically 12 months of the earlier filing date); and (3) having a common inventor or being by the same applicant. Thus, the earliest such application may provide an effective prior art date for the certain subject matter in the patent or publication even if the patent or publication does not include any claims that are supported by such earliest application.

If you have any questions concerning any of the final rules or guidelines, or the AIA in general, please click here to submit your inquiry.