[Federal Register Volume 78, Number 31 (Thursday, February 14, 2013)]
[Rules and Regulations]
[Pages 11059-11088]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2013-03450]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2012-0024]


Examination Guidelines for Implementing the First Inventor To 
File Provisions of the Leahy-Smith America Invents Act

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Examination guidelines.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
publishing examination guidelines concerning the first inventor to file 
provisions of the Leahy-Smith America Invents Act (AIA). The AIA amends 
the patent laws pertaining to the conditions of patentability to 
convert the U.S. patent system from a ``first to invent'' system to a 
``first inventor to file'' system, treats patents and patent 
application publications as prior art as of their earliest effective 
U.S., foreign, or international filing date, eliminates the requirement 
that a prior public use or sale activity be ``in this country'' to be a 
prior art activity, and treats commonly owned or joint research 
agreement patents and patent application publications as being by the 
same inventive entity for purposes of novelty, as well as 
nonobviousness. The changes to the conditions of patentability in the 
AIA result in greater transparency, objectivity, predictability, and 
simplicity in patentability determinations. The Office is providing 
these examination guidelines to Office personnel, and notifying the 
public of these guidelines, to assist in the implementation of the 
first inventor to file provisions of the AIA. These examination 
guidelines also clarify, in response to the public comment, that there 
is no requirement that the mode of disclosure by an inventor or joint 
inventor be the same as the mode of disclosure of an intervening 
disclosure (e.g., inventor discloses his invention at a trade show and 
the intervening disclosure is in a peer-reviewed journal). 
Additionally, there is no requirement that the disclosure by the 
inventor or a joint inventor be a verbatim or ipsissimis verbis 
disclosure of an intervening disclosure in order for the exception 
based on a previous public disclosure of subject matter by the inventor 
or a joint inventor to apply. These guidelines also clarify that the 
exception applies to subject matter of the intervening disclosure that 
is simply a more general description of the subject matter previously 
publicly disclosed by the inventor or a joint inventor.

DATES: Effective March 16, 2013.

FOR FURTHER INFORMATION CONTACT: Mary C. Till, Senior Legal Advisor 
(telephone (571) 272-7755; electronic mail message 
(mary.till@uspto.gov)) or Kathleen Kahler Fonda, Senior Legal Advisor 
(telephone (571) 272-7754; electronic mail message 
(kathleen.fonda@uspto.gov)), of the Office of the Deputy Commissioner 
for Patent Examination Policy.

SUPPLEMENTARY INFORMATION: The AIA \1\ was enacted into law on 
September 16, 2011. Section 3 of the AIA amends the patent laws to: (1) 
Convert the patent system from a ``first to invent'' system to a 
``first inventor to file'' system; (2) eliminate the requirement that a 
prior public use or sale activity be ``in this country'' to be a prior 
art activity; (3) treat U.S. patents and U.S. patent application 
publications as prior art as of their earliest effective filing date, 
regardless of whether the earliest effective filing date is based upon 
an application filed in the United States or in another country; and 
(4) treat commonly owned patents and patent application publications, 
or those resulting from a joint research agreement, as being by the 
same inventive entity for purposes of 35 U.S.C. 102 and 103. The 
changes in section 3 of the AIA take effect on March 16, 2013. The 
Office is providing these examination guidelines to Office personnel, 
and notifying the public of these guidelines, to assist in the 
implementation of the first inventor to file provisions of the AIA.
    These examination guidelines do not constitute substantive 
rulemaking and do not have the force and effect of law. The examination 
guidelines set out the Office's interpretation of 35 U.S.C. 102 and 103 
as amended by the AIA, and advise the public and Office personnel on 
how the changes to 35 U.S.C. 102 and 103 in the AIA impact the 
provisions of the Manual of Patent Examining Procedure (MPEP) \2\ 
pertaining to 35 U.S.C. 102 and 103. The guidelines have been developed 
as a matter of internal Office management and are not intended to 
create any right or benefit, substantive or procedural, enforceable by 
any party against the Office. Rejections will continue to be based upon 
the substantive law, and it is these rejections that are appealable. 
Failure of Office personnel to follow the guidelines is not, in itself, 
a proper basis for either an appeal or a petition.
    These examination guidelines apply the case law on pre-AIA 35 
U.S.C. 102 and 103 to interpret the provisions of

[[Page 11060]]

AIA 35 U.S.C. 102 and 103 where the AIA retains principles of pre-AIA 
35 U.S.C. 102 and 103. Office personnel may and should continue to rely 
upon pre-AIA 35 U.S.C. 102 and 103 case law and the discussion of that 
case law in MPEP chapter 2100, except where these guidelines 
specifically indicate that the AIA does not retain a principle of pre-
AIA 35 U.S.C. 102 and 103. The provisions of AIA 35 U.S.C. 102 and 103 
will be further clarified as the case law on the first inventor to file 
provisions of the AIA develops, and the Office will provide additional 
or revised guidelines as necessary.

Table of Contents

Discussion of the Public Comments

General Discussion of the Recurrent Issues Raised in the Comments 
Responses to Specific Comments

Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the 
First Inventor To File Provisions of the Leahy-Smith America Invents 
Act

I. Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA
II. Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)
    A. Effective Filing Date of the Claimed Invention
    B. Provisions Pertaining to Disclosures Before the Effective 
Filing Date of the Claimed Invention
    1. Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described 
in a Printed Publication, or in Public Use, on Sale, or Otherwise 
Available to the Public)
    a. Patented
    b. Described in a Printed Publication
    c. In Public Use
    d. On Sale
    e. Otherwise Available to the Public
    f. No Requirement of ``by Others''
    g. Admissions
    h. The Meaning of ``Disclosure''
    2. Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 
U.S.C. 102(a)(1)
    a. Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(A) to AIA 
35 U.S.C. 102(a)(1) (Grace Period Inventor or Inventor-Originated 
Disclosure Exception)
    i. Grace Period Inventor Disclosure Exception
    ii. Grace Period Inventor-Originated Disclosure Exception
    b. Prior Art Exception Under AIA 35 U.S.C. 102(b)(1)(B) to AIA 
35 U.S.C. 102(a)(1) (Inventor or Inventor-Originated Prior Public 
Disclosure Exception)
    C. Provisions Pertaining to Subject Matter in a U.S. Patent or 
Application for a U.S. Patent Effectively Filed Before the Effective 
Filing Date of the Claimed Invention
    1. Prior Art Under AIA 35 U.S.C. 102(a)(2) (U.S. Patents, U.S. 
Patent Application Publications, and World Intellectual Property 
Organization (WIPO) Publications of International Applications (WIPO 
Published Applications)
    a. WIPO Published Applications
    b. Determining When Subject Matter Was Effectively Filed Under 
AIA 35 U.S.C. 102(d)
    c. Requirement of ``Names Another Inventor''
    2. Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 
U.S.C. 102(a)(2)
    a. Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(A) to AIA 
35 U.S.C. 102(a)(2) (Inventor-Originated Disclosure Exception)
    b. Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(B) to AIA 
35 U.S.C. 102(a)(2) (Inventor or Inventor-Originated Prior Public 
Disclosure Exception)
    c. Prior Art Exception Under AIA 35 U.S.C. 102(b)(2)(C) to AIA 
35 U.S.C. 102(a)(2) (Common Ownership or Obligation of Assignment)
    D. Use of Affidavits or Declarations Under 37 CFR 1.130 To 
Overcome Prior Art Rejections
    1. Showing That the Disclosure Was Made by the Inventor or a 
Joint Inventor
    2. Showing That the Subject Matter Disclosed Had Been Previously 
Publicly Disclosed by the Inventor or a Joint Inventor
    3. Showing That the Disclosure Was Made, or That Subject Matter 
Had Been Previously Publicly Disclosed, by Another Who Obtained the 
Subject Matter Disclosed Directly or Indirectly From the Inventor or 
a Joint Inventor
    4. Enablement
    5. Who May File an Affidavit or Declaration under 37 CFR 1.130
    6. Situations in Which an Affidavit or Declaration Is Not 
Available
III. Joint Research Agreements
IV. Improper Naming of Inventors
V. AIA 35 U.S.C. 103
VI. Applicability Date Provisions and Determining Whether an 
Application Is Subject to the First Inventor To File Provisions of 
the AIA
    A. Applications Filed Before March 16, 2013
    B. Applications Filed on or After March 16, 2013
    C. Applications Subject to the AIA But Also Containing a Claimed 
Invention Having an Effective Filing Date Before March 16, 2013
    D. Applicant Statement in Transition Applications Containing a 
Claimed Invention Having an Effective Filing Date on or after March 
16, 2013

    Discussion of the Public Comments: The Office published a notice of 
proposed rulemaking and a notice of proposed examination guidelines on 
July 26, 2012, to implement the first inventor to file provisions of 
section 3 of the AIA. See Changes To Implement the First Inventor To 
File Provisions of the Leahy-Smith America Invents Act, 77 FR 43742 
(July 26, 2012) (notice of proposed rulemaking), and Examination 
Guidelines for Implementing the First Inventor To File Provisions of 
the Leahy-Smith America Invents Act, 77 FR 43759 (July 26, 2012) 
(notice of proposed examination guidelines). The Office also conducted 
a roundtable discussion with the public on September 6, 2012, to obtain 
public input from organizations and individuals on issues relating to 
the Office's proposed implementation of the first inventor to file 
provisions of the AIA. See Notice of Roundtable on the Implementation 
of the First Inventor To File Provisions of the Leahy-Smith America 
Invents Act, 77 FR 49427 (Aug. 16, 2012). The Office also conducted a 
number of roadshow presentations in September of 2012 that included a 
discussion of the first inventor to file provisions of the AIA. The 
Office received approximately seventy comments (from intellectual 
property organizations, governmental organizations, academic and 
research institutions, industry, law firms, and individuals) in 
response to these notices. The comments germane to the proposed changes 
to the rules of practice will be discussed in the final rule that 
revises the rules of practice in title 37 of the Code of Federal 
Regulations (CFR) in light of the changes in section 3 of the AIA. The 
comments germane to the proposed examination guidelines (other than 
those specific to the proposed rules) and the Office's responses to the 
comments follow:
    General Discussion of the Recurrent Issues Raised in the Comments: 
A number of comments addressed the following issues raised in the 
proposed examination guidelines.
    The Office indicated in the proposed examination guidelines that 
AIA 35 U.S.C. 102(a)(1) does not expressly state whether a sale must be 
``sufficiently'' public to preclude the grant of a patent on the 
claimed invention, and sought the benefit of public comment on the 
extent to which public availability plays a role in ``on sale'' prior 
art defined in AIA 35 U.S.C. 102(a)(1). See Examination Guidelines for 
Implementing the First Inventor To File Provisions of the Leahy-Smith 
America Invents Act, 77 FR at 43765. The Office received a number of 
comments on this question. These examination guidelines indicate that 
the Office views the ``or otherwise available to the public'' residual 
clause of the AIA's 35 U.S.C. 102(a)(1) as indicating that secret sale 
or use activity does not qualify as prior art. These examination 
guidelines also indicate that an activity (such as a sale, offer for 
sale, or other commercial activity) is secret (non-public) if, for 
example, it is among individuals having an obligation of 
confidentiality to the inventor. The specific comments on this issue 
are discussed in greater detail in

[[Page 11061]]

the Responses to Specific Comments section.
    The Office also indicated in the proposed examination guidelines 
that the subject matter in the prior disclosure being relied upon under 
AIA 35 U.S.C. 102(a) must be the same ``subject matter'' as the subject 
matter previously publicly disclosed by the inventor for the exceptions 
in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) to apply, and that the 
exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply 
even if the only differences between the subject matter in the prior 
art disclosure that is relied upon under AIA 35 U.S.C. 102(a) and the 
subject matter previously publicly disclosed by the inventor are mere 
insubstantial changes, or only trivial or obvious variations. See 
Examination Guidelines for Implementing the First Inventor To File 
Provisions of the Leahy-Smith America Invents Act, 77 FR at 43767 and 
43769. The Office also received a number of comments on this issue. 
These examination guidelines maintain the identical subject matter 
interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B). However, 
these examination guidelines also clarify that there is no requirement 
that the mode of disclosure by an inventor or joint inventor (e.g., 
publication, public use, sale activity) be the same as the mode of 
disclosure of the intervening disclosure, and also does not require 
that the disclosure by the inventor or a joint inventor be a verbatim 
or ipsissimis verbis disclosure of the intervening disclosure. In 
addition, these examination guidelines also clarify that if subject 
matter of the intervening disclosure is simply a more general 
description of the subject matter previously publicly disclosed by the 
inventor or a joint inventor, the exception in AIA 35 U.S.C. 
102(b)(1)(B) applies to such subject matter of the intervening 
disclosure. The specific comments on this issue are also discussed in 
greater detail in the Responses to Specific Comments section.
    Responses to Specific Comments:
    Comment 1: One comment suggested that Office actions clearly 
indicate whether an application is examined under the pre-AIA first to 
invent provisions or the AIA first inventor to file provisions, and 
provide the reasons the pre-AIA first to invent provisions or the AIA 
first inventor to file provisions apply to the application.
    Response: The Office plans to indicate in the Office's Patent 
Application Locating and Monitoring (PALM) system whether the Office is 
treating an application as subject to pre-AIA 35 U.S.C. 102 and 103 (a 
pre-AIA application) or AIA 35 U.S.C. 102 and 103 (an AIA application). 
Members of the public may access this information via the Patent 
Application Information Retrieval (PAIR) system. Furthermore, form 
paragraphs for use in Office actions will be developed which will 
identify whether the provisions of pre-AIA 35 U.S.C. 102 and 103 or AIA 
35 U.S.C. 102 and 103 apply if there is a rejection based upon 35 
U.S.C. 102 or 103. The Office does not plan to provide a specific 
explanation in an Office action of why the pre-AIA first to invent 
provisions or the AIA first inventor to file provisions apply to an 
application unless the matter is called into question.
    Comment 2: One comment suggested that in determining whether an 
application is an AIA application or a pre-AIA application, a procedure 
should be available to ensure that disputes concerning whether an 
application is an AIA application or a pre-AIA application are readily 
resolved.
    Response: The Office plans to have staff in each Technology Center 
who are able to assist Office personnel in determining whether the 
application is a pre-AIA application or an AIA application. If an issue 
arises during the course of examination about whether the application 
is a pre-AIA application or an AIA application, Office personnel may 
consult with these staff members. If a disagreement between the 
applicant and an examiner cannot be resolved informally and results in 
a rejection that would otherwise be inapplicable, the applicant may 
respond to the merits of the rejection with an explanation of why the 
Office's treatment of the application as a pre-AIA application or an 
AIA application is improper. Ultimately, if there is a disagreement 
between the applicant and an examiner as to whether the application is 
subject to pre-AIA 35 U.S.C. 102 and 103 or AIA 35 U.S.C. 102 and 103, 
and the propriety of a rejection turns on the resolution of this 
question, the disagreement would need to be resolved on appeal.
    Comment 3: One comment questioned whether a patent is valid if 
examined under the wrong prior art regime.
    Response: The bases for invalidity are specified in 35 U.S.C. 
282(b) and have not changed with implementation of the AIA, except for 
the removal of best mode as a grounds to cancel, invalidate, or render 
unenforceable a claim of a patent. Specifically, AIA 35 U.S.C. 282(b) 
provides the following bases for invalidity: (1) Noninfringement, 
absence of liability for infringement, or unenforceability; (2) 
invalidity of the patent or any claim in suit on any ground specified 
in part II of title 35, United States Code, as a condition for 
patentability; (3) invalidity of the patent or any claim in suit for 
failure to comply with: (A) Any requirement of 35 U.S.C. 112, except 
that the failure to disclose the best mode shall not be a basis on 
which any claim of a patent may be canceled or held invalid or 
otherwise unenforceable; or (B) any requirement of 35 U.S.C. 251; and 
(4) any other fact or act made a defense by title 35.
    Comment 4: One comment took issue with the use of the phrases 
``claimed invention'' and ``claim to a claimed invention'' in the 
proposed examination guidelines. The comment argued that AIA 35 U.S.C. 
100(j), 102, and 103 use the phrase ``claimed invention,'' and that the 
phrase ``a claim to a claimed invention'' is used only in section 3(n) 
of the AIA (the effective date provisions for section 3).
    Response: The examination guidelines have been revised to use the 
phrase ``claimed invention'' when discussing the provisions of AIA 35 
U.S.C. 100(j), 102, and 103.
    Comment 5: One comment suggested clearly differentiating between 
``claim'' in the sense of a claim to a claimed invention and ``claim'' 
in the sense of a benefit or priority claim.
    Response: With respect to a claimed invention, the examination 
guidelines use the phrase ``claimed invention'' or the phrase ``a claim 
to a claimed invention.'' With respect to a claim to priority or 
benefit under 35 U.S.C. 119, 120, 121, or 365, the examination 
guidelines use the term ``claim'' along with either benefit or priority 
in the same sentence to distinguish a benefit or priority claim from a 
claimed invention.
    Comment 6: Several comments suggested that the examination 
guidelines maintain the status quo with respect to the terms ``on 
sale'' and ``public use'' to force issues such as whether secret sales 
qualify as prior art to the courts as soon as possible. Another comment 
suggested that the Office serves a gatekeeper role and that ultimately 
the courts will provide clarity on open legal questions presented by 
the AIA. Thus, the comment recommended that the Office construe the 
statute in a manner biased against applicants so that issues concerning 
the meaning of AIA 35 U.S.C. 102 and 103 quickly and expeditiously move 
to the courts for resolution.
    Response: The Office appreciates that the courts may ultimately 
address questions concerning the meaning of AIA 35 U.S.C. 102 and 103. 
However, as a practical matter, the Office needs to provide examination 
guidelines so that

[[Page 11062]]

the public is aware of how the Office will apply AIA 35 U.S.C. 102 and 
103. The Office considers its interpretation of AIA 35 U.S.C. 102 and 
103 as set forth in these examination guidelines to be the correct 
interpretation of AIA 35 U.S.C. 102 and 103 based upon the statutory 
language of the AIA and its legislative history.
    Comment 7: A number of comments suggested that public availability 
should be a requirement for ``on sale'' activities under AIA 35 U.S.C. 
102(a)(1), and that non-public uses and non-public sales or offers for 
sale do not qualify as prior art under the AIA. The comments suggesting 
that public availability should be a requirement for ``on sale'' 
activities under AIA 35 U.S.C. 102(a)(1) gave the following reasons: 
(1) The catch-all phrase ``otherwise available to the public'' in AIA 
35 U.S.C. 102(a)(1) and case law cited in the legislative history of 
the AIA supports the view that ``available to the public'' should be 
read as informing the meaning of all of the listed categories of prior 
art in AIA 35 U.S.C. 102(a)(1); (2) the removal of derivation under 
pre-AIA 35 U.S.C. 102(f) and prior invention under pre-AIA 35 U.S.C. 
102(g) as prior art indicates that the AIA intended to do away with 
``secret'' prior art; (3) public availability is the intent of AIA, and 
for the Office to construe the statute otherwise would erode the 
availability of patent protection in the United States, and weaken the 
economy; (4) interpreting the ``on sale'' provision to require public 
availability is good public policy in that it would lower litigation 
costs by simplifying discovery, and would reduce unexpected prior art 
pitfalls for inventors who are not well-versed in the law.
    Several comments, however, suggested that the legislative history 
of the AIA is insufficient to compel the conclusion that Congress 
intended to overturn pre-AIA case law \3\ holding that an inventor's 
non-public sale before the critical date is a patent-barring ``on 
sale'' activity as to that inventor. One comment suggested that 
commercial uses that are not accessible to the public are nonetheless 
disqualifying prior art because Metallizing Engineering \4\ and other 
pre-AIA case law interpreting ``public use'' and ``on sale'' continue 
to apply under the AIA, and do not require public availability. The 
comment further suggested that commercial uses that are accessible to 
the public, even if such accessibility is not widespread, are 
disqualifying prior art to all parties. Another comment suggested that 
Metallizing Engineering and other forfeiture doctrines should be 
preserved because they serve important public policies. Another comment 
suggested that if the Office does adopt the position that Metallizing 
Engineering is overruled, and that any sale under AIA 35 U.S.C. 
102(a)(1) must be public, the Office should promulgate a rule requiring 
that any secret commercial use of the claimed invention more than one 
year prior to the effective filing date be disclosed to the Office. 
Another comment indicated that sales between joint ventures and sales 
kept secret from the ``trade'' should still be considered prior art 
under AIA 35 U.S.C. 102(a)(1).
    One comment suggested that under AIA 35 U.S.C. 102(a)(1) there are 
two general categories of prior art, with each having subcategories: 
The first category is patents and printed publications, and the second 
category is ``on sale,'' ``public use,'' or ``otherwise available to 
the public.'' The comment suggested that ``otherwise available to the 
public'' clause only modifies the second category: ``public use'' and 
``on sale.''
    Response: The starting point for construction of a statute is the 
language of the statute itself.\5\ A patent is precluded under AIA 35 
U.S.C. 102(a)(1) if ``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.'' AIA 35 U.S.C. 102(a)(1) contains the additional residual 
clause ``or otherwise available to the public.'' Residual clauses such 
as ``or otherwise'' or ``or other'' are generally viewed as modifying 
the preceding phrase or phrases.\6\ Therefore, the Office views the 
``or otherwise available to the public'' residual clause of the AIA's 
35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does 
not qualify as prior art.\7\
    The Office's interpretation of AIA 35 U.S.C. 102(a)(1) also ensures 
that the AIA grace period can extend to all of the documents and 
activities enumerated in AIA 35 U.S.C. 102(a)(1) that would otherwise 
defeat patentability. In addition, this interpretation avoids the very 
odd potential result that the applicant who had made his invention 
accessible to the public for up to a year before filing an application 
could still obtain a patent, but the inventor who merely used his 
invention in secret one day before he filed an application could not 
obtain a patent. Finally, the Office's interpretation is consistent 
with the interpretation that was clearly expressed by the bicameral 
sponsors of the AIA during the congressional deliberations on the 
measure.\8\
    With respect to suggestions concerning what information concerning 
patentability must be disclosed to the Office (secret commercial sale 
or use), 37 CFR 1.56 provides that applicants have a duty to disclose 
all information known to be material to patentability as defined in 37 
CFR 1.56, and there is no reason to treat public or non-public 
commercial sale or use or activity differently from other information.
    With respect to comments that Metallizing Engineering and other 
forfeiture doctrines should be preserved because they serve important 
public policies, the Office notes that the choice of which public 
policies to pursue through the definition of prior art is made by 
Congress, not by the Office. Also, some of the purposes ascribed to 
these doctrines in case law appear to be ill-suited to or inconsistent 
with the AIA. The problem of delayed filing of applications is unique 
to pre-AIA 35 U.S.C. 102, under which an applicant can rely on a secret 
invention date in order to establish a priority date.
    Comment 8: A comment suggested that offers for sale must be public 
in order to constitute prior art under AIA 35 U.S.C. 102(a)(1) and that 
an offer for license is not an offer for sale.
    Response: The case law distinguishing between offers for sale and 
offers for license under pre-AIA 35 U.S.C. 102(b) is equally applicable 
under AIA 35 U.S.C. 102(a)(1) as the AIA did not amend 35 U.S.C. 102 to 
change the treatment of the prior art effect of an offer for license. 
The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) has 
held that ``a `license' that merely grants rights under a patent cannot 
per se trigger the application of the on-sale bar,''\9\ and that ``[a]n 
offer to enter into a license under a patent for future sale of the 
invention covered by the patent when and if it has been developed * * * 
is not an offer to sell the patented invention that constitutes an on-
sale bar.'' \10\ If a transaction or offer with respect to an invention 
constitutes licensing within the meaning of these cases, the offer or 
transaction does not implicate the on sale bar. However, if the 
licensing of an invention makes the invention available to the public, 
patentability would be independently barred by the residual clause of 
AIA 35 U.S.C. 102, which precludes patenting of a claimed invention 
that was ``available to the public'' more than one year before the 
effective filing date of the claimed invention.
    Comment 9: One comment requested guidance on what might be required 
for showing disclosure of a previously secret process to produce an 
``on sale'' product, e.g., through reverse engineering.

