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2151    Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA [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.]

After the AIA, 35 U.S.C. 102 continues to set forth the scope of prior art that will preclude the grant of a patent on a claimed invention, but revises what qualifies as prior art. Specifically, AIA 35 U.S.C. 102(a)(1) and (a)(2) set forth what qualifies as prior art. AIA 35 U.S.C. 102(a)(1) provides that a person is not entitled to a patent if 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. AIA 35 U.S.C. 102(a)(2) provides that a person is not entitled to a patent if the claimed invention was described in a patent issued under 35 U.S.C. 151, or in an application for patent published or deemed published under 35 U.S.C. 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. AIA 35 U.S.C. 102(b) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a). Specifically, AIA 35 U.S.C. 102(b)(1) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a)(1), and AIA 35 U.S.C. 102(b)(2) sets forth exceptions to prior art established in AIA 35 U.S.C. 102(a)(2).

The AIA also provides definitions in 35 U.S.C. 100 of the meaning of the terms “claimed invention,” “effective filing date,” “inventor,” and “joint inventor” (or “coinventor”). The AIA defines the term “claimed invention” in 35 U.S.C. 100(j) as the subject matter defined by a claim in a patent or an application for a patent. The AIA defines the term “effective filing date” for a claimed invention in a patent or application for patent (other than a reissue application or reissued patent) in 35 U.S.C. 100(i)(1) as meaning the earlier of: (1) The actual filing date of the patent or the application for the patent containing the claimed invention; or (2) the filing date of the earliest provisional, nonprovisional, international (PCT), or foreign patent application to which the patent or application is entitled to benefit or priority as to such claimed invention. The AIA defines the term “inventor” in 35 U.S.C. 100(f) as the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention, and in 35 U.S.C. 100(g) defines the term “joint inventor” and “coinventor” to mean any one of the individuals who invented or discovered the subject matter of a joint invention.

As discussed previously, AIA 35 U.S.C. 102(a)(1) provides that a person is not entitled to a patent if 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. Under pre-AIA 35 U.S.C. 102(a) and (b), knowledge or use of the invention (pre-AIA 35 U.S.C. 102(a)), or public use or sale of the invention (pre-AIA 35 U.S.C. 102(b)), was required to be in the United States to qualify as a prior art activity. Under the AIA, a prior public use, sale activity, or other disclosure has no geographic requirement (i.e., need not be in the United States) to qualify as prior art.

AIA 35 U.S.C. 102(b)(1) provides that certain disclosures made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. 102(a)(1) with respect to the claimed invention if: (1) 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 (2) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. Thus, AIA 35 U.S.C. 102(b)(1) effectively provides a one-year grace period (grace period) after a first inventor-originated disclosure of an invention within which the inventor, assignee, obligated assignee, or other party having sufficient interest may file a patent application which is not subject to such disclosure and certain other disclosures as prior art. The one-year grace period in AIA 35 U.S.C. 102(b)(1) is measured from the filing date of the earliest U.S. or foreign patent application to which a proper benefit or priority claim to such invention has been asserted in the patent or application and the earlier application supports the claimed invention in the manner required by 35 U.S.C. 112(a). Under pre-AIA 35 U.S.C. 102(b), the one-year grace period is measured from the filing date of the earliest application filed in the United States (directly or through the PCT) and not from the dates of earlier filed foreign patent applications.

The date of invention is not relevant under AIA 35 U.S.C. 102. Thus, a prior art disclosure could not be disqualified or antedated by showing that the inventor invented the claimed invention prior to the effective date of the prior art disclosure of the subject matter (e.g., under the provisions of 37 CFR 1.131).

