Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act, 43759-43773 [2012-17898]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 77, Number 144 (Thursday, July 26, 2012)]
[Proposed Rules]
[Pages 43759-43773]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-17898]


-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2012-0024]


Examination Guidelines for Implementing the First-Inventor-to-
File Provisions of the Leahy-Smith America Invents Act

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (Office) is 
publishing

[[Page 43760]]

proposed examination guidelines concerning the first-inventor-to-file 
(FITF) provisions of the Leahy-Smith America Invents Act (AIA). The AIA 
amends the patent laws pertaining to the conditions of patentability to 
convert the United States patent system from a ``first to invent'' 
system to a ``first inventor to file'' system, treats United States 
patents and United States patent application publications as prior art 
as of their earliest effective United States, foreign, or international 
filing date, eliminates the requirement that a prior public use or sale 
activity be ``in this country'' to be a prior art activity, and treats 
commonly owned or joint research agreement patents and patent 
application publications as being by the same inventive entity for 
purposes of novelty, as well as nonobviousness. The changes to the 
conditions of patentability in the AIA result in greater transparency, 
objectivity, predictability, and simplicity in patentability 
determinations. These guidelines will assist Office personnel in, and 
inform the public of how the Office is, implementing the FITF 
provisions of the AIA. The Office is concurrently proposing in a 
separate action (RIN 0651-AC77) published elsewhere in this issue of 
the Federal Register to amend the rules of practice in patent cases to 
implement the FITF provisions of the AIA.

DATES: Written comments must be received on or before October 5, 2012.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: fitf_guidance@uspto.gov. Comments may also be 
submitted by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of Mary C. Till, Senior Legal Advisor, Office 
of Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal, https://www.regulations.gov.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet in order to facilitate posting on the Office's Internet Web 
site. Plain text is preferred, but comments may also be submitted in 
ADOBE[supreg] portable document format or MICROSOFT WORD[supreg] 
format. Comments not submitted electronically should be submitted on 
paper, and will be digitally scanned into ADOBE[supreg] portable 
document format.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, currently located at Madison Building 
East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments 
also will be available for viewing via the Office's Internet Web site 
(https://www.uspto.gov). Because comments will be made available for 
public inspection, information that the submitter does not desire to be 
made public, such as an address or phone number, should not be included 
in the comments.

FOR FURTHER INFORMATION CONTACT: Mary C. Till, Senior Legal Advisor 
(telephone (571) 272-7755; email mary.till@uspto.gov) or Kathleen 
Kahler Fonda, Senior Legal Advisor (telephone (571) 272-7754; email 
kathleen.fonda@uspto.gov), of the Office of the Deputy Commissioner for 
Patent Examination Policy. Alternatively, mail may be addressed to Ms. 
Till or Ms. Fonda at Commissioner for Patents, attn: FITF, P.O. Box 
1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: The AIA \1\ was enacted into law on 
September 16, 2011. Section 3 of the AIA amends the patent laws to: (1) 
Convert the United States patent system from a ``first to invent'' 
system to a ``first inventor to file'' system; (2) eliminate the 
requirement that a prior public use or sale activity be ``in this 
country'' to be a prior art activity; (3) treat U.S. patents and U.S. 
patent application publications as prior art as of their earliest 
effective filing date, regardless of whether the earliest effective 
filing date is based upon an application filed in the U.S. or in 
another country; and (4) treat commonly owned patents and patent 
application publications, or those resulting from a joint research 
agreement, as being by the same inventive entity for purposes of 35 
U.S.C. 102 and 103. The changes in section 3 of the AIA take effect on 
March 16, 2013.
---------------------------------------------------------------------------

    \1\ Public Law 112-29, 125 Stat. 284 (2011).
---------------------------------------------------------------------------

    These proposed guidelines do not constitute substantive rulemaking 
and do not have the force and effect of law. The proposed guidelines 
set out the Office's interpretation of 35 U.S.C. 102 and 103 as amended 
by the AIA, and advise the public and the Patent Examining Corps on how 
the changes to 35 U.S.C. 102 and 103 in the AIA impact the provisions 
of the Manual of Patent Examining Procedure (MPEP) pertaining to 35 
U.S.C. 102 and 103. The guidelines have been developed as a matter of 
internal Office management and are not intended to create any right or 
benefit, substantive or procedural, enforceable by any party against 
the Office. Rejections will continue to be based upon the substantive 
law, and it is these rejections that are appealable. Failure of Office 
personnel to follow the guidelines is not, in itself, a proper basis 
for either an appeal or a petition.

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

    The AIA replaces pre-AIA 35 U.S.C. 102 with provisions that: (1) 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 (35 U.S.C. 102(a)(1)); and (2) 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 (35 U.S.C. 102(a)(2)). In 35 U.S.C. 100(j), the AIA defines 
the term ``claimed invention'' 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 earliest of: (1) The 
actual filing date of the patent or the application for the patent 
containing a claim to the claimed invention (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. 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.
    The ``first inventor to file'' provisions of the AIA eliminate 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). Under AIA 35 U.S.C. 102, abandonment of 
the invention or premature foreign

[[Page 43761]]

patenting is not relevant to patentability. Prior invention by another 
is not relevant to patentability unless there is a prior disclosure or 
filing of an application by another. The 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 under 35 U.S.C. 101.\2\
---------------------------------------------------------------------------

    \2\ 35 U.S.C. 101 (``[w]hoever invents or discovers * * *, may 
obtain a patent therefor, subject to the conditions and requirements 
of this title); see also P.J. Federico, Commentary on the New Patent 
Act, 75 J. Pat. & Trademark Off. Soc'y 161, 179 (1993) (noting that 
pre-AIA 35 U.S.C. 102(f) is perhaps unnecessary since 35 U.S.C. 101 
provides that (``[w]hoever invents or discovers * * *, may obtain a 
patent therefor, subject to the conditions and requirements of this 
title'').
---------------------------------------------------------------------------

    The AIA provides in 35 U.S.C. 102(b)(1) that a disclosure 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) provides a 
one-year grace period after a first disclosure of an invention within 
which to file a patent application. Specifically, AIA 35 U.S.C. 
102(b)(1) permits an applicant to disqualify a disclosure of the 
invention made not more than one year before the effective filing date 
of the claimed invention that would otherwise be prior art if: (1) The 
disclosure to be disqualified was by an inventor or by a party who 
obtained the disclosed subject matter from an inventor; or (2) an 
inventor or a party who obtained the disclosed subject matter from an 
inventor had publicly disclosed the subject matter before the date of 
the reference disclosure to be disqualified. The one-year grace period 
in AIA 35 U.S.C. 102(b)(1) is measured from the earliest U.S. or 
foreign patent application to which the patent or application is 
entitled to benefit or priority as to such invention, whereas the one-
year grace period in pre-AIA 35 U.S.C. 102(b) is measured from only the 
earliest application filed in the United States.
    AIA 35 U.S.C. 100(f) defines the term ``inventor'' as the 
individual or if a joint invention, the individuals collectively who 
invented or discovered the subject matter of the invention. AIA 35 
U.S.C. 100(g) AIA defines the term ``joint inventor'' and ``co-
inventor'' to mean any one of the individuals who invented or 
discovered the subject matter of a joint invention.
    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).
    In accordance with 35 U.S.C. 102(a)(2) of the AIA, a person is not 
entitled to a patent if the claimed invention was described in 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. 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 
deemed a U.S. patent application publication 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 in the same 
way as U.S. patent application publications for prior art purposes, 
regardless of the international filing date or whether they are 
published in English. Accordingly, a U.S. patent, a U.S. patent 
application publication, or a WIPO publication of a PCT application 
that designates the United States (WIPO published application), that 
names another inventor and was effectively filed before the effective 
filing date of the claimed invention, is prior art under 35 U.S.C. 
102(a)(2). Compare with treatment under pre-AIA 35 U.S.C. 102(e), where 
a WIPO publication of a PCT application designating the United States 
is treated as a U.S. patent application publication under pre-AIA 35 
U.S.C. 102(e) only if the PCT application was filed on or after 
November 29, 2000, and published under PCT Article 21(2) in the English 
language.\3\
---------------------------------------------------------------------------

    \3\ Under 35 U.S.C. 102(e) as amended by the American Inventors 
Protection Act (Pub. L. 106-113) and the Intellectual Property and 
High Technology Technical Amendments Act of 2002 (Pub. L. 107-273), 
the international filing date of a PCT application is a U.S. filing 
date for prior art purposes under 35 U.S.C. 102(e) if the 
international application: (1) Has an international filing date on 
or after November 29, 2000; (2) designated the United States; and 
(3) is published under PCT Article 21(2) in English. See MPEP Sec.  
706.02(f)(1). The AIA amends 35 U.S.C. 102, 363, and 374 to provide 
simply that the publication under the PCT of an international 
application designating the United States shall be deemed a 
publication under 35 U.S.C. 122(b).
---------------------------------------------------------------------------

    In 35 U.S.C. 102(d), the AIA defines ``effectively filed'' for the 
purpose of determining whether a U.S. patent, U.S. patent application 
publication, or WIPO published application is prior art under 35 U.S.C. 
102(a)(2) to a claimed invention. A U.S. patent, U.S. patent 
application publication, or WIPO published application 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 or priority of 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, if the subject matter relied upon is described in the earliest 
claimed benefit or priority application, a U.S. patent, a U.S. patent 
application publication or WIPO published application is effective as 
prior art as of its earliest benefit or priority date, rather than only 
as of its earliest United States benefit date.
    The AIA provides in 35 U.S.C. 102(b)(2)(A) and (B) 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, U.S. patent application 
publication, or WIPO published application 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, U.S. patent application publication, or WIPO published 
application was by a party who obtained the disclosed subject matter 
from an inventor; or (2) an inventor, or a party who obtained the 
disclosed subject matter from an inventor, had disclosed the subject 
matter before the effective filing date of the U.S. patent, U.S. patent 
application

[[Page 43762]]

publication, or WIPO published application.
    The AIA provides in 35 U.S.C. 102(b)(2)(C) that a disclosure made 
in a U.S. patent, U.S. patent application publication, or WIPO 
published application 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 35 U.S.C. 
103 to prior art that was commonly owned at the time the claimed 
invention was made, and which qualifies as prior art only under pre-AIA 
35 U.S.C. 102(e), (f), or (g). AIA 35 U.S.C. 102(b)(2)(C) provides an 
exception to prior art that qualifies only under 35 U.S.C. 102(a)(2) 
but that applies in the context of anticipation or obviousness to prior 
art that was commonly owned not later than the effective filing date of 
the claimed invention.
    Thus, the AIA provides that certain prior patents and 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, applies only to AIA 35 U.S.C. 
102(a)(2) type of prior art: Namely, U.S. patents, U.S. patent 
application publications, or WIPO published applications effectively 
filed, but not published, before the effective filing date of the 
claimed invention. This exception does not apply to prior art that is 
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 35 U.S.C. 
102(a)(1), by a co-worker or collaborator is prior art under 35 U.S.C. 
102(a)(1) unless it falls within an exception under 35 U.S.C. 
102(b)(1), regardless of whether the subject matter of the prior 
disclosure and the claimed invention were commonly owned not later than 
the effective filing date of the claimed invention.
    The AIA provides in 35 U.S.C. 102(c) for common ownership of 
subject matter under joint research agreements. Under 35 U.S.C. 100(h), 
the term ``joint research agreement'' 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. The 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.
    The AIA provides in 35 U.S.C. 103 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. 35 U.S.C. 103 also 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 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.
    The AIA 35 U.S.C. 102 and 103 take effect on March 16, 2013. These 
new provisions apply to any patent application that contains or 
contained at any time: (1) A claimed invention that has an effective 
filing date 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 claimed invention that has an 
effective filing date that is on or after March 16, 2013.\4\ The AIA 35 
U.S.C. 102 and 103 also apply to any patent resulting from an 
application to which the AIA 35 U.S.C. 102 and 103 applied.\5\
---------------------------------------------------------------------------