[[Page 11063]]

    Response: Any rejection of a claim under AIA 35 U.S.C. 102 requires 
evidence of a prior disclosure of the claimed invention via a document 
or activity as defined in AIA 35 U.S.C. 102(a)(1), or evidence that the 
claimed invention was effectively filed prior to the effective filing 
date of the application under examination as defined in AIA 35 U.S.C. 
102(a)(2). Thus, any rejection of a claim under AIA 35 U.S.C. 102(a)(1) 
on the basis of a prior disclosure of the claimed invention via a sale 
or an offer for sale of a product produced by a previously secret 
process (e.g., a situation in which the public could learn the claimed 
process by examining the product) would need to be supported by some 
amount of documentary evidence or an affidavit or declaration. However, 
once any potentially patent-defeating sale or use is shown, evidence as 
to whether that sale or use made the invention available to the public 
should be accessible to the applicant and it is thus appropriate to 
require the applicant to come forward with that evidence.\11\
    Comment 10: Several comments suggested that a public use or sale 
need not be enabling to constitute prior art under AIA 35 U.S.C. 
102(a)(1).
    Response: The case law provides that the enablement inquiry is 
applicable to the question of whether a claimed invention is described 
in a patent, published patent application, or printed publication, but 
is not applicable to the question of whether a claimed invention is 
``in public use'' or ``on sale.'' \12\ The Office does not view the AIA 
as changing this principle of pre-AIA case law.
    Comment 11: One comment sought clarification on whether a ``motion 
for sale'' was included with the prior art category of ``on sale.''
    Response: Insofar as a ``motion for sale'' is equal to an ``offer 
for sale,'' the Office understands that the pre-AIA case law on 
``offers for sale'' would equally apply under the AIA. The on sale 
provision of pre-AIA 35 U.S.C. 102(b) is triggered if the invention is 
both: (1) The subject of a commercial offer for sale; and (2) ready for 
patenting.\13\ Traditional contract law principles are applied when 
determining whether a commercial offer for sale has occurred.\14\
    Comment 12: One comment questioned whether the experimental use 
exception to public use would continue under the AIA first inventor to 
file provisions.
    Response: Under pre-AIA case law, the experimental use exception 
negates a use that would otherwise defeat patentability. Neither the 
AIA nor its legislative history expressly addresses whether the 
experimental use exception applies to a public use under AIA 35 U.S.C. 
102(a)(1), or to a use that makes the invention available to the public 
under the residual clause of AIA 35 U.S.C. 102(a)(1). Because this 
doctrine arises infrequently before the Office, and is case-specific 
when it does arise, the Office will approach this issue when it arises 
on the facts presented.
    Comment 13: One comment sought elaboration on what constitutes 
``publicly available'' within the context of 35 U.S.C. 102(a)(1). The 
comment sought input on the transitory nature of on-line materials, 
economic factors regarding accessibility to public materials, 
restrictions on access, and password or user agreement access to on-
line materials.
    Response: MPEP Sec.  2128 discusses whether material that is posted 
on the Internet or that is challenging to access is sufficiently 
accessible to the public to be considered a ``printed publication'' 
under pre-AIA 35 U.S.C. 102. Since the ``otherwise available to the 
public'' clause of AIA 35 U.S.C. 102(a)(1) encompasses these materials, 
the case law on whether material is available and accessible as 
discussed in MPEP Sec.  2128 will guide the Office and the public in 
making determinations as to whether any particular disclosure is 
sufficiently publicly available under the ``otherwise available to the 
public'' clause of AIA 35 U.S.C. 102(a)(1). The Federal Circuit 
recently reiterated that the ultimate question is whether the material 
was ``available to the extent that persons interested and ordinarily 
skilled in the subject matter or art[,] exercising reasonable 
diligence, can locate it.'' \15\ The determination of whether material 
was publicly available does not turn on the logistical or economic 
issues a person would face in gaining access to the material. For 
example, material whose distribution was restricted to persons involved 
in a specific project was considered not publicly accessible,\16\ but 
material housed in a library that provides access to the public was 
considered publicly accessible even though a person would need to 
engage in considerable travel to actually gain access to the 
material.\17\
    Comment 14: One comment questioned whether, in order for a WIPO 
publication to be considered prior art under AIA 35 U.S.C. 102(a)(2), 
the PCT application must enter the national stage in the United States 
(analogous to the requirement for a WIPO publication to enter the 
national stage in Japan in order to be considered prior art as of its 
priority date in Japan). The comment also suggested that if a WIPO 
publication will be prior art as of its priority date under AIA 35 
U.S.C. 102(a)(2) when published in any language, the Office should 
provide a translation to the applicant against whose claims the WIPO 
publication has been cited.
    Response: Under AIA 35 U.S.C. 102(a)(2), a person shall be entitled 
to a patent unless the claimed invention was described in an 
application for patent that was published or ``deemed published'' 
pursuant to 35 U.S.C. 122(b). In accordance with 35 U.S.C. 374, the 
WIPO publication of a PCT international application designating the 
United States is deemed a publication under 35 U.S.C. 122(b). Thus, the 
Office cannot set forth an interpretation that a WIPO publication can 
be prior art under AIA 35 U.S.C. 102(a)(2) only if the PCT application 
enters the national stage in the United States because that 
interpretation would conflict with AIA 35 U.S.C. 102(a)(2) and 35 
U.S.C. 374. Patent documents and non-patent-literature are prior art 
under pre-AIA 35 U.S.C. 102(a) and 102(b) regardless of the language of 
the publication. Although the Office does not currently provide 
translations as a matter of course for non-English-language patent 
documents and non-patent-literature, translation services are available 
to Office personnel for use on a case-by-case basis. See MPEP Sec.  
901.05(d). If an Office action relies upon a document in a language 
other than English, a translation (machine or human) will be made of 
record if necessary for the record to be clear as to the precise facts 
relied upon in support of the rejection. See MPEP Sec.  706.02 (section 
II).
    Comment 15: One comment suggested that the Office adopt a process 
to avoid granting a patent on a later-filed application claiming 
subject matter disclosed in an earlier-filed application by another.
    Response: The Office is in the process of developing a Patents End-
to-End (PE2E) patent application processing system that will permit 
Office personnel to text search pending applications that have not yet 
been published, which will help avoid granting a patent on a later-
filed application claiming subject matter disclosed in an earlier-filed 
application by another. However, in the event that a patent is issued 
on a later-filed application claiming subject matter disclosed in an 
earlier-filed application, the applicant in the earlier-filed 
application may request early publication of the application under 37 
CFR 1.219 and cite the resulting patent application publication in the 
file of the

[[Page 11064]]

later-filed application under 35 U.S.C. 301 and 37 CFR 1.501.
    Comment 16: One comment requested clarification as to whether the 
Office will continue to apply the Hilmer \18\ doctrine to pre-AIA 
applications.
    Response: Under the ``Hilmer doctrine,'' the foreign priority date 
of a U.S. patent (or U.S. patent application publication) may not be 
relied upon in determining the date that the U.S. patent (or U.S. 
patent application publication) is effective as prior art under pre-AIA 
35 U.S.C. 102(e). AIA 35 U.S.C. 102(d) eliminates the Hilmer doctrine. 
The ``Hilmer doctrine'' as discussed in MPEP Sec.  2136.03 remains 
applicable to pre-AIA applications because AIA 35 U.S.C. 102(d) does 
not apply to pre-AIA applications.
    Comment 17: One comment expressed concern that Office personnel 
would rely on a foreign priority date as the applicable prior art date 
for rejecting a claim in an application under examination solely 
because the prior art patent document reference was ``entitled to claim 
priority to, or benefit of'' a prior-filed application. The comment 
suggested use of machine translations to ensure proper reliance on the 
earlier filing date.
    Response: The issue is similar to the current situation in which a 
U.S. patent or U.S. patent application publication claims the benefit 
under 35 U.S.C. 119(e) of a provisional application, except that 
foreign priority applications are originally filed in a foreign patent 
office and may be in a language other than English. The Office is 
revising 37 CFR 1.55 in a separate action (RIN 0651-AC77) to ensure 
that a copy of a foreign priority application (a certified copy from 
the foreign patent office, an interim copy from the applicant, or a 
copy via a priority document exchange program) is available for 
situations in which a U.S. patent or U.S. patent application 
publication has a prior art effect as of the filing date of a foreign 
priority application. As discussed previously, if an Office action 
relies upon a document in a language other than English, a translation 
(machine or human) will be made of record if necessary for the record 
to be clear as to the precise facts relied upon in support of the 
rejection. See MPEP Sec.  706.02 (section II).
    Comment 18: One comment suggested that when applying prior art as 
of its earliest effective filing date to a claim in an application 
under 35 U.S.C. 102(a)(2), the applicant should be able to rebut the 
rejection by establishing that the subject matter relied upon for the 
rejection is not supported in the earlier filed application from which 
a benefit or priority is sought and hence may not be prior art under 
AIA 35 U.S.C. 102(a)(1) or 102(a)(2).
    Response: AIA 35 U.S.C. 102(d) provides that for purposes of 
determining whether a patent or application for patent is prior art to 
a claimed invention under AIA 35 U.S.C. 102(a)(2), the patent or 
application shall be considered to have been effectively filed, with 
respect to any subject matter described in the patent or application, 
as of the earlier of the actual filing date of the patent or the 
application for patent, or the filing date of the earliest application 
that describes the subject matter and for which the patent or 
application for patent is entitled to claim a benefit or right of 
priority under 35 U.S.C. 119, 120, 121, or 365. Thus, if an applicant 
believes the subject matter relied on in a rejection under AIA 35 
U.S.C. 102(a)(2) is not supported by a prior application for which 
benefit or priority is claimed under 35 U.S.C. 119, 120, 121, or 365, 
it is appropriate for the applicant to argue that the application does 
not contain support for the subject matter and that the patent or 
application is available as prior art under AIA 35 U.S.C. 102(a)(2) 
only as of the benefit or priority date of the earliest application 
that does describe the subject matter. This is similar to current 
practice under pre-AIA 35 U.S.C. 102(e).\19\
    Comment 19: One comment suggested that the level of enablement for 
a prior art reference to be applicable to the claims of an application 
as described by the Office in accordance with Donohue \20\ fails to 
consider a line of cases that Donohue recognizes.
    Response: The Office cited to Donohue simply to indicate the level 
of enablement required for a prior art reference to anticipate a claim 
in an application. The Office does not view the AIA as changing the 
pre-AIA enablement requirement for prior art references.
    Comment 20: One comment indicated that the examination guidelines 
were overly broad with respect to admissions as prior art. Another 
comment urged that the treatment of admissions, especially to 
transition applications (applications filed on or after March 16, 2013, 
that claim priority to or the benefit of the filing date of an earlier 
application that was filed prior to March 16, 2013), be treated on a 
case-by-case basis.
    Response: The Office included a discussion of admissions as prior 
art in the examination guidelines simply to indicate that the Office 
does not view the AIA as changing the status quo with respect to the 
use of admissions as prior art. The Office's position on the use of 
admissions as prior art is discussed at MPEP Sec.  2129.
    Comment 21: One comment questioned how the time of day of a sale in 
a foreign jurisdiction would be determined for purposes of prior art.
    Response: As with current practice under pre-AIA 35 U.S.C. 102, the 
Office does not take time of day into consideration in making 
determinations of activities or documents that constitute prior art 
under AIA 35 U.S.C. 102(a)(1).
    Comment 22: One comment supported the Office's interpretation of 
the evidence needed to establish reliance on the AIA 35 U.S.C. 
102(b)(1)(A) and 102(b)(2)(A) provisions relating to showing that the 
subject matter of a disclosure was obtained directly or indirectly from 
an inventor or a joint inventor.
    Response: The Office has adopted 37 CFR 1.130(a) as a mechanism for 
an applicant to submit information to establish the facts and evidence 
when necessary to rely upon the exception provisions in AIA 35 U.S.C. 
102(b)(1)(A) or 102(b)(2)(A). The showing should provide facts, not 
conclusions, to show that the disclosure, although not made directly by 
the inventor or joint inventor, originated with the inventor or joint 
inventor.
    Comment 23: One comment suggested that when there are any 
discrepancies in inventorship on an application as compared to 
authorship of a prior art publication that is potentially excepted as 
prior art under AIA 35 U.S.C. 102(b)(1)(A), an applicant should be 
required to present a showing that the publication is not available as 
prior art even when it is apparent that the prior art disclosure is a 
grace period disclosure from an inventor. Several comments indicated 
that a grace period publication should be treated under the exception 
in AIA 35 U.S.C. 102(b)(1)(A) when there is any overlap between 
authorship and inventorship.
    Response: AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period 
disclosure ``shall not be prior art'' to a claimed invention if ``the 
disclosure was made by the inventor or a joint inventor or by another 
who obtained the subject matter disclosed directly or indirectly from 
the inventor or a joint inventor.'' When the Office can readily 
ascertain by examination of inventorship and authorship that a certain 
disclosure falls under AIA 35 U.S.C. 102(b)(1)(A), the Office will not 
apply such a document in a prior art rejection. Alternatively, when 
there are additional named individuals on a prior art publication as 
compared to the inventors named on a

[[Page 11065]]

patent application, it is incumbent upon the applicant to provide a 
satisfactory showing that the additional named authors did not 
contribute to the claimed subject matter.\21\
    Comment 24: One comment requested clarification on what constitutes 
an ``unequivocal'' statement from the inventor or a joint inventor that 
he/she invented the subject matter of a publication such that the 
publication is not prior art in accordance with AIA 35 U.S.C. 
102(b)(1)(A), and requested clarification on what constitutes a 
``reasonable explanation'' to explain the presence of additional 
authors on the publication. Another comment suggested that the 
examination guidelines should define as precisely as possible what is 
needed to establish that a disclosure originated with an inventor, and 
questioned the intent of the statement in the examination guidelines 
that an unequivocal assertion may be accepted in the absence of 
evidence to the contrary. The comment also suggested that the 
examination guidelines should make clear whether or not evidence that a 
disclosure originated from the inventor will be rejected if it is not 
initially presented. Several comments requested examples of acceptable 
affidavits or declarations under 37 CFR 1.130.
    Response: The evidence required to show that a disclosure 
originated with the inventor or a joint inventor (e.g., whether an 
``unequivocal'' statement from the inventor or a joint inventor is 
sufficient, or an explanation is a reasonable explanation of the 
presence of additional authors on the publication) is necessarily a 
case-by-case determination. Given the fact-specific nature of 
affidavits and declarations, the Office cannot provide a ``template'' 
of an acceptable affidavit or declaration under 37 CFR 1.130. However, 
the case law on pre-AIA 35 U.S.C. 102(a) and (e) contains examples of 
affidavits or declarations that were found acceptable to show that a 
disclosure originated with the inventor.\22\ There is no requirement 
that such evidence be present on filing, although early presentation 
will streamline prosecution.
    Comment 25: One comment stated that to address situations where 
there are overlapping inventors between an application under 
examination and a prior art reference under AIA 35 U.S.C. 102(a)(2), a 
declaration to attribute certain inventive activities from the prior 
art to the named inventors should be a viable mechanism to overcome a 
rejection on this basis.
    Response: Under pre-AIA 35 U.S.C. 102, attribution of inventive 
activities to disqualify prior art references was permitted pursuant to 
37 CFR 1.132, as discussed in MPEP Sec. Sec.  716.10 and 2131.01. The 
Office is promulgating a new 37 CFR 1.130 to provide for the 
disqualification of a disclosure as prior art on the basis of 
attribution (37 CFR 1.130(a)) or a prior public disclosure of the 
inventor's or a joint inventor's own work (37 CFR 1.130(b)) under AIA 
35 U.S.C. 102(b). An applicant may establish attribution of a cited 
prior art reference to the inventor or joint inventor via an affidavit 
or declaration under 37 CFR 1.130(a).
    Comment 26: One comment questioned whether a publication of a 
foreign patent application during the year preceding the filing of a 
patent application could qualify as AIA 35 U.S.C. 102(a)(1) prior art 
that is potentially excepted under AIA 35 U.S.C. 102(b)(1)(A) if it is 
``a disclosure [during the grace period] by another who obtained the 
subject matter directly or indirectly from the inventor or joint 
inventor.''
    Response: An applicant may establish that the foreign patent 
application publication was by another who obtained subject matter 
disclosed in the foreign patent application publication directly or 
indirectly from the inventor or joint inventor via an affidavit or 
declaration under 37 CFR 1.130(a).
    Comment 27: One comment questioned whether an assignee, to whom the 
inventors are obligated to assign their rights, who was selling a 
product within the scope of the inventor's claims during the grace 
period, would be able to rely on the AIA 35 U.S.C. 102(b)(1)(A) 
provisions that the ``disclosure was made by another who obtained the 
subject matter directly or indirectly from the inventor or joint 
inventor.''
    Response: A sale by an assignee, to whom the inventors are 
obligated to assign their rights, may qualify as a sale ``by another 
who obtained the subject matter disclosed directly or indirectly from 
the inventor or a joint inventor'' within the meaning of AIA 35 U.S.C. 
102(b)(1)(A).
    Comment 28: One comment indicated that the Office's guidelines 
regarding the reliance on the AIA 35 U.S.C. 102(b)(1)(A) or 
102(b)(2)(A) exception appear to apply to any inventor or inventor-
originated disclosure which is prior art under AIA 35 U.S.C. 102(a)(1) 
or 102(a)(2) regardless of the relationship of the disclosed subject 
matter and the claimed invention.
    Response: Strictly speaking, neither AIA 35 U.S.C. 102(b)(1)(A) nor 
102(b)(2)(A) requires a relationship between ``the subject matter 
disclosed'' and the claimed invention. As a practical matter, however, 
if the subject matter disclosed (e.g., contained in a publication that 
would qualify as prior art under 35 U.S.C. 102(a)) is not relevant to 
the claimed invention, there will be no occasion to inquire into 
whether the disclosure could be disqualified as prior art under 35 
U.S.C. 102(b)(1)(A) or 102(b)(2)(A).
    Comment 29: One comment interpreted the provisions of AIA 35 U.S.C. 
102(b)(2)(A) as requiring not only that the subject matter disclosed be 
``obtained directly or indirectly from the inventor or a joint 
inventor,'' but also that the disclosure upon which the rejection is 
based in the application under examination be owned by the same entity.
    Response: This interpretation appears to combine the provision of 
AIA 35 U.S.C. 102(b)(2)(A) with the common ownership disqualification 
provision of AIA 35 U.S.C. 102(b)(2)(C). Each of subparagraph (A) and 
subparagraph (C) of AIA 35 U.S.C. 102(b)(2) stands alone and forms an 
independent basis for disqualifying references that otherwise qualify 
as prior art under 35 U.S.C. 102(a)(2).
    Comment 30: A number of comments, including comments from a number 
of universities and university groups, opposed the Office's 
interpretation of the subparagraph (B) provision of AIA 35 U.S.C. 
102(b)(1) or 102(b)(2) (the subparagraph (B) provision), requiring that 
the subject matter previously publicly disclosed by the inventor be 
identical to the subject matter of the disclosure to be disqualified 
under the subparagraph (B) provision (identical subject matter 
approach). The comments opposing the Office's interpretation of the 
subparagraph (B) provision stated that: (1) The Office's identical 
subject matter approach is not supported by a reasonable reading of the 
statute and is contrary to the intent of the AIA; (2) the Office's 
identical subject matter approach violates the superfluity canon of 
statutory construction as it would render the provision worthless; (3) 
the Office's identical subject matter approach is disadvantageous to 
inventors who must seek venture capital, and to academics who must 
publish their results; (4) the Office's identical subject matter 
approach is unworkable due to the ease with which the Internet can be 
fraudulently used to publish trivial variations of an inventor's 
disclosed work, thereby depriving him or her of patent protection; and 
(5) the Office's identical subject matter approach is unworkable 
because even those acting in good faith, such as by publishing an 
editorial

