America Invents Act: New Section 102

One of the major changes to US patent law in the America Invents Act is the change to § 102.  The new subsection (a) reads as follows:

(a) A person shall be entitled to a patent unless:

(1)  the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(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.

This new subsection greatly expands the prior art available for use against a patent or application.  First, subsection (1) eliminates the grace period (subject to subsection (b)’s limited exceptions).  A patent is not availabe if the invention was patented, described in a publication, in public use, on sale, or otherwise available to the public before the effective filing date of the application.  No longer is there a distinction between activities conducted “in this country” or “in this or a foreign country.”  Any public disclosure anywhere will negate the ability to obtain a patent.

Subsection (2) switches the US to a “first-to-file” regime by noting that a patent is not available if an earlier-filed application that “names another inventor” describes the claimed invention.  Does this mean a completely different inventive entity or merely a single change in inventorship?  If the later-filed application adds or eliminates one of the inventors from the earlier-filed application, is that a “different inventor”?

Under current US law, US patents and published applications are prior art as of their US effective filing date, regardless of foreign priority claim.  Subsection (2) precludes a patent if the earlier application was “effectively filed” before the later-filed application.  This would suggest that they will now be prior art as of their earliest priority date even if filed outside the US.

Subsection (b) provides some exceptions to subsection (a) for activities of the inventor.

(b) EXCEPTIONS

(1)  DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if–

(A)  the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B)  the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

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

(A)  the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B)  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

(C)  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.

Subsection (b)(1)(A) provides an exception for a “disclosure” made by the inventor or one who obtained the subject matter disclosed directly or indirectly from the inventor within one year prior to the application’s filing date.  Subsection (B) even insulates subsequent “disclosures” made by third parties during that year, provided that the inventor made an initial disclosure of the invention.

This subsection seems to encourage inventors to disclose their inventions early so as to insulate themselves from later disclosures by third parties.  Inventors should publish their inventions early.  Provided a patent application is filed within one year of this disclosure, he should be insulated from third party disclosures occurring within that year.

This does not mean that inventors should simply put every new idea they have up on a website as a “disclosure” to insulate them from third party disclosures for a year.  The disclosure by the inventor will probably need to be an enabling disclosure that provides sufficient details to enable one of ordinary skill in the art to make and use the invention.  If an inventor makes a non-enabling disclosure of an idea and a third party then makes an enabling disclosure or files a patent application that includes an enabling disclosure of the invention, the inventor will probably be precluded from obtaining a patent on the original idea.  Ideas cannot be patented, only inventions can.

Subsection (b)(2) is an exception to the first-to-file provisions:  if a disclosure in a patent or patent application was obtained directly or indirectly from the inventor; if the inventor had disclosed the invention within a year of filing his application; or if the claimed invention and the disclosure were owned by the same entity or subject to an assignment obligation to the same entity, as of the effective filing date, an earlier filed application will not necessarily preclude a patent on a later-filed application by the inventor.

Notably, there is no grace period for public use or commercial activities such as sales or offers for sale.

Section 102(c) defines common ownership under a joint research agreement.  Under current law, § 103(c) excludes prior art for obviousness purposes that is commonly owned or subject to a joint research agreement.  New § 102(c) expands this to exclude such prior art disclosures within a year of the application’s filing date for novelty purposes as well.

These provisions go into effect for applications filed 18 months after the effective date of the Act or March 16, 2013.

Patent Docs provides additional details, including a description of “derivation” under the Act.

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2 Responses to “America Invents Act: New Section 102”

  1. General Global Week in Review 17 Oct 2011 from IP Think Tank Says:

    [...] America Invents Act: New section 102 (Inventive Step) [...]

  2. America Invents Act: Changes to Section 103 « INVENTIVE STEP Says:

    [...] the many provisions of the Act that expand the definition of prior art, it is nice to see one that reduces it.  This provision would seem to benefit larger entities that [...]

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