Understanding Changes to 35 USC 102 or "First-(Inventor)-To-File
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Jan 05, 2015
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About This Presentation
Overview of 35 USC 102 and how it affects patent registration for inventors. This presentation addresses congressional action governing patent applications, USPTO guidelines, new provisions and hypothetical situations for discussion. Developed by Crissa A. Seymour Cook of Hovey Williams, LLP.
Slide Content
Understanding Changes to 35 USC § 102
Presented by
Crissa Seymour Cook
LAKC 5th Annual IP CLE
Thursday January 31, 2013
Presented by
Crissa Seymour Cook
LAKC 5th Annual IP CLE
Thursday January 31, 2013
First-(Inventor)-To-File
First-(Inventor)-To-File
Purpose: 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.
Purpose: 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.
First-(Inventor)-To-File
•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.
•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-File
On 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.
On 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-File
Competing 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!
Competing 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-File
Existing 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”
Existing 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-File
Existing 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.
Existing 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-File
New Section 102:
New Section 102:
First-(Inventor)-To-File
New 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.
New 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-File
Notable 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
Notable 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-File
New 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
New 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
First-(Inventor)-To-File
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
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 wins
Under New Law, Inventor A wins
C: Conception
RTP: Reduction to Practice
Inventor A-------------C----------RTP---File------------>
Inventor B-----C-------RTP--------------------------File->
Under Old Law, Inventor B wins
Under New Law, Inventor A wins
C: Conception
RTP: Reduction to Practice
First-(Inventor)-To-File
•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)
•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 Periods
Section 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—
Section 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 Periods
Disclosures 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.
Disclosures 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?
Huh?
Modified Grace Periods
Plain English
102(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.
Plain English
102(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.
Modified Grace Periods
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).
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).
Modified Grace Periods
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).
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
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 Art
Two 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.
Two 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 Art
Two 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.
Two 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 issues
Regarding 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?
Regarding 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?
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 issues
USPTO 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.
USPTO 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.
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.
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 Periods
Section 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--
Section 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 Periods
Patents 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.
Patents 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.
Modified Grace Periods
Huh?
Huh?
Modified Grace Periods
Plain English
102(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.
Plain English
102(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.
•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
•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
•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.
•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
First-(Inventor)-To-File
12-months
Inventor later
Discloses File
Inventor-------|--------------------------|------------>
102(b)(1)(A): Disclosure is not prior art
12-months
Inventor later
Discloses File
Inventor-------|--------------------------|------------>
102(b)(1)(A): Disclosure is not prior art
First-(Inventor)-To-File
1-year 12-months
period 3rd Party later
starts Discloses File
Inventor-------|-----------|--------------------|---->
3rd Party disclosure is prior art
1-year 12-months
period 3rd Party later
starts Discloses File
Inventor-------|-----------|--------------------|---->
3rd Party disclosure is prior art
First-(Inventor)-To-File
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 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.
First-(Inventor)-To-File
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”).
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 Period
Take 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.
Take 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.
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 LLP
84 Corporate Woods
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
913.647.9050
www.hoveywilliams.com
Hovey Williams LLP
84 Corporate Woods
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
913.647.9050
www.hoveywilliams.com
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