[[Page 11066]]

commenting on a disclosed invention, may create prior art which would 
deprive an inventor of a patent on his or her invention. Several 
comments suggested that the Office's interpretation of the subparagraph 
(B) provision is an unwarranted extrapolation of the statute that 
constitutes substantive rulemaking, fails to maintain the bedrock of 
separation of powers, is contrary to the intent and function of the 
grace period, and exceeds the intended scope for interpretive rules.
    The Office of Advocacy of the Small Business Administration (SBA-
Advocacy) also indicated that it has heard from many patent 
stakeholders (within the university-based and non-profit research 
community, as well as the startup inventor community) that they have 
concerns with the Office's interpretation of the subparagraph (B) 
provision (discussed previously) and suggested there are alternative 
legal interpretations of the subparagraph (B) provision that would 
address these concerns. SBA-Advocacy encouraged the Office to examine 
the merits of alternative interpretations of the subparagraph (B) 
provision.
    Several comments, by contrast, suggested that the proposal to 
require identity of disclosure in order for an inventor to invoke the 
subparagraph (B) provision is appropriate and entirely consistent with 
the intent of the AIA. According to these comments, the intent of the 
AIA was to provide a grace period with regard to inventor-originated 
disclosures, but not with regard to independently created third-party 
disclosures (except in the unlikely event of identity of disclosure). 
The comments stated that to provide a grace period for non-identical 
subject matter would thwart the intent to create a first inventor to 
file system, as well as the intent to provide a system that moves 
toward harmonizing U.S. patent law with the laws of other countries. 
Several comments suggested that the simplicity of the Office's 
interpretation of the subparagraph (B) provision, i.e., not permitting 
variations between the shielding disclosure and the cited prior art 
disclosure in order for the exception to apply, was appropriate and 
would reduce litigation costs.
    Response: As discussed previously, the starting point for 
construction of a statute is the language of the statute itself.\23\ 
Subparagraph (B) of each of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) 
provides that certain disclosures shall not be prior art if ``the 
subject matter disclosed had, before such disclosure [or before such 
subject matter was effectively filed under 102(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.'' Subparagraph (B) of each of AIA 35 U.S.C. 
102(b)(1) and 102(b)(2) uses a single instance of the phrase ``the 
subject matter'' to describe both the content of the prior art 
disclosure and the content of the inventor's previous public 
disclosure. If ``the subject matter'' disclosed in the prior art varies 
from ``the subject matter'' that had been previously 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), there are two discrete subject matters. The single 
instance of the phrase ``the subject matter'' in subparagraph (B) of 
each of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) cannot reasonably be read 
as concurrently describing two discrete subject matters. Therefore, the 
single instance of the phrase ``the subject matter'' in subparagraph 
(B) of each of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) cannot reasonably 
be interpreted as including variations within its ambit.
    Next, other provisions in title 35 (pre-AIA and as amended by the 
AIA), help to inform the meaning of the phrase ``the subject matter'' 
in subparagraph (B) as like words in the same statute are presumed to 
carry the same meaning.\24\ AIA 35 U.S.C. 100 defines inventor and 
joint inventor or coinventor with respect to the individual or 
individuals ``who invented or discovered the subject matter of the 
invention,'' and defines ``claimed invention'' as ``the subject matter 
defined by a claim in a patent or an application for a patent.'' \25\ 
35 U.S.C. 112(b) provides that ``[t]he specification shall conclude 
with one or more claims particularly pointing out and distinctly 
claiming the subject matter which the inventor or a joint inventor 
regards as the invention.'' \26\ The phrase ``the subject matter'' has 
never been read to permit the inclusion of variations within its ambit 
in these provisions, or in any other provision in title 35. In 
addition, pre-AIA title 35 and the AIA contain a modifier such as 
``substantially'' where variation between subject matter is 
contemplated (e.g., pre-AIA 35 U.S.C. 135(b)(1),\27\ AIA 35 U.S.C. 
135(a),\28\ 35 U.S.C. 154(d)(2),\29\ and 35 U.S.C. 252\30\). The 
absence of the ``substantially'' modifier or similar terminology in 
subparagraph (B) of each of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) 
further supports the conclusion that this provision does not 
contemplate variation in subject matter.
    Additionally, the Office's interpretation of this provision is 
consistent with the canon of statutory construction requiring effect to 
be given to every clause and every word of a statute where 
possible.\31\ The Office's interpretation of the subparagraph provision 
(B) gives effect to each clause and each word in the subparagraph (B) 
provision. To reach the alternative interpretations proffered by the 
comments, the Office would need to ignore or re-write the words of the 
subparagraph (B) provision. Specifically, the Office would be required 
to re-draft the subparagraph (B) provision to provide that a disclosure 
shall not be prior art if ``substantially the same subject matter 
disclosed had, before such disclosure, or before such subject matter 
was effectively filed, 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'' to 
embrace variations of the subject matter, and would be required to re-
draft the subparagraph (B) provision to provide that a disclosure shall 
not be prior art if, ``the claimed invention had, before such 
disclosure, or before such subject matter was effectively filed, 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,'' to embrace ``any disclosure'' or any 
subject matter disclosed after a disclosure of the claimed invention. 
The Office, however, has no authority to enforce concepts that simply 
do not square with the express language of subparagraph (B) of each of 
35 U.S.C. 102(b)(1) and 102(b)(2).\32\
    Further, the legislative history of subparagraph (B) of AIA 35 
U.S.C. 102(b)(1) and 102(b)(2) is inconclusive with respect to what is 
embraced by the phrase ``the subject matter.'' Committee Report 112-98 
indicates that 35 U.S.C. 102(b) ``preserves the grace period, ensuring 
that during the year prior to filing, an invention will not be rendered 
unpatentable based on any of the inventor's own disclosures, or any 
disclosure made by any party after the inventor has disclosed his 
invention to the public.'' \33\ The legislative history of subparagraph 
(B) of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) does not definitively 
specify whether ``any disclosure'' means ``any disclosure'' of the same 
subject matter, ``any disclosure'' of the same or substantially the 
same subject matter, ``any disclosure'' of the subject matter of the 
claimed invention, or ``any disclosure'' of any subject matter.\34\
    The Office has considered the alternative interpretations of the 
subparagraph (B) provision submitted in the public comment. The Office 
has

[[Page 11067]]

clarified, in response to the public and SBA-Advocacy comment, that: 
(1) There is no requirement that the mode of disclosure by an inventor 
or joint inventor be the same as the mode of disclosure of an 
intervening disclosure (e.g., inventor discloses his invention at a 
trade show and the intervening disclosure is in a peer-reviewed 
journal); (2) there is no requirement that the disclosure by the 
inventor or a joint inventor be a verbatim or ipsissimis verbis 
disclosure of an intervening disclosure in order for the exception 
based on a previous public disclosure of subject matter by the inventor 
or a joint inventor to apply; and (3) the exception applies to subject 
matter of the intervening disclosure that is simply a more general 
description of the subject matter previously publicly disclosed by the 
inventor or a joint inventor. The more expansive alternative 
interpretations of the subparagraph (B) provision, however, are not 
supported by the language of the subparagraph (B) provision for the 
reasons stated in the responses to this comment and the comments that 
follow.
    Comment 31: One comment indicated a need for clarification on what 
constitutes an insubstantial or trivial difference (and what 
constitutes ``same subject matter'') and suggested that mere wording 
changes should not be interpreted too strictly. Several comments 
suggested that slight variations or differences in wording should be 
permitted when relying on the subparagraph (B) provision of AIA 35 
U.S.C. 102(b)(1) and 102(b)(2). Another comment similarly suggested 
that the subparagraph (B) provision should, to the extent the subject 
matter in the reference is within the scope of the inventor's public 
disclosure, shield the inventor from citation of the intervening prior 
art.
    Response: The Office understands that not all inventors refer to 
the same inventive concepts using the exact same language. The Office 
is clarifying in these examination guidelines that the subparagraph (B) 
provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) do not require that 
the mode of disclosure by an inventor or joint inventor (e.g., 
publication, public use, sale activity) be the same as the mode of 
disclosure of the intervening disclosure, and also does not require 
that the disclosure by the inventor or a joint inventor be a verbatim 
or ipsissimis verbis disclosure of the intervening disclosure. In 
addition, the Office is also clarifying that if subject matter of the 
intervening disclosure is simply a more general description of the 
subject matter previously publicly disclosed by the inventor or a joint 
inventor, the exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such 
subject matter of the intervening disclosure.
    Comment 32: Several comments suggested using approaches to the 
subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) 
akin to that of 37 CFR 1.131, in that an intervening disclosure would 
be disqualified as prior art if the inventor's prior disclosure 
disclosed either the entire invention as claimed, or as much of the 
invention as was disclosed in the intervening disclosure. Several 
comments suggested that the subparagraph (B) provisions should apply if 
the inventor's disclosure discloses at least as much of the claimed 
invention as is disclosed in the intervening disclosure. Another 
comment suggested that an acceptable standard for determining whether 
claimed subject matter was described for the purpose of the 
subparagraph (B) provisions is whether one of ordinary skill in the art 
would have considered the claimed subject matter to have been described 
in the disclosure.
    Response: Pre-AIA 35 U.S.C. 102(a) provided that a person was not 
entitled to a patent if ``the invention was known or used by others in 
this country, or patented or described in a printed publication in this 
or a foreign country, before the invention thereof by the applicant for 
patent'' (emphasis added). Thus, under pre-AIA 35 U.S.C. 102(a), an 
applicant could disqualify (or antedate) a grace period disclosure by 
showing that the disclosure was the inventor's own work or that the 
disclosure was after the applicant's date of invention. AIA 35 U.S.C. 
102(b) retains the pre-AIA principle that an applicant may disqualify a 
grace period disclosure by showing that the disclosure was the 
inventor's or a joint inventor's own work (AIA 35 U.S.C. 102(b)(1)(A)), 
but does not retain the principle that an inventor may antedate a grace 
period disclosure by showing that the disclosure was after the 
applicant's date of invention. Since the AIA does not retain the 
principle of pre-AIA 35 U.S.C. 102(a) that a grace period disclosure 
that does not represent the inventor's own work may be antedated by 
showing prior invention by the inventor, the pre-AIA 35 U.S.C. 102(a) 
case law and concepts pertaining to the antedating of a grace period 
disclosure that does not represent the inventor's own work by showing 
prior invention by the inventor is not instructive with respect to the 
applicability of the subparagraph (B) provisions of AIA 35 U.S.C. 
102(b)(1) and 102(b)(2). Instead, under the subparagraph (B) provisions 
of AIA 35 U.S.C. 102(b)(1) and 102(b)(2), the question is whether the 
subject matter disclosed had, before such disclosure was made or before 
such subject matter was effectively filed, 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.\35\
    The subparagraph (B) provisions do not provide for an analysis of 
what subject matter is claimed in order to determine when the 
subparagraph (B) provisions apply. An intervening grace period 
disclosure would be disqualified under the subparagraph (B) provisions 
if the inventor's prior public disclosure disclosed as much of the 
subject matter of the invention as was disclosed in the intervening 
disclosure. This, however, is a comparison of the subject matter of the 
inventor's prior public disclosure and the subject matter of the 
intervening disclosure as provided for in the subparagraph (B) 
provisions, and is not a comparison of the subject matter of inventor's 
prior public disclosure with the claimed invention. Additionally, any 
subject matter disclosed by the intervening disclosure not also 
disclosed in the inventor's prior public disclosure would not be 
disqualified under the subparagraph (B) provisions.
    Comment 33: One comment stated that the identical disclosure 
approach to the subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) 
and 102(b)(2) is not consistent with treating the inventor's disclosure 
as if it were a patent application. The comment stated that a broad 
disclosure can support broad claims, and that later disclosure of a 
species within the claimed genus does not defeat patentability of the 
genus. Another comment suggested that the Office treat inventor 
disclosures like provisional applications under the subparagraph (B) 
provisions, such that any claimed feature that had been disclosed by 
the inventor is insulated from attack by an intervening disclosure.
    Response: The subparagraph (B) provisions of AIA 35 U.S.C. 
102(b)(1) and 102(b)(2) do not provide for an inventor's public 
disclosure prior to filing a patent application to be treated as if it 
were the filing of a patent application.
    Comment 34: One comment suggested that there is ``asymmetry'' 
between patent-defeating derivation proceedings under AIA 35 U.S.C. 135 
and the subparagraph (B) provisions of AIA 35 U.S.C. 102(b)(1) and 
102(b)(2), and indicated that the Federal courts have set forth rules 
to achieve symmetry in cases addressing pre-AIA 35 U.S.C.

[[Page 11068]]

102(g) and 37 CFR 1.131 practice. One comment suggested that the term 
``subject matter'' in the subparagraph (B) provisions should be 
interpreted as it is when deciding to institute an interference 
proceeding, and that the phrase need not require identical disclosures 
in order for the exception to apply.
    Response: There is ``asymmetry'' between patent defeating 
derivation proceedings under AIA 35 U.S.C. 135 and the subparagraph (B) 
provisions of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) due to the express 
statutory language differences between these provisions. AIA 35 U.S.C. 
135 applies to a claim to an invention that is the ``same or 
substantially the same'' as a claim of an earlier application. As 
discussed previously, the subparagraph (B) provisions do not modify 
``the subject matter'' with the phrase ``substantially the same.'' 
Given this statutory language difference, it would not be appropriate 
to interpret subparagraph (B) of AIA 35 U.S.C. 102(b)(1) and 102(b)(2) 
to provide symmetry with AIA 35 U.S.C. 135.
    Comment 35: One comment requested clarification regarding what 
constitutes a public disclosure as compared to a disclosure within the 
meaning of the description of the prior art exception under AIA 35 
U.S.C. 102(b)(1)(B). Another comment indicated that it is unclear what 
would constitute an earlier ``public disclosure'' by the inventor in 
order to rely on the AIA 35 U.S.C. 102(b)(1)(B) exception to shield the 
applicant from prior art that is available before the effective filing 
date but after the inventor's own public disclosure. The comment 
specifically questioned if a public oral disclosure would be such a 
public disclosure.
    Response: In order for an inventor to be able to rely on an earlier 
disclosure under AIA 35 U.S.C. 102(b)(1)(B) (including an earlier oral 
disclosure), some evidence is necessary to show that the subject matter 
relied upon for the rejection had been previously publicly disclosed by 
the inventor. Whether a ``disclosure'' is a ``public disclosure'' such 
that it constitutes prior art under AIA 35 U.S.C. 102(a)(1) is a case-
by-case analysis which is governed by the case law discussed in MPEP 
Sec. Sec.  2126 through 2128.
    Comment 36: One comment suggested that there is no justification 
for requiring that an inventor's prior public disclosure to another be 
enabling of anything.
    Response: An affidavit or declaration under 37 CFR 1.130(a) or (b) 
need not demonstrate that the disclosure by the inventor, a joint 
inventor, or another who obtained the subject matter disclosed directly 
or indirectly from an inventor or a joint inventor was an ``enabling'' 
disclosure of the subject matter within the meaning of 35 U.S.C. 
112(a). The question under AIA 35 U.S.C. 102(b) is whether: (1) The 
disclosure in question was made by the inventor or a joint inventor, or 
the subject matter disclosed was obtained directly or indirectly from 
the inventor or a joint inventor (37 CFR 1.130(a)); \36\ or (2) the 
subject matter disclosed had, before such disclosure was made or before 
such subject matter was effectively filed, 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 (37 CFR 1.130(b)).\37\
    Comment 37: One comment requested clarification on how to show 
communication so as to enable one of ordinary skill in the art to make 
and use the invention when relying on the grace period inventor-
originated disclosure exception (AIA 35 U.S.C. 102(b)(1)(A)) to 
disqualify prior art.
    Response: The Office has revised the guidance on the grace period 
inventor-originated disclosure exception to indicate that what is 
required, within one year prior to the effective filing date, is 
communication of the subject matter by the inventor or a joint inventor 
prior to its disclosure by a non-inventor. The level of communication 
in the inventor's or joint inventor's disclosure need not be sufficient 
to teach one of ordinary skill how to make and use so as to comply with 
35 U.S.C. 112(a).
    Comment 38: One comment questioned what action an applicant could 
take when the applicant suspects that the prior art is derived from the 
applicant's own work, but the deriver has not submitted an application. 
The comment stated that the information necessary to show derivation is 
the state of mind of the deriver, and that the applicant does not 
always have access to the information to support a showing of 
derivation.
    Response: Unless the other party (the suspected deriver) has 
submitted his or her own application, the issue for the applicant is 
disqualifying the prior art under AIA 35 U.S.C. 102(b) rather than 
showing derivation under AIA 35 U.S.C. 135. If the prior art disclosure 
was made one year or less before the effective filing date of the 
claimed invention, the applicant may submit an affidavit or declaration 
under 37 CFR 1.130 to show that the disclosure was by a party who 
obtained the subject matter disclosed directly or indirectly from the 
inventor or a joint inventor and thus disqualify the prior art under 35 
U.S.C. 102(b)(1)(A). As discussed in these examination guidelines, this 
does not require a showing of derivation under AIA 35 U.S.C. 135.
    Comment 39: One comment suggested that prior art that is 
disqualified under AIA 35 U.S.C. 102(b)(2)(C) cannot be properly used 
to show the state of the art for purposes of, e.g., a lack of 
enablement rejection. The comment stated that the Office's position is 
in conflict with the MPEP.
    Response: MPEP Sec.  2124 indicates that documents published after 
the effective filing date may be used to show factual evidence 
regarding the factors needed to establish that undue experimentation 
would have been needed to make and use the invention. A document under 
AIA 35 U.S.C. 102(a)(2) by its very nature meets this criteria, i.e., 
it is a publication after the critical date which can be used as 
evidence to support a lack of enablement rejection by providing facts 
relevant to the weighing of the Wands factors \38\ to support a 35 
U.S.C. 112(a) lack of enablement rejection.
    Comment 40: One comment suggested that the AIA 35 U.S.C. 
102(b)(2)(C) provisions apply to prior art that qualifies under both 
AIA 35 U.S.C. 102(a)(1) and 102(a)(2) because there is no language in 
the statute which says that the AIA 35 U.S.C. 102(b)(2)(C) provision 
``only'' applies to prior art under AIA 35 U.S.C. 102(a)(2) art.
    Response: The introductory language of AIA 35 U.S.C. 102(b)(2) 
provides that: ``[a] disclosure shall not be prior art to a claimed 
invention under [AIA 35 U.S.C. 102(a)(2)] if * * * .'' Thus, by the 
terms of AIA 35 U.S.C. 102(b)(2), the provisions of subparagraphs (A), 
(B), and (C) of 35 U.S.C. 102(b)(2) apply only to disclosures under AIA 
35 U.S.C. 102(a)(2). If a patent or published application qualifies as 
prior art under both AIA 35 U.S.C. 102(a)(1) and AIA 35 U.S.C. 
102(a)(2), the disqualification under AIA 35 U.S.C. 102(b)(2)(C) would 
remove the patent or published application with respect to the patent 
or published application qualifying under AIA 35 U.S.C. 102(a)(2). Such 
a patent or published application would still qualify as prior art 
under AIA 35 U.S.C. 102(a)(1). The proposed examination guidelines 
indicated that AIA 35 U.S.C. 102(b)(2) provides an exception only for 
prior art under AIA 35 U.S.C. 102(a)(2). The proposed examination 
guidelines did not state that a disclosure must qualify as prior art 
only under AIA 35 U.S.C. 102(a)(2) in order for the AIA 35 U.S.C. 
102(b)(2) exception to apply.
    Comment 41: One comment indicated that the description of Hazeltine 
\39\