As discussed previously, AIA 35 U.S.C. 102(a)(2) provides that a person is not entitled to a patent if the claimed invention was described in a U.S. patent, a U.S. patent application publication, or an application for patent deemed published under 35 U.S.C. 122(b) (collectively referred to as “U.S. patent documents”), that names another inventor and was effectively filed before the effective filing date of the claimed invention. Under 35 U.S.C. 374, a World Intellectual Property Organization (WIPO) publication of a Patent Cooperation Treaty (PCT) international application that designates the United States is an application for patent deemed published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C. 102(a)(2). Thus, under the AIA, WIPO publications of PCT applications that designate the United States are treated as U.S. patent application publications for prior art purposes, regardless of the international filing date, whether they are published in English, or whether the PCT international application enters the national stage in the United States. Accordingly, a WIPO publication of a PCT application (WIPO published application) that designates the United States, a U.S. patent, or a U.S. patent application publication that names another inventor and was effectively filed before the effective filing date of the claimed invention, is prior art under AIA 35 U.S.C. 102(a)(2). Under pre-AIA 35 U.S.C. 102(e), a WIPO published application designating the United States is treated as a U.S. patent application publication only if the PCT application was filed on or after November 29, 2000, and published under PCT Article 21(2) in the English language. See MPEP § 2136.03, subsection III.

AIA 35 U.S.C. 102(d) defines “effectively filed” for the purpose of determining whether a particular U.S. patent document is prior art under AIA 35 U.S.C. 102(a)(2) to a claimed invention. A U.S. patent document is considered to have been effectively filed for purposes of its prior art effect under 35 U.S.C. 102(a)(2) with respect to any subject matter it describes on the earlier of: (1) 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 the benefit of, or priority to, the filing date of an earlier U.S. provisional, U.S. nonprovisional, international (PCT), or foreign patent application, the filing date of the earliest such application that describes the subject matter of the claimed invention. Thus, a U.S. patent document is effective as prior art as of the filing date of the earliest application to which benefit or priority is claimed and which describes the subject matter relied upon, regardless of whether the earliest such application is a U.S. provisional or nonprovisional application, an international (PCT) application, or a foreign patent application.

AIA 35 U.S.C. 102(b)(2)(A) and (B) provide that a disclosure shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if: (1) The subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; or (2) the subject matter disclosed had, before such subject matter was effectively filed under 35 U.S.C. 102(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. Thus, under the AIA, a U.S. patent document that was not issued or published more than one year before the effective filing date of the claimed invention is not prior art to the claimed invention if: (1) The U.S. patent document was by another who obtained the subject matter disclosed from the inventor or a joint inventor; or (2) the inventor or a joint inventor, or another who obtained the subject matter disclosed from an inventor or joint inventor, had publicly disclosed the subject matter before the 35 U.S.C. 102(d) (“effectively filed”) date of the U.S. patent document.

Additionally, AIA 35 U.S.C. 102(b)(2)(C) provides that a disclosure made in a U.S. patent document shall not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person. This provision replaces the exception in pre-AIA 35 U.S.C. 103(c) that applied only in the context of an obviousness analysis under 35 U.S.C. 103 to prior art that was commonly owned at the time the claimed invention was made, and which qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). Thus, the AIA provides that certain prior patents and published patent applications of co-workers and collaborators are not prior art either for purposes of determining novelty (35 U.S.C. 102) or nonobviousness (35 U.S.C. 103). This exception, however, only removes disclosures as prior art under AIA 35 U.S.C. 102(a)(2), namely, U.S. patent documents that were not published, but that were effectively filed, before the effective filing date of the claimed invention. This exception is not effective to except prior art that is also available under 35 U.S.C. 102(a)(1), that is, patents, printed publications, public uses, sale activities, or other publicly available disclosures published or occurring before the effective filing date of the claimed invention. A prior disclosure, as defined in AIA 35 U.S.C. 102(a)(1), by a co-worker or collaborator is prior art under AIA 35 U.S.C. 102(a)(1) unless it falls within an exception under AIA 35 U.S.C. 102(b)(1), regardless of whether the subject matter of the prior disclosure and the claimed invention was commonly owned not later than the effective filing date of the claimed invention.