    \4\ Public Law 112-29, Sec.  3(n)(1), 125 Stat. at 293.
    \5\ Id.
---------------------------------------------------------------------------

    The AIA provides that the provisions of pre-AIA 35 U.S.C. 102(g) 
\6\ apply to each claim of an application for patent if the patent 
application: (1) Contains or contained at any time a claimed invention 
having an effective filing date 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 
claimed invention that has an effective filing date before March 16, 
2013.\7\ Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting 
from an application to which pre-AIA 35 U.S.C. 102(g) applied.\8\
---------------------------------------------------------------------------

    \6\ 35 U.S.C. 102(g) precludes the grant of a patent if: (1) 
During the course of an interference conducted under 35 U.S.C. 135 
or 291, another inventor involved therein establishes, to the extent 
permitted in 35 U.S.C. 104, that before such person's invention 
thereof the invention was made by such other inventor and not 
abandoned, suppressed, or concealed, or (2) before such person's 
invention thereof, the invention was made in this country by another 
inventor who had not abandoned, suppressed, or concealed it.
    \7\ Public Law 112-29, Sec.  3(n)(2), 125 Stat. at 293.
    \8\ Id.
---------------------------------------------------------------------------

    Thus, if an application (1) contains or contained at any time any 
claimed invention having an effective filing date that is before March 
16, 2013, or ever claimed a right of priority or the benefit of an 
earlier filing date under 35 U.S.C. 119, 120, 121, or 365 based upon an 
earlier application ever containing a claimed invention having an 
effective filing date that is before March 16, 2013, and (2) also 
contains or contained at any time any claimed invention having an 
effective filing date that is on or after March 16, 2013, or ever 
claimed a right of priority or the benefit of an earlier filing date 
under 35 U.S.C. 119, 120, 121, or 365 based upon an earlier application 
ever containing a claimed invention having an effective filing date 
that is on or after March 16, 2013, then AIA 35 U.S.C. 102 and 103 
apply to the application, but each claimed invention is also subject to 
pre-AIA 35 U.S.C. 102(g).

I. Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)

    The AIA defines in 35 U.S.C. 102(a) the prior art that will 
preclude the grant of a patent on a claimed invention unless an 
exception in 35 U.S.C. 102(b) is applicable. 35 U.S.C. 102(a) 
specifically provides that ``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; or

[[Page 43763]]

    (2) The claimed invention was described in a patent issued under 
section 151, or in an application for patent published or deemed 
published under section 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.'' \9\
---------------------------------------------------------------------------

    \9\ 35 U.S.C. 102(a).
---------------------------------------------------------------------------

    As an initial matter, Office personnel should note that the 
introductory phrase ``[a] person shall be entitled to a patent unless'' 
remains unchanged from the pre-AIA version of 35 U.S.C. 102. Thus, 35 
U.S.C. 102 continues to provide that the Office bears the initial 
burden of explaining why the applicable statutory or regulatory 
requirements have not been met if a claim in an application is to be 
rejected. The AIA also does not change the requirement that in 
rejecting any claim of an application, the Office must establish a 
prima facie case of unpatentability.
    The categories of prior art documents and events are set forth in 
the AIA's 35 U.S.C. 102(a)(1) and (a)(2) and serve to qualify prior art 
activities for purposes of determining whether a claimed invention is 
novel or non-obvious. The documents upon which a prior art rejection 
may be based are an issued patent, a published application, and a non-
patent printed publication. Evidence that the claimed invention was in 
public use, on sale, or otherwise available to the public may also be 
used as the basis for a prior art rejection. Note that a printed 
publication that does not have a sufficiently early publication date to 
itself qualify as prior art under 35 U.S.C. 102(a)(1) may still be 
competent evidence of a previous public use, offer for sale, or other 
availability of a claimed invention that does have a sufficiently early 
date to qualify as prior art under 35 U.S.C. 102(a)(1).\10\
---------------------------------------------------------------------------

    \10\ In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994).
---------------------------------------------------------------------------

    The AIA in 35 U.S.C. 102(b) sets out exceptions to 35 U.S.C. 
102(a), in that prior art that otherwise would be included in 35 U.S.C. 
102(a) shall not be prior art if it falls within an exception in 35 
U.S.C. 102(b).
    35 U.S.C. 102(b)(1) provides exceptions to the categories of prior 
art defined in 35 U.S.C. 102(a)(1). 35 U.S.C. 102(b)(1) specifically 
states that a disclosure made one 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--
    [ssquf] 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
    [ssquf] 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.'' \11\
---------------------------------------------------------------------------

    \11\ 35 U.S.C. 102(b)(1).
---------------------------------------------------------------------------

    35 U.S.C. 102(b)(2) provides exceptions to the categories of prior 
art defined in 35 U.S.C. 102(a)(2). 35 U.S.C. 102(b)(2) specifically 
states that a disclosure shall not be prior art to a claimed invention 
under subsection (a)(2) if--
    [ssquf] The subject matter disclosed was obtained directly or 
indirectly from the inventor or a joint inventor;
    [ssquf] The subject matter disclosed had, before such subject 
matter was effectively filed under subsection (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; or
    [ssquf] The subject matter disclosed and the claimed invention, not 
later than the effective filing date of the claimed invention, were 
owned by the same person or subject to an obligation of assignment to 
the same person.'' \12\
---------------------------------------------------------------------------

    \12\ 35 U.S.C. 102(b)(2).
---------------------------------------------------------------------------

    Although some of the prior art provisions of AIA 35 U.S.C. 102(a) 
and (b) will seem familiar, especially in comparison to pre-AIA 35 
U.S.C. 102(a), (b), and (e), the AIA has introduced a number of 
important changes with respect to prior art documents and activities 
(disclosures). First, the availability of a disclosure as prior art is 
measured from the effective filing date of the claimed invention no 
matter where that filing occurred. Second, the AIA adopts a global view 
of prior art disclosures and thus does not require that a public use or 
sale activity be ``in this country'' to be a prior art activity. 
Finally, a catch-all ``otherwise available to the public'' category of 
prior art is added.

DATES: Effective filing date: Pre-AIA 35 U.S.C. 102(a) and (e) 
reference patent-defeating activities occurring before the applicant 
invented the claimed invention. AIA 35 U.S.C. 102(a)(1) and (a)(2) make 
no mention of the date of the invention, but instead concern documents 
that existed or events that happened ``before the effective filing date 
of the claimed invention.'' As a result, it is no longer possible to 
antedate or ``swear behind'' certain prior art disclosures by making a 
showing under 37 CFR 1.131 that the applicant invented the claimed 
subject matter prior to the effective date of the prior art disclosure.
    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) as 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 
application for which the patent or application is entitled, as to such 
invention, to a right of priority or the benefit of an earlier filing 
date under 35 U.S.C. 119, 120, 121, or 365.\13\ Thus, the one-year 
grace period in AIA 35 U.S.C. 102(b)(1) is measured from any earlier 
foreign patent application to which the patent or application is 
entitled to benefit or priority as to such invention, whereas the one-
year grace period in pre-AIA 35 U.S.C. 102(b) is measured from only the 
earliest application filed in the United States.
---------------------------------------------------------------------------

    \13\ 35 U.S.C. 100(i)(1).
---------------------------------------------------------------------------

    As under pre-AIA law, the effective filing date of a claimed 
invention is determined on a claim-by-claim basis and not an 
application-by-application basis. That is, the principle that different 
claims in the same application may be entitled to different effective 
filing dates vis-[agrave]-vis the prior art remains unchanged by the 
AIA. See MPEP Sec.  706.02(VI) (8th ed. 2001) (Rev. 8, July 2010).
    Finally, the AIA provides that the ``effective filing date'' for a 
claimed invention in a reissue patent or application for a reissue 
patent shall be determined by deeming the claim to the claimed 
invention to have been contained in the patent for which reissue was 
sought.\14\
---------------------------------------------------------------------------

    \14\ 35 U.S.C. 100(i)(2).
---------------------------------------------------------------------------

    The meaning of ``disclosure'': The AIA does not define the term 
``disclosure.'' In addition, while 35 U.S.C. 102(a) does not use the 
term ``disclosure,'' 35 U.S.C. 102(b)(1) and (b)(2) each state 
conditions under which a ``disclosure'' that otherwise falls within 35 
U.S.C. 102(a)(1) or 102(a)(2) is not prior art under 35 U.S.C. 
102(a)(1) or 102(a)(2).\15\ Thus, the Office is treating the term 
``disclosure'' as a generic expression intended to encompass the 
documents and activities

[[Page 43764]]

enumerated in 35 U.S.C. 102(a) (i.e., being patented, described in a 
printed publication, in public use, on sale, or otherwise available to 
the public, or being described in a U.S. patent, U.S. patent 
application publication, or WIPO published application).
---------------------------------------------------------------------------

    \15\ See 35 U.S.C. 102(b)(1) (``[a] disclosure made one year or 
less before the effective filing date of a claimed invention shall 
not be prior art to the claimed invention under [35 U.S.C. 
102](a)(1)'') and 102(b)(2) (``[a] disclosure shall not be prior art 
to a claimed invention under [35 U.S.C. 102](a)(2)''); see also H.R. 
Rep. No. 112-98, at 43 (2011) (indicating that the grace period 
provision of 35 U.S.C. 102(b) would apply to all patent applicant 
actions during the grace period that would create prior art under 35 
U.S.C. 102(a)).
---------------------------------------------------------------------------

A. Prior Art Under AIA 35 U.S.C. 102(a)(1)

    35 U.S.C. 102(a)(1) sets forth prior documents and activities which 
may preclude patentability. Such documents and activities include prior 
patenting of the claimed invention, descriptions of the claimed 
invention in a printed publication, public use of the claimed 
invention, placing the claimed invention on sale, and otherwise making 
the claimed invention available to the public.
    Patented: AIA 35 U.S.C. 102(a)(1) indicates that prior patenting of 
a claimed invention precludes the grant of a patent on the claimed 
invention. This means that if a claimed invention was patented in this 
or a foreign country before the effective filing date of the claimed 
invention, 35 U.S.C. 102(a)(1) precludes the grant of a patent on the 
claimed invention. The effective date of the patent for purposes of 
prior art is the grant date of the patent for determining whether the 
patent qualified as prior art under 35 U.S.C. 102(a)(1). There is an 
exception to this rule if the patent is secret as of the date the 
rights are awarded.\16\ In such situations, the patent is available as 
prior art as of the date the patent was made available to the public by 
being laid open for public inspection or disseminated in printed 
form.\17\ The phrase ``patented'' in AIA 35 U.S.C. 102(a)(1) has the 
same meaning as ``patented'' in pre-AIA 35 U.S.C. 102(a) and (b). For a 
discussion of ``patented'' as used in pre-AIA 35 U.S.C. 102(a) and (b), 
see generally MPEP Sec.  2126.
---------------------------------------------------------------------------

    \16\ In re Ekenstam, 256 F.2d 321 (CCPA 1958); see also MPEP 
Sec.  2126.01.
    \17\ In re Carlson, 983 F.2d 1032, 1037 (Fed. Cir. 1992); see 
also MPEP Sec.  2126.
---------------------------------------------------------------------------