[[Page 11069]]

regarding interpretation of the AIA 35 U.S.C. 103 provisions is in 
conflict with the statutory language, in that the AIA shifted the 
temporal focus from the invention date to effective filing date.
    Response: In Hazeltine, the U.S. Supreme Court held that a U.S. 
patent that qualified as prior art only under pre-AIA 35 U.S.C. 102(e) 
may be used in combination with other prior art to show that a claimed 
invention was obvious under pre-AIA 35 U.S.C. 103, notwithstanding that 
the disclosure of such U.S. patent may not have been known or available 
to the public on the date of invention or the effective filing date of 
the claimed invention.\40\ The Office agrees that the temporal focus 
has shifted from the invention date to effective filing date. However, 
the principle in Hazeltine that certain prior art under 35 U.S.C. 102 
that may not be publicly available on the critical date (i.e., prior 
art under pre-AIA 35 U.S.C. 102(e) or prior art under AIA 35 U.S.C. 
102(a)(2)) is also applicable under AIA 35 U.S.C. 103.
    Comment 42: A comment stated that 35 U.S.C. 115, which requires an 
oath or declaration by the inventor, is a more appropriate section than 
35 U.S.C. 101 on which to base a rejection for failure to name the 
appropriate inventor. Another comment indicated that the case law on 35 
U.S.C. 101 is not straightforward and hence might not be the 
appropriate avenue to resolve disputes regarding the proper naming of 
inventors.
    Response: In addition to requiring an inventor's oath or 
declaration from each inventor, AIA 35 U.S.C. 115(a) provides that: 
``[a]n application for patent that is filed under section 111(a) or 
commences the national stage under section 371 shall include, or be 
amended to include, the name of the inventor for any invention claimed 
in the application.'' While pre-AIA 35 U.S.C. 115 has not previously 
served as a statutory basis for rejecting a claim for failure to name 
the proper inventorship, pre-AIA 35 U.S.C. 115 did not require that an 
application include, or be amended to include, the name of the inventor 
for any invention claimed in the application. Therefore, until the 
courts clarify which, if any, statute forms the basis for rejecting a 
claim where the application fails to include, or has not been amended 
to include, the name of the inventor(s), the Office considers a 
rejection under both 35 U.S.C. 101 \41\ and 115 the best course of 
action. To the extent that there is a concern that the recent case law 
surrounding 35 U.S.C. 101 is unclear, the Office notes that this recent 
case law pertains only to subject matter eligibility, not to the 
application of 35 U.S.C. 101 to the inventorship question, and thus 
this case law would not aggravate the complexity of inventorship 
disputes.
    Comment 43: One comment requested clarification from the Office 
regarding the use of a derivation proceeding where improper inventors 
are named in a patent.
    Response: If a patent is issued to someone other than the inventor, 
a patent applicant can file a petition for derivation with respect to 
the issued patent pursuant to 35 U.S.C. 135. The Office has implemented 
the patent derivation proceedings provided for in the AIA in a separate 
rulemaking. See Changes To Implement Derivation Proceedings, 77 FR 
56068 (Sept. 11, 2012). Additional information concerning patent 
derivation proceedings is available on the AIA micro site (under Inter 
Partes Disputes) on Office's Internet Web site at http://www.uspto.gov/aia_implementation/bpai.jsp#heading-4.
    Comment 44: One comment requested clarification on how a defense of 
derivation could be used to invalidate a patent. The comment requested 
clarification on how a minor variation derived from one inventor and 
claimed by another could be invalidated under 35 U.S.C. 101.
    Response: A patent applicant can use the provisions of 35 U.S.C. 
135 to resolve derivation issues with a patent owner. Similarly, a 
patent owner can use the provisions of 35 U.S.C. 291 to resolve 
derivation issues with another patent owner. If the issue is one of 
inventorship in a granted patent, a party may raise the issue of 
compliance with 35 U.S.C. 101 before the Patent Trial and Appeal Board 
in a post-grant proceeding or before a Federal court involving patent 
infringement as a defense under 35 U.S.C. 282.
    Comment 45: One comment took issue with the Office's interpretation 
of the effective date provisions indicating application of pre-AIA 35 
U.S.C. 102(g) provisions to applications examined under AIA 35 U.S.C. 
102 and 103 where the application contains claims supported by a pre-
AIA application.
    Response: Section 3(n)(1) of the AIA provides that amendments made 
by section 3 of the AIA ``shall apply to any application for patent, 
and to any patent issuing thereon'' that contains or contained at any 
time: (1) A claim to a claimed invention that has an effective filing 
date that is on or after March 16, 2013; or (2) a specific reference 
under 35 U.S.C. 120, 121, or 365(c) to any patent or application that 
contains or contained at any time such a claim. Section 3(n)(2) of the 
AIA provides that the provisions of 35 U.S.C. 102(g), 135, and 291 as 
in effect on March 15, 2013, ``shall apply to each claim of an 
application for patent, and any patent issued thereon,'' for which the 
amendments made by section 3 of the AIA also apply, if such application 
or patent contains or contained at any time: (1) A claim to an 
invention having an effective filing date that occurs before March 16, 
2013; or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) 
to any patent or application that contains or contained at any time 
such a claim. While the ``shall apply to'' language of sections 3(n)(1) 
and 3(n)(2) is not parallel, section 3(n)(2) does indicate that the 
provisions of 35 U.S.C. 102(g), 135, and 291 as in effect on March 15, 
2013, shall apply to ``each claim'' of an application for patent, and 
not simply the claim or claims having an effective filing date that 
occurs before March 16, 2013, if the condition specified in section 
3(n)(2) occurs. Therefore, ``each claim'' of an application presenting 
a claim to a claimed invention that has an effective filing date before 
March 16, 2013, but also presenting claims to a claimed invention that 
has an effective filing date on or after March 16, 2013, is subject to 
AIA 35 U.S.C. 102 and 103 and is also subject to the provisions of 35 
U.S.C. 102(g), 135, and 291 as in effect on March 15, 2013.
    Comment 46: Several comments opposed changing from a ``first to 
invent'' system to a ``first inventor to file'' system, arguing that a 
``first inventor to file'' system favors large corporations and 
negatively impacts independent inventors, small businesses, 
entrepreneurs, and technical professionals, and will have a significant 
economic impact on a substantial number of small entities. Several 
comments suggested that the examination guidelines are an economically 
significant guidance document and must comply with the requirements of 
the Good Guidance Bulletin \42\ of the Office of Management and Budget 
(OMB) for economically significant guidance documents. One comment 
suggested that the examination guidelines are an economically 
significant guidance document because the conversion of the U.S. patent 
system from a ``first to invent'' to a ``first inventor to file'' 
system is arguably one of the most comprehensive overhauls of the U.S. 
patent system since its inception. Another comment cited statements by 
the AIA's legislative sponsors and Administration officials and several 
articles concerning the first inventor to

[[Page 11070]]

file system, and argued that the Office, in its implementation of the 
first inventor to file system, has ignored a number of economic 
effects, such as: (1) Loss of access to investment capital; (2) 
diversion of inventor time into patent applications; (3) weaker patent 
protection due to hasty filing; (4) higher patent prosecution costs due 
to a hastily prepared initial application; (5) higher abandonment 
rates; and (6) changes in ways of doing business. Several comments 
suggested that the Office's interpretation of certain provisions of the 
AIA is an unwarranted extrapolation of the statute that constitutes 
substantive rulemaking.
    Response: The U.S. patent system is converted from a ``first to 
invent'' to a ``first inventor to file'' system by operation of section 
3 of the AIA regardless of whether the Office issues or publishes 
examination guidelines. The Office must revise its practices to be 
consistent with the changes in ``first inventor to file'' provisions of 
section 3 of the AIA to conform to the new patent laws. In doing so, 
these examination guidelines do not modify the conditions of 
patentability specified in AIA 35 U.S.C. 102 and 103 and do not change 
the rights and obligations specified in AIA 35 U.S.C. 102 and 103 based 
upon the Office's view of what would be a better policy choice. Rather, 
these examination guidelines simply set out examination guidelines for 
Office personnel in order to explain AIA 35 U.S.C. 102 and 103 based 
upon the Office's understanding of the provisions of AIA 35 U.S.C. 102 
and 103 as written by Congress, and place the public on notice of those 
examination guidelines. Therefore, these examination guidelines do not 
amount to substantive rulemaking.\43\
    The discussion of the significance or impacts of section 3 of the 
AIA by the AIA's legislative sponsors and Administration officials, in 
articles concerning the first inventor to file system, and in the 
discussions in the comments relating to the impacts of the adoption of 
a first inventor to file system, pertains to the changes in section 3 
of the AIA per se and not to these examination guidelines. The 
examination guidelines have been reviewed by OMB as a significant 
guidance document, but the examination guidelines are not considered to 
be economically significant as that term is defined in the Good 
Guidance Bulletin.
    Comment 47: One comment suggested that the examination guidelines 
should state their precise legal effect. The comment suggested that the 
Office lacks the statutory authority to issue an interpretation of this 
statute, and as such the examination guidelines should make clear that 
they are only examination guidelines, not an interpretation. The 
comment further suggested that the examination guidelines should 
indicate that they have no binding effect on the public or on the 
courts and are not entitled to Chevron \44\ deference, but that under 
35 U.S.C. 3(a) and the Good Guidance Bulletin the examination 
guidelines are binding on Office employees and should be reviewable by 
petition under 37 CFR 1.181.
    Response: As discussed previously, these examination guidelines do 
not constitute substantive rulemaking and do not have the force and 
effect of law. However, the Office has the authority to publish a 
notice setting out its interpretation of substantive patent law under 
35 U.S.C. 101, 102, 103, 112, or other section of title 35, regardless 
of whether such interpretation has the force and effect of law.\45\ 
These examination guidelines have been developed as a matter of 
internal Office management and (like the discussion of patentability in 
general in MPEP chapter 2100 and the Good Guidance Bulletin \46\) do 
not create any right or benefit, substantive or procedural, enforceable 
by any party against the Office. These examination guidelines are not 
``binding'' on the public or Office personnel in that rejections will 
continue to be based upon the substantive law, and it is these 
rejections that are appealable. Failure of Office personnel to follow 
the guidelines is not, in itself, a proper basis for either an appeal 
or a petition. The question of the level of deference to which the 
examination guidelines are entitled is not a patent examination issue.
    Comment 48: One comment questioned whether the amendments to 35 
U.S.C. 102 and 103 in the AIA applied to plant applications and 
patents. The comment suggested that the Office make an exception for 
plant applications and patents and also continue to apply the one year 
grace period to plant applications and patents.
    Response: 35 U.S.C. 161 provides that the provisions of 35 U.S.C. 
relating to patents for inventions shall apply to patents for plants, 
except as otherwise provided. There is nothing in section 3 of the AIA 
that provides for an exception for plant applications and patents with 
respect to any of the provisions of AIA 35 U.S.C. 102 and 103. Thus, 
the provisions of AIA 35 U.S.C. 102 and 103 (including the one-year 
grace period in AIA 35 U.S.C. 102(b)(1)(A) for inventor disclosures) 
are applicable to plant applications and patents.
    Comment 49: Several comments requested that the Office provide 
examples, or suggested hypothetical situations for the Office to use as 
examples.
    Response: The Office will post examples on the AIA micro site on 
Office's Internet Web site.
    Comment 50: One comment requested clarification regarding the 
meaning of ``first inventor to file,'' specifically the terms 
``first,'' ``inventor,'' and ``to file.''
    Response: The phrase ``First Inventor to File'' is simply the title 
of section 3 of the AIA. The conditions for patentability based upon 
novelty and nonobviousness are set forth in AIA 35 U.S.C. 102 and 103, 
which do not always result in the first inventor to file an application 
being entitled to a patent (e.g., AIA 35 U.S.C. 102(a)(1) precludes an 
inventor who is the first person to file an application for patent, but 
who published an article describing the claimed invention more than one 
year before the application was filed, from being entitled to a 
patent). Thus, it is appropriate for these examination guidelines to 
place the focus on the provisions of AIA 35 U.S.C. 102 and 103, rather 
than on the meaning of the terms ``first,'' ``inventor,'' and ``to 
file.''

Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the 
First Inventor To File Provisions of the Leahy-Smith America Invents 
Act

I. Overview of the Changes to 35 U.S.C. 102 and 103 in the AIA

    The AIA continues to employ 35 U.S.C. 102 to set forth the scope of 
prior art that will preclude the grant of a patent on a claimed 
invention, but adjusts what qualifies as such prior art. Specifically, 
the AIA sets forth what qualifies as prior art in two paragraphs of 35 
U.S.C. 102(a). AIA 35 U.S.C. 102(a)(1) provides that a person is not 
entitled to a patent if 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. AIA 35 U.S.C. 102(a)(2) provides that a person is not 
entitled to a patent if the claimed invention was described in a patent 
issued under 35 U.S.C. 151, or in an application for patent published 
or deemed published under 35 U.S.C. 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. AIA 35 U.S.C. 102(b) sets forth exceptions to prior art

[[Page 11071]]

established in AIA 35 U.S.C. 102(a). Specifically, AIA 35 U.S.C. 
102(b)(1) sets forth exceptions to prior art established in AIA 35 
U.S.C. 102(a)(1), and AIA 35 U.S.C. 102(b)(2) sets forth exceptions to 
prior art established in AIA 35 U.S.C. 102(a)(2).
    The AIA also provides definitions in 35 U.S.C. 100 of the meaning 
of the terms ``claimed invention,'' ``effective filing date,'' ``the 
inventor,'' and ``joint inventor'' (or ``coinventor''). The AIA defines 
the term ``claimed invention'' in 35 U.S.C. 100(j) as the subject 
matter defined by a claim in a patent or an application for a patent. 
The AIA defines the term ``effective filing date'' for a claimed 
invention in a patent or application for patent (other than a reissue 
application or reissued patent) in 35 U.S.C. 100(i)(1) as meaning the 
earliest of: (1) The actual filing date of the patent or the 
application for the patent containing the claimed invention; or (2) the 
filing date of the earliest provisional, nonprovisional, international 
(PCT), or foreign patent application to which the patent or application 
is entitled to benefit or priority as to such claimed invention. The 
AIA defines the term ``the inventor'' as the individual or if a joint 
invention, the individuals collectively who invented or discovered the 
subject matter of the invention in 35 U.S.C. 100(f), and defines the 
term ``joint inventor'' and ``co-inventor'' to mean any one of the 
individuals who invented or discovered the subject matter of a joint 
invention in 35 U.S.C. 100(g).
    As discussed previously, AIA 35 U.S.C. 102(a)(1) provides that a 
person is not entitled to a patent if 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. Under pre-AIA 35 U.S.C. 102(a) and (b), 
knowledge or use of the invention (pre-AIA 35 U.S.C. 102(a)), or public 
use or sale of the invention (pre-AIA 35 U.S.C. 102(b)), was required 
to be in the United States to qualify as a prior art activity. Under 
the AIA, a prior public use, sale activity, or other disclosure has no 
geographic requirement (i.e., need not be in the United States) to 
qualify as prior art.
    AIA 35 U.S.C. 102(b)(1) provides that a disclosure made one year or 
less before the effective filing date of a claimed invention shall not 
be prior art under 35 U.S.C. 102(a)(1) with respect to the claimed 
invention if: (1) 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; or (2) 
the subject matter disclosed had, before such disclosure, been publicly 
disclosed by the inventor or a joint inventor or by another who 
obtained the subject matter disclosed directly or indirectly from the 
inventor or a joint inventor. Thus, AIA 35 U.S.C. 102(b)(1) provides a 
one-year grace period (grace period) after a first disclosure of an 
invention within which the inventor, assignee, obligated assignee, or 
other party having sufficient interest may file a patent application. 
The one-year grace period in AIA 35 U.S.C. 102(b)(1) is measured from 
the filing date of the earliest U.S. or foreign patent application to 
which a proper benefit or priority claim as to such invention has been 
asserted in the patent or application. Notably, the one-year grace 
period in pre-AIA 35 U.S.C. 102(b) is measured from only the filing 
date of the earliest application filed in the United States (directly 
or through the PCT).
    The date of invention is not relevant under AIA 35 U.S.C. 102. 
Thus, a prior art disclosure could not be disqualified or antedated by 
showing that the inventor invented the claimed invention prior to the 
effective date of the prior art disclosure of the subject matter (e.g., 
under the provisions of 37 CFR 1.131).
    As discussed previously, AIA 35 U.S.C. 102(a)(2) provides that a 
person is not entitled to a patent if the claimed invention was 
described in a U.S. patent, a U.S. patent application publication, or 
an application for patent deemed published under 35 U.S.C. 122(b), that 
names another inventor and was effectively filed before the effective 
filing date of the claimed invention. Under 35 U.S.C. 374, a World 
Intellectual Property Organization (WIPO) publication of a Patent 
Cooperation Treaty (PCT) international application that designates the 
United States is an application for patent deemed published under 35 
U.S.C. 122(b) for purposes of AIA 35 U.S.C. 102(a)(2). Thus, under the 
AIA, WIPO publications of PCT applications that designate the United 
States are treated as U.S. patent application publications for prior 
art purposes, regardless of the international filing date, whether they 
are published in English, or whether the PCT international application 
enters the national stage in the United States. Accordingly, a U.S. 
patent, a U.S. patent application publication, or a WIPO publication of 
a PCT application (WIPO published application) that designates the 
United States, that names another inventor and was effectively filed 
before the effective filing date of the claimed invention, is prior art 
under AIA 35 U.S.C. 102(a)(2). Under pre-AIA 35 U.S.C. 102(e), a WIPO 
published application designating the United States is treated as a 
U.S. patent application publication only if the PCT application was 
filed on or after November 29, 2000, and published under PCT Article 
21(2) in the English language.\47\
    AIA 35 U.S.C. 102(d) defines ``effectively filed'' for the purpose 
of determining whether a U.S. patent, U.S. patent application 
publication, or WIPO published application is prior art under AIA 35 
U.S.C. 102(a)(2) to a claimed invention. A U.S. patent, U.S. patent 
application publication, or WIPO published application is considered to 
have been effectively filed for purposes of its prior art effect under 
35 U.S.C. 102(a)(2) with respect to any subject matter it describes on 
the earliest of: (1) The actual filing date of the patent or the 
application for patent; or (2) if the patent or application for patent 
is entitled to claim the benefit of, or priority to, the filing date of 
an earlier U.S. provisional, U.S. nonprovisional, international (PCT), 
or foreign patent application, the filing date of the earliest such 
application that describes the subject matter of the claimed invention. 
Thus, a U.S. patent, a U.S. patent application publication, or WIPO 
published application is effective as prior art as of the filing date 
of the earliest application to which benefit or priority is claimed and 
which describes the subject matter relied upon, regardless of whether 
the earliest such application is a U.S. provisional or nonprovisional 
application, an international (PCT) application, or a foreign patent 
application.
    AIA 35 U.S.C. 102(b)(2)(A) and (B) provide that a disclosure shall 
not be prior art to a claimed invention under 35 U.S.C. 102(a)(2) if: 
(1) The subject matter disclosed was obtained directly or indirectly 
from the inventor or a joint inventor; or (2) the subject matter 
disclosed had, before such subject matter was effectively filed under 
35 U.S.C. 102(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. Thus, under the 
AIA, a U.S. patent, U.S. patent application publication, or WIPO 
published application that was not issued or published more than one 
year before the effective filing date of the claimed invention is not 
prior art to the claimed invention if: (1) The U.S. patent, U.S. patent 
application publication, or WIPO published application was by another 
who obtained the subject matter disclosed from the inventor or a joint 
inventor; or (2) the inventor or a joint inventor, or

[[Page 11072]]

