Understanding Changes to 35 USC 102 or "First-(Inventor)-To-File

Understanding Changes to 35 USC § 102

Presented by

Crissa Seymour Cook

LAKC 5th Annual IP CLE Thursday January 31, 2013

First-(Inventor)-To-File

First-(Inventor)-To-FilePurpose: Conformity with rest of the world’s “first

to file” system, where public accessibility is the touchstone of prior art.

Didn’t quite get there...Still have some grace periods, although the extent

of those grace periods not quite clear.


• Provisions take effect on March 16, 2013.• USPTO issued proposed rules and examination

guidelines on July 25, 2012 (Fed. Reg. Vol. 77, No. 144).

• Final comments due October 5, 2012.• Final rules and examination guidelines

scheduled to be published in mid-February 2013.

First-(Inventor)-To-FileOn its face, new 35 U.S.C. 102 may seem fairly

straightforward.However, many of the words come with a lot of

baggage.In the coming years, the initial hurdles will involve

determining whether same/similar words should be given same/similar interpretation or new treatment.

First-(Inventor)-To-FileCompeting theories:1. Congress picked the same words as in old 102, because it

wanted the same meanings (note that in its proposed rules and guidelines, the USPTO refers to existing precedent to support its interpretation of certain terms in the statute)

2. Congress used similar terms, but added new context, and assumed they would be reinterpreted.

3. Congress didn’t actually give that much thought to it – maybe giving them too much credit!

First-(Inventor)-To-FileExisting Section 102 Categories of Prior art:102(a): Known or used in USA; patented or described in

printed publication anywhere – before invention date.102(b): Patented or described in printed publication

anywhere; in public use or on sale in USA - > 1 year before filing date.

102(e): Published U.S. or PCT applications that have a filing date that precedes the applicant’s filing date (also in English, designated U.S.) – “secret prior art”

First-(Inventor)-To-FileExisting Section 102 contains some geographic

limitations on certain categories of prior art, does not count the foreign priority date as the effective date of a patent/published application (Hilmer doctrine), and places restrictions on when published PCT applications qualify as prior art.

First-(Inventor)-To-FileNew Section 102:

First-(Inventor)-To-FileNew Section 102(a):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;

USPTO position: New Section 102(a)(1) is similar to existing 102(a) and (b) categories of prior art.

First-(Inventor)-To-FileNotable differences: • Expands “public use” and “on sale” prior art to

anywhere in the world (used to be limited to “in this country”)

• Also adds category of “otherwise available to the public”

• Changes “invention date” to “effective filing date” as relevant comparison time

First-(Inventor)-To-FileNew Section 102(a):A person shall be entitled to a patent unless:(2) the claimed invention was described in an issued

patent or published application, which names another inventor and was effectively filed before the effective filing date of the claimed invention.

USPTO position: New Section 102(a)(2) is similar to existing 102(e) categories of prior art


Notable differences:• Foreign-filed applications used to be prior art only

as of their U.S. or PCT filing date. Now they are prior art as of their foreign priority date – 102(d) defines the “effective date” of a prior art patent or

published application as being the actual filing date, or the earliest priority date of the subject matter.

• Changes “invention date” to “effective filing date” as relevant comparison time

Hypo

Inventor A-------------C----------RTP---File------------>

Inventor B-----C-------RTP--------------------------File->

Under Old Law, Inventor B winsUnder New Law, Inventor A wins

C: ConceptionRTP: Reduction to Practice


• Date of Invention is Irrelevant*

• Can no longer “swear behind”

* date of invention may still be relevant in a derivation proceeding (can’t throw out lab notebooks just yet)

Modified Grace PeriodsSection 102(b)(1):

Disclosures 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—

Modified Grace PeriodsDisclosures made 1 yr or less not prior art if:(1)(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

(1)(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.

Modified Grace Periods

Huh?

Modified Grace PeriodsPlain English102(b)(1)(A): One-year grace period for inventor’s own

“disclosure,” or disclosure of the inventor’s work by another.

102(b)(1)(B): Disclosure by a 3rd party is not prior art, if the invention was disclosed first (followed by patent filing within 1 year of that initial disclosure). Thus, an inventor’s first disclosure can “immunize” the inventor against subsequent 3rd party disclosures.


Note: These exceptions are specific to 102(a)(1) categories of prior art (i.e., patents, printed publications, public use, on sale, or otherwise available to the public).


Problem: Exceptions are only provided for “disclosures.” The term “disclosure” is not defined in the statute or legislative history.

Does “disclosure” encompass “public uses” or “sales” in 102(a)(1)?

USPTO position is that “disclosure” is a generic term intended to encompass the various documents and activities listed in 102(a)(1).

Imprecise language of statute:102(b)(1)(B) specifies “public” disclosure, while 102(b)(1)

(A) does not say “public.” Does a secret disclosure nonetheless qualify as an exempt disclosure?

What about private sales or secret commercialization? • Existing jurisprudence:

– defines a sale as including an “offer to sell”– has interpreted a secret commercialization as being

a “public use” (Metallizing Engineering)

Ambiguities re: Prior Art

Ambiguities re: Prior ArtTwo competing theories:1. 102(a)(1) contains the language “otherwise available

to the public” – It was the intent of Congress that documents or activities in 102(a)(1) must be publicly accessible to qualify as prior art. Thus, private sales or secret commercialization that are not publicly available information do not qualify as prior art in the first place.