    Although an invention may be described in a patent and not claimed 
therein, the grant date or publication date of the published 
application would also be the applicable prior art date for purposes of 
relying on the subject matter disclosed therein as ``described in a 
printed publication,'' provided that the patent was made available to 
the public on its grant date. It is helpful to note that a U.S. patent 
that issues after the effective filing date of the claimed invention is 
not available as prior art under 35 U.S.C. 102(a)(1), but could be 
available as prior art under 35 U.S.C. 102(a)(2).
    Described in a printed publication: If a claimed invention is 
described in a patent, published patent application, or printed 
publication, such a document may be prior art under 35 U.S.C. 102(a)(1) 
or (a)(2). Both pre-AIA 35 U.S.C. 102(a) and (b) and AIA 35 U.S.C. 
102(a)(1) use the term ``described'' with respect to an invention in a 
prior art printed publication. Likewise, AIA 35 U.S.C. 102(a)(2) uses 
that term with respect to U.S. patents, U.S. patent application 
publications, and WIPO published applications. Thus, the Office does 
not view the AIA as changing the description requirement for a prior 
art document to anticipate a claimed invention under 35 U.S.C. 102.
    While the conditions for patentability of AIA 35 U.S.C. 112(a) 
require a written description of the claimed invention that would have 
enabled a person skilled in the art to make as well as use the 
invention, the prior art provisions of 35 U.S.C. 102(a)(1) and (a)(2) 
require only that the claimed invention be ``described.'' \18\ The two 
basic requirements that must be met by a prior art disclosure in order 
to describe a claimed invention under AIA 35 U.S.C. 102 are the same as 
those under pre-AIA 35 U.S.C. 102. First, ``each and every element of 
the claimed invention'' must be disclosed either explicitly or 
inherently, and the elements must be ``arranged or combined in the same 
way as in the claim.'' \19\ Second, a person of ordinary skill in the 
art must have been enabled to make the invention without undue 
experimentation.\20\ Thus, in order for a prior art disclosure to 
describe a claimed invention under 35 U.S.C. 102(a), it must disclose 
all elements of the claimed invention arranged as they are in the 
claim, and also provide sufficient guidance to enable a person skilled 
in the art to make the claimed invention. There is, however, no 
requirement that a document meet the ``how to use'' requirement of 35 
U.S.C. 112(a) in order to qualify as prior art.\21\ Furthermore, 
compliance with the ``how to make'' requirement is judged from the 
viewpoint of a person of ordinary skill in the art, and thus does not 
require that the document explicitly disclose information within the 
knowledge of such a person.\22\
---------------------------------------------------------------------------

    \18\ Novo Nordisk Pharma., Inc. v. Bio-Tech. Gen. Corp., 424 
F.3d 1347, 1355 (Fed. Cir. 2005), discussing pre-AIA 35 U.S.C. 112, 
first paragraph, and pre-AIA 35 U.S.C. 102.
    \19\ In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), citing 
Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 
1375 (Fed. Cir. 2006); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 
1359, 1370 (Fed. Cir. 2008); In re Bond, 910 F.2d 831, 832-33 (Fed. 
Cir. 1990).
    \20\ Gleave, 560 F.3d at 1334, citing Impax Labs., Inc. v. 
Aventis Pharms. Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008); In re 
LeGrice, 301 F.2d 929, 940-44 (CCPA 1962).
    \21\ Gleave, 560 F.3d at 1334; see also In re Schoenwald, 964 
F.2d 1122 (Fed. Cir. 1992) (holding that a claimed compound was 
anticipated even though the prior art reference did not disclose a 
use for the compound); Schering Corp. v. Geneva Pharms., Inc., 339 
F.3d 1373, 1380-81 (Fed. Cir. 2003) (pointing out that actually 
reducing the invention to practice is not necessary in order for a 
prior art reference to anticipate); Impax Labs. Inc. v. Aventis 
Pharm.Inc., 468 F.3d 1366, 1383 (Fed. Cir. 2006) (stating that 
``proof of efficacy is not required for a prior art reference to be 
enabling for purposes of anticipation'').
    \22\ In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985).
---------------------------------------------------------------------------

    There is an additional important distinction between the written 
description that is necessary to support a claim under 35 U.S.C. 112(a) 
and the description sufficient to anticipate the subject matter of the 
claim under 35 U.S.C. 102.\23\ To provide support for a claim under 35 
U.S.C. 112(a), it is necessary that the specification describe and 
enable the entire scope of the claimed invention. However, in order for 
a prior art disclosure to describe a claimed invention under 35 U.S.C. 
102(a)(1) or (a)(2), a prior art document need only describe and enable 
one skilled in the art to make a single species or embodiment of the 
claimed invention.\24\ This is consistent with pre-AIA case law.
---------------------------------------------------------------------------

    \23\ Rasmussen v. SmithKline Beecham Corp., 413 F.3d 1318 (Fed. 
Cir. 2005).
    \24\ Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 
1991) (``As the court pointed out, `the description of a single 
embodiment of broadly claimed subject matter constitutes a 
description of the invention for anticipation purposes * * *, 
whereas the same information in a specification might not alone be 
enough to provide a description of that invention for purposes of 
adequate disclosure.' '') (quoting In re Lukach, 442 F.2d 967 (CCPA 
1971)); see also In re Van Langenhoven, 458 F.2d 132 (CCPA 1972), 
and In re Ruscetta, 255 F.2d 68 (CCPA 1958).
---------------------------------------------------------------------------

    In public use: The pre-AIA case law indicates that a public use 
will bar patentability if the public use occurs before the critical 
date \25\ and the invention is ready for patenting.\26\ Under the pre-
AIA case law, the inquiry was whether the use was: (1) Accessible to 
the public; and (2) commercially exploited. The phrase ``in public 
use'' in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning 
as ``in public use'' in pre-AIA 35 U.S.C. 102(b). For a discussion of 
``in public use'' in pre-AIA 35 U.S.C. 102(b), see generally MPEP Sec.  
2133.03(a) et seq.
---------------------------------------------------------------------------

    \25\ Under pre-AIA 35 U.S.C. 102(b), the critical date is the 
date that is one year prior to the date of application for patent in 
the United States.
    \26\ Invitrogen Corp. v. Biocrest Mfg. L.P., 424 F.3d 1374 (Fed. 
Cir. 2005).
---------------------------------------------------------------------------

    Additionally, under pre-AIA 35 U.S.C. 102(b), that an invention was 
``in public use'' precluded a patent only if

[[Page 43765]]

such public use occurred ``in this country.'' \27\ Under AIA 35 U.S.C. 
102(a)(1), there is no geographic limitation on the location where a 
prior public use or public availability may occur. Furthermore, a 
public use would need to occur before the effective filing date of the 
claimed invention to constitute prior art under AIA 35 U.S.C. 
102(a)(1). When formulating a rejection, Office personnel should 
consider evidence of public use or other public availability regardless 
of where the public use or other public availability took place.
---------------------------------------------------------------------------

    \27\ Similarly, under pre-AIA 35 U.S.C. 102(a), that an 
invention was ``known or used by others'' precluded a patent only if 
such knowledge or use occurred ``in this country.''
---------------------------------------------------------------------------

    On sale: The pre-AIA case law regarding on sale activity indicates 
that a sale will bar patentability of the invention if the sale of the 
claimed invention was: (1) The subject of a commercial offer for sale, 
not primarily for experimental purposes; and (2) ready for 
patenting.\28\ With respect to a sale, contract law principles apply in 
order to determine whether a commercial offer for sale occurred. The 
phrase ``on sale'' in AIA 35 U.S.C. 102(a)(1) is treated as having the 
same meaning as ``on sale'' in pre-AIA 35 U.S.C. 102(b), except as 
discussed in this guidance. For a discussion of ``on sale'' as used in 
pre-AIA 35 U.S.C. 102(b), see generally MPEP Sec.  2133.03(b) et seq.
---------------------------------------------------------------------------

    \28\ Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).
---------------------------------------------------------------------------

    Under pre-AIA 35 U.S.C. 102(b), if an invention was ``on sale'' 
patentability was precluded only if the invention was on sale ``in this 
country.'' Under AIA 35 U.S.C. 102(a)(1), there is no geographic 
limitation on the location where the sale may occur. When formulating a 
rejection, Office personnel should consider evidence of sales activity 
of the claimed invention, regardless of where the sale took place.
    The language of AIA 35 U.S.C. 102(a)(1) does not expressly state 
whether a sale must be ``sufficiently'' public to preclude the grant of 
a patent on the claimed invention.\29\ The Office is seeking the 
benefit of public comment on this provision prior to issuing its 
interpretation of the AIA 35 U.S.C. 102(a)(1) ``on sale'' provision and 
is not setting out an initial position in this guidance to avoid having 
an influence on the comments. Specifically, the Office is seeking 
comment on the extent to which public availability plays a role in ``on 
sale'' prior art defined in 35 U.S.C. 102(a)(1).
---------------------------------------------------------------------------

    \29\ AIA 35 U.S.C. 102(a)(1) uses the same term (``on sale'') as 
pre-AIA 35 U.S.C. 102(b). The pre-AIA 35 U.S.C. 102(b) ``on sale'' 
provision has been interpreted as including commercial activity even 
if the activity is secret or private. See, e.g., Metallizing 
Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d 
Cir. 1946). However, 35 U.S.C. 102(a)(1), unlike pre-AIA 35 U.S.C. 
102(b), contains the residual clause ``or otherwise available to the 
public.'' See 35 U.S.C. 102(a)(1). The legislative history of the 
AIA indicates that the inclusion of this clause in AIA 35 U.S.C. 
102(a)(1) should be viewed as indicating that AIA 35 U.S.C. 
102(a)(1) does not cover non-public uses or non-public offers for 
sale. See 157 Cong. Rec. S.1370 (Mar. 8, 2011) (The Committee's 
understanding of the effect of adding the words `or otherwise 
available to the public' is confirmed by judicial construction of 
this phraseology. Courts have consistently found that when the words 
`or otherwise' or `or other' when used as a modifier at the end of a 
string of clauses restricts the meaning of the preceding clauses.).
---------------------------------------------------------------------------

    Otherwise available prior art: The AIA in 35 U.S.C. 102(a)(1) 
provides a ``catch-all'' provision, which defines a new additional 
category of potential prior art not provided for in pre-AIA 35 U.S.C. 
102. Specifically, a claimed invention may not be patented if it was 
``otherwise available to the public'' before its effective filing date. 
This ``catch-all'' provision permits decision makers to focus on 
whether the disclosure was ``available to the public,'' rather than on 
the means by which the claimed invention became available to the public 
or on whether a disclosure constitutes a ``printed publication'' or 
falls within another category of prior art as defined in 35 U.S.C. 
102(a)(1). The availability of the subject matter to the public may 
arise in situations such as a student thesis in a university 
library,\30\ a poster display or other information disseminated at a 
scientific meeting,\31\ subject matter in a laid-open patent 
application,\32\ a document electronically posted on the Internet,\33\ 
or a commercial transaction that does not constitute a sale under the 
Uniform Commercial Code.\34\ Even if a document or other disclosure is 
not a printed publication, or a transaction is not a sale, either may 
be prior art under the ``otherwise available'' provision of 35 U.S.C. 
102(a)(1), provided that the claimed invention is made sufficiently 
available to the public.
---------------------------------------------------------------------------

    \30\ E.g, In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989); In re 
Hall, 781 F.2d 897 (Fed. Cir. 1986); In re Bayer, 568 F.2d 1357 
(CCPA 1978).
    \31\ E.g., In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 
2004), Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 
1104 (Fed. Cir. 1985).
    \32\ E.g., In re Wyer, 655 F.2d 221 (CCPA 1981); see also 
Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006).
    \33\ E.g., In re Lister, 583 F.3d 1307 (Fed. Cir. 2009), and SRI 
International, Inc. v. Internet Security Systems, Inc., 511 F.3d 
1186 (Fed. Cir. 2008).
    \34\ E.g., Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 
1041 (Fed. Cir. 2001).
---------------------------------------------------------------------------