another who obtained the subject matter disclosed from an inventor or 
joint inventor, had publicly disclosed the subject matter before the 
effective filing date of the U.S. patent, U.S. patent application 
publication, or WIPO published application.
    Additionally, AIA 35 U.S.C. 102(b)(2)(C) provides that a disclosure 
made in a U.S. patent, U.S. patent application publication, or WIPO 
published application shall not be prior art to a claimed invention 
under 35 U.S.C. 102(a)(2) if, not later than the effective filing date 
of the claimed invention, the subject matter disclosed and the claimed 
invention were owned by the same person or subject to an obligation of 
assignment to the same person. This provision replaces the exception in 
pre-AIA 35 U.S.C. 103(c) that applied only in the context of an 
obviousness analysis under 35 U.S.C. 103 to prior art that was commonly 
owned at the time the claimed invention was made, and which qualified 
as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g). 
Thus, the AIA provides that certain prior patents and published patent 
applications of co-workers and collaborators are not prior art either 
for purposes of determining novelty (35 U.S.C. 102) or nonobviousness 
(35 U.S.C. 103). This exception, however, applies only to prior art 
under AIA 35 U.S.C. 102(a)(2), namely, U.S. patents, U.S. patent 
application publications, or WIPO published applications effectively 
filed, but not published, before the effective filing date of the 
claimed invention. This exception does not apply to prior art that is 
available under 35 U.S.C. 102(a)(1), that is, patents, printed 
publications, public uses, sale activities, or other publicly available 
disclosures published or occurring before the effective filing date of 
the claimed invention. A prior disclosure, as defined in AIA 35 U.S.C. 
102(a)(1), by a co-worker or collaborator is prior art under AIA 35 
U.S.C. 102(a)(1) unless it falls within an exception under AIA 35 
U.S.C. 102(b)(1), regardless of whether the subject matter of the prior 
disclosure and the claimed invention was commonly owned not later than 
the effective filing date of the claimed invention.
    The AIA eliminates the provisions in pre-AIA 35 U.S.C. 102(c) 
(abandonment of the invention), 102(d) (premature foreign patenting), 
102(f) (derivation), and 102(g) (prior invention by another). Under the 
AIA, abandonment of the invention or premature foreign patenting is not 
relevant to patentability. Prior invention by another is likewise not 
relevant to patentability under the AIA unless there is a prior 
disclosure or filing of an application by another. The situation in 
which an application names a person who is not the actual inventor as 
the inventor (pre-AIA 35 U.S.C. 102(f)) will be handled in a derivation 
proceeding under 35 U.S.C. 135, by a correction of inventorship under 
37 CFR 1.48 to name the actual inventor, or through a rejection under 
35 U.S.C. 101\48\ and 35 U.S.C. 115.\49\
    AIA 35 U.S.C. 102(c) provides for common ownership of subject 
matter made pursuant to joint research agreements. Under 35 U.S.C. 
100(h), the term ``joint research agreement'' as used in AIA 35 U.S.C. 
102(c) is defined as a written contract, grant, or cooperative 
agreement entered into by two or more persons or entities for the 
performance of experimental, developmental, or research work in the 
field of the claimed invention. AIA 35 U.S.C. 102(c) specifically 
provides that subject matter disclosed and a claimed invention shall be 
deemed to have been owned by the same person or subject to an 
obligation of assignment to the same person in applying the provisions 
of AIA 35 U.S.C. 102(b)(2)(C) if: (1) The subject matter disclosed was 
developed and the claimed invention was made by, or on behalf of, one 
or more parties to a joint research agreement that was in effect on or 
before the effective filing date of the claimed invention; (2) the 
claimed invention was made as a result of activities undertaken within 
the scope of the joint research agreement; and (3) the application for 
patent for the claimed invention discloses or is amended to disclose 
the names of the parties to the joint research agreement.
    AIA 35 U.S.C. 103 provides that a patent for a claimed invention 
may not be obtained, notwithstanding that the claimed invention is not 
identically disclosed as set forth in 35 U.S.C. 102, if the differences 
between the claimed invention and the prior art are such that the 
claimed invention as a whole would have been obvious before the 
effective filing date of the claimed invention to a person having 
ordinary skill in the art to which the claimed invention pertains. In 
addition, AIA 35 U.S.C. 103 provides that patentability shall not be 
negated by the manner in which the invention was made. This provision 
tracks pre-AIA 35 U.S.C. 103(a), except that the temporal focus for the 
obviousness inquiry is before the effective filing date of the claimed 
invention, rather than at the time of the invention. The provisions of 
pre-AIA 35 U.S.C. 103(c) have been replaced with AIA 35 U.S.C. 
102(b)(2)(C) and (c), and the provisions of pre-AIA 35 U.S.C. 103(b) 
pertaining to biotechnological processes have been eliminated.
    AIA 35 U.S.C. 102 and 103 take effect on March 16, 2013. These new 
provisions apply to any patent application that contains or contained 
at any time: (1) A claim to a claimed invention that has an effective 
filing date that is on or after March 16, 2013; or (2) a designation as 
a continuation, divisional, or continuation-in-part of an application 
that contains or contained at any time a claim to a claimed invention 
that has an effective filing date that is on or after March 16, 
2013.\50\ AIA 35 U.S.C. 102 and 103 also apply to any patent resulting 
from an application to which AIA 35 U.S.C. 102 and 103 were 
applied.\51\
    The AIA provides that the provisions of pre-AIA 35 U.S.C. 102(g) 
\52\ apply to each claim of an application for patent if the patent 
application: (1) Contains or contained at any time a claim to a claimed 
invention having an effective filing date that occurs before March 16, 
2013; or (2) is ever designated as a continuation, divisional, or 
continuation-in-part of an application that contains or contained at 
any time a claim to a claimed invention that has an effective filing 
date before March 16, 2013.\53\ Pre-AIA 35 U.S.C. 102(g) also applies 
to any patent resulting from an application to which pre-AIA 35 U.S.C. 
102(g) applied.\54\
    If an application (1) contains or contained at any time a claimed 
invention having an effective filing date that is before March 16, 
2013, or ever claimed a right of priority or the benefit of an earlier 
filing date under 35 U.S.C. 119, 120, 121, or 365 based upon an earlier 
application that ever contained a claimed invention having an effective 
filing date that is before March 16, 2013, and (2) also contains or 
contained at any time any claimed invention having an effective filing 
date that is on or after March 16, 2013, or ever claimed a right of 
priority or the benefit of an earlier filing date under 35 U.S.C. 119, 
120, 121, or 365 based upon an earlier application that ever contained 
a claimed invention having an effective filing date that is on or after 
March 16, 2013, then AIA 35 U.S.C. 102 and 103 apply to the 
application, and each claimed invention in the application is also 
subject to pre-AIA 35 U.S.C. 102(g).

II. Detailed Discussion of AIA 35 U.S.C. 102(a) and (b)

    AIA 35 U.S.C. 102(a) defines the prior art that will preclude the 
grant of a patent on a claimed invention unless an exception in AIA 35 
U.S.C. 102(b) is applicable. Specifically, AIA 35 U.S.C. 102(a) 
provides that:

[a] person shall be entitled to a patent unless--


[[Page 11073]]


    (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; or
    (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.\55\

    As an initial matter, Office personnel should note that the 
introductory phrase ``[a] person shall be entitled to a patent unless'' 
remains unchanged from the pre-AIA version of 35 U.S.C. 102. Thus, 35 
U.S.C. 102 continues to provide that the Office bears the initial 
burden of explaining why the applicable statutory or regulatory 
requirements have not been met if a claim in an application is to be 
rejected. The AIA also does not change the requirement that whenever a 
claim for a patent is rejected or an objection or requirement is made, 
the Office shall notify the applicant thereof and state the reasons for 
such rejection, objection, or requirement, and provide such information 
and references as may be useful to the applicant in judging of the 
propriety of continuing the prosecution of the application.\56\
    The categories of prior art documents and activities are set forth 
in AIA 35 U.S.C. 102(a)(1) and (a)(2). These documents and activities 
are used to determine whether a claimed invention is novel or 
nonobvious. The documents upon which a prior art rejection may be based 
are an issued patent, a published application, and a non-patent printed 
publication. Evidence that the claimed invention was in public use, on 
sale, or otherwise available to the public may also be used as the 
basis for a prior art rejection. Note that a printed publication that 
does not have a sufficiently early publication date to itself qualify 
as prior art under AIA 35 U.S.C. 102(a)(1) may be competent evidence of 
a previous public use, sale activity, or other availability of a 
claimed invention to the public where the public use, sale activity, or 
other public availability does have a sufficiently early date to 
qualify as prior art under AIA 35 U.S.C. 102(a)(1).\57\
    AIA 35 U.S.C. 102(b) sets out exceptions to AIA 35 U.S.C. 102(a), 
in that prior art that otherwise would be included in AIA 35 U.S.C. 
102(a) shall not be prior art if it falls within an exception in AIA 35 
U.S.C. 102(b).
    Exceptions to the categories of prior art defined in AIA 35 U.S.C. 
102(a)(1) are provided in AIA 35 U.S.C. 102(b)(1). Specifically, AIA 35 
U.S.C. 102(b)(1) states that a disclosure made one 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--
    [ssquf] The disclosure was made by the inventor or a joint inventor 
or by another who obtained the subject matter disclosed directly or 
indirectly from the inventor or a joint inventor; or
    [ssquf] 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.'' \58\
    Exceptions to the categories of prior art defined in AIA 35 U.S.C. 
102(a)(2) are provided in AIA 35 U.S.C. 102(b)(2). Specifically, AIA 35 
U.S.C. 102(b)(2) states that a disclosure shall not be prior art to a 
claimed invention under subsection (a)(2) if--
    [ssquf] The subject matter disclosed was obtained directly or 
indirectly from the inventor or a joint inventor;
    [ssquf] 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
    [ssquf] 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.'' \59\
    Although some of the prior art provisions of AIA 35 U.S.C. 102(a) 
and (b) will seem familiar, especially in comparison to pre-AIA 35 
U.S.C. 102(a), (b), and (e), the AIA has introduced a number of 
important changes with respect to prior art documents and activities 
(collectively, ``disclosures''). First, the availability of a 
disclosure as prior art is measured from the effective filing date of 
the claimed invention no matter where that filing occurred. Second, the 
AIA adopts a global view of prior art disclosures and thus does not 
require that a public use or sale activity be ``in this country'' to be 
a prior art activity. Finally, a catch-all ``otherwise available to the 
public'' category of prior art is added.

A. Effective Filing Date of the Claimed Invention

    Pre-AIA 35 U.S.C. 102(a) and (e) reference patent-defeating 
activities occurring before the applicant invented the claimed 
invention. AIA 35 U.S.C. 102(a)(1) and (a)(2) make no mention of the 
date of the invention, but instead concern documents that existed or 
activities that occurred ``before the effective filing date of the 
claimed invention.'' As a result, it is no longer possible to antedate 
or ``swear behind'' certain prior art disclosures by making a showing 
under 37 CFR 1.131 that the applicant invented the claimed subject 
matter prior to the effective date of the prior art disclosure.
    The AIA defines the term ``effective filing date'' for a claimed 
invention in a patent or application for patent (other than a reissue 
application or reissued patent) as the earliest of: (1) The actual 
filing date of the patent or the application for the patent containing 
the claimed invention; or (2) the filing date of the earliest 
application for which the patent or application is entitled, as to such 
invention, to a right of priority or the benefit of an earlier filing 
date under 35 U.S.C. 119, 120, 121, or 365.\60\ Thus, the one-year 
grace period in AIA 35 U.S.C. 102(b)(1) is measured from the filing 
date of any U.S. or foreign patent application to which the patent or 
application is entitled to benefit or priority as to such invention, 
whereas the one-year grace period in pre-AIA 35 U.S.C. 102(b) is 
measured from only the filing date of the earliest application filed in 
the United States (directly or through the PCT).
    As under pre-AIA law, the effective filing date of a claimed 
invention is determined on a claim-by-claim basis and not an 
application-by-application basis. That is, the principle that different 
claims in the same application may be entitled to different effective 
filing dates vis-[agrave]-vis the prior art remains unchanged by the 
AIA.\61\ However, it is important to note that although prior art is 
applied on a claim-by-claim basis, the determination of whether pre-AIA 
35 U.S.C. 102 and 103 or AIA 35 U.S.C. 102 and 103 apply is made on an 
application-by-application basis. Section VI discusses the 
applicability date provisions of section 3 of the AIA.
    Finally, the AIA provides that the ``effective filing date'' for a 
claimed invention in a reissued patent or application for a reissue 
patent shall be determined by deeming the claim to the claimed 
invention to have been contained in the patent for which reissue was 
sought.\62\

[[Page 11074]]

B. Provisions Pertaining to Disclosures Before the Effective Filing 
Date of the Claimed Invention

1. Prior Art Under AIA 35 U.S.C. 102(a)(1) (Patented, Described in a 
Printed Publication, or in Public Use, on Sale, or Otherwise Available 
to the Public)
    Prior art documents and activities which may preclude patentability 
are set forth in AIA 35 U.S.C. 102(a)(1). Such documents and activities 
include prior patenting of the claimed invention, descriptions of the 
claimed invention in a printed publication, public use of the claimed 
invention, placing the claimed invention on sale, and otherwise making 
the claimed invention available to the public. These examination 
guidelines will discuss each prior art document and activity that might 
preclude patentability under AIA 35 U.S.C. 102(a)(1) in turn.
    a. Patented. AIA 35 U.S.C. 102(a)(1) indicates that prior patenting 
of a claimed invention precludes the grant of a patent on the claimed 
invention. This means that if a claimed invention was patented in this 
or a foreign country before the effective filing date of the claimed 
invention, AIA 35 U.S.C. 102(a)(1) precludes the grant of a patent on 
the claimed invention. The effective date of the patent for purposes of 
determining whether the patent qualifies as prior art under AIA 35 
U.S.C. 102(a)(1) is the grant date of the patent. There is an exception 
to this rule if the patent is secret as of the date the rights are 
awarded.\63\ In such situations, the patent is available as prior art 
as of the date the patent was made available to the public by being 
laid open for public inspection or disseminated in printed form.\64\ 
The phrase ``patented'' in AIA 35 U.S.C. 102(a)(1) has the same meaning 
as ``patented'' in pre-AIA 35 U.S.C. 102(a) and (b). For a discussion 
of ``patented'' as used in pre-AIA 35 U.S.C. 102(a) and (b), see 
generally MPEP Sec.  2126.
    Although an invention may be described in a patent and not claimed 
therein, the grant date would also be the applicable prior art date for 
purposes of relying on the subject matter disclosed therein as 
``described in a printed publication,'' provided that the patent was 
made available to the public on its grant date. It is helpful to note 
that a U.S. patent that issues after the effective filing date of a 
claimed invention under examination is not available as prior art 
against that invention under AIA 35 U.S.C. 102(a)(1), but could be 
available as prior art under AIA 35 U.S.C. 102(a)(2).
    b. Described in a printed publication. If a claimed invention is 
described in a patent, published patent application, or printed 
publication, such a document may be available as prior art under AIA 35 
U.S.C. 102(a)(1). Both pre-AIA 35 U.S.C. 102(a) and (b) and AIA 35 
U.S.C. 102(a)(1) use the term ``described'' with respect to an 
invention in a prior art printed publication. Likewise, AIA 35 U.S.C. 
102(a)(2) uses that term with respect to U.S. patents, U.S. patent 
application publications, and WIPO published applications. Thus, the 
Office does not view the AIA as changing the extent to which a claimed 
invention must be described for a prior art document to anticipate the 
claimed invention under 35 U.S.C. 102.
    While the conditions for patentability of AIA 35 U.S.C. 112(a) 
require a written description of the claimed invention that would have 
enabled a person skilled in the art to make as well as use the 
invention, the prior art provisions of AIA 35 U.S.C. 102(a)(1) and 
(a)(2) require only that the claimed invention be ``described'' \65\ in 
a prior art document (patent, published patent application, or printed 
publication). The two basic requirements that must be met by a prior 
art document in order to describe a claimed invention such that it is 
anticipated under AIA 35 U.S.C. 102 are the same as those under pre-AIA 
35 U.S.C. 102. First, ``each and every element of the claimed 
invention'' must be disclosed either explicitly or inherently, and the 
elements must be ``arranged or combined in the same way as in the 
claim.'' \66\ Second, a person of ordinary skill in the art must have 
been enabled to make the invention without undue experimentation.\67\ 
Thus, in order for a prior art document to describe a claimed invention 
such that it is anticipated under AIA 35 U.S.C. 102(a)(1) or (a)(2), it 
must disclose all elements of the claimed invention arranged as they 
are in the claim, and also provide sufficient guidance to enable a 
person skilled in the art to make the claimed invention. There is, 
however, no requirement that a prior art document meet the ``how to 
use'' requirement of 35 U.S.C. 112(a) in order to qualify as prior 
art.\68\ Furthermore, compliance with the ``how to make'' requirement 
is judged from the viewpoint of a person of ordinary skill in the art, 
and thus does not require that the prior art document explicitly 
disclose information within the knowledge of such a person.\69\
    There is an additional important distinction between the written 
description that is necessary to support a claim under 35 U.S.C. 112(a) 
and the description sufficient to anticipate the subject matter of the 
claim under AIA 35 U.S.C. 102(a)(1) or (a)(2).\70\ To provide support 
for a claim under 35 U.S.C. 112(a), it is necessary that the 
specification describe and enable the entire scope of the claimed 
invention. However, in order for a prior art document to describe a 
claimed invention under AIA 35 U.S.C. 102(a)(1) or (a)(2), the prior 
art document need only describe and enable one skilled in the art to 
make a single species or embodiment of the claimed invention.\71\
    An anticipatory description it is not required in order for a 
disclosure to qualify as prior art, unless the disclosure is being used 
as the basis for an anticipation rejection. In accordance with pre-AIA 
case law concerning obviousness, a disclosure may be cited for all that 
it would reasonably have made known to a person of ordinary skill in 
the art. Thus, the description requirement of AIA 35 U.S.C. 102(a)(1) 
and (a)(2) does not preclude an examiner from applying a disclosure in 
an obviousness rejection under AIA 35 U.S.C. 103 simply because the 
disclosure is not adequate to anticipate the claimed invention under 
AIA 35 U.S.C. 102(a)(1) or (a)(2).
    c. In public use. Under pre-AIA 35 U.S.C. 102(b), that an invention 
was ``in public use'' precluded the grant of a patent only if such 
public use occurred ``in this country.''
    Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on 
where prior public use or public availability occurs. Furthermore, a 
public use would need to occur before the effective filing date of the 
claimed invention to constitute prior art under AIA 35 U.S.C. 
102(a)(1).
    The pre-AIA case law also indicates that a public use will bar 
patentability if the public use occurs before the critical date \72\ 
and the invention is ready for patenting.\73\ Under pre-AIA 35 U.S.C. 
102(b), the uses of an invention before the patent's critical date that 
constitute a ``public use'' fall into two categories: The use either 
``(1) was accessible to the public; or (2) was commercially 
exploited.'' \74\ Whether a use is a pre-AIA 35 U.S.C. 102(b) public 
use also depends on who is making the use of the invention. ``[W]hen an 
asserted prior use is not that of the applicant, [pre-AIA 35 U.S.C.] 
102(b) is not a bar when that prior use or knowledge is not available 
to the public.'' \75\ In other words, a use by a third party who did 
not obtain the invention from the inventor named in the application or 
patent is an invalidating use under pre-AIA 35 U.S.C. 102(b) only if it 
falls into the first category: That the use was accessible to

[[Page 11075]]

the public. On the other hand, ``an inventor's own prior commercial 
use, albeit kept secret, may constitute a public use or sale under 
[pre-AIA 35 U.S.C.] 102(b), barring him from obtaining a patent.'' \76\ 
Also, an inventor creates a public use bar under pre-AIA 35 U.S.C. 
102(b) when the inventor shows the invention to, or allows it to be 
used by, another person who is ``under no limitation, restriction, or 
obligation of confidentiality'' to the inventor.\77\
    Further, under pre-AIA 35 U.S.C. 102(a), ``in order to invalidate a 
patent based on prior knowledge or use'' by another in this country 
prior to the patent's priority date, ``that knowledge or use must have 
been available to the public.'' \78\ Patent-defeating ``use,'' under 
pre-AIA 35 U.S.C. 102(a), includes only that ``use which is accessible 
to the public.'' \79\
    As discussed previously, public use under AIA 35 U.S.C. 102(a)(1) 
is limited to those uses that are available to the public. The public 
use provision of AIA 35 U.S.C. 102(a)(1) thus has the same substantive 
scope, with respect to uses by either the inventor or a third party, as 
public uses under pre-AIA 35 U.S.C. 102(b) by unrelated third parties 
or uses by others under pre-AIA 35 U.S.C. 102(a).
    As also discussed previously, once an examiner becomes aware that a 
claimed invention has been the subject of a potentially public use, the 
examiner may require the applicant to provide information showing that 
the use did not make the claimed process accessible to the public.
    d. On sale. The pre-AIA case law indicates that on sale activity 
will bar patentability if the claimed invention was: (1) The subject of 
a commercial sale or offer for sale, not primarily for experimental 
purposes; and (2) ready for patenting.\80\ Contract law principles 
apply in order to determine whether a commercial sale or offer for sale 
occurred. In addition, the enablement inquiry is not applicable to the 
question of whether a claimed invention is ``on sale'' under pre-AIA 35 
U.S.C. 102(b).\81\ The phrase ``on sale'' in AIA 35 U.S.C. 102(a)(1) is 
treated as having the same meaning as ``on sale'' in pre-AIA 35 U.S.C. 
102(b), except that the sale must make the invention available to the 
public. For a discussion of ``on sale'' as used in pre-AIA 35 U.S.C. 
102(b), see generally MPEP Sec.  2133.03(b) et seq.
    Under pre-AIA 35 U.S.C. 102(b), if an invention was ``on sale,'' 
patentability was precluded only if the invention was on sale ``in this 
country.'' Under AIA 35 U.S.C. 102(a)(1), there is no geographic 
limitation on where the sale or offer for sale may occur. When 
formulating a rejection, Office personnel should consider evidence of 
sales activity, regardless of where the sale activity took place.
    The pre-AIA 35 U.S.C. 102(b) ``on sale'' provision has been 
interpreted as including commercial activity even if the activity is 
secret. AIA 35 U.S.C. 102(a)(1) uses the same ``on sale'' term as pre-
AIA 35 U.S.C. 102(b). The ``or otherwise available to the public'' 
residual clause of AIA 35 U.S.C. 102(a)(1), however, indicates that AIA 
35 U.S.C. 102(a)(1) does not cover secret sales or offers for sale. For 
example, an activity (such as a sale, offer for sale, or other 
commercial activity) is secret (non-public) if it is among individuals 
having an obligation of confidentiality to the inventor.\82\
    e. Otherwise available to the public. AIA 35 U.S.C. 102(a)(1) 
provides a ``catch-all'' provision, which defines a new additional 
category of potential prior art not provided for in pre-AIA 35 U.S.C. 
102. Specifically, a claimed invention may not be patented if it was 
``otherwise available to the public'' before its effective filing date. 
This ``catch-all'' provision permits decision makers to focus on 
whether the disclosure was ``available to the public,'' rather than on 
the means by which the claimed invention became available to the public 
or on whether a disclosure constitutes a ``printed publication'' or 
falls within another category of prior art as defined in AIA 35 U.S.C. 
102(a)(1). The availability of the subject matter to the public may 
arise in situations such as a student thesis in a university 
library,\83\ a poster display or other information disseminated at a 
scientific meeting,\84\ subject matter in a laid-open patent 
application,\85\ a document electronically posted on the Internet,\86\ 
or a commercial transaction that does not constitute a sale under the 
Uniform Commercial Code.\87\ Even if a document or other disclosure is 
not a printed publication, or a transaction is not a sale, either may 
be prior art under the ``otherwise available to the public'' provision 
of AIA 35 U.S.C. 102(a)(1), provided that the claimed invention is made 
sufficiently available to the public.
    f. No requirement of ``by others.'' A key difference between pre-
AIA 35 U.S.C. 102(a) and AIA 35 U.S.C. 102(a)(1) is the requirement in 
pre-AIA 35 U.S.C. 102(a) that the prior art relied on was ``by 
others.'' Under AIA 35 U.S.C. 102(a)(1), there is no requirement that 
the prior art relied upon be by others. Thus, any prior art which falls 
under AIA 35 U.S.C. 102(a)(1) need not be by another to constitute 
potentially available prior art. However, disclosures of the subject 
matter made one year or less before the effective filing date of the 
claimed invention by the inventor or a joint inventor or another who 
obtained the subject matter directly or indirectly from the inventor or 
a joint inventor may fall within an exception under AIA 35 U.S.C. 
102(b)(1) to AIA 35 U.S.C. 102(a)(1).
    g. Admissions. The Office will continue to treat admissions by the 
applicant as prior art under the AIA. A statement by an applicant in 
the specification or made during prosecution identifying the work of 
another as ``prior art'' is an admission which can be relied upon for 
both anticipation and obviousness determinations, regardless of whether 
the admitted prior art would otherwise qualify as prior art under AIA 
35 U.S.C. 102.\88\ For a discussion of admissions as prior art, see 
generally MPEP Sec.  2129.
    h. The meaning of ``disclosure.'' The AIA does not define the term 
``disclosure,'' and AIA 35 U.S.C. 102(a) does not use the term 
``disclosure.'' AIA 35 U.S.C. 102(b)(1) and (b)(2), however, each state 
conditions under which a ``disclosure'' that otherwise falls within AIA 
35 U.S.C. 102(a)(1) or 102(a)(2) is not prior art under AIA 35 U.S.C. 
102(a)(1) or 102(a)(2).\89\ Thus, the Office is treating the term 
``disclosure'' as a generic expression intended to encompass the 
documents and activities enumerated in AIA 35 U.S.C. 102(a) (i.e., 
being patented, described in a printed publication, in public use, on 
sale, or otherwise available to the public, or being described in a 
U.S. patent, U.S. patent application publication, or WIPO published 
application).
2. Prior Art Exceptions Under 35 U.S.C. 102(b)(1) to AIA 35 U.S.C. 
102(a)(1)
    a. Prior art exception under AIA 35 U.S.C. 102(b)(1)(A) to AIA 35 
U.S.C. 102(a)(1) (grace period inventor or inventor-originated 
disclosure exception). AIA 35 U.S.C. 102(b)(1)(A) provides exceptions 
to the prior art provisions of AIA 35 U.S.C. 102(a)(1). These 
exceptions limit the use of an inventor's own work as prior art, when 
the inventor's own work has been publicly disclosed by the inventor, a 
joint inventor, or another who obtained the subject matter directly or 
indirectly from the inventor or joint inventor. AIA 35 U.S.C. 
102(b)(1)(A) provides that a disclosure which would otherwise qualify 
as prior art under AIA 35 U.S.C. 102(a)(1) is not prior art if the 
disclosure was made: (1) One year or less before the effective filing 
date of the claimed invention; and (2) by the inventor or a

