(FITF) U.S. Patents/Published Apps Qualifying As Prior Art (Sec. 102(a)(2) (AIA))

  • BASICS (FITF): U.S. patents and published applications qualify as prior art if they name “another inventor” and have an earlier effective filing date than claimed invention, 35 U.S.C. § 102(a)(2) (AIA), unless their disclosure was obtained from inventor, or the same disclosure was first publicly disclosed by inventor, or was owned by owner of claimed invention not later than effective filing date of claimed invention. 35 U.S.C. § 102(b)(2) (AIA). Note: even references with effective filing date more than a year before patent’s effective filing date may be avoided as prior art if an exception applies, and commonly owned patent publications are not prior art (under 102(a)(2)) for novelty or obviousness purposes.
    • 35 U.S.C. 102(a)(2) (FITF): “(a) Novelty; Prior Art- A person shall be entitled to a patent unless–… (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.”
    • 35 U.S.C. 102(b)(2) (FITF): “(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.”

      • “Disclosures”: USPTO interprets as referring to the documents and activities listed in 102(a)(2). MPEP 717.
  • Includes WIPO-Published PCT Applications Designating United States: Per 35 U.S.C. 374, publications of PCT applications (designating U.S.) are deemed published under section 122(b). But foreign counterparts are not.
  • Prior Art Foreign Applications On Equal Footing With Prior Art U.S. Applications: Pre-FITF, those who file a foreign application and then wait to file a corresponding PCT or U.S. application are disadvantaged vs. those who file in the U.S. first, because the Sec. 102(b) “one year” bar is tied to filing in the U.S. For FITF patents, that is not true. All that matters for both offensive and defensive purposes is the “effective filing date” and that can be either a U.S., or foreign, or PCT application date.
  • Joint Research Agreements Can Now Eliminate Prior Art For Both Sec. 102 and Sec. 103 Purposes: Pre-FITF, under 35 U.S.C. § 103(c), a qualifying “joint research agreement” could remove certain prior art for purposes of a Sec. 103 invalidity challenge. For FITF patents, the protection extends to Sec. 102 challenges as well. 35 U.S.C. § 102(b)(2)(C) (FITF).
  • Inventors’ Prior Public Disclosure Of Part Of Reference’ s Combination May Eliminate That Part As Prior Art (FITF): “If the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening grace period disclosure discloses elements A, B, C, and D, then only element D of the intervening grace period disclosure is available as prior art under 35 U.S.C. 102(a)(1).” MPEP 717.01(b)(1)
  • Inventors’ Prior Public Disclosure Of Species May Eliminate Later Genus Disclosure As Prior Art (FITF): “If the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent, U.S. patent application publication, or WIPO published application is not available as prior art.” MPEP 717.01(b)(1).
  • Inventors’ Prior Public Disclosure Of Genus Might Not Eliminate Later Species Disclosure As Prior Art (FITF): “If the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application discloses a species, the disclosure of the species in the subsequent intervening U.S. patent, U.S. patent application publication, or WIPO published application would be available as prior art.” MPEP 717.01(b)(1).
  • Disqualified Disclosures Perhaps May Be Used As Evidence Of Level Of Ordinary Skill (FITF): USPTO notes that patent publications disqualified on account of prior disclosure by the applicants may still be used as evidence of level of ordinary skill in the art. MPEP 717.01 I.

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