    No requirement of ``by others'': A key difference between pre-AIA 
35 U.S.C. 102(a) and AIA 35 U.S.C. 102(a)(1) is the requirement in pre-
AIA 35 U.S.C. 102(a) that the prior art relied on was ``by others.'' 
Under 35 U.S.C. 102(a)(1), there is no requirement that the prior art 
relied upon be by others. Thus, any prior art which falls under 35 
U.S.C. 102(a)(1) need not be by another to constitute potentially 
available prior art. However, disclosures of the subject matter made 
one year or less before the effective filing date of the claimed 
invention by the inventor or a joint inventor or another who obtained 
the subject matter directly or indirectly from the inventor or a joint 
inventor may fall within an exception under 35 U.S.C. 102(b)(1) to 35 
U.S.C. 102(a)(1).
    Admissions: The Office will continue to treat admissions by the 
applicant as prior art under the AIA. A statement by an applicant in 
the specification or made during prosecution identifying the work of 
another as ``prior art'' is an admission which can be relied upon for 
both anticipation and obviousness determinations, regardless of whether 
the admitted prior art would otherwise qualify as prior art under the 
statutory categories of 35 U.S.C. 102.\35\ See generally MPEP Sec.  
2129.
---------------------------------------------------------------------------

    \35\ Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 
1354 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices Inc., 848 
F.2d 1560, 1570 (Fed. Cir. 1988).
---------------------------------------------------------------------------

1. Prior Art Exception Under 35 U.S.C. 102(b)(1)(A) to 35 U.S.C. 
102(a)(1)
    The AIA in 35 U.S.C. 102(b)(1)(A) provides exceptions to the prior 
art provisions of 35 U.S.C. 102(a)(1). These exceptions limit the use 
of an inventor's own work as prior art, when the inventor has publicly 
disclosed the work either directly or indirectly. The provisions of 35 
U.S.C. 102(b)(1)(A) indicate that a disclosure which would otherwise 
qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if the 
disclosure was made: (1) One year or less before the effective filing 
date of the claimed invention; and (2) by the inventor or a joint 
inventor, or by another who obtained the subject matter directly or 
indirectly from the inventor or joint inventor. These guidelines will 
first discuss issues pertaining to disclosures within the grace period 
by the inventor or a joint inventor (``grace period inventor 
disclosure'') and then subsequently discuss issues pertaining to 
disclosures within the grace period by another who obtained the subject 
matter directly or indirectly from the inventor or joint inventor 
(``grace period non-inventor inventor disclosure'').
    Grace period inventor disclosure: 35 U.S.C. 102(b)(1)(A) first 
provides that a disclosure which would otherwise

[[Page 43766]]

qualify as prior art under 35 U.S.C. 102(a)(1) is not prior art if: (1) 
The disclosure is made one year or less before the effective filing 
date of the claimed invention; and (2) was made by the inventor or a 
joint inventor. Thus, a disclosure that would otherwise qualify as 
prior art under 35 U.S.C. 102(a)(1) shall not be prior art if the 
disclosure is made one year or less before the effective filing date of 
the claimed invention, and the written record of the patent application 
shows that the disclosure is by the inventor or a joint inventor. What 
is necessary to show that the disclosure is by the inventor or a joint 
inventor requires case-by-case treatment, depending upon whether it is 
apparent from the disclosure or the patent application specification 
that the disclosure is by the inventor or a joint inventor.
    An examiner would not apply prior art that falls under 35 U.S.C. 
102(a)(1) if it is apparent from the disclosure that it is by the 
inventor or a joint inventor. Specifically, the examiner would not 
apply a prior art disclosure that falls under 35 U.S.C. 102(a)(1) if 
the disclosure: (1) Was made one year or less before the effective 
filing date of the claimed invention; (2) names the inventor or a joint 
inventor as an author or an inventor; and (3) does not name additional 
persons as authors on a printed publication or inventors on a patent. 
This means that in circumstances where an application names additional 
persons as inventors relative to the persons named as authors in the 
publication (e.g., the application names as inventors A, B, and C, and 
the publication names as authors A and B), and the publication is one 
year or less before the effective filing date, it is apparent that the 
disclosure is a grace period inventor disclosure, and the publication 
would not be treated as prior art under 35 U.S.C. 102(a)(1). If, 
however, the application names fewer inventors than a publication 
(e.g., the application names as inventors A and B, and the publication 
names as authors A, B and C), it would not be readily apparent from the 
publication that it is by the inventor or a joint inventor and the 
publication would be treated as prior art under 35 U.S.C. 102(a)(1).
    In certain circumstances, an examiner would not apply prior art 
that falls under 35 U.S.C. 102(a)(1) if it is apparent from the patent 
application specification that the disclosure is by the inventor or a 
joint inventor. The Office is concurrently proposing in a separate 
action (RIN 0651-AC77) to revise the rules of practice to provide that 
applicants can include a statement of any grace period inventor 
disclosures in the specification (in proposed 37 CFR 1.77(b)). If the 
specification contains a specific reference to a grace period inventor 
disclosure, the Office will consider it apparent from the patent 
application specification that the disclosure is by the inventor or a 
joint inventor, provided that the disclosure does not name additional 
authors or inventors and there is no other evidence to the contrary. 
The applicant may also provide a copy of the disclosure (e.g., copy of 
a printed publication), and will be required to provide a copy of the 
disclosure to disqualify an intervening disclosure under the provisions 
of 35 U.S.C. 102(b)(1)(B) (discussed subsequently).
    An applicant is not required to use the format specified in 
proposed 37 CFR 1.77 or identify any prior disclosures by the inventor 
or a joint inventor (unless necessary to overcome a rejection), but 
identifying any prior disclosures by the inventor or a joint inventor 
may save applicants (and the Office) the costs related to an Office 
action and reply, and expedite examination of the application. In this 
situation, the Office would consider such a disclosure made one year or 
less before the effective filing date of the claimed invention as 
falling within the 35 U.S.C. 102(b)(1)(A) exception, and the disclosure 
would not be treated as prior art under 35 U.S.C. 102(a)(1).
    The Office is proposing in a separate action (RIN 0651-AC77) 
elsewhere in this issue of the Federal Register to revise the rules of 
practice to provide for situations in which it is not apparent from the 
disclosure or the patent application specification that the disclosure 
is by the inventor or a joint inventor (proposed 37 CFR 1.130). 
Proposed 37 CFR 1.130 would generally provide a mechanism for filing an 
affidavit or declaration to establish that a disclosure is not prior 
art under 35 U.S.C. 102(a) due to an exception in 35 U.S.C. 102(b). 
Proposed 37 CFR 1.130(a)(1) would provide for the situation in which: 
(1) The disclosure on which the rejection is based was by the inventor 
or joint inventor; (2) the subject matter disclosed had been publicly 
disclosed by the inventor or a joint inventor before the disclosure of 
the subject matter on which the rejection is based; or (3) the subject 
matter disclosed had been publicly disclosed by the inventor or a joint 
inventor before the date the subject matter in the patent or published 
application on which the rejection is based was effectively filed.
    An affidavit or declaration under proposed 37 CFR 1.130(a)(1) could 
be used to establish that the prior art relied upon in a rejection is 
an inventor disclosure made during the grace period and subject to the 
exception of 35 U.S.C. 102(b)(1)(A). Specifically, such an affidavit or 
declaration could be used to establish that the disclosure upon which 
the rejection is based: (1) Was made one year or less before the 
effective filing date of the claimed invention; and (2) had been 
publicly disclosed by the inventor or joint inventor. The affidavit or 
declaration must show that the disclosure of the subject matter on 
which the rejection is based is by the inventor or is by a joint 
inventor.\36\ Where the authorship of the prior art disclosure includes 
the inventor or a joint inventor named in the application, an 
``unequivocal'' statement from the inventor or a joint inventor that 
he/she (or some specific combination of named inventors) invented the 
subject matter of the disclosure, accompanied by a reasonable 
explanation of the presence of additional authors, may be acceptable in 
the absence of evidence to the contrary.\37\ However, a mere statement 
from the inventor or a joint inventor may not be sufficient where there 
is evidence to the contrary.\38\ This is similar to the current process 
for disqualifying a publication as not being by ``others'' discussed in 
MPEP Sec.  2132.01, except that 35 U.S.C. 102(b)(1)(A) requires only 
that the disclosure be by the inventor or a joint inventor.
---------------------------------------------------------------------------

    \36\ In re Katz, 687 F.2d 450, 455 (CCPA 1982).
    \37\ In re DeBaun, 687 F.2d 459, 463 (CCPA 1982).
    \38\ Ex parte Kroger, 218 USPQ 370 (Bd. App. 1982) (affirming 
rejection notwithstanding declarations by the alleged actual 
inventors as to their inventorship in view of a nonapplicant author 
submitting a letter declaring the nonapplicant author's 
inventorship).
---------------------------------------------------------------------------

    Grace period non-inventor disclosure: 35 U.S.C. 102(b)(1)(A) also 
provides that a disclosure which would otherwise qualify as prior art 
under 35 U.S.C. 102(a)(1) is not prior art if the disclosure was made: 
(1) One year or less before the effective filing date of the claimed 
invention; and (2) by another who obtained the subject matter directly 
or indirectly from the inventor or a joint inventor. Thus, if the 
disclosure upon which the rejection is based is by someone who obtained 
the subject matter from the inventor or a joint inventor, the inventor 
could provide an affidavit or declaration which may overcome the 
rejection.
    As discussed previously, proposed 37 CFR 1.130 would generally 
provide a mechanism for filing an affidavit or declaration to establish 
that a disclosure is not prior art due to an exception in AIA 35 U.S.C. 
102(b). Proposed 37 CFR 1.130(a)(2) provides for the situation in 
which: (1) The disclosure on which the

[[Page 43767]]

rejection is based was by a party who obtained the subject matter 
disclosed directly or indirectly from the inventor or a joint inventor; 
(2) the subject matter disclosed had been publicly disclosed by a party 
who obtained the subject matter disclosed directly or indirectly from 
the inventor or a joint inventor before the disclosure of the subject 
matter on which the rejection is based; or (3) the subject matter 
disclosed had been publicly disclosed by a party who obtained the 
subject matter disclosed directly or indirectly from the inventor or a 
joint inventor before the date the subject matter in the patent or 
patent application publication on which the rejection is based was 
effectively filed.
    Proposed 37 CFR 1.130(a)(2) thus provides for an affidavit or 
declaration to establish that the named inventor or joint inventor is 
the inventor of the disclosed subject matter, and that the subject 
matter was communicated by the inventor or a joint inventor to another 
who disclosed it. Such an affidavit or declaration must show that the 
inventor or a joint inventor is the inventor of the subject matter of 
the disclosure (in accordance with proposed 37 CFR 1.130(d)), and 
indicate the communication of the subject matter by the inventor or a 
joint inventor to another who disclosed the subject matter. Thus, an 
applicant may benefit from the earlier disclosure by another during the 
grace period, if the applicant can establish that the inventor or a 
joint inventor is the actual inventor of the subject matter of the 
disclosure and that the subject matter was obtained directly or 
indirectly from the inventor or a joint inventor. Specifically, the 
applicant must show that a named inventor actually invented the subject 
matter of the disclosure.\39\ The applicant must also show a 
communication of the subject matter of the disclosure sufficient to 
enable one of ordinary skill in the art to make the subject matter of 
the claimed invention.\40\ Any documentation which provides evidence of 
the communication of the subject matter by the inventor or a joint 
inventor to the entity that earlier disclosed the subject matter should 
accompany the affidavit or declaration. This is similar to the current 
process for disqualifying a publication as being derived from the 
inventor discussed in MPEP Sec. Sec.  715.01(c) II and 2137.
---------------------------------------------------------------------------

