First to File Practice: Grace Period Inventor Disclosures

This is the first article in my First-to-File Friday series. On each Friday in August, I will publish 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 and the proposed examination guidelines. Here, I turn my attention to the specific requirements (as proposed) for invoking the “grace period inventor disclosure” exception to prior art.

The New “Grace Period Inventor Disclosure” Prior Art Exception

The “grace period 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 …. 

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 Mechanisms For Invoking The Grace Period Inventor Disclosure Exception

The USPTO proposes to provide applicants with two ways to invoke this exception:

First, applicants will be able to preemptively invoke the exception under proposed 37 CFR § 1.77(b)(6), by including in their patent applications a “[s]tatement regarding prior disclosures by the inventor or a joint inventor.” According to the commentary in the proposed rules package, “[i]f the information provided . . . is sufficient to comply with what is required in a Sec. 1.130 affidavit or declaration regarding a prior disclosure …  then applicant would not need to provide anything further.”

Alternatively, applicants will be able to invoke the 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:
(1) The disclosure on which the rejection is based was by the inventor or joint inventor …
(b) If the disclosure on which the rejection is based is by the inventor or a joint inventor, the affidavit or declaration under paragraph (a)(1) of this section must provide a satisfactory showing that the inventor or a joint inventor is in fact the inventor of the subject matter of the disclosure.
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(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 the disclosure

1. [w]as made one year or less before the effective filing date of the claimed invention; and
2. had been publicly disclosed by the inventor or joint inventor.

With regard to the latter point, the guidelines state:

Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an “unequivocal” statement from the inventor or a joint inventor that he/she (or some specific combination of named inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary. However, a mere statement from the inventor or a joint inventor may not be sufficient where there is evidence to the contrary.

As the proposed guidelines note, “‘[t]his is similar to the current process for disqualifying a publication as not being by “others” ‘ discussed in MPEP § 2132.01, except that 35 U.S.C. 102(b)(1)(A) requires only that the disclosure be by the inventor or a joint inventor.”

The guidelines also indicate that an examiner might not cite prior art if it is apparent from its face that it is an inventor grace period disclosure, i.e., if  the disclosure:

1. [w]as made one year or less before the effective filing date of the claimed invention;
2. names the inventor or a joint inventor as an author or an inventor; and
3. does not name additional persons as authors on a printed publication or inventors on a patent.

For example, a publication dated within one year of the effective filing date of the application at issue would not be cited if “the application names as inventors A, B, and C, and the publication names as authors A and B,” but could be cited if “the application names as inventors A and B, and the publication names as authors A, B and C.”

The Most Familiar–But Still Different–Prior Art Exception

Of the new prior art exceptions embodied in the AIA version of 35 USC § 102(b), the grace period inventor disclosure exception is the most familiar, and appears to be largely identical to the grace period provided by the current version of 35 USC § 102(b). One important difference is that the AIA grace period is measured from the effective filing date of the claimed invention, which, under the AIA, can reach back to non-U.S. priority dates. On the other hand, the grace period embodied in the current version of 35 USC § 102(b) is measured from only the earliest U.S. effective filing. This means that while inventor disclosures made less than one year before the filing date of a non-U.S. priority application can present a bar to patentability under the current version of 35 USC § 102(b), such disclosures will not qualify as prior art under the AIA version of 35 USC § 102(b)(1)(A). This is one of the few ways in which certain applications could be better off if examined under the first-to-file version of the law.