The PTO’s “Grace Period” for Prior Art Disclosures Under the Leahy-Smith America Invents Act

The Leahy-Smith America Invents Act (“AIA”), signed into law on September 16, 2011, has been considered the most significant change to the United States patent system since 1952. Most notably, the AIA changed the U.S. patent system from a “first-to-invent” to “first-to-file” system, in which priority is given to the first inventor(s) to file their patent application. This change, which applies to all patent applications filed on and after March 16, 2013, helped align the U.S. patent system with patent systems throughout the rest of the world.

 

Prior Art Under the AIA

Prior to the passage of the AIA, prior art disclosures were governed by 35 U.S.C. § 102(a) (2006), which read:

A person shall be entitled to a patent unless –

  • the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
  • the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States

 

Under the AIA, prior art disclosures are governed by 35 U.S.C. §§ 102(a)(1) & (b) (2012), which reads:

(a)Novelty; Prior Art.—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

(b) Exceptions.—

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.—A disclosure 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—

(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

(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.

 

Pre-AIA § 102(a) (2006) provides for rejections on the basis of prior art that was made public before the patent applicant’s invention, while § 102(b) (2006) provides for rejections on the basis of prior art that was made public one year before the date of application. “Public accessibility” and “public availability” determined whether or not a reference qualified as prior art prior to the passage of the AIA. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).

The AIA counterpart of pre-AIA §§102(a) and (b) is § 102(a)(1) (2012), with exceptions provided in § 102(b) (2012). Section 102(a)(1) (2012) provides for rejections on the basis of disclosures: patents, publications, sales or uses made public before the application’s effective filing date. Section 102(b) (2012) provides for exceptions to § 102(a) (2012) for subject matter disclosed within one year or less before the application’s filing date, known as a “grace period.”

Congress included the phrases “publicly disclosed” and “subject matter” in the law, yet the exact definitions of those phrases have not been included in the text of the statute. This has sparked considerable debate amongst the patent community regarding how this new grace period will operate. Two of the most common questions are: what exactly is required for something to be “publicly disclosed”, and what constitutes “subject matter”? Without clear answers to these questions, inventors and patent attorneys are unable to assess if a prior disclosure excepts a potentially invalidating piece of prior art. While the USPTO “PTO”) has provided some insight into how it believes § 102 (2012) should be interpreted, it appears as though these interpretations are at odds with the goals of the patent system.

 

The PTO’s Take

 

Publicly Disclosed is the same as Publicly Accessible

First, the PTO has stated that the uses of the phrases “disclosed” and “publicly disclosed” in § 102 (2012) are merely a codification of the phrases “publicly accessible” and “publicly available” that were used pre-AIA. 35 U.S.C. § 102 (2006).

 

The exceptions under § 102(b)(1) require exact similarity between the disclosure and the prior art reference

            Second, the PTO has stated that the same “subject matter” must be included in both the initial disclosure and the prior art reference in order for the initial disclosure to remove the intervening disclosure from the prior art. MPEP § 2154.02(b). The same “subject matter,”, according to the PTO, does not allow for any variation between the intervening disclosure and the initial disclosure. 78 Fed. Reg. 11059, 11066 (Feb. 14, 2013) (emphasis added). While there is no requirement that both disclosures be made in the same manner or be made using identical words or expressions, they still must disclose the exact same subject matter in order for the intervening disclosure to be removed from the prior art. Any portion of the intervening disclosure that was not included in the initial disclosure will remain as a part of the prior art and may be used to invalidate a patent or reject an application.

In addition, the PTO has stated that even if a third-party intervening disclosure is obvious over an initial disclosure, it cannot be removed from the prior art under § 102(b) (2012) as long as the subject matter is not exactly same. Therefore, even obvious variations on an inventor’s disclosure in a subsequent third party disclosure may remain in the prior art and be used to reject a patent application.

Finally, the PTO has also stated that when applying the exceptions in § 102(b) (2012), it is improper to compare the inventor’s disclosure and the intervening disclosure to the claimed invention. The scope of the inquiry for § 102(b) (2012) is solely the two disclosures.

 

Has the PTO Gotten it Wrong?

            When claiming that the use of the word “disclosure” in § 102 (2012) was merely a codification of the “accessibility” and “availability” standards in § 102 (2006), the PTO ignored the long-standing presumption that when Congress changes the words in a statute, it intended to change the statute’s meaning. United States v. Berkos, 543 F.3d 392, 397 (7th Cir. 2008).

Accessibility and availability have distinct meanings from disclosure. For example, accessibility means “able to be reached” while disclosure means “something that is made known to the public”. Therefore, the PTO’s view that “disclosure” is the same as the pre-AIA “accessibility” standard ignores Congress’ potential intent in choosing to use the phrase “disclosure” instead of the previously-used “accessibility” as well as the difference in meaning between the two words.

Moreover, the PTO’s stance that § 102(b) (2012) does not allow for any variation between an inventor’s disclosure and an intervening disclosure is misplaced. If this standard were to be followed, it would surely lead to perverse results that are at odds with the goals of the U.S. patent system. First, the position taken by the PTO would allow third parties to capitalize on trivial variations of the inventor’s disclosure. In fact, a third party could potentially disclose a species of a genus disclosed by an inventor and prevent the inventor-discloser from obtaining a patent. The exactness required by the PTO would result in inventors having to disclose every element and variation of their inventions, or risk patent invalidation. While the PTO’s interpretation may result in inventors filing their patent applications earlier, it will likely have a chilling effect on public disclosure of inventions–another goal of the patent system. With a decrease in public disclosure, less information is being shared, which likely will hinder innovation. Although the PTO’s view on § 102(b) (2012) does help promote the post-AIA first-to-file system, it does so at the expense of other goals of the patent system.

 

The Sole Voice…For Now      

The PTO’s reading of § 102 (2012) seems to be somewhat singularly focused on the goal of advancing the United States to a first-to-file system without considering the secondary effects that may result from such a narrow interpretation. Ultimately, however, the PTO is not the final voice on the interpretation of § 102 (2012). The courts may provide their own view on the interpretation of the statue, and Congress itself may give a directive on the correct interpretation. The current view of § 102 (2012) proffered by the PTO, however, is the only source of guidance that inventors and patent attorneys have at this time. Once Congress, the PTO, and the courts have been given a chance to speak on these questions, the patent community will hopefully have a clear answer to the questions surrounding § 102 (2012).

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