First to File Practice: Grace Period Non-Inventor Disclosures

This is the second article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, and the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art. Here, I look at the proposed requirements for invoking what the USPTO refers to as the “grace period non-inventor disclosure” exception to prior art.

The New “Grace Period Non-Inventor Disclosure” Prior Art Exception

The “grace period non-inventor disclosure” exception to prior art is set forth in the AIA version of 35 USC § 102(b):

(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 … 

I think of this as the “grace period inventor-originated disclosure” exception, but I will use the USPTO’s terminology (“grace period non-inventor disclosure”) to minimize confusion.

As with all of the 35 USC § 102(b)(1) exceptions, the disclosure must have been made one year or less before the effective filing date of the claimed invention in order to be subject to disqualification under this exception.

The Proposed Mechanism for Invoking the Grace Period Non-Inventor Disclosure Exception

Applicants will be able to invoke the grace period non-inventor disclosure exception by submitting an affidavit or declaration under proposed new 37 CFR § 1.130 (a “Rule 130 Declaration”):

Sec. 1.130 Affidavit or declaration of attribution, prior disclosure, or derivation under the Leahy-Smith America Invents Act.
(a) When any claim of an application or a patent under reexamination is rejected, the applicant or patent owner may submit an appropriate affidavit or declaration to establish that:
*****
(2) The disclosure on which the rejection is based was by a party who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor …
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(d) If the disclosure on which the rejection is based is by a party who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor, an affidavit or declaration under paragraph (a)(2) of this section must provide a satisfactory showing that the inventor or a joint inventor is the inventor of the subject matter of the disclosure and directly or indirectly communicated the subject matter of the disclosure to the party.
*****
(f) The provisions of this section are not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention….

As set forth in the proposed examination guidelines, a Rule 130 Declaration should establish that:

1. the inventor or a joint inventor is the inventor of the subject matter of the disclosure
2. there was a communication of the subject matter to another who disclosed it
3. the communication was sufficient to enable one of ordinary skill in the art to make the subject matter of the claimed invention.

The guidelines cite Gambro Lundia AB v. Baxter Healthcare Corp. (Fed. Cir. 1997) in support of the third requirement, but I question whether that case supports imposing such a requirement to invoke § 102(b)(1)(A). Gambro was a derivation case and holds that in order to establish derivation of a claimed invention a party must show prior conception and an enabling communication of the invention to the alleged deriving party. However, § 102(b)(1)(A) pertains to disclosures, and by its plain language requires only that the disclosure have been made “by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” It appears that meeting the first two requirements would satisfy the statutory language.

The guidelines indicate that “[a]ny 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.” The guidelines state that this practice “is similar to the current process for disqualifying a publication as being derived from the inventor discussed in MPEP §§ 715.01(c) II and 2137.”

Record-Keeping to Establish the Prior Art Exception

Under proposed Rule 130, in order to invoke the grace period non-inventor disclosure exception, applicants will have to show not only that that the inventor(s) are inventor(s) of the disclosed subject matter, but also that they communicated the invention to another who disclosed it. Thus, in order to be able to invoke this exception, applicants may need to continue to maintain good records of inventive activity, and also maintain good records of public and non-public inventor disclosures, such as the content of any inventor disclosures and the audience. In this way, the AIA actually may increase the record-keeping burden rather than minimizing it as many had hoped.

A Somewhat Familiar–But Still Different–Prior Art Exception

While this “grace period non-inventor disclosure” exception is not quite as familiar to current practitioners as the “grace period inventor disclosure” exception, it does appear to overlap significantly with current practice, such as the current ability to disqualify § 102(a) prior art by establishing that the disclosure at issue was derived from the inventor. However, this exception may take on more significance under the first-to-file system, because applicants no longer will have the option of instead disqualifying third-party prior art by proving an earlier date of invention. 

Interested practitioners and applicants should review the proposed rules and guidelines, and provide any comments or suggestions to the USPTO in writing by October 5, 2012.