    \39\ In re Facius, 408 F.2d 1396, 1407 (CCPA 1969).
    \40\ Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 
1577 (Fed. Cir. 1997).
---------------------------------------------------------------------------

2. Prior Art Exception Under 35 U.S.C. 102(b)(1)(B) to 35 U.S.C. 
102(a)(1)
    The AIA in 35 U.S.C. 102(b)(1)(B) provides additional exceptions to 
the prior art provisions of 35 U.S.C. 102(a)(1). These exceptions 
disqualify a disclosure that occurs after a public disclosure by the 
inventor, joint inventor, or another who obtained the subject matter 
directly or indirectly from the inventor or joint inventor. The 
provisions of 35 U.S.C. 102(b)(1)(B) indicate that a disclosure which 
would otherwise qualify as prior art under 35 U.S.C. 102(a)(1) is not 
prior art if the disclosure was made: (1) One year or less before the 
effective filing date of the claimed invention; and (2) after a public 
disclosure of the subject matter of the disclosure which would 
otherwise qualify as prior art under 35 U.S.C. 102(a)(1) by the 
inventor or a joint inventor or another who obtained the subject matter 
directly or indirectly from the inventor or a joint inventor.
    The exception in 35 U.S.C. 102(b)(1)(B) applies if the ```subject 
matter' disclosed [in the prior art disclosure] had, before such [prior 
art] disclosure, been publicly disclosed by the inventor or a joint 
inventor * * * .'' \41\ Thus, the exception in 35 U.S.C. 102(b)(1)(B) 
requires that the subject matter in the prior disclosure being relied 
upon under 35 U.S.C. 102(a) be the same ``subject matter'' as the 
subject matter publicly disclosed by the inventor before such prior art 
disclosure for the exception in 35 U.S.C. 102(b)(1)(B) to apply. 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.
---------------------------------------------------------------------------

    \41\ 35 U.S.C. 102(b)(1)(B).
---------------------------------------------------------------------------

    Grace period intervening disclosure exception: Under this 
exception, potential prior art under 35 U.S.C. 102(a)(1) is not prior 
art if the patent, printed publication, public use, sale, or other 
means of public availability was made: (1) One year or less before the 
effective filing date of the claimed invention; and (2) after a ``grace 
period inventor disclosure'' or a ``grace period non-inventor 
disclosure'' as those terms have been discussed previously.
    An affidavit or declaration under 37 CFR 1.130(a)(1) could be used 
to establish that the subject matter disclosed had been publicly 
disclosed by the inventor or a joint inventor before the disclosure of 
the subject matter on which the rejection is based. Such an affidavit 
or declaration under 37 CFR 1.130(a)(1) must establish that the subject 
matter disclosed in the cited prior art had been publicly disclosed by 
the inventor or a joint inventor before the disclosure of the subject 
matter on which the rejection is based. Specifically, the inventor or 
joint inventor must establish the date and content of their earlier 
public disclosure. If the earlier disclosure was a printed publication, 
the affidavit or declaration must be accompanied by a copy of the 
printed publication. If the earlier disclosure was not a printed 
publication, the affidavit or declaration must describe the earlier 
disclosure with sufficient detail and particularity to determine that 
the earlier disclosure is a public disclosure of the subject matter.
    Alternatively, as discussed previously, an affidavit or declaration 
under 37 CFR 1.130(a)(2) could establish that the subject matter 
disclosed had been publicly disclosed by a party who obtained the 
subject matter directly or indirectly from the inventor or a joint 
inventor before the disclosure of the subject matter on which the 
rejection is based. Such an affidavit or declaration under 37 CFR 
1.130(a)(2) must establish that the subject matter disclosed in the 
cited prior art had been publicly disclosed by another who obtained the 
subject matter disclosed directly or indirectly from the inventor or a 
joint inventor before the disclosure of the subject matter on which the 
rejection is based. The affidavit or declaration must specifically show 
that the inventor or a joint inventor is the inventor of the subject 
matter of the earlier public disclosure and indicate the communication 
of the subject matter to another who disclosed the subject matter. As 
discussed previously, this is similar to the current process for 
disqualifying a publication as being derived from the inventor 
discussed in MPEP section 2137.
    Such an affidavit or declaration under 37 CFR 1.130(a)(2) must also 
establish the date and content of the earlier public disclosure which 
was made by another who obtained the subject matter directly or 
indirectly from the inventor or joint inventor. If the earlier 
disclosure was a printed publication, the affidavit or declaration must 
be accompanied by a copy of the printed publication. If the earlier 
disclosure was not a printed publication, the affidavit or declaration 
must describe the earlier disclosure with sufficient detail and 
particularity to determine that the earlier disclosure is a public 
disclosure of the subject

[[Page 43768]]

matter. Any documentation which provides evidence of the public 
availability of a non-printed publication prior art and any 
documentation which provides evidence of the communication of the 
subject matter by the inventor or a joint inventor to the entity that 
disclosed the subject matter should accompany the affidavit or 
declaration.

B. Prior Art Under AIA 35 U.S.C. 102(a)(2)

    AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents 
that are available prior art as of the date they were effectively filed 
with respect to the subject matter relied upon in the document: (1) 
U.S. patents; (2) U.S. patent application publications; and (3) WIPO 
published applications. These documents may have different prior art 
effects under pre-AIA 35 U.S.C. 102(e) and AIA 35 U.S.C. 102(a)(2).
    A U.S. patent, U.S. patent application publication, or WIPO 
published application is prior art under 35 U.S.C. 102(a)(1) if its 
issue or publication date is before the effective filing date of the 
claim at issue. If the issue date of the U.S. patent or publication 
date of the U.S. patent application publication or WIPO published 
application is not before the effective filing date of the claimed 
invention, it may still be applicable as prior art under 35 U.S.C. 
102(a)(2) if it was ``effectively filed'' before the effective filing 
date of the claim at issue with respect to the subject matter relied 
upon to reject the claim. AIA 35 U.S.C. 102(d) sets forth when subject 
matter described in a U.S. patent, U.S. patent application publication, 
or WIPO published application was ``effectively filed'' for purposes of 
35 U.S.C. 102(a)(2).
1. Determining When Subject Matter Was Effectively Filed Under 35 
U.S.C. 102(d)
    35 U.S.C. 102(d) provides the criteria to determine the date that a 
U.S. patent, U.S. patent application publication, or WIPO published 
application was ``effectively filed'' with respect to the subject 
matter described in the patent or published application for purposes of 
constituting prior art under 35 U.S.C. 102(a)(2).
    Under 35 U.S.C. 102(d), a U.S. patent, U.S. patent application 
publication, or WIPO published application is prior art under 35 U.S.C. 
102(a)(2) with respect to any subject matter described in the patent or 
published application as of either its actual filing date (35 U.S.C. 
102(d)(1)), or the filing date of a prior application to which there is 
a priority or benefit claim (35 U.S.C. 102(d)(2)). A U.S. patent, U.S. 
patent application publication, or WIPO published application ``is 
entitled to claim'' priority to, or the benefit of, a prior-filed 
application if it fulfills 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 
(copending with or within twelve months of the earlier filing, as 
applicable); and (3) having a common inventor or being by the same 
applicant.\42\
---------------------------------------------------------------------------

    \42\ See 157 Cong. Rec. S.1370 (Mar. 8, 2011) (distinguishing 
between the core requirement that the prior-filed application 
include an enabling disclosure and the ministerial requirements that 
the applications be copendent and specifically referenced); see also 
MPEP Sec.  201.08 (permitting a claim to the benefit of a prior-
filed application in a continuation-in-part application provided 
that the continuation-in-part application has a common inventor, has 
copendency with the prior-filed application, and includes a specific 
reference to the prior-filed application, regardless of whether the 
prior-filed application contains support under 35 U.S.C. 112 for any 
claim in the continuation-in-part application).
---------------------------------------------------------------------------

    The AIA draws a distinction between actually being entitled to 
priority to, or the benefit of, a prior-filed application in the 
definition of effective filing date in 35 U.S.C. 100(i)(2), and merely 
being entitled to claim priority to, or the benefit of, a prior-filed 
application in the definition of effectively filed in 35 U.S.C. 
102(d).\43\ As a result of this distinction, the question of whether a 
patent or published application is actually entitled to priority or 
benefit with respect to any of its claims is not at issue in 
determining the date the patent or published application was 
``effectively filed'' for prior art purposes.\44\ Thus, there is no 
need to evaluate whether any claim of a U.S. patent, U.S. patent 
application publication, or WIPO published application is actually 
entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365 
when applying such a document as prior art.
---------------------------------------------------------------------------

    \43\ The legislative history of the AIA discusses an important 
distinction between ministerial entitlement to make a priority or 
benefit claim, and actual legal entitlement to the priority or 
benefit: In section 100(i), which defines the effective filing date 
of the patent under review, the patent must be entitled to the 
priority or benefit itself under the relevant sections. Here again 
in section 102(d), however, the application need only be entitled to 
claim the benefit or priority under those sections. This difference 
in language distinguishes between the core requirement of section 
120 et al.--that the application include an enabling disclosure--and 
the ministerial requirements of that section--that the application 
be copendent and specifically referenced. In effect, an application 
that meets the ministerial requirements of copendency and specific 
reference is entitled to claim the benefit or priority, but only an 
application that also offers an enabling disclosure is actually 
entitled to the benefit or priority itself. See 157 Cong. Rec. 
S.1370 (Mar. 8, 2011).
    \44\ In re Wertheim, 646 F.2d 527 (CCPA 1981), which relies upon 
Alexander Milburn Co. v. Davis-Bournonville, 270 U.S. 390 (1926), 
for its conclusion that the patent must actually be entitled to the 
benefit of the prior-application for any subject matter in the 
patent to have a prior art date under 35 U.S.C. 102(e) as of the 
filing date of the prior application. The legislative history of the 
AIA indicates that: Paragraph (2) [of AIA 102(d)] is intended to 
overrule what remains of In re Wertheim, 646 F.2d 527 (CCPA 1981), 
which appeared to hold that only an application that could have 
become a patent on the day that it was filed can constitute prior 
art against another application or patent. See 157 Cong. Rec. 
S.1369-70 (Mar. 8, 2011). The Office has previously indicated that 
the reasoning of In re Wertheim, 646 F.2d 527 (CCPA 1981), did not 
survive the amendment to 35 U.S.C. 102(e) in the American Inventors 
Protection Act. See, e.g, Ex parte Yamaguchi, 88 U.S.P.Q.2d 1606 
(Bd. Pat. App. & Inter. 2008). In In re Giacomini, 612 F.3d 1380 
(Fed. Cir. 2010), the U.S. Court of Appeals for the Federal Circuit 
(Federal Circuit) held that a patent was effective as prior art as 
of the filing date of a provisional application claimed under 35 
U.S.C. 119(e).
---------------------------------------------------------------------------

    35 U.S.C. 102(d) does require that the prior-filed application to 
which a priority or benefit claim is made describe the subject matter 
from the U.S. patent, U.S. patent application publication, or WIPO 
published application relied upon in a rejection for that subject 
matter. However, 35 U.S.C. 102(d) does not require that this 
description meets the requirements of 35 U.S.C. 112(a). As discussed 
previously with respect to 35 U.S.C. 102(a), the Office views the 
description requirement as being the same as the pre-AIA description 
requirement for a prior art disclosure of an invention.
    Another important consequence of 35 U.S.C. 102(d) is its impact on 
the vitality of the so-called Hilmer doctrine.\45\ Under the Hilmer 
doctrine, pre-AIA 35 U.S.C. 102(e) limited the effective filing date 
for U.S. patents (and published applications) as prior art to their 
earliest United States filing date. In contrast, AIA 35 U.S.C. 102(d) 
provides that if the U.S. patent, U.S. patent application publication, 
or WIPO published application claims priority to prior-filed foreign or 
international application under 35 U.S.C. 119 or 365, the patent or 
published application was effectively filed on the filing date of the 
earliest such application that describes the subject matter.\46\ 
Therefore, if the subject matter relied upon is described