[[Page 11076]]

joint inventor, or by another who obtained the subject matter directly 
or indirectly from the inventor or joint inventor. These guidelines 
will first discuss issues pertaining to disclosures within the grace 
period by the inventor or a joint inventor (``grace period inventor 
disclosures'') and then subsequently discuss issues pertaining to 
disclosures within the grace period by another who obtained the subject 
matter directly or indirectly from the inventor or joint inventor 
(``grace period inventor-originated disclosures''). Section II.A. of 
these examination guidelines discusses the ``effective filing date'' of 
a claimed invention.
    i. Grace period inventor disclosure exception. AIA 35 U.S.C. 
102(b)(1)(A) first provides that a disclosure which would otherwise 
qualify as prior art under AIA 35 U.S.C. 102(a)(1) may be disqualified 
as prior art if the disclosure is made: (1) One year or less before the 
effective filing date of the claimed invention; and (2) by the inventor 
or a joint inventor. Thus, a disclosure that would otherwise qualify as 
prior art under AIA 35 U.S.C. 102(a)(1) will not be treated as prior 
art by Office personnel if the disclosure is made one year or less 
before the effective filing date of the claimed invention, and the 
evidence shows that the disclosure is by the inventor or a joint 
inventor. What evidence is necessary to show that the disclosure is by 
the inventor or a joint inventor requires case-by-case treatment, 
depending upon whether it is apparent from the disclosure itself or the 
patent application specification that the disclosure is by the inventor 
or a joint inventor.
    Office personnel will not apply a disclosure as prior art under AIA 
35 U.S.C. 102(a)(1) if it is apparent from the disclosure itself that 
it is by the inventor or a joint inventor. Specifically, Office 
personnel will not apply a disclosure as prior art under AIA 35 U.S.C. 
102(a)(1) if the disclosure: (1) Was 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. This means that in circumstances where an application names 
additional persons as inventors relative to the persons named as 
authors in the publication (e.g., the application names as inventors A, 
B, and C, and the publication names as authors A and B), and the 
publication is one year or less before the effective filing date, it is 
apparent that the disclosure is a grace period inventor disclosure, and 
the publication would not be treated as prior art under AIA 35 U.S.C. 
102(a)(1). If, however, the application names fewer inventors than a 
publication (e.g., the application names as inventors A and B, and the 
publication names as authors A, B and C), it would not be readily 
apparent from the publication that it is by the inventor or a joint 
inventor and the publication would be treated as prior art under AIA 35 
U.S.C. 102(a)(1).
    The Office is also revising the rules of practice in a separate 
action (RIN 0651-AC77) to provide that applicants can include a 
statement of any grace period inventor disclosures in the specification 
(37 CFR 1.77(b)(6)). An applicant is not required to use the format 
specified in 37 CFR 1.77 or identify any prior disclosures by the 
inventor or a joint inventor (unless necessary to overcome a 
rejection), but identifying any prior disclosures by the inventor or a 
joint inventor may expedite examination of the application and save 
applicants (and the Office) the costs related to an Office action and 
reply. If the patent application specification contains a specific 
reference to a grace period inventor disclosure, the Office will 
consider it apparent from the specification that the disclosure is by 
the inventor or a joint inventor, provided that the disclosure does not 
name additional authors or inventors and there is no other evidence to 
the contrary. The applicant may also provide a copy of the disclosure 
(e.g., copy of a printed publication).
    The Office is also revising the rules of practice in a separate 
action (RIN 0651-AC77) to provide a mechanism for filing an affidavit 
or declaration (under 37 CFR 1.130) to establish that a disclosure is 
not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 
U.S.C. 102(b). In the situations in which it is not apparent from the 
disclosure or the patent application specification that the disclosure 
is by the inventor or a joint inventor, the applicant may establish by 
way of an affidavit or declaration that a grace period disclosure is 
not prior art under AIA 35 U.S.C. 102(a)(1) because the disclosure was 
by the inventor or a joint inventor. Section II.D.1. of these 
examination guidelines discusses the use of affidavits or declarations 
to show that the disclosure was made by the inventor or a joint 
inventor under the exception of AIA 35 U.S.C. 102(b)(1)(A) for a grace 
period inventor disclosure.
    ii. Grace period inventor-originated disclosure exception. AIA 35 
U.S.C. 102(b)(1)(A) also provides that a disclosure which would 
otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(1) may be 
disqualified as prior art if the disclosure was made: (1) One year or 
less before the effective filing date of the claimed invention; and (2) 
by another who obtained the subject matter directly or indirectly from 
the inventor or a joint inventor. Thus, if a disclosure upon which the 
rejection is based is by someone who obtained the subject matter from 
the inventor or a joint inventor, and was made one year or less before 
the effective filing date of the claimed invention, the applicant may 
establish by way of an affidavit or declaration that the disclosure is 
not prior art under AIA 35 U.S.C. 102(a)(1) because the disclosure was 
by another who obtained the subject matter directly or indirectly from 
the inventor or a joint inventor. Section II.D.3. of these examination 
guidelines discusses the use of affidavits or declarations to show that 
a disclosure was by another who obtained the subject matter disclosed 
directly or indirectly from the inventor or a joint inventor under the 
exception of AIA 35 U.S.C. 102(b)(1)(A) for a grace period inventor-
originated disclosure.
    b. Prior art exception under AIA 35 U.S.C. 102(b)(1)(B) to AIA 35 
U.S.C. 102(a)(1) (inventor or inventor-originated prior public 
disclosure exception). AIA 35 U.S.C. 102(b)(1)(B) provides additional 
exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(1). 
These exceptions disqualify a disclosure of subject matter that occurs 
after the subject matter had been publicly disclosed by the inventor, a 
joint inventor, or another who obtained the subject matter directly or 
indirectly from the inventor or joint inventor. Specifically, AIA 35 
U.S.C. 102(b)(1)(B) provides that a disclosure which would otherwise 
qualify as prior art under AIA 35 U.S.C. 102(a)(1) (patent, printed 
publication, public use, sale, or other means of public availability) 
may be disqualified as prior art if: (1) The disclosure was made one 
year or less before the effective filing date of the claimed invention; 
and (2) the subject matter disclosed had been previously publicly 
disclosed by the inventor, a joint inventor, or another who obtained 
the subject matter directly or indirectly from the inventor or joint 
inventor. The previous public disclosure of the subject matter by the 
inventor, a joint inventor, or another who obtained the subject matter 
directly or indirectly from the inventor or joint inventor must itself 
be a disclosure within the one-year grace period (i.e., be either a 
grace period inventor disclosure by the inventor or a joint inventor or 
be a grace period inventor-originated disclosure by another who 
obtained the subject matter directly or indirectly from the inventor

[[Page 11077]]

or joint inventor). Otherwise, the previous public disclosure of the 
subject matter would qualify as prior art under AIA 35 U.S.C. 102(a)(1) 
that could not be disqualified under AIA 35 U.S.C. 102(b)(1). Section 
II.A. of these examination guidelines discusses the ``effective filing 
date'' of a claimed invention. Section II.D.2. of these examination 
guidelines discusses the use of affidavits or declarations to show that 
the subject matter disclosed had, before such disclosure, been publicly 
disclosed by the inventor or a joint inventor, and section II.D.3. of 
these examination guidelines discusses the use of affidavits or 
declarations to show that another obtained the subject matter disclosed 
directly or indirectly from the inventor or a joint inventor.
    The exception in AIA 35 U.S.C. 102(b)(1)(B) applies if the 
``subject matter disclosed [in the intervening disclosure] had, before 
such [intervening] disclosure, been publicly disclosed by the inventor 
or a joint inventor * * * .'' \90\ The exception in AIA 35 U.S.C. 
102(b)(1)(B) focuses on the ``subject matter'' that had been publicly 
disclosed by the inventor or a joint inventor. There is no requirement 
under AIA 35 U.S.C. 102(b)(1)(B) that the mode of disclosure by the 
inventor or a joint inventor (e.g., patenting, publication, public use, 
sale activity) be the same as the mode of disclosure of the intervening 
grace period disclosure. There is also no requirement that the 
disclosure by the inventor or a joint inventor be a verbatim or 
ipsissimis verbis disclosure of the intervening grace period 
disclosure.\91\ What is required for subject matter in an intervening 
grace period disclosure to be excepted under AIA 35 U.S.C. 102(b)(1)(B) 
is that the subject matter of the disclosure to be disqualified as 
prior art must have been previously publicly disclosed by the inventor 
or a joint inventor.
    The exception in AIA 35 U.S.C. 102(b)(1)(B) applies to the subject 
matter in the disclosure being relied upon as prior art for a rejection 
under AIA 35 U.S.C. 102(a)(1) (an intervening disclosure) that was also 
publicly disclosed by the inventor or a joint inventor before such 
intervening disclosure. The subject matter of an intervening grace 
period disclosure that was not previously publicly disclosed by the 
inventor or a joint inventor is available as prior art under AIA 35 
U.S.C. 102(a)(1). For example, the inventor or a joint inventor had 
publicly disclosed elements A, B, and C, and a subsequent intervening 
grace period disclosure discloses elements A, B, C, and D, then only 
element D of the intervening grace period disclosure is available as 
prior art under AIA 35 U.S.C. 102(a)(1).
    In addition, if subject matter of an intervening grace period 
disclosure is simply a more general description of the subject matter 
previously publicly disclosed by the inventor or a joint inventor, the 
exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter 
of the intervening grace period disclosure. For example, if the 
inventor or a joint inventor had publicly disclosed a species, and a 
subsequent intervening grace period disclosure discloses a genus (i.e., 
provides a more generic disclosure of the species), the intervening 
grace period disclosure of the genus is not available as prior art 
under AIA 35 U.S.C. 102(a)(1). Conversely, if the inventor or a joint 
inventor had publicly disclosed a genus, and a subsequent intervening 
grace period disclosure discloses a species, the intervening grace 
period disclosure of the species would be available as prior art under 
AIA 35 U.S.C. 102(a)(1). Likewise, if the inventor or a joint inventor 
had publicly disclosed a species, and a subsequent intervening grace 
period disclosure discloses an alternative species not also disclosed 
by the inventor or a joint inventor, the intervening grace period 
disclosure of the alternative species would be available as prior art 
under AIA 35 U.S.C. 102(a)(1).
    Finally, AIA 35 U.S.C. 102(b)(1)(B) does not discuss ``the claimed 
invention'' with respect to either the subject matter disclosed by the 
inventor or a joint inventor, or the subject matter of the subsequent 
intervening grace period disclosure. Any inquiry with respect to the 
claimed invention is whether or not the subject matter in the prior art 
disclosure being relied upon anticipates or renders obvious the claimed 
invention. A determination of whether the exception in AIA 35 U.S.C. 
102(b)(1)(B) is applicable to subject matter in an intervening grace 
period disclosure does not involve a comparison of the subject matter 
of the claimed invention to either the subject matter disclosed by the 
inventor or a joint inventor, or to the subject matter of the 
subsequent intervening grace period disclosure.

C. Provisions Pertaining to Subject Matter in a U.S. Patent or 
Application for a U.S. Patent Effectively Filed Before the Effective 
Filing Date of the Claimed Invention

1. Prior Art Under AIA 35 U.S.C. 102(a)(2) (U.S. Patents, U.S. Patent 
Application Publications, and World Intellectual Property Organization 
(WIPO) Publications of International Applications (WIPO Published 
Applications))
    AIA 35 U.S.C. 102(a)(2) sets forth three types of patent documents 
that are available as prior art as of the date they were effectively 
filed with respect to the subject matter relied upon in the document if 
they name another inventor: (1) U.S. patents; (2) U.S. patent 
application publications; and (3) WIPO published applications. These 
documents may have different prior art effects under pre-AIA 35 U.S.C. 
102(e) than under AIA 35 U.S.C. 102(a)(2).
    a. WIPO published applications. AIA 35 U.S.C. 102(a)(2) explicitly 
references U.S. patents and U.S. patent application publications. 
Moreover, the WIPO publication of a PCT international application that 
designates the United States is an application for patent deemed 
published under 35 U.S.C. 122(b) for purposes of AIA 35 U.S.C. 
102(a)(2) under 35 U.S.C. 374. Thus, under the AIA, WIPO publications 
of PCT applications that designate the United States are treated as 
U.S. patent application publications for prior art purposes, regardless 
of the international filing date, whether they are published in 
English, or whether the PCT international application enters the 
national stage in the United States. Accordingly, a U.S. patent, a U.S. 
patent application publication, or a WIPO published application that 
names another inventor and was effectively filed before the effective 
filing date of the claimed invention, is prior art under AIA 35 U.S.C. 
102(a)(2). This differs from the treatment of a WIPO published 
application under pre-AIA 35 U.S.C. 102(e), where a WIPO published 
application is treated as a U.S. patent application publication only if 
the PCT application was filed on or after November 29, 2000, and 
published under PCT Article 21(2) in the English language.
    A U.S. patent, U.S. patent application publication, or WIPO 
published application is prior art under AIA 35 U.S.C. 102(a)(1) if its 
issue or publication date is before the effective filing date of the 
claimed invention in question. If the issue date of the U.S. patent or 
publication date of the U.S. patent application publication or WIPO

[[Page 11078]]

published application is not before the effective filing date of the 
claimed invention, it may still be applicable as prior art under AIA 35 
U.S.C. 102(a)(2) if it was ``effectively filed'' before the effective 
filing date of the claimed invention in question with respect to the 
subject matter relied upon to reject the claim. Section II.A. of these 
examination guidelines discusses the ``effective filing date'' of a 
claimed invention. AIA 35 U.S.C. 102(d) sets forth the criteria to 
determine when subject matter described in a U.S. patent, U.S. patent 
application publication, or WIPO published application was 
``effectively filed'' for purposes of AIA 35 U.S.C. 102(a)(2).
    b. Determining when subject matter was effectively filed under AIA 
35 U.S.C. 102(d). AIA 35 U.S.C. 102(d) provides that a U.S. patent, 
U.S. patent application publication, or WIPO published application is 
prior art under AIA 35 U.S.C. 102(a)(2) with respect to any subject 
matter described in the patent or published application as of either 
its actual filing date (AIA 35 U.S.C. 102(d)(1)), or the filing date of 
a prior application to which there is a priority or benefit claim (AIA 
35 U.S.C. 102(d)(2)). A U.S. patent, U.S. patent application 
publication, or WIPO published application ``is entitled to claim'' 
priority to, or the benefit of, a prior-filed application if it 
fulfills the ministerial requirements of: (1) Containing a priority or 
benefit claim to the prior-filed application; (2) being filed within 
the applicable filing period requirement (copending with or within 
twelve months of the earlier filing, as applicable); and (3) having a 
common inventor or being by the same applicant.\92\
    The AIA draws a distinction between actually being entitled to 
priority to, or the benefit of, a prior-filed application in the 
definition of effective filing date of a claimed invention in AIA 35 
U.S.C. 100(i)(1)(B), and merely being entitled to claim priority to, or 
the benefit of, a prior-filed application in the definition of 
effectively filed in AIA 35 U.S.C. 102(d).\93\ As a result of this 
distinction, the question of whether a patent or published application 
is actually entitled to priority or benefit with respect to any of its 
claims is not at issue in determining the date the patent or published 
application was ``effectively filed'' for prior art purposes.\94\ Thus, 
as was the case even prior to the AIA,\95\ there is no need to evaluate 
whether any claim of a U.S. patent, U.S. patent application 
publication, or WIPO published application is actually entitled to 
priority or benefit under 35 U.S.C. 119, 120, 121, or 365 when applying 
such a document as prior art.
    AIA 35 U.S.C. 102(d) requires that a prior-filed application to 
which a priority or benefit claim is made must describe the subject 
matter from the U.S. patent, U.S. patent application publication, or 
WIPO published application relied upon in a rejection. However, AIA 35 
U.S.C. 102(d) does not require that this description meet the 
requirements of 35 U.S.C. 112(a). As discussed previously with respect 
to AIA 35 U.S.C. 102(a)(1), the Office does not view the AIA as 
changing the extent to which a claimed invention must be described for 
a prior art document to anticipate the claimed invention under AIA 35 
U.S.C. 102.
    The AIA also eliminates the so-called Hilmer doctrine.\96\ Under 
the Hilmer doctrine, pre-AIA 35 U.S.C. 102(e) limited the effective 
filing date for U.S. patents (and published applications) as prior art 
to their earliest U.S. filing date. In contrast, AIA 35 U.S.C. 102(d) 
provides that if the U.S. patent, U.S. patent application publication, 
or WIPO published application claims priority to one or more prior-
filed foreign or international applications under 35 U.S.C. 119 or 365, 
the patent or published application was effectively filed on the filing 
date of the earliest such application that describes the subject 
matter.\97\ Therefore, if the subject matter relied upon is described 
in the application to which there is a priority or benefit claim, a 
U.S. patent, a U.S. patent application publication, or WIPO published 
application is effective as prior art as of the filing date of the 
earliest such application, regardless of where filed.
    c. Requirement of ``names another inventor.'' To qualify as prior 
art under AIA 35 U.S.C. 102(a)(2), the prior art U.S. patent, U.S. 
patent application publication, or WIPO published application must 
``name[s] another inventor.'' This means that if there is any 
difference in inventive entity between the prior art U.S. patent, U.S. 
patent application publication, or WIPO published application and the 
application under examination or patent under reexamination, the U.S. 
patent, U.S. patent application publication, or WIPO published 
application satisfies the ``names another inventor'' requirement of AIA 
35 U.S.C. 102(a)(2). Thus, in the case of joint inventors, only one 
inventor needs to be different for the inventive entities to be 
different. Even if there are some inventors in common in a U.S. patent, 
a U.S. patent application publication, or WIPO published application 
and in a later-filed application under examination or patent under 
reexamination, the U.S. patent, a U.S. patent application publication, 
or WIPO published application qualifies as prior art under AIA 35 
U.S.C. 102(a)(2) unless an exception in AIA 35 U.S.C. 102(b)(2) is 
applicable.
2. Prior Art Exceptions Under 35 U.S.C. 102(b)(2) to AIA 35 U.S.C. 
102(a)(2)
    a. Prior art exception under AIA 35 U.S.C. 102(b)(2)(A) to AIA 35 
U.S.C. 102(a)(2) (inventor-originated disclosure exception). AIA 35 
U.S.C. 102(b)(2)(A) provides an exception to the prior art provisions 
of AIA 35 U.S.C. 102(a)(2). This exception limits the use of an 
inventor's own work as prior art, when the inventor's own work is 
disclosed in a U.S. patent, U.S. patent application publication, or 
WIPO published application by another who obtained the subject matter 
directly or indirectly from the inventor or joint inventor.
    Specifically, AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure 
which would otherwise qualify as prior art under AIA 35 U.S.C. 
102(a)(2) may be disqualified as prior art if the subject matter 
disclosed was obtained directly or indirectly from the inventor or a 
joint inventor. Thus, if the subject matter in a U.S. patent, U.S. 
patent application publication, or WIPO published application upon 
which the rejection is based is by another who obtained the subject 
matter from the inventor or a joint inventor, the applicant may 
establish by way of an affidavit or declaration that a disclosure is 
not prior art under AIA 35 U.S.C. 102(a)(2). Section II.D.3. of these 
examination guidelines discusses the use of affidavits or declarations 
to show that the disclosure was by another who obtained the subject 
matter disclosed directly or indirectly from the inventor or a joint 
inventor under the exception of AIA 35 U.S.C. 102(b)(2)(A) for an 
inventor-originated disclosure.
    b. Prior art exception under AIA 35 U.S.C. 102(b)(2)(B) to AIA 35 
U.S.C. 102(a)(2) (inventor or inventor-originated prior public 
disclosure exception). AIA 35 U.S.C. 102(b)(2)(B) provides additional 
exceptions to the prior art provisions of AIA 35 U.S.C. 102(a)(2). 
These exceptions disqualify subject matter that was effectively filed 
by another after the subject matter had been publicly disclosed by the 
inventor, a joint inventor, or another who obtained the subject matter 
directly or indirectly from the inventor or joint inventor.
    Specifically, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure 
which would otherwise qualify as prior art under AIA 35 U.S.C. 
102(a)(2) (a U.S.

