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Apr 1, 2013 (Vol. 33, No. 7)

The Scope of Prior Art Under AIA

What Scientists and Corporate Executives Need to Know about America Invents Act Provisions

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    Jay Pattumudi

    Effective March 16, 2013, the scope of prior art will be affected by the provisions of U .S. Patent Reform Act (i.e., America Invents Act [AIA]). In this article, AIA provisions will be compared with those of European and Japanese patent law.

    An inventor, subject to important exceptions for his or her own actions, is barred from obtaining a patent if the claimed invention in the patent application was (1) patented by others; (2) described in a printed publication by others; (3) in public use by others; (4) on sale by others; or (5) otherwise available to the public before the effective filing date of his or her claimed invention. All of the foregoing categories have counterparts in European and Japanese patent law.

    Earliest effective filing date of a patent application key to patentability determinations

    The effective filing date of a patent application by another inventor, subject to limited exceptions, is now a key criterion for determining a prior art reference’s applicability. Accordingly, a Rule 131 affidavit, for evidencing an earlier invention date, can no longer be used; however, one should nevertheless retain evidence such as lab notebooks for use in derivation proceedings, which would concern whether an individual derives the claimed invention from the true inventor.

    Public use and sale novelty-destroying regardless of location

    As in Europe and Japan, another inventor who sells, offers to sell an invention, or uses the invention anywhere in the world can create novelty-destroying prior art. Previously, such acts were novelty-bars only if they occurred in the U.S.

    Earlier-filed later-published patent application of another a prior art bar from earliest effective filing date

    AIA makes no distinction between a U.S. application claiming priority to a foreign patent application and a U.S. application claiming priority to a domestic patent application, both of which become published U.S. patent applications for purposes of being applicable prior art. An earlier-filed U.S. patent application of another inventor, provided that it is subsequently published, is prior art for both novelty and obviousness determinations as of its earliest effective filing date, regardless of whether the earliest application was filed in the English language.

    This type of application could not be discovered by a prior art search because it would not have been published at the time a person files his or her own patent application. Under earlier U.S. patent law, a published U.S. application that claimed priority to a non-English language application was only prior art as of its actual U.S. filing date.

    In Europe, only an earlier European national application by another inventor can be used for novelty determinations from its earliest effective date provided that it was published on or after the filing date of the later application of the inventor. A European national phase of a PCT application is also novelty-destroying prior art provided that it is accompanied by a national fee and filed in an official language of the EPO. However, under EPC Article 56, both of the foregoing applications cannot be used for obviousness purposes.

    An earlier-filed Japanese patent application by another inventor, published after the filing date of an inventor, is prior art from the earliest effective date (regardless of country of origin); it can be used for novelty but not for obviousness. However, earlier-filed later-published applications having a common assignee are not prior art.

    Accordingly, under AIA, the scope of prior art with respect to the applicability of earlier-filed, later-published application by another is greater than those of Europe or Japan because they can be used for both novelty and obviousness rejections. Thus, a European or a Japanese patent application that did not encounter such rejections could still face them in the U.S.

  • Protections for Inventors’ Own Actions

    The United States Patent and Trademark Office recently published new rules regarding inventors’ exceptions for their own actions and related matters. Some generalizations can be made. For example, if an inventor made a public disclosure a year or less* before the effective filing date of the claimed invention, that disclosure is not prior art. However, an inventor’s second, intervening grace period disclosure of a new feature or a more specific description of subject matter previously disclosed is applicable prior art against the patent application filed within one year.

    Earlier-filed later-published applications with a common assignee and filed before the effective filing date of the second patent application are not prior art. Intervening third-party disclosures published during the one-year grace period are disqualified only if the inventor’s earlier public disclosure disclosed as much of the subject matter as was disclosed in the third-party disclosure. Nevertheless, because most of the world utilizes a first-to-file system, prudent inventors would still be advised to file a patent application before publishing a journal article, for example.

  • Conclusion

    Inventors and corporate executives alike should consider the following points: (1) five categories of prior art are to be considered for patentability determinations; (2) the earliest effective filing date of a patent or a patent application by others is the key criterion for prior art applicability, but keeping evidence is still important in certain situations such as derivation disputes; (3) public use and sale are potential novelty-bars, irrespective of geographic location; (4) a published U.S. patent application claiming priority to an earliest effective filing date can be used for novelty and obviousness bars, regardless of whether the earlier priority application was filed in an English language; and (5) inventors still have an one-year grace period for filing a patent application, but keep in mind that such a grace period is only applicable to filings in the U.S.


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