[[Page 43769]]

in the application to which there is a priority or benefit claim, a 
U.S. patent, a U.S. patent application publication, or WIPO published 
application is effective as prior art as of the filing date of the 
earliest such application, regardless of where filed, rather than only 
as of its earliest United States benefit date.
---------------------------------------------------------------------------

    \45\ In In re Hilmer, 359 F.2d 859, 149 USPQ 480 (CCPA 1966), 
the CCPA held that reliance on the foreign priority date of a 
reference applied in a rejection under pre-AIA 35 U.S.C. 102(e) was 
improper.
    \46\ When examining an application to which the changes in 35 
U.S.C. 102 and 103 do not apply, Office personnel will continue to 
apply the Hilmer doctrine, and foreign priority dates may not be 
used in determining 35 U.S.C.102(e) prior art dates. Note that the 
international filing date of a PCT application may be the 35 
U.S.C.102(e) prior art date under pre-AIA law under certain 
circumstances. See MPEP Sec.  706.02(f).).
---------------------------------------------------------------------------

    Requirement of ``names another inventor'': To qualify as prior art 
under 35 U.S.C. 102(a)(2), the prior art U.S. patent, U.S. patent 
application publication, or WIPO published application must ``name[s] 
another inventor.'' This means that if there is any difference in 
inventive entity between the prior art U.S. patent, U.S. patent 
application publication, or WIPO published application and the 
application under examination or patent under reexamination, the U.S. 
patent, U.S. patent application publication, or WIPO published 
application satisfies the ``names another inventor'' provision of 35 
U.S.C. 102(a)(2). Thus, in the case of joint inventors, only one 
inventor needs to be different for the inventive entities to be 
different. Even if there are some inventors in common in a U.S. patent, 
a U.S. patent application publication, or WIPO published application 
and in a later-filed application under examination or patent under 
reexamination, the U.S. patent, a U.S. patent application publication, 
or WIPO published application qualifies as prior art under 35 U.S.C. 
102(a)(2) unless an exception in AIA 35 U.S.C. 102(b)(2) is applicable.
2. Prior Art Exception Under 35 U.S.C. 102(b)(2)(A) to 35 U.S.C. 
102(a)(2)
    Under 35 U.S.C. 102(b)(2)(A), certain disclosures will not be 
considered prior art under 35 U.S.C. 102(a)(2) if the disclosure of the 
subject matter on which the rejection is based was made by another who 
obtained the subject matter directly or indirectly from the inventor or 
a joint inventor.
    Non-Inventor Disclosure Exception: 35 U.S.C. 102(b)(2)(A) provides 
that a disclosure which would otherwise qualify as prior art under 35 
U.S.C. 102(a)(2) is not prior art if the disclosure was made by another 
who obtained the subject matter directly or indirectly from the 
inventor or a joint inventor. This means that if the disclosure of the 
subject matter upon which the rejection is based is by another who 
obtained the subject matter from the inventor or joint inventor, then 
the inventor could provide an affidavit or declaration to establish 
that the inventor or joint inventor is the inventor of the subject 
matter of the disclosure and that such subject matter was communicated 
to the other entity. Thus, an applicant may benefit from the earlier 
disclosure by another during the grace period, if the applicant can 
establish that the inventor or a joint inventor is the actual inventor 
of the subject matter of the disclosure and that the subject matter was 
obtained directly or indirectly from the inventor or a joint inventor.
    As discussed previously, proposed 37 CFR 1.130(a)(2) provides for 
an affidavit or declaration to establish that the named inventor or 
joint inventor is the inventor of the disclosed subject matter, and 
that the subject matter was communicated by the inventor or a joint 
inventor to another who disclosed it. Such an affidavit or declaration 
must show that the inventor or a joint inventor is the inventor of the 
subject matter of the disclosure and indicate the communication of the 
subject matter by the inventor or a joint inventor to another who 
disclosed the subject matter. Specifically, the inventor must show that 
a named inventor actually invented the subject matter of the 
disclosure.\47\ The inventor must also show a communication of the 
subject matter of the disclosure sufficient to enable one of ordinary 
skill in the art to make the subject matter of the claimed 
invention.\48\ Any documentation which provides evidence of the 
communication of the subject matter by the inventor or a joint inventor 
to the entity that earlier disclosed the subject matter should 
accompany the affidavit or declaration. This is similar to the current 
process for disqualifying a publication as being derived from the 
inventor discussed in MPEP Sec.  2137.
---------------------------------------------------------------------------

    \47\ In re Facius, 408 F.2d 1396, 1407 (CCPA 1969).
    \48\ Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 
1577 (Fed. Cir. 1997).
---------------------------------------------------------------------------

    In circumstances where the claims of the cited prior art, which 
names another inventor and is a U.S. patent, or U.S. patent application 
publication, and the claims of the application under examination are 
directed to the same or substantially the same invention, the Office 
may require an applicant to file a petition for derivation proceeding 
pursuant to 37 CFR 41.401 et seq. of this title.
3. Prior Art Exception Under 35 U.S.C. 102(b)(2)(B) to 35 U.S.C. 
102(a)(2)
    35 U.S.C. 102(b)(2)(B) provides another exception to the prior art 
provisions of 35 U.S.C. 102(a)(2). Specifically, 35 U.S.C. 102(b)(2)(B) 
indicates that certain disclosures are not prior art if the disclosure 
of the subject matter of the claimed invention to be disqualified was 
made after a disclosure of the subject matter by the inventor or a 
joint inventor or after a disclosure of the subject matter by another 
who obtained the subject matter directly or indirectly from the 
inventor or joint inventor. In other words, an inventor, joint 
inventor, or someone who obtained the subject matter directly or 
indirectly from the inventor or joint inventor, disclosed the subject 
matter before the disclosure of the subject matter on which the 
rejection is based.
    As discussed previously with respect to 35 U.S.C. 102(b)(1)(B), the 
exception in 35 U.S.C. 102(b)(2)(B) requires that the subject matter in 
the prior disclosure being relied upon under 35 U.S.C. 102(a) be the 
same ``subject matter'' as the subject matter publicly disclosed by the 
inventor before such prior art disclosure for the exception in 35 
U.S.C. 102(b)(2)(B) to apply.\49\ 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)(2)(B) does not apply.
---------------------------------------------------------------------------

    \49\ 35 U.S.C. 102(b)(2)(B).
---------------------------------------------------------------------------

    Intervening disclosure: Under this exception, potential prior art 
under 35 U.S.C. 102(a)(2) is not prior art if the U.S. patent, U.S. 
patent application publication, or WIPO published application was 
effectively filed after the subject matter was first disclosed by the 
inventor, a joint inventor, or another who obtained it directly or 
indirectly from the inventor or joint inventor.
    As discussed previously, an affidavit or declaration under 37 CFR 
1.130(a)(1) could be used to establish that the subject matter 
disclosed in the cited patent or published application to be 
disqualified had been publicly disclosed by the inventor or a joint 
inventor before the date the subject matter in the patent or published 
application to be disqualified was effectively filed. Specifically, the 
inventor or joint inventor must establish the date and content of their 
earlier public disclosure. If the earlier disclosure was a printed 
publication, the affidavit or declaration must be accompanied by a copy 
of the printed publication. If the earlier disclosure was not a printed 
publication, the affidavit or declaration must describe the earlier 
disclosure with sufficient detail and particularity to determine that 
the earlier disclosure is a public disclosure of the subject matter.
    Alternatively, also as discussed previously, an affidavit or 
declaration under 37 CFR 1.130(a)(2) could establish that the subject 
matter

[[Page 43770]]

disclosed in the cited patent or published application to be 
disqualified had been publicly disclosed by a party who obtained the 
subject matter directly or indirectly from the inventor or a joint 
inventor before the date the subject matter in the patent or published 
application to be disqualified was effectively filed. Specifically, the 
inventor or joint inventor must establish the date and content of their 
earlier public disclosure. The affidavit or declaration must also show 
that the inventor or a joint inventor is the inventor of the subject 
matter disclosed in the patent or published application and indicate 
the communication of the subject matter to another who disclosed the 
subject matter. As discussed previously, this is similar to the current 
process for disqualifying a publication as being derived from the 
inventor discussed in MPEP Sec.  2137.
    Such an affidavit or declaration under 37 CFR 1.130(a)(2) must also 
establish the date and content of the earlier public disclosure which 
was made by another who obtained the subject matter directly or 
indirectly from the inventor or a joint inventor. If the earlier 
disclosure was a printed publication, the affidavit or declaration must 
be accompanied by a copy of the printed publication. If the earlier 
disclosure was not a printed publication, the affidavit or declaration 
must describe the earlier disclosure with sufficient detail and 
particularity to determine that the earlier disclosure was a public 
disclosure of the subject matter. Any documentation which provides 
evidence of the public availability of a non-printed publication prior 
art and any documentation which provides evidence of the communication 
of the subject matter by the inventor or a joint inventor to the entity 
that disclosed the subject matter should accompany the affidavit or 
declaration.
    In circumstances where the claims of the cited patent or published 
application to be disqualified is a U.S. patent, or a U.S. patent 
application publication of a pending or patented application that names 
another inventor, and the claims of the application under examination 
and the cited patent or published application are directed to the same 
or substantially the same invention, the Office may require applicant 
to file a petition for derivation proceeding pursuant to 37 CFR 41.401 
et seq.
4. Prior Art Exception Under 35 U.S.C. 102(b)(2)(C) to 35 U.S.C. 
102(a)(2)
    Under 35 U.S.C. 102(b)(2)(C), there is an exception to the prior 
art defined in 35 U.S.C. 102(a)(2) if the disclosures of the subject 
matter on which the rejection is based and the claimed invention, not 
later than the effective filing date of the claimed invention, were 
owned by the same person or subject to an obligation of assignment to 
the same person.
    In accordance with 35 U.S.C. 102(a)(2), a U.S. patent, U.S. patent 
application publication, or WIPO published application that describes a 
claimed invention of an application under examination may be prior art 
as of its effective filing date. However, 35 U.S.C. 102(b)(2)(C) 
excludes published applications or patents from 35 U.S.C. 102(a)(2) if 
the subject matter disclosed in the potential prior art published 
application or patent, and the claimed invention of the application 
under examination ``were owned by the same person or subject to an 
obligation of assignment to the same person.'' In this situation, the 
U.S. patent, U.S. patent application publication, or WIPO published 
application is not available as prior art under 35 U.S.C. 102(a)(2), so 
long as the common ownership or obligation to assign existed not later 
than the effective filing date of the claimed invention.
    AIA 35 U.S.C. 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) in 
that both concern common ownership, and both offer an avenue by which 
an applicant may avoid certain rejections. However, there are 
significant differences between AIA 35 U.S.C. 102(b)(2)(C) and pre-AIA 
35 U.S.C. 103(c).
    If the provisions of 35 U.S.C. 102(b)(2)(C) are met, a U.S. patent, 
U.S. patent application publication, or WIPO published application that 
might otherwise qualify as prior art under 35 U.S.C. 102(a)(2) is not 
available as prior art under either 35 U.S.C. 102 or 103. In contrast, 
pre-AIA 35 U.S.C. 103(c) merely provided that if its conditions were 
met, prior art qualifying only under pre-AIA 35 U.S.C. 102(e), (f), or 
(g), would not preclude patentability under 35 U.S.C. 103. Under pre-
AIA 35 U.S.C. 103(c), prior art qualifying only under pre-AIA 35 U.S.C. 
102(e), (f), or (g) could preclude patentability under 35 U.S.C. 102, 
even if the conditions of pre-AIA 35 U.S.C. 103(c) were met. The 
consequence of this distinction is that a published application or an 
issued patent that falls under the common ownership provisions of AIA 
35 U.S.C. 102(b)(2)(C) may not be applied in either an anticipation or 
an obviousness rejection.
    It is important to note the circumstances in which the AIA 35 
U.S.C. 102(b)(2)(C) exception does not remove U.S. patents, U.S. patent 
application publications, or WIPO published applications as a basis for 
any rejection. Even if the U.S. patent or U.S. published application is 
not prior art under 35 U.S.C. 102 or 103 as a result of AIA 35 U.S.C. 
102(b)(2)(C), a double patenting rejection (either statutory under 35 
U.S.C. 101 or non-statutory, sometimes called obviousness-type) may 
still be made on the basis of the U.S. patent or U.S. patent 
application publication. Furthermore, the U.S. patent, U.S. patent 
application publication, or WIPO published application that does not 
qualify as prior art as a result of AIA 35 U.S.C. 102(b)(2)(C) may be 
cited, in appropriate situations, to indicate the state of the art when 
making a lack of enablement rejection under 35 U.S.C. 112(a). A 
document need not qualify as prior art to be applied in the context of 
double patenting \50\ or enablement.\51\ Also, the AIA 35 U.S.C. 
102(b)(2)(C) exception does not apply to any disclosure made before the 
effective filing date of the claimed invention under AIA 35 U.S.C. 
102(a)(1). Thus, if the issue date of a U.S. patent or publication date 
of a U.S. patent application publication or WIPO published application 
is before the effective filing date of the claimed invention, it may be 
prior art under AIA 35 U.S.C. 102(a)(1), regardless of common ownership 
or the existence of an obligation to assign.
---------------------------------------------------------------------------

