First-to-File Practice: An Alternative Interpretation of the Grace Period Shielding Disclosure Exception

I was honored to participate in the USPTO’s First-Inventor-To-File Roundtable yesterday (September 6, 2012). One issue raised by several speakers was the USPTO’s proposed requirements for invoking what I refer to as the “grace period shielding disclosure” exception to prior art under the first-to-file provisions of the America Invents Act (“AIA”). In a previous article I highlighted the USPTO’s controversial interpretation set forth in the USPTO’s proposed examination guidelines. Here, I offer an alternative interpretation of 35 USC § 102(b)(1)(B).

The Grace Period Shielding 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)(1)(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—
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(B) the subject matter disclosed had, before such disclosure, 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 ….

I think of this as the “grace period shielding disclosure” exception, because an earlier inventor or inventor-originated disclosure can shield the later-filed application from an intervening, third-party disclosure.

The USPTO’s Controversial Interpretation

The USPTO’s proposed examination guidelines impose a requirement of near identity for an earlier (shielding) disclosure to disqualify a third-party disclosure under § 102(b)(1)(B). According to the guidelines:

The exception in 35 U.S.C. 102(b)(1)(B) applies if the “‘subject matter’ disclosed [in the prior art disclosure] had, before such [prior art] disclosure, been publicly disclosed by the inventor or a joint inventor * * * .” Thus, the exception in 35 U.S.C. 102(b)(1)(B) requires that the subject matter in the prior disclosure being relied upon under 35 U.S.C. 102(a) be the same “subject matter” as the subject matter publicly disclosed by the inventor before such prior art disclosure for the exception in 35 U.S.C. 102(b)(1)(B) to apply. Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.

The guidelines do not cite any authority or provide any further explanation for this interpretation, and do not give any examples of the application of this interpretation.

An Alternative Interpretation

I thought the USPTO might draw on current Rule 131 Declaration practice (as explained in MPEP § 715.02), and permit an earlier (shielding) disclosure to disqualify a disclosure if the earlier disclosure disclosed either

• “the whole invention claimed or something falling within the claim (such as a species of a claimed genus), in the sense that the claim as a whole reads on it”
• as much of the claimed invention as the disclosure shows

Indeed, if I am claiming only “red,” and made an earlier disclosure of “red” within the grace period of my patent application, why should I need to have disclosed “red, yellow, and blue,” in order to disqualify a disclosure of “red, yellow, and blue”?

This alternative interpretation of the statute may read the word “relevant” or “claimed” into § 102(b)(1)(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—
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(B) the [relevant or claimed] subject matter disclosed had, before such disclosure, 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.

but that may be appropriate when § 102(b)(1)(B) is read in the context of the statute as a whole, and with reference to § 102(a)(1) in particular:

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention …

That is, because § 102(a)(1) defines prior art with reference to disclosures of “the claimed invention,” it would be consistent to read § 102(b)(1)(B) as also pertaining to “subject matter” that is relevant to or that discloses the claimed invention.

At the very least, this alternative interpretation would give effect to Congressional intent to provide a meaningful prior art exception that would protect applicants from intervening third party disclosures other than the improbable few that would have no insubstantial changes and no trivial or obvious variations as compared to the earlier (shielding) disclosure.

What Do You Think?

The USPTO will consider written comments on the proposed first-to-file rules and proposed first-to-file examination guidelines received by October 5, 2012. Interested practitioners and applicants should review this and other aspects of the proposals to determine whether they have any comments or suggestions to guide the USPTO’s final rulemaking.