The AIA eliminates the provisions in pre-AIA 35 U.S.C. 102(c) (abandonment of the invention), 102(d) (premature foreign patenting), 102(f) (derivation), and 102(g) (prior invention by another, but see below for discussion of continued limited applicability). Under the AIA, abandonment of the invention or premature foreign patenting is not relevant to patentability. Prior invention by another is likewise not relevant to patentability under the AIA unless there is a prior disclosure or filing of an application by another. A situation in which an application names a person who is not the actual inventor as the inventor (pre-AIA 35 U.S.C. 102(f)) will be handled in a derivation proceeding under 35 U.S.C. 135, by a correction of inventorship under 37 CFR 1.48 to name the actual inventor, or through a rejection under 35 U.S.C. 101 and 35 U.S.C. 115. See form paragraphs 7.04.101.aia and 7.04.102.aia.

AIA 35 U.S.C. 102(c) provides for common ownership of subject matter made pursuant to joint research agreements. Under 35 U.S.C. 100(h), the term “joint research agreement” as used in AIA 35 U.S.C. 102(c) is defined as a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. AIA 35 U.S.C. 102(c) specifically provides that 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 AIA 35 U.S.C. 102(b)(2)(C) if: (1) The subject matter disclosed was developed and the claimed invention was made by, or on behalf of, one 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.

AIA 35 U.S.C. 103 provides that a patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. In addition, AIA 35 U.S.C. 103 provides that patentability shall not be negated by the manner in which the invention was made. This provision tracks pre-AIA 35 U.S.C. 103(a), except that the temporal focus for the obviousness inquiry is before the effective filing date of the claimed invention, rather than at the time of the invention. The provisions of pre-AIA 35 U.S.C. 103(c) have been replaced with AIA 35 U.S.C. 102(b)(2)(C) and (c), and the provisions of pre-AIA 35 U.S.C. 103(b) pertaining to biotechnological processes have been eliminated.

AIA 35 U.S.C. 102 and 103 took effect on March 16, 2013. These new provisions apply to any patent application that contains or contained at any time: (1) a claim to a claimed invention that has an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013; or (2) a designation as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time a claim to a claimed invention that has an effective filing date that is on or after March 16, 2013. Such an application is referred to as an AIA (first inventor to file) application (hereinafter “AIA application”). AIA 35 U.S.C. 102 and 103 also apply to any patent resulting from an AIA application. See Pub. L. 112-29, § 3(n)(1), 125 Stat. at 293. See also MPEP § 2159et seq. for guidance in determining whether an application is subject to AIA 35 U.S.C. 102 and 103.

The AIA provides that the provisions of pre-AIA 35 U.S.C. 102(g) apply to each claim of an AIA application for patent if the patent application: (1) contains or contained at any time a claim to a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) is ever designated as a continuation, divisional, or continuation-in-part of an application that contains or contained at any time a claim to a claimed invention that has an effective filing date before March 16, 2013. Pub. L. 112-29, § 3(n)(2), 125 Stat. at 293. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting from an AIA application to which pre-AIA 35 U.S.C. 102(g) applied. See MPEP § 2138 for guidance on application of pre-AIA 35 U.S.C. 102(g) and form paragraph 7.14.aia.

If an application (1) contains or contained at any time a claimed invention having an effective filing date that is before March 16, 2013, or ever claimed the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365(c) based upon an earlier application that ever contained a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013, and (2) also contains or contained at any time any claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013, or ever claimed the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365 based upon an earlier application that ever contained a claimed invention having an effective filing date as defined in 35 U.S.C. 100(i) that is on or after March 16, 2013, then AIA 35 U.S.C. 102 and 103 apply to the application, and each claimed invention in the application is also subject to pre-AIA 35 U.S.C. 102(g).

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Last Modified: 03/27/2014 10:10:34