[[Page 11079]]

patent, U.S. patent application publication, or WIPO published 
application) may be disqualified as prior art if the subject matter 
disclosed had been previously publicly disclosed by the inventor, a 
joint inventor, or another who obtained the subject matter directly or 
indirectly from the inventor or joint inventor. The previous public 
disclosure of the subject matter by the inventor, a joint inventor, or 
another who obtained the subject matter directly or indirectly from the 
inventor or joint inventor must itself be a public disclosure (i.e., be 
either an inventor disclosure by the inventor or a joint inventor or be 
an inventor-originated disclosure by another who obtained the subject 
matter directly or indirectly from the inventor or joint inventor). If 
a previous public disclosure by the inventor or which originated with 
the inventor is not within the grace period of AIA 35 U.S.C. 102(b)(1), 
it would qualify as prior art under AIA 35 U.S.C. 102(a)(1), and could 
not be disqualified under AIA 35 U.S.C. 102(b)(1). Section II.D.2. of 
these examination guidelines discusses the use of affidavits or 
declarations to show that the subject matter disclosed had, before such 
disclosure, been publicly disclosed by the inventor or a joint 
inventor, and section II.D.3. of these examination guidelines discusses 
the use of affidavits or declarations to show that another who obtained 
the subject matter disclosed directly or indirectly from the inventor 
or a joint inventor.
    Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), 
the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the ``subject 
matter disclosed [in the intervening disclosure] had, before such 
[intervening] disclosure [was effectively filed], been publicly 
disclosed by the inventor or a joint inventor * * *.'' \98\ The 
exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the ``subject 
matter'' that had been publicly disclosed by the inventor or a joint 
inventor. There is no requirement under 35 U.S.C. 102(b)(2)(B) that the 
mode of disclosure by the inventor or a joint inventor (e.g., 
patenting, publication, public use, sale activity) be the same as the 
mode of disclosure of the intervening U.S. patent, U.S. patent 
application publication, or WIPO published application. There is also 
no requirement that the disclosure by the inventor or a joint inventor 
be a verbatim or ipsissimis verbis disclosure of the intervening U.S. 
patent, U.S. patent application publication, or WIPO published 
application. What is required for subject matter in the intervening 
U.S. patent, U.S. patent application publication, or WIPO published 
application to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the 
subject matter must have been previously publicly disclosed by the 
inventor or a joint inventor or must have originated with the inventor.
    The exception in AIA 35 U.S.C. 102(b)(2)(B) applies to the subject 
matter in the intervening U.S. patent, U.S. patent application 
publication, or WIPO published application being relied upon for a 
rejection under AIA 35 U.S.C. 102(a)(2) that was also publicly 
disclosed by the inventor or a joint inventor (or have originated with 
the inventor) before the date the subject matter relied upon was 
effectively filed. The subject matter of an intervening U.S. patent, 
U.S. patent application publication, or WIPO published application that 
was not previously publicly disclosed by the inventor or a joint 
inventor (or by another who obtained the subject matter from the 
inventor or joint inventor) is available as prior art under AIA 35 
U.S.C. 102(a)(2). For example, if the inventor or a joint inventor had 
publicly disclosed elements A, B, and C, and a subsequent intervening 
U.S. patent, U.S. patent application publication, or WIPO published 
application discloses elements A, B, C, and D, then only element D of 
the intervening U.S. patent, U.S. patent application publication, or 
WIPO published application is available as prior art under AIA 35 
U.S.C. 102(a)(2).
    In addition, if subject matter of an intervening U.S. patent, U.S. 
patent application publication, or WIPO published application is simply 
a more general description of the subject matter previously publicly 
disclosed by the inventor or a joint inventor, the exception in AIA 35 
U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening 
U.S. patent, U.S. patent application publication, or WIPO published 
application disclosure. For example, if the inventor or a joint 
inventor had publicly disclosed a species, and a subsequent intervening 
U.S. patent, U.S. patent application publication, or WIPO published 
application discloses a genus (i.e., provides a more generic disclosure 
of the species), the disclosure of the genus in the intervening U.S. 
patent, U.S. patent application publication, or WIPO published 
application is not available as prior art under AIA 35 U.S.C. 
102(a)(2). Conversely, if the inventor or a joint inventor had publicly 
disclosed a genus, and a subsequent intervening U.S. patent, U.S. 
patent application publication, or WIPO published application discloses 
a species, the disclosure of the species in the subsequent intervening 
U.S. patent, U.S. patent application publication, or WIPO published 
application would be available as prior art under AIA 35 U.S.C. 
102(a)(2). Likewise, if the inventor or a joint inventor had publicly 
disclosed a species, and a subsequent intervening U.S. patent, U.S. 
patent application publication, or WIPO published application discloses 
an alternative species not also disclosed by the inventor or a joint 
inventor, the disclosure of the alternative species in the intervening 
U.S. patent, U.S. patent application publication, or WIPO published 
application would be available as prior art under AIA 35 U.S.C. 
102(a)(2).
    Finally, AIA 35 U.S.C. 102(b)(2)(B) does not discuss ``the claimed 
invention'' with respect to either the subject matter disclosed by the 
inventor or a joint inventor, or the subject matter of the subsequent 
intervening U.S. patent, U.S. patent application publication, or WIPO 
published application. Any inquiry with respect to the claimed 
invention is whether or not the subject matter in the prior art 
disclosure being relied upon anticipates or renders obvious the claimed 
invention. A determination of whether the exception in AIA 35 U.S.C. 
102(b)(2)(B) is applicable to subject matter in an intervening U.S. 
patent, U.S. patent application publication, or WIPO published 
application does not involve a comparison of the subject matter of the 
claimed invention to either the subject matter disclosed by the 
inventor or a joint inventor, or to the subject matter of the 
subsequent intervening U.S. patent, U.S. patent application 
publication, or WIPO published application.
    c. Prior art exception under AIA 35 U.S.C. 102(b)(2)(C) to AIA 35 
U.S.C. 102(a)(2) (common ownership or obligation of assignment). AIA 35 
U.S.C. 102(b)(2)(C) provides an additional exception to the prior art 
provisions of AIA 35 U.S.C. 102(a)(2). The exception of AIA 35 U.S.C. 
102(b)(2)(C) disqualifies subject matter disclosed in a U.S. patent, 
U.S. patent application publication, or WIPO published application from 
constituting prior art under AIA 35 U.S.C. 102(a)(2) if 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.'' AIA 35 U.S.C. 102(b)(2)(C) resembles pre-AIA 35 U.S.C. 103(c) 
in that both concern common ownership, and both offer an avenue by 
which an applicant may

[[Page 11080]]

avoid certain prior art. However, there are significant differences 
between AIA 35 U.S.C. 102(b)(2)(C) and pre-AIA 35 U.S.C. 103(c).
    If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, a U.S. 
patent, U.S. patent application publication, or WIPO published 
application that might otherwise qualify as prior art under AIA 35 
U.S.C. 102(a)(2) is not available as prior art under either AIA 35 
U.S.C. 102 or 103. Under pre-AIA 35 U.S.C. 103(c), such prior art could 
preclude patentability under pre-AIA 35 U.S.C. 102, even if the 
conditions of pre-AIA 35 U.S.C. 103(c) were met. The consequence of 
this distinction is that a published application or an issued patent 
that falls under the common ownership exception of AIA 35 U.S.C. 
102(b)(2)(C) may not be applied in either an anticipation or an 
obviousness rejection.
    It is important to note the circumstances in which the AIA 35 
U.S.C. 102(b)(2)(C) exception does not remove U.S. patents, U.S. patent 
application publications, or WIPO published applications as a basis for 
any rejection. Even if the U.S. patent or U.S. published application is 
not prior art under AIA 35 U.S.C. 102 or 103 as a result of AIA 35 
U.S.C. 102(b)(2)(C), a double patenting rejection (either statutory 
under 35 U.S.C. 101 or non-statutory, sometimes called obviousness-
type) may still be made on the basis of the U.S. patent or U.S. patent 
application publication. Furthermore, the U.S. patent, U.S. patent 
application publication, or WIPO published application that does not 
qualify as prior art as a result of AIA 35 U.S.C. 102(b)(2)(C) may be 
cited, in appropriate situations, to indicate the state of the art when 
making a lack of enablement rejection under 35 U.S.C. 112(a). A 
document need not qualify as prior art to be applied in the context of 
double patenting \99\ or enablement.\100\ Also, the AIA 35 U.S.C. 
102(b)(2)(C) exception does not apply to a disclosure that qualifies as 
prior art under AIA 35 U.S.C. 102(a)(1) (disclosures made before the 
effective filing date of the claimed invention). Thus, if the issue 
date of a U.S. patent or publication date of a U.S. patent application 
publication or WIPO published application is before the effective 
filing date of the claimed invention, it may be prior art under AIA 35 
U.S.C. 102(a)(1), regardless of common ownership or the existence of an 
obligation to assign.
    The Office is also revising the rules of practice in a separate 
action (RIN 0651-AC77) to include provisions that pertain to commonly 
owned or joint research agreement subject matter (37 CFR 1.104(c)(4) 
and (c)(5)). 37 CFR 1.104(c)(4) applies to an application that is 
subject to AIA 35 U.S.C. 102 and 103, and 37 CFR 1.104(c)(5) applies to 
an application that is subject to pre-AIA 35 U.S.C. 102 and 103. 
Commonly owned subject matter under AIA 35 U.S.C. 102 and 103 is 
treated under 37 CFR 1.104(c)(4)(i), and commonly owned subject matter 
under pre-AIA 35 U.S.C. 102 and 103 is treated under 37 CFR 
1.104(c)(5)(i).
    A clear and conspicuous statement by the applicant (or the 
applicant's representative of record) that the claimed invention of the 
application under examination and the subject matter disclosed in the 
U.S. patent, U.S. patent application publication, or WIPO published 
application (prior art) to be excluded under AIA 35 U.S.C. 102(b)(2)(C) 
were owned by the same person or subject to an obligation of assignment 
to the same person not later than the effective filing date of the 
claimed invention will be sufficient to establish that the AIA 35 
U.S.C. 102(b)(2)(C) exception applies. When relying on the provisions 
of pre-AIA 35 U.S.C. 103(c), the applicant (or the applicant's 
representative) could provide a similar statement required to 
disqualify the cited prior art. The applicant may present supporting 
evidence such as copies of assignment documents, but is not required to 
do so. Furthermore, the Office will not request corroborating evidence 
in the absence of independent evidence which raises doubt as to the 
veracity of such a statement. The statement under AIA 35 U.S.C. 
102(b)(2)(C) will generally be treated by Office personnel analogously 
to statements made under pre-AIA 35 U.S.C. 103(c).\101\

D. Use of Affidavits or Declarations Under 37 CFR 1.130 To Overcome 
Prior Art Rejections

    The Office is also revising the rules of practice in a separate 
action (RIN 0651-AC77) to provide a mechanism in 37 CFR 1.130 for 
filing an affidavit or declaration to establish that a disclosure that 
was not made more than one year before the effective filing date of the 
claimed invention is not prior art under AIA 35 U.S.C. 102(a) due to an 
exception in AIA 35 U.S.C. 102(b). Under 37 CFR 1.130(a), an affidavit 
or declaration of attribution may be submitted to disqualify a 
disclosure as prior art because it was made by the inventor or a joint 
inventor, or by one who obtained the subject matter disclosed directly 
or indirectly from the inventor or a joint inventor. Under 37 CFR 
1.130(b), an affidavit or declaration of prior public disclosure may be 
submitted to disqualify an intervening disclosure as prior art if: (1) 
The subject matter disclosed had been publicly disclosed by the 
inventor or a joint inventor before the disclosure of the subject 
matter on which the rejection is based; or (2) the subject matter 
disclosed had been publicly disclosed by the inventor or a joint 
inventor before the date the subject matter in the U.S. patent, U.S. 
patent application publication, or WIPO published application on which 
the rejection is based was effectively filed.
1. Showing That the Disclosure Was Made by the Inventor or a Joint 
Inventor
    AIA 35 U.S.C. 102(b)(1)(A) provides that a grace period disclosure 
shall not be prior art to a claimed invention under AIA 35 U.S.C. 
102(a)(1) if the disclosure was made by the inventor or a joint 
inventor. An applicant may show that a disclosure was made by the 
inventor or a joint inventor by way of an affidavit or declaration 
under 37 CFR 1.130(a) (an affidavit or declaration of 
attribution).\102\ 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.\103\ However, a mere statement 
from the inventor or a joint inventor without any accompanying 
reasonable explanation may not be sufficient where there is evidence to 
the contrary.\104\ This is similar to the current process for 
disqualifying a publication as not being by ``others'' discussed in 
MPEP Sec.  2132.01, except that AIA 35 U.S.C. 102(b)(1)(A) requires 
only that the disclosure be by the inventor or a joint inventor.
2. Showing That the Subject Matter Disclosed Had Been Previously 
Publicly Disclosed by the Inventor or a Joint Inventor
    AIA 35 U.S.C. 102(b)(1)(B) provides that a grace period disclosure 
shall not be prior art to a claimed invention under AIA 35 U.S.C. 
102(a)(1) if subject matter disclosed had, before such disclosure, been 
publicly disclosed by the inventor or a joint inventor. Similarly, AIA 
35 U.S.C. 102(b)(2)(B) provides that a disclosure shall not be prior 
art to a claimed invention under AIA 35 U.S.C. 102(a)(2) if the subject 
matter disclosed had, before such subject matter was effectively filed

[[Page 11081]]

under AIA 35 U.S.C. 102(a)(2), been publicly disclosed by the inventor 
or a joint inventor. An applicant may show that the subject matter 
disclosed had been publicly disclosed by the inventor or a joint 
inventor before the disclosure or effective filing date of the subject 
matter on which the rejection was based by way of an affidavit or 
declaration under 37 CFR 1.130(b) (an affidavit or declaration of prior 
public disclosure). Specifically, the affidavit or declaration must 
identify the subject matter publicly disclosed and establish the date 
and content of their earlier public disclosure. If the earlier public 
disclosure was a printed publication, the affidavit or declaration must 
be accompanied by a copy of the printed publication in accordance with 
37 CFR 1.130(b)(1). If the earlier disclosure was not a printed 
publication, the affidavit or declaration must describe the earlier 
disclosure with sufficient detail and particularity to determine that 
the earlier disclosure is a public disclosure of the subject matter, as 
required by 37 CFR 1.130(b)(2).
    The manner of disclosure of subject matter referenced in an 
affidavit or declaration under 37 CFR 1.130(b) is not critical. Just as 
the prior art provision of AIA 35 U.S.C. 102(a)(1) encompasses any 
disclosure that renders a claimed invention ``available to the 
public,'' any manner of disclosure may be evidenced in an affidavit or 
declaration under 37 CFR 1.130(b). That is, when using an affidavit or 
declaration under 37 CFR 1.130(b) to disqualify an intervening 
disclosure as prior art based on a prior public disclosure by an 
inventor or a joint inventor, it is not necessary for the subject 
matter to have been disclosed in the same manner or using the same 
words. For example, the inventor or a joint inventor may have publicly 
disclosed the subject matter in question via a slide presentation at a 
scientific meeting, while the intervening disclosure of the subject 
matter may have been made in a journal article. This difference in the 
manner of disclosure or differences in the words used to describe the 
subject matter will not preclude the inventor from submitting an 
affidavit or declaration under 37 CFR 1.130(b) to disqualify the 
intervening disclosure (e.g., a journal article) as prior art.
3. Showing That the Disclosure was Made, or That Subject Matter had 
Been Previously Publicly Disclosed, by Another Who Obtained the Subject 
Matter Disclosed Directly or Indirectly From the Inventor or a Joint 
Inventor
    AIA 35 U.S.C. 102(b)(1)(A), 102(b)(1)(B), 102(b)(2)(A), and 
102(b)(2)(B) each provide similar treatment for disclosures of subject 
matter by another who obtained the subject matter disclosed directly or 
indirectly from the inventor or a joint inventor. Specifically, AIA 35 
U.S.C. 102(b)(1)(A) provides that a grace period disclosure shall not 
be prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1) if 
the disclosure was made by another who obtained the subject matter 
disclosed directly or indirectly from the inventor or a joint inventor, 
and AIA 35 U.S.C. 102(b)(2)(A) provides that a disclosure shall not be 
prior art to a claimed invention under AIA 35 U.S.C. 102(a)(2) if the 
subject matter disclosed was obtained directly or indirectly from the 
inventor or a joint inventor. In addition, AIA 35 U.S.C. 102(b)(1)(B) 
and 102(b)(2)(B) provide that a grace period disclosure shall not be 
prior art to a claimed invention under AIA 35 U.S.C. 102(a)(1), and 
that a disclosure shall not be prior art to a claimed invention under 
AIA 35 U.S.C. 102(a)(2), if the subject matter disclosed had, before 
such disclosure, been publicly disclosed by another who obtained the 
subject matter disclosed directly or indirectly from the inventor or a 
joint inventor. An applicant may also show that another obtained the 
subject matter disclosed directly or indirectly from the inventor or a 
joint inventor in an affidavit or declaration under 37 CFR 1.130(a) or 
(b). Thus, an applicant may make use of a prior public disclosure by 
another during the grace period if the applicant can establish that 
subject matter disclosed originated with the inventor or a joint 
inventor and that the subject matter was communicated by the inventor 
or a joint inventor, directly or indirectly. Any documentation which 
provides evidence of the communication of the subject matter by the 
inventor or a joint inventor to the entity that made the disclosure of 
the subject matter should accompany the affidavit or declaration.
4. Enablement
    An affidavit or declaration under 37 CFR 1.130(a) or (b) need not 
demonstrate that the disclosure by the inventor, a joint inventor, or 
another who obtained the subject matter disclosed directly or 
indirectly from an inventor or a joint inventor was an ``enabling'' 
disclosure of the subject matter within the meaning of 35 U.S.C. 
112(a). Rather, an affidavit or declaration under 37 CFR 1.130 must 
show that: (1) The disclosure in question was made by the inventor or a 
joint inventor, or the subject matter disclosed was obtained directly 
or indirectly from the inventor or a joint inventor (37 CFR 
1.130(a));\105\ or (2) the subject matter disclosed had, before such 
disclosure was made or before such subject matter was effectively 
filed, 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 (37 CFR 
1.130(b)).\106\
5. Who may File an Affidavit or Declaration Under 37 CFR 1.130
    In accordance with 37 CFR 1.130, the applicant or patent owner may 
submit an affidavit or declaration. When an assignee, obligated 
assignee, or person showing sufficient proprietary interest is the 
applicant under 35 U.S.C. 118 rather than the inventor, the inventor 
may sign an affidavit or declaration under 37 CFR 1.130 to disqualify a 
disclosure of the invention as prior art, but the declaration must be 
filed by a party having authority to take action in the application. 
Authority to file papers in an application generally does not lie with 
the inventor if the inventor is not the applicant.
6. Situations in Which an Affidavit or Declaration Is Not Available
    The provisions of 37 CFR 1.130 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. The AIA retains the principle of 
the one-year statutory time bar of pre-AIA 35 U.S.C. 102(b) in that a 
disclosure more than one year before the effective filing date of a 
claimed invention is prior art under the AIA's 35 U.S.C. 102(a)(1) that 
cannot be disqualified under 35 U.S.C. 102(b)(1).
    Additionally, the provisions of 37 CFR 1.130 may not be available 
if the rejection is based upon a U.S. patent or U.S. patent application 
publication of a patented or pending application naming another 
inventor if: (1) The patent or pending application claims an invention 
that is the same or substantially the same as the applicant's or patent 
owner's claimed invention; and (2) the affidavit or declaration 
contends that an inventor named in the U.S. patent or U.S. patent 
application publication derived the claimed invention from the inventor 
or a joint inventor named in the application or patent. The provisions 
of 37 CFR 1.130 are not available if it would result in the Office 
issuing or confirming two patents containing patentably indistinct 
claims to two different parties.\107\ In this situation, an applicant 
or patent owner may file a petition for a derivation proceeding 
pursuant to 37 CFR 42.401 et seq. (37 CFR 1.130(c)).

