(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 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.
  • 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).

35 USC 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 USC 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.”