Ambiguities re: Prior ArtTwo competing theories:2. In view of existing jurisprudence, private sales or

secret commercialization qualify as prior art under 102(a)(1), but– They are also considered to be “disclosures” at least

under 102(b)(1)(A), which does not contain a publicly available requirement; OR

– They are not considered to be “disclosures,” and thus are patent barring events, if they occur before the effective filing date of the invention.

Other issuesRegarding the exception under 102(b)(1)(B) for

inventor’s “pre-disclosure” of the invention:What is the degree of similarity between the

description of the invention in the pre-disclosure, and the subject matter described in the intervening 3rd party reference to trigger this exception?

Other issues

In other words, how close does the reference have to be? Does it have to be identical? Or only inherently disclose the invention? Must it enable the invention? What if it’s only a 103-type reference?

Other issuesUSPTO Guidelines:Even if the only differences between the subject matter

in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply

Fed. Reg. Vol. 77, No. 144, pp 43767.

Other issues

Therefore, the subject matter in the prior art reference must be “the same” as the subject matter pre-disclosed by the inventor for the exception to apply.

Hypo 102(b)(1)(B)Inventor ---------X--------------------------File------------> | |

publishes paper: A+B+C A+B+C (and maybe C’)

Third Party------------------X’-----------------------> | Reference publishes: A+B+C’ (where C’ is a trivial variation on C)

Under narrow interpretation of 102(b)(1)(B) exception does not apply. Reference qualifies as prior art, even though inventor “pre-disclosed” the invention.

Modified Grace PeriodsSection 102(b)(2):DISCLOSURES APPEARING IN APPLICATIONS

AND PATENTS - A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if--

Modified Grace PeriodsPatents or Patent Applications are not prior art if:(2)(A) the subject matter disclosed was obtained directly or

indirectly from the inventor;(2)(B) the subject matter disclosed had, before such subject

matter was effectively filed, been publicly disclosed by the inventor or one who obtained it from the inventor; or

(2)(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by or subject to an obligation of assignment to the same person.


Huh?

Modified Grace PeriodsPlain English102(b)(2)(A): Patents or patent applications containing

information about the invention are not prior art, if it’s the inventor’s own work.

102(b)(2)(B): Patents or patent applications are also not prior art if the invention is first publicly disclosed before the effective filing date of the patent or application.

102(b)(2)(C): Patents or patent applications are also not prior art if commonly owned with the invention as of the effective filing date - broadens the joint development exemption to both obviousness and novelty inquiries.

Issues to consider• Exceptions are limited to 102(a)(2) categories of

prior art.– Common ownership exception does not apply to

patents/applications with publication dates before the effective filing date (those are 102(a)(1) categories of prior art) – only those with earlier filing dates, that publish/issue after the filing date of the application.

• “Pre-disclosure” exception in 102(b)(2)(B) still requires that the subject matter be identical.

Issues to consider• 102(b)(2)(C) exception is limited:

– Again as noted above, it does not apply to patents or applications that have published before the effective filing date.

– Double-patenting rejection can still be made– Reference can still be used for 112 rejections

• 102(c) defines requirements to establish common ownership

Misc Provisions

• USPTO rules and guidelines propose a new affidavit practice to establish exemptions for the prior art categories

• New 102 eliminates:– Abandonment bar (old 102(c))– Foreign patenting bar (old 102(d))– Interference proceedings (old 102(g))

• Derivation proceedings provided for in new 135

First-(Inventor)-To-File• Goes into effect for any applications with effective dates on or

after March 16, 2013.• Harsh rule: FTF provisions kick in for any application that

contains or contained at any time a claim with an effective date on or after March 16, 2013, or that claims priority to such an application.– Upshot: All claims must be entitled to pre-March 16, 2013

date to be under the “old” law;– Cannot fix by canceling the offending claim; and– Cannot fix by filing a continuation if have offending

application (containing offending claim) in the chain.

HYPOTHETICALS


12-months Inventor later

Discloses File

Inventor-------|--------------------------|------------>

102(b)(1)(A): Disclosure is not prior art


1-year 12-months period 3rd Party later

starts Discloses File

Inventor-------|-----------|--------------------|---->

3rd Party disclosure is prior art


1-year 3rd Party 12-months period Public use later

starts On sale File

Inventor-------|-----------|--------------------|---->

Public use and/or sale is prior art – public use or sale could occur anywhere in the world.


1-year 12-months period Inventor 3rd Party later

starts Discloses Discloses File

Inventor------|-----------|----------|----------------|---->

3rd Party disclosure is not prior art (assuming disclosed subject matter is “the same”).

Modified Grace PeriodTake home message: • Incentive for early disclosure of inventions within the

one-year grace period – eliminates any prior art that occurs after the first public disclosure by the inventor, provided the inventor files a patent application on the subject matter within the one-year grace period. “first to publish system”

• Also, foreign rights must be considered - no grace period in most foreign jurisdictions.

Derivation

Inventor lab notebooks are still important in case you need to prove derivation.

Still first inventor to file – must still be an inventor.

Thank You!

Hovey Williams LLP84 Corporate Woods

10801 Mastin Blvd., Suite 1000Overland Park, KS 66210

913.647.9050www.hoveywilliams.com

Understanding Changes to 35 USC 102 or "First-(Inventor)-To-File

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