    \50\ MPEP Sec.  804.03 (prior art disqualified under the CREATE 
Act may be the basis for a double patenting rejection).
    \51\ MPEP Sec.  2124 (publications after the critical date may 
be used to show factual evidence that, as of an application's filing 
date, undue experimentation would have been required to make or use 
the invention, that a parameter absent from the claims was or was 
not critical, that a statement in the specification was inaccurate, 
that the invention was inoperative or lacked utility, that a claim 
was indefinite, or that characteristics of prior art products were 
known).
---------------------------------------------------------------------------

    The Office is concurrently proposing in a separate action (RIN 
0651-AC77) to revise the rules of practice to include provisions that 
pertain to commonly owned or joint research agreement subject matter 
(proposed 37 CFR 1.104(c)(4) and (c)(5)). Proposed 37 CFR 1.104(c)(4) 
would be applicable to applications that are subject to AIA 35 U.S.C. 
102 and 103. Proposed 37 CFR 1.104(c)(5) would be applicable to 
applications that are subject to 35 U.S.C. 102 and 103 as in effect on 
March 15, 2013 (pre-AIA 35 U.S.C. 102 and 103). Proposed 37 CFR 
1.104(c)(4)(i) would pertain to commonly owned subject matter under AIA 
35 U.S.C. 102 and 103, and proposed 37 CFR 1.104(c)(5)(i) would pertain 
to commonly owned subject matter under pre-AIA 35 U.S.C. 102 and 103.

[[Page 43771]]

    An applicant's clear and conspicuous statement on the record will 
be sufficient to establish that the AIA 35 U.S.C. 102(b)(2)(C) 
exception applies. When relying on the provisions of pre-AIA 35 U.S.C. 
103(c), the applicant or his attorney or agent of record could provide 
the statement required to disqualify the cited prior art. Because the 
practice to rely on the AIA 35 U.S.C. 102(b)(2)(C) provisions is 
similar to previous provisions under pre-AIA 35 U.S.C. 103(c), the 
statement from the applicant or his attorney or agent of record would 
still be sufficient to disqualify such disclosures. The statement must 
indicate that the claimed invention of the application under 
examination and the subject matter disclosed in the published 
application or issued patent (prior art) to be excluded under AIA 35 
U.S.C. 102(b)(2)(C) were owned by the same person or subject to an 
obligation of assignment to the same person not later than the 
effective filing date of the claimed invention. The applicant may 
present supporting evidence such as copies of assignment documents, but 
is not required to do so. Unless an examiner has independent evidence 
which raises doubt as to the veracity of such a statement, the examiner 
may not request corroborating evidence. The statement under AIA 35 
U.S.C. 102(b)(2)(C) will generally be treated by the examiner 
analogously to statements made under pre-AIA 35 U.S.C. 103(c). See MPEP 
Sec.  706.02(l)(2)(II).

II. Joint Research Agreements

    35 U.S.C. 102(c) provides that subject matter disclosed, which 
might otherwise qualify as prior art, and a claimed invention are 
treated as having been owned by the same person or subject to an 
obligation of assignment to the same person in applying the provisions 
of 35 U.S.C. 102(b)(2)(C) if three conditions are satisfied. First, the 
subject matter disclosed must have been developed and the claimed 
invention must have been 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.\52\ The AIA defines the 
term ``joint research agreement'' 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.\53\ Second, the claimed invention 
must have been made as a result of activities undertaken within the 
scope of the joint research agreement.\54\ Third, the application for 
patent for the claimed invention must disclose, or be amended to 
disclose, the names of the parties to the joint research agreement.\55\ 
Proposed 37 CFR 1.104(c)(4)(ii) pertains to joint research agreement 
subject matter under AIA 35 U.S.C. 102 and 103, and proposed 37 CFR 
1.104(c)(5)(ii) pertains to joint research agreement subject matter 
under pre-AIA 35 U.S.C. 102 and 103. If these conditions are met, the 
joint research agreement prior art is not available as prior art under 
35 U.S.C. 102(a)(2).
---------------------------------------------------------------------------

    \52\ 35 U.S.C. 102(c)(1).
    \53\ 35 U.S.C. 100(h).
    \54\ 35 U.S.C. 102(c)(2).
    \55\ 35 U.S.C. 102(c)(3)
---------------------------------------------------------------------------

    The provisions of AIA 35 U.S.C. 102(c) generally track those of the 
Cooperative Research and Technology Enhancement Act of 2004 (CREATE 
Act).\56\ The major differences between AIA 35 U.S.C. 102(c) and the 
CREATE Act are that the new provision is keyed to the effective filing 
date of the claimed invention, while the CREATE Act focused on the date 
that the claimed invention was made, and that the CREATE Act provisions 
only applied to prior art obviousness rejections.
---------------------------------------------------------------------------

    \56\ Public Law 108-453, 118 Stat. 3596 (2004)), which was an 
amendment to pre-AIA 35 U.S.C. 103(c). Congress has made it clear 
that the intent of AIA 35 U.S.C. 102(c) is to continue the promotion 
of joint research activities that was begun under the CREATE Act, 
stating in section 3(b) of the AIA that ``The United States Patent 
and Trademark Office shall administer section 102(c) of title 35, 
United States Code, in a manner consistent with the legislative 
history of the CREATE Act that was relevant to its administration by 
the United States Patent and Trademark Office.'' See 125 STAT. at 
287.
---------------------------------------------------------------------------

    In order to invoke a joint research agreement to disqualify a 
disclosure as prior art, the applicant must provide a statement that 
the disclosure of the subject matter on which the rejection is based 
and the claimed invention were made by or on behalf of parties to a 
joint research agreement under AIA 35 U.S.C. 102(c). The statement must 
also assert that the agreement was in effect on or before the effective 
filing date of the claimed invention, and that the claimed invention 
was made as a result of activities undertaken within the scope of the 
joint research agreement. When relying on the provisions of pre-AIA 35 
U.S.C. 103(c), the applicant or his attorney or agent of record could 
provide the statement required to disqualify the cited prior art. 
Because the practice to rely on the 102(c) provisions is similar to 
previous provisions under pre-AIA 35 U.S.C. 103(c), the statement from 
the applicant or his attorney or agent of record would still be 
sufficient to disqualify such disclosures. If the names of the parties 
to the joint research agreement are not already stated in the 
application, it is necessary to amend the application to include the 
names of the parties to the joint research agreement in accordance with 
37 CFR 1.71(g). As is the case with establishing common ownership, the 
applicant may, but is not required to, present evidence supporting the 
existence of the joint research agreement. Furthermore, the Office will 
not request corroborating evidence in the absence of independent 
evidence which raises doubt as to the existence of the joint research 
agreement.
    As discussed previously, the AIA 35 U.S.C. 102(b)(2)(C) exception 
does not apply to any disclosure made before the effective filing date 
of the claimed invention under AIA 35 U.S.C. 102(a)(1). Thus, if the 
issue date of a U.S. patent or publication date of a U.S. patent 
application publication or WIPO published application is before the 
effective filing date of the claimed invention, it may be prior art 
under AIA 35 U.S.C. 102(a)(1) regardless of the fact that the subject 
matter disclosed and the claimed invention resulted from a joint 
research agreement.

III. Improper Naming of Inventors

    Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent 
laws still require that a patent name the actual inventor or joint 
inventors of the claimed subject matter. The Office presumes that the 
named inventor or inventors are the actual inventor or joint 
inventors.\57\ Where an application names an incorrect inventorship, 
the applicant should correct the situation via a request to correct 
inventorship under 37 CFR 1.48. In the rare situation in which it is 
clear that the application does not name the correct inventorship and 
the applicant has not filed a request to correct inventorship under 37 
CFR 1.48, the appropriate course of action is to reject the claims 
under 35 U.S.C. 101.\58\
---------------------------------------------------------------------------

    \57\ MPEP Sec.  2137.01.
    \58\ As discussed in end note 1, 35 U.S.C. 101 provides that: 
``[w]hoever invents or discovers * * *, may obtain a patent 
therefor, subject to the conditions and requirements of this 
title.''
---------------------------------------------------------------------------

IV. 35 U.S.C. 103

    AIA 35 U.S.C. 103 continues to set forth the nonobviousness 
requirement for patentability.\59\ There are, however,

[[Page 43772]]

some important changes from pre-AIA 35 U.S.C. 103.
---------------------------------------------------------------------------

    \59\ 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 section 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. Patentability shall not be negated by the manner 
in which the invention was made.
---------------------------------------------------------------------------

    The most significant difference between the AIA 35 U.S.C. 103 and 
pre-AIA 35 U.S.C. 103(a) is that AIA 35 U.S.C. 103 determines 
obviousness as of the effective filing date of the claimed invention, 
rather than as of the time that the invention was made. Under pre-AIA 
examination practice, the Office uses the effective filing date as a 
proxy for the invention date, unless there is evidence of record to 
establish an earlier date of invention. Thus, as a practical matter 
during examination, this distinction between the AIA 35 U.S.C. 103 and 
pre-AIA 35 U.S.C. 103 will result in a difference in practice only when 
the case under examination is subject to pre-AIA 35 U.S.C. 103, and 
there is evidence in the case concerning a date of invention prior to 
the effective filing date. Such evidence is ordinarily presented by way 
of an affidavit or declaration under 37 CFR 1.131.
    Next, AIA 35 U.S.C. 103 differs from that of pre-AIA 35 U.S.C. 103 
in that the AIA 35 U.S.C. 103 requires consideration of ``the 
differences between the claimed invention and the prior art,'' while 
pre-AIA 35 U.S.C. 103 refers to ``the differences between the subject 
matter sought to be patented and the prior art.'' This difference in 
terminology does not indicate the need for any difference of approach 
to the question of obviousness.\60\
---------------------------------------------------------------------------

    \60\ As pointed out by the Federal Circuit, ``[t]he term 
`claims' has been used in patent legislation since the Patent Act of 
1836 to define the invention that an applicant believes is 
patentable.'' Hoechst-Roussel Pharmaceuticals, Inc. v. Lehman, 109 
F.3d 756, 758 (Fed. Cir. 1997) (citing Act of July 4, 1836, ch. 357, 
Sec.  6, 5 Stat. 117). Furthermore, in Graham v. John Deere, 383 
U.S. 1 (1966), the second of the Supreme Court's factual inquiries 
(the ``Graham factors'') is that the ``differences between the prior 
art and the claims at issue are to be ascertained.'' Graham, 383 
U.S. at 17. Thus, in interpreting 35 U.S.C. 103 as enacted in the 
1952 Patent Act--language that remained unchanged until enactment of 
the AIA--the Court equated ``the subject matter sought to be 
patented'' with the claims.
---------------------------------------------------------------------------

    Further, the AIA 35 U.S.C. 103 eliminates pre-AIA 35 U.S.C. 103(b), 
and the AIA does not contain any similar provision. Pre-AIA 35 U.S.C. 
103(b) is narrowly drawn, applying only to nonobviousness of 
biotechnological inventions, and even then, only when specifically 
invoked by the patent applicant. Pre-AIA 35 U.S.C. 103(b) provides that 
under certain conditions, ``a biotechnological process using or 
resulting in a composition of matter that is novel under section 102 
and nonobvious under subsection [103(a)] of this section shall be 
considered nonobvious.'' In view of the case law since 1995,\61\ the 
need to invoke pre-AIA 35 U.S.C. 103(b) has been rare.
---------------------------------------------------------------------------

    \61\ As stated in MPEP Sec.  706.02(n), in view of the Federal 
Circuit's decisions in In re Ochiai, 71 F.3d 1565 (Fed. Cir. 1995) 
and In re Brouwer, 77 F.3d 422 (Fed. Cir. 1996), the need to invoke 
pre-AIA 103(b) rarely arose. Those cases continue to retain their 
vitality under the AIA.
---------------------------------------------------------------------------

    Finally, the AIA 35 U.S.C. 103 eliminates pre-AIA 35 U.S.C. 103(c), 
but corresponding provisions have been introduced in AIA 35 U.S.C. 
102(b)(2)(C) and 102(c). Pre-AIA 35 U.S.C. 103(c) applied if subject 
matter qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), 
or (g), and only in the context of obviousness under pre-AIA 35 U.S.C. 
103(a). If subject matter developed by another person was commonly 
owned with the claimed invention, or if the subject matter was subject 
to an obligation of assignment to the same person, at the time the 
claimed invention was made, then pre-AIA 35 U.S.C. 103(a) did not 
preclude patentability. Furthermore, under the pre-AIA 35 U.S.C. 
103(c), if a joint research agreement was in place on or before the 
date that the claimed invention was made, the claimed invention was 
made as a result of activities undertaken within the scope of the joint 
research agreement, and the application for patent was amended to 
disclose the names of the parties to the joint research agreement, 
common ownership or an obligation to assign was deemed to exist. As 
discussed previously, AIA 35 U.S.C. 102(b)(2)(C) and 102(c) expand on 
this concept. Under the AIA first-inventor-to-file approach, the common 
ownership, the obligation to assign, or the joint research agreement 
must exist on or before the effective filing date, rather than on or 
before the date the invention was made. If the provisions of AIA 35 
U.S.C. 102(b)(2)(C) are met, a disclosure is not prior art at all, 
whereas under pre-AIA 35 U.S.C. 103(c), certain prior art merely was 
defined as not precluding patentability. Finally, disclosures 
disqualified as prior art under AIA 35 U.S.C. 102(b)(2)(C) and 102(c) 
may not be applied in either an anticipation or an obviousness 
rejection. However, such disclosures could be the basis for statutory 
double patenting or non-statutory double patenting rejections.
    Generally speaking, and with the exceptions noted herein, pre-AIA 
notions of obviousness will continue to apply under the AIA. It should 
be noted that AIA 35 U.S.C. 102(a) defines what is prior art both for 
purposes of novelty under AIA 35 U.S.C. 102 as well as for purposes of 
obviousness under AIA 35 U.S.C. 103.\62\ Thus, if a document qualifies 
as prior art under AIA 35 U.S.C. 102(a)(1) or (a)(2), and is not 
subject to an exception under AIA 35 U.S.C. 102(b), it may be applied 
for what it describes or teaches to those skilled in the art in a 
rejection under 35 U.S.C. 103.\63\ Finally, Office personnel will 
continue to follow guidance for formulating an appropriate rationale to 
support any conclusion of obviousness. See MPEP Sec.  2141 et seq. and 
the guidance documents available at https://www.uspto.gov/patents/law/exam/ksr_training_materials.jsp.
---------------------------------------------------------------------------

    \62\ Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965) (a 
previously filed patent application to another pending in the 
Office, but not patented or published, at the time an application is 
filed constitutes part of the ``prior art'' within the meaning of 35 
U.S.C. 103).
    \63\ This is in accordance with pre-AIA case law indicating that 
in making determinations under 35 U.S.C. 103, ``it must be known 
whether a patent or publication is in prior art under 35 U.S.C. 
102.'' Panduit Corp. v Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. 
Cir 1987). However, while a disclosure must enable those skilled in 
the art to make the invention in order to anticipate under 35 U.S.C. 
102, a non-enabling disclosure is prior art for all it teaches for 
purposes of determining obviousness under 35 U.S.C. 103. Symbol 
Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991); 
Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. 
Cir. 1989).
---------------------------------------------------------------------------

V. Applicability Date Provisions, Determining Whether an Application Is 
Subject to Provisions of First Inventor To File Under AIA

    Because the changes to 35 U.S.C. 102 and 103 in the AIA apply only 
to specific applications filed on or after March 16, 2013, determining 
the effective filing date of a claimed invention for purposes of 
applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 
and 103 provisions is critical.

A. Applications Filed Before March 16, 2013

    The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any 
application filed before March 16, 2013. Thus, any application filed 
before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103. 
Note that the filing of a request for continued examination is not the 
filing of a new application.

B. Applications Filed on or After March 16, 2013

    AIA 35 U.S.C. 102 and 103 take effect on March 16, 2013. AIA 35 
U.S.C. 102 and 103 apply to any patent application that contains or 
contained at any time a claimed invention that has an effective filing 
date that is on or after March 16, 2013. If a patent application 
contains or contained at any time a claimed

[[Page 43773]]

invention having an effective filing date on or after March 16, 2013, 
35 U.S.C. 102 and 103, as amended by the AIA, apply to the application. 
If even a single claim in the application ever has an effective filing 
date on or after March 16, 2013, AIA 35 U.S.C. 102 and 103 apply in 
determining the patentability of every claim in the application. This 
is the situation even if the remaining claimed inventions all have an 
effective filing date before March 16, 2013, and even if the claimed 
invention having an effective filing date on or after March 16, 2013, 
is canceled.
    In addition, AIA 35 U.S.C. 102 and 103 apply to any patent 
application that contains or contained at any time a specific reference 
under 35 U.S.C. 120, 121, or 365(c) to any patent or application that 
contains or contained at any time a claimed invention that has an 
effective filing date that is on or after March 16, 2013. Thus, AIA 35 
U.S.C. 102 and 103 apply to any patent application that was ever 
designated as a continuation, divisional, or continuation-in-part of an 
application that contains or contained at any time a claimed invention 
that has an effective filing date that is on or after March 16, 2013. 
This is the situation even if the application is amended to delete its 
reference as a continuation, divisional, or continuation-in-part to the 
prior-filed application, and even if the claimed invention having an 
effective filing date on or after March 16, 2013, in the prior-filed 
application, is canceled. An application filed on or after March 16, 
2013, is governed by pre-AIA 35 U.S.C. 102 and 103 only if: (1) The 
application does not contain and never contained any claimed invention 
having an effective filing date on or after March 16, 2013; and (2) the 
application does not contain and never contained a specific reference 
under 35 U.S.C. 120, 121, or 365(c)) to an application that contains or 
contained at any time a claim that has an effective filing date that is 
on or after March 16, 2013.
    Thus, once a claim that has an effective filing date on or after 
March 16, 2013, is introduced in an application, or is introduced to an 
application in its continuity chain, AIA 35 U.S.C. 102 and 103 apply to 
that application and any subsequent continuation, divisional, or 
continuation-in-part of that application. Specifically, a patent 
application may be amended to add a claimed invention having an 
effective filing date on or after March 16, 2013, or a specific 
reference under 35 U.S.C. 120, 121 or 365(c) to an application 
containing a claimed invention having an effective filing date on or 
after March 16, 2013, that results in the application no longer being 
subject to pre-AIA 35 U.S.C. 102 and 103 but being subject to AIA 35 
U.S.C. 102 and 103. However, no amendment to a claim, or to a specific 
reference under 35 U.S.C. 120, 121 or 365(c), or both, will result in 
the application changing from being subject to AIA 35 U.S.C. 102 and 
103 to being subject to pre-AIA 35 U.S.C. 102 and 103.
    Also, AIA 35 U.S.C. 102 and 103 apply to any patent resulting from 
an application to which AIA 35 U.S.C. 102 and 103 were applied. 
Similarly, pre-AIA 35 U.S.C. 102 and 103 apply to any patent resulting 
from an application to which pre-AIA 35 U.S.C. 102 and 103 were 
applied.

C. Applications Subject to the AIA But Also Containing a Claim Having 
an Effective Filing Date Before March 16, 2013

    Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, 
pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application 
if it: (1) Contains or contained at any time a claimed invention having 
an effective filing date 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 claimed 
invention that has an effective filing date that occurs before March 
16, 2013. Pre-AIA 35 U.S.C. 102(g) also applies to any patent resulting 
from an application to which pre-AIA 35 U.S.C. 102(g) applied.
    Thus, if an application contains, or contained at any time, any 
claimed invention having an effective filing date that occurs before 
March 16, 2013, and also contains, or contained at any time, any 
claimed invention having an effective filing date that is on or after 
March 16, 2013, AIA 35 U.S.C. 102 and 103 apply to the application, but 
each claim must also satisfy pre-AIA 35 U.S.C. 102(g) for the applicant 
to be entitled to a patent.
    Thus, when subject matter is claimed in an application having 
priority to or the benefit of a prior-filed application (e.g., under 35 
U.S.C. 120, 121 or 365(c)), care must be taken to accurately determine 
whether AIA or pre-AIA 35 U.S.C. 102 and 103 applies to the 
application.

D. Applicant Statement Regarding Applicability of AIA Provisions to 
Claims in Applications Filed on or After March 16, 2013

    The Office is concurrently proposing the following amendments to 37 
CFR 1.55 and 1.78 a separate action (RIN 0651-AC77). First, the Office 
is proposing to require that if a nonprovisional application filed on 
or after March 16, 2013, claims the benefit of or priority to the 
filing date of a foreign, U.S. provisional, U.S. nonprovisional, or 
international application that was filed prior to March 16, 2013, and 
also contains or contained at any time a claimed invention having an 
effective filing date on or after March 16, 2013, the applicant must 
provide a statement to that effect. Second, the Office is proposing to 
require that if a nonprovisional application filed on or after March 
16, 2013, does not contain a claim to a claimed invention having an 
effective filing date on or after March 16, 2013, but discloses subject 
matter not also disclosed in the foreign, provisional, or 
nonprovisional application, the applicant must provide a statement to 
that effect. This information will assist the Office in determining 
whether the application is subject to AIA 35 U.S.C. 102 and 103 or pre-
AIA 35 U.S.C. 102 and 103.

    Dated: July 17, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-17898 Filed 7-25-12; 8:45 am]
BILLING CODE 3510-16-P