[[Page 11082]]

III. Joint Research Agreements

    AIA 35 U.S.C. 102(c) provides three conditions that must be 
satisfied in order for subject matter disclosed which might otherwise 
qualify as prior art, and a claimed invention, to be treated as having 
been owned by the same person or subject to an obligation of assignment 
to the same person in applying the joint research agreement provisions 
of AIA 35 U.S.C. 102(b)(2)(C). First, the subject matter disclosed must 
have been developed and the claimed invention must have been made by, 
or on behalf of, one or more parties to a joint research agreement that 
was in effect on or before the effective filing date of the claimed 
invention.\108\ The AIA defines the term ``joint research agreement'' 
as a written contract, grant, or cooperative agreement entered into by 
two or more persons or entities for the performance of experimental, 
developmental, or research work in the field of the claimed 
invention.\109\ Second, the claimed invention must have been made as a 
result of activities undertaken within the scope of the joint research 
agreement.\110\ Third, the application for patent for the claimed 
invention must disclose, or be amended to disclose, the names of the 
parties to the joint research agreement.\111\ Joint research agreement 
subject matter under AIA 35 U.S.C. 102 and 103 is treated under 37 CFR 
1.104(c)(4)(ii), joint research agreement subject matter under pre-AIA 
35 U.S.C. 102 and 103 is treated under 37 CFR 1.104(c)(5)(ii). If these 
conditions are met, the joint research agreement prior art is not 
available as prior art under AIA 35 U.S.C. 102(a)(2).
    The provisions of AIA 35 U.S.C. 102(c) generally track those of the 
Cooperative Research and Technology Enhancement Act of 2004 (CREATE 
Act).\112\ The major differences between AIA 35 U.S.C. 102(c) and the 
CREATE Act are that: (1) The new provision is keyed to the effective 
filing date of the claimed invention, while the CREATE Act focused on 
the date that the claimed invention was made; and (2) the CREATE Act 
provisions only applied to obviousness rejections and not to 
anticipation rejections.
    In order to invoke a joint research agreement to disqualify a 
disclosure as prior art, the applicant (or the applicant's 
representative of record) must provide a statement that the disclosure 
of the subject matter on which the rejection is based and the claimed 
invention were made by or on behalf of parties to a joint research 
agreement under AIA 35 U.S.C. 102(c). The statement must also assert 
that the agreement was in effect on or before the effective filing date 
of the claimed invention, and that the claimed invention was made as a 
result of activities undertaken within the scope of the joint research 
agreement. When relying on the provisions of pre-AIA 35 U.S.C. 103(c), 
the applicant or his attorney or agent of record could provide a 
similar statement to disqualify the cited prior art as to the issue of 
obviousness. If the names of the parties to the joint research 
agreement are not already stated in the application, it is necessary to 
amend the application to include the names of the parties to the joint 
research agreement in accordance with 37 CFR 1.71(g).
    As is the case with establishing common ownership, the applicant 
may, but is not required to, present evidence supporting the existence 
of the joint research agreement. Furthermore, the Office will not 
request corroborating evidence in the absence of independent evidence 
which raises doubt as to the existence of the joint research agreement.
    As discussed previously, the AIA 35 U.S.C. 102(b)(2)(C) exception 
does not apply to a disclosure that qualifies as prior art under AIA 35 
U.S.C. 102(a)(1) (disclosures made before the effective filing date of 
the claimed invention). Thus, if the issue date of a U.S. patent or 
publication date of a U.S. patent application publication or WIPO 
published application is before the effective filing date of the 
claimed invention, it may be prior art under AIA 35 U.S.C. 102(a)(1), 
regardless of the fact that the subject matter disclosed and the 
claimed invention resulted from a joint research agreement.

IV. Improper Naming of Inventors

    Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent 
laws still require the naming of the actual inventor or joint inventors 
of the claimed subject matter.\113\ The Office presumes that the named 
inventor or joint inventors in the application are the actual inventor 
or joint inventors be named on the patent.\114\ Where an application 
names an incorrect inventorship, the applicant should submit a request 
to correct inventorship under 37 CFR 1.48. In the rare situation where 
it clear that the application does not name the correct inventorship 
and the applicant has not filed a request to correct inventorship under 
37 CFR 1.48, Office personnel should reject the claims under 35 U.S.C. 
101 and 35 U.S.C. 115.\115\

V. AIA 35 U.S.C. 103

    AIA 35 U.S.C. 103 continues to set forth the nonobviousness 
requirement for patentability.\116\ There are, however, some important 
changes from pre-AIA 35 U.S.C. 103.
    The most significant difference between the AIA 35 U.S.C. 103 and 
pre-AIA 35 U.S.C. 103(a) is that AIA 35 U.S.C. 103 determines 
obviousness as of the effective filing date of the claimed invention, 
rather than as of the time that the claimed invention was made. Under 
pre-AIA examination practice, the Office uses the effective filing date 
as a proxy for the invention date, unless there is evidence of record 
to establish an earlier date of invention. Thus, as a practical matter 
during examination, this distinction between the AIA 35 U.S.C. 103 and 
pre-AIA 35 U.S.C. 103 will result in a difference in practice only when 
the case under examination is subject to pre-AIA 35 U.S.C. 103, and 
there is evidence in the case concerning a date of invention prior to 
the effective filing date. Such evidence is ordinarily presented by way 
of an affidavit or declaration under 37 CFR 1.131.
    Next, AIA 35 U.S.C. 103 differs from that of pre-AIA 35 U.S.C. 103 
in that AIA 35 U.S.C. 103 requires consideration of ``the differences 
between the claimed invention and the prior art,'' while pre-AIA 35 
U.S.C. 103 refers to ``the differences between the subject matter 
sought to be patented and the prior art.'' This difference in 
terminology does not indicate the need for any difference in approach 
to the question of obviousness.\117\
    Further, AIA 35 U.S.C. 103 does not contain any provision similar 
to pre-AIA 35 U.S.C. 103(b). Pre-AIA 35 U.S.C. 103(b) is narrowly 
drawn, applying only to nonobviousness of biotechnological inventions, 
and even then, only when specifically invoked by the patent applicant. 
Pre-AIA 35 U.S.C. 103(b) provides that under certain conditions, ``a 
biotechnological process using or resulting in a composition of matter 
that is novel under section 102 and nonobvious under subsection 
[103(a)] of this section shall be considered nonobvious.'' In view of 
the case law since 1995,\118\ the need to invoke pre-AIA 35 U.S.C. 
103(b) has been rare.
    Finally, AIA 35 U.S.C. 103 eliminates pre-AIA 35 U.S.C. 103(c), but 
corresponding provisions have been introduced in AIA 35 U.S.C. 
102(b)(2)(C) and 102(c). Pre-AIA 35 U.S.C. 103(c) applied if subject 
matter qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), 
and/or (g), and only in the context of obviousness under pre-AIA 35 
U.S.C. 103(a). If subject matter developed by another person was 
commonly owned with the claimed invention, or if the subject matter was 
subject to an obligation of

[[Page 11083]]

assignment to the same person, at the time the claimed invention was 
made, then pre-AIA 35 U.S.C. 103(a) did not preclude patentability. 
Furthermore, under the pre-AIA 35 U.S.C. 103(c), if a joint research 
agreement was in place on or before the date that the claimed invention 
was made, the claimed invention was made as a result of activities 
undertaken within the scope of the joint research agreement, and the 
application for patent was amended to disclose the names of the parties 
to the joint research agreement, common ownership or an obligation to 
assign was deemed to exist. As discussed previously, AIA 35 U.S.C. 
102(b)(2)(C) and 102(c) expand on this concept. Under the AIA, the 
common ownership, the obligation to assign, or the joint research 
agreement must exist on or before the effective filing date of the 
claimed invention, rather than on or before the date the invention was 
made. If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, a 
disclosure is not prior art at all, whereas under pre-AIA 35 U.S.C. 
103(c), certain prior art merely was defined as not precluding 
patentability. Finally, disclosures disqualified as prior art under AIA 
35 U.S.C. 102(b)(2)(C) and 102(c) may not be applied in either an 
anticipation or an obviousness rejection. However, such disclosures 
could be the basis for statutory double patenting or non-statutory 
(sometimes referred to as obviousness-type) double patenting 
rejections.
    Generally speaking, and with the exceptions noted herein, pre-AIA 
notions of obviousness will continue to apply under the AIA. AIA 35 
U.S.C. 102(a) defines what is prior art both for purposes of novelty 
under AIA 35 U.S.C. 102 as well as for purposes of obviousness under 
AIA 35 U.S.C. 103.\119\ Thus, if a document qualifies as prior art 
under AIA 35 U.S.C. 102(a)(1) or (a)(2), and is not subject to an 
exception under AIA 35 U.S.C. 102(b), it may be applied for what it 
describes or teaches to those skilled in the art in a rejection under 
AIA 35 U.S.C. 103.\120\ Office personnel should continue to follow 
guidance for formulating an appropriate rationale to support any 
conclusion of obviousness. See MPEP Sec.  2141 et seq. and the guidance 
documents available at http://www.uspto.gov/patents/law/exam/ksr_training_materials.jsp.

VI. Applicability Date Provisions and Determining Whether an 
Application Is Subject to the First Inventor To File Provisions of the 
AIA

    Because the changes to 35 U.S.C. 102 and 103 in the AIA apply only 
to specific applications filed on or after March 16, 2013, determining 
the effective filing date of a claimed invention for purposes of 
applying AIA 35 U.S.C. 102 and 103 provisions or pre-AIA 35 U.S.C. 102 
and 103 provisions is critical.

A. Applications Filed Before March 16, 2013

    The changes to 35 U.S.C. 102 and 103 in the AIA do not apply to any 
application filed before March 16, 2013. Thus, any application filed 
before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103 
(i.e., the application is a pre-AIA application). Note that neither the 
filing of a request for continued examination, nor entry into the 
national stage under 35 U.S.C. 371, constitutes the filing of a new 
application. Accordingly, even if a request for continued examination 
under 37 CFR 1.114 is filed after March 16, 2013, in an application 
that was filed before March 16, 2013, the application remains subject 
to pre-AIA 35 U.S.C. 102 and 103. Similarly, a PCT application filed 
under 35 U.S.C. 363 before March 16, 2013, is subject to pre-AIA 35 
U.S.C. 102 and 103, regardless of whether the application enters the 
national stage under 35 U.S.C. 371 before or after March 16, 2013.

B. Applications Filed on or After March 16, 2013

    AIA 35 U.S.C. 102 and 103 take effect on March 16, 2013. AIA 35 
U.S.C. 102 and 103 apply to any patent application that contains or 
contained at any time a claim to a claimed invention that has an 
effective filing date that is on or after March 16, 2013. If a patent 
application contains or contained at any time a claim to a claimed 
invention having an effective filing date on or after March 16, 2013, 
AIA 35 U.S.C. 102 and 103 apply to the application (i.e., the 
application is an AIA application). If there is ever even a single 
claim to a claimed invention in the application having an effective 
filing date on or after March 16, 2013, AIA 35 U.S.C. 102 and 103 apply 
in determining the patentability of every claimed invention in the 
application. This is the situation even if the remaining claimed 
inventions all have an effective filing date before March 16, 2013, and 
even if the claim to a claimed invention having an effective filing 
date on or after March 16, 2013, is canceled.
    If an application filed on or after March 16, 2013, that did not 
previously contain any claim to a claimed invention having an effective 
filing date on or after March 16, 2013, (a pre-AIA application) is 
amended to contain a claim to a claimed invention having an effective 
filing date on or after March 16, 2013, the application becomes an AIA 
application (AIA 35 U.S.C. 102 and 103 apply to the application), 
provided that the newly added claimed invention has support under 35 
U.S.C. 112(a) in the application filed on or after March 16, 2013. The 
application also remains subject to AIA 35 U.S.C. 102 and 103 even if 
the claim to a claimed invention having an effective filing date on or 
after March 16, 2013, is subsequently canceled. If an amendment after 
an Office action causes the application to change from being governed 
by pre-AIA 35 U.S.C. 102 and 103 (from being a pre-AIA application) to 
being governed by AIA 35 U.S.C. 102 and 103 (to being a AIA 
application), any new ground of rejection necessitated by the change in 
applicable law would be considered a new ground of rejection 
necessitated by an amendment for purposes of determining whether the 
next Office action may be made final.\121\
    As 35 U.S.C. 132(a) \122\ prohibits the introduction of new matter 
into the disclosure, an application may not contain a claim to a 
claimed invention that does not have support under 35 U.S.C. 112(a) in 
the application (that is directed to new matter). Thus, an application 
cannot ``contain'' a claim to a claimed invention that is directed to 
new matter for purposes of determining whether the application ever 
contained a claim to a claimed invention having an effective filing 
date on or after March 16, 2013.\123\ Therefore, an amendment (other 
than a preliminary amendment filed on the same day as such application) 
seeking to add a claim to a claimed invention that is directed to new 
matter in an application filed on or after March 16, 2013, that, as 
originally filed, discloses and claims only subject matter also 
disclosed in a previously filed pre-AIA application to which the 
application filed on or after March 16, 2013, is entitled to priority 
or benefit under 35 U.S.C. 119, 120, 121, or 365, would not change the 
application from a pre-AIA application into an AIA application.

C. Applications Subject to the AIA but Also Containing a Claimed 
Invention Having an Effective Filing Date Before March 16, 2013

    Even if AIA 35 U.S.C. 102 and 103 apply to a patent application, 
pre-AIA 35 U.S.C. 102(g) also applies to every claim in the application 
if it: (1) contains or contained at any time a claimed invention having 
an effective filing date that occurs before March 16, 2013; or (2) is 
ever designated as a continuation, divisional, or

[[Page 11084]]

continuation-in-part of an application that contains or contained at 
any time a claimed invention that has an effective filing date that 
occurs before March 16, 2013. Pre-AIA 35 U.S.C. 102(g) also applies to 
any patent resulting from an application to which pre-AIA 35 U.S.C. 
102(g) applied.
    Thus, if an application contains, or contained at any time, any 
claimed invention having an effective filing date that occurs before 
March 16, 2013, and also contains, or contained at any time, any 
claimed invention having an effective filing date that is on or after 
March 16, 2013, each claim must be patentable under AIA 35 U.S.C. 102 
and 103, as well as pre-AIA 35 U.S.C. 102(g), for the applicant to be 
entitled to a patent. However, an application will not otherwise be 
concurrently subject to both pre-AIA 35 U.S.C. 102 and 103 and AIA 35 
U.S.C. 102 and 103.
    For these reasons, when subject matter is claimed in an application 
having priority to or the benefit of a prior-filed application (e.g., 
under 35 U.S.C. 120, 121, or 365(c)), care must be taken to accurately 
determine whether AIA or pre-AIA 35 U.S.C. 102 and 103 applies to the 
application.

D. Applicant Statement in Transition Applications Containing a Claimed 
Invention Having an Effective Filing Date on or After March 16, 2013

    The Office is revising 37 CFR 1.55 and 1.78 in a separate action 
(RIN 0651-AC77) to require that if a nonprovisional application filed 
on or after March 16, 2013, claims the benefit of or priority to the 
filing date of a foreign, U.S. provisional, U.S. nonprovisional, or 
international application that was filed prior to March 16, 2013, and 
also contains or contained at any time a claimed invention having an 
effective filing date on or after March 16, 2013, the applicant must 
provide a statement to that effect. This information will assist the 
Office in determining whether the application is subject to AIA 35 
U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and 103.

    Dated: February 11, 2013.
Teresa Stanek Rea,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.

    \1\ See Public Law 112-29, 125 Stat. 284 (2011).
    \2\ All MPEP references are to MPEP (8th ed. 2001) (Rev. 9 Aug. 
2012).
    \3\ See D.L. Auld Co. v. Chroma Graphics, 714 F.2d 1144 (Fed. 
Cir. 1983) and W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540 
(Fed. Cir. 1983).
    \4\ Metallizing Engineering Co. v. Kenyon Bearing and Auto 
Parts, 153 F.2d 516 (2d Cir. 1946).
    \5\ See United States v. Hohri, 482 U.S. 64, 69 (1987); Kelly v. 
Robinson, 479 U.S. 36, 43 (1986).
    \6\ See Universal City Studios v. Reimerdes, 111 F.Supp. 2d. 
294, 325 (S.D.N.Y. 2000) (the phrase ``or otherwise traffic in'' 
modifies the preceding phrases ``offer'' and ``provide''); Strom v. 
Goldman Sachs & Co., 202 F.3d 138, 146-47 (2nd. Cir. 1999) (the 
phrase ``or any other equitable relief'' modifies at least the 
immediately preceding phrase ``back pay'' demonstrating that 
Congress considered back pay a form of equitable relief).
    \7\ See 157 Cong. Rec. 1370 (Mar. 8, 2011) (``The Committee's 
understanding of the effect of adding the words `or otherwise 
available to the public' is confirmed by judicial construction of 
this phraseology. Courts have consistently found that when the words 
`or otherwise' or `or other' when used to add a modifier at the end 
of a string of clauses, the modifier thus added restricts the 
meaning of the preceding clauses.'').
    \8\ 157 Cong. Rec. S1496 (Mar. 9, 2011) (``[S]ubsection 102(a) 
was drafted in part to do away with precedent under current law that 
private offers for sale or private uses or secret processes 
practiced in the United States that result in a product or service 
that is then made public may be deemed patent-defeating prior art. 
That will no longer be the case. In effect, the new paragraph 
102(a)(1) imposes an overarching requirement for availability to the 
public, that is a public disclosure, which will limit paragraph 
102(a)(1) prior art to subject matter meeting the public 
accessibility standard that is well-settled in current law, 
especially case law of the Federal Circuit.''); 157 Cong. Rec. H4429 
(June 22, 2011) (``[C]ontrary to current precedent, in order to 
trigger the bar in the new 102(a) in our legislation, an action must 
make the patented subject matter `available to the public' before 
the effective filing date''). One commenter suggested that Senator 
Leahy's remarks cannot be considered to be legislative history 
because they appeared in the Congressional Record on the day after 
the Senate acted on S. 23, the Senate version of the AIA. However, 
the bill that was eventually enacted into law, H.R. 1249, was 
considered in both the House and Senate after Senator Leahy's 
statement was printed in the record. Also, the committee report for 
the bill that became law cites to Senator Leahy's remarks in its 
discussion of AIA 35 U.S.C. 102. See H.R. Rep. No. 112-98 at 43, 
n.20 (2011). The same commenter also suggested that AIA 35 U.S.C. 
102(a) should not be construed to impose an overarching public 
availability requirement because a bill that was introduced in 
Congress six years earlier more clearly imposed such a standard, 
even eliminating sales and uses entirely as independent bars to 
patentability. The Office's role, however, is not to determine 
whether Congress could have enacted a statute that is clearer and 
more forceful, but rather it is to determine the most likely meaning 
of the statute that Congress actually did enact.
    \9\ See In re Kollar, 286 F.3d 1326, 1330 n.3 (Fed. Cir. 2002).
    \10\ See Elan Corp., PLC v. Andrx Pharmaceuticals, Inc., 366 
F.3d 1336, 1341 (Fed. Cir. 2004).
    \11\ See TP Laboratories, Inc. v. Professional Positioners, 
Inc., 724 F.2d 965, 971 (Fed. Cir. 1984) (``[I]f a prima facie case 
is made of public use, the patent owner must be able to point to or 
must come forward with convincing evidence to counter that 
showing.''); Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1284 (Fed. 
Cir. 2005) (``So long as the request from the examiner for 
information is not arbitrary or capricious, the applicant cannot 
impede the examiner's performance of his duty by refusing to comply 
with an information requirement which proceeds from the examiner's 
view of the scope of the law to be applied to the application at 
hand. To allow such interference would have the effect of forcing 
the Office to make patentability determinations on insufficient 
facts and information. Such conduct inefficiently shifts the burden 
of obtaining information that the applicant is in the best position 
to most cheaply provide onto the shoulders of the Office and risks 
the systemic inefficiencies that attend the issue of invalid 
patents.'').
    \12\ See In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) 
(``the question is not whether the sale, even a third party sale, 
`discloses' the invention at the time of the sale, but whether the 
sale relates to a device that embodies the invention'') (citing J.A. 
La Porte, Inc. v. Norfolk Dredging Co., 787 F.2d 1577, 1583 (Fed. 
Cir. 1986)); see also Zenith Elecs. Corp. v. PDI Commc'n Sys., Inc., 
522 F.3d 1348, 1356 (Fed. Cir. 2008) (a public use itself need not 
be enabling).
    \13\ See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).
    \14\ See Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1048 
(Fed. Cir. 2001), and Group One, Ltd. v.v. Hallmark Cards, Inc., 254 
F.3d 1041, 1047 (Fed. Cir. 2001); see also MPEP 2133.03(b).
    \15\ See Voter Verified, Inc. v. Premier Election Solutions, 
Inc., 687 F.3d 1374, 1380 (Fed. Cir. 2012) (quoting SRI Int'l, Inc. 
v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) 
and Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. 
Cir. 2006)) (indicating that indexing is a relevant factor, but not 
a prerequisite, to public availability).
    \16\ See Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 
936 (Fed. Cir. 1990).
    \17\ See In re Lister, 583 F.3d 1307, 1313 (Fed. Cir. 2009) 
(explaining the distinction between access to materials being 
restricted to authorized persons as in Northern Telecom, and a 
person needing to take steps to gain access to the materials, noting 
that significant travel that would have been necessary for a person 
to gain access to the dissertation in In re Hall, 781 F.2d 897 (Fed. 
Cir. 1986)).
    \18\ See In re Hilmer, 359 F.2d 859 (CCPA 1966).
    \19\ See MPEP Sec.  2136.02 II and 2136.03 IV.
    \20\ In re Donohue, 766 F.2d 531 (Fed. Cir. 1985).
    \21\ See In re Katz, 687 F.2d 450, 455 (CCPA 1982) (stating that 
it is incumbent upon the appellant to provide a satisfactory showing 
which would lead to a reasonable conclusion

[[Page 11085]]

that appellant is the sole inventor where there is a grace period 
publication listing individuals in addition to appellant).
    \22\ See, e.g., In re DeBaun, 687 F.2d 459 (CCPA 1982), In re 
Katz, 687 F.2d 450 (CCPA 1982), and In re Mathews, 408 F.2d 1393 
(CCPA 1969).
    \23\ See United States v. Hohri, 482 U.S. 64, 69 (1987); Kelly 
v. Robinson, 479 U.S. 36, 43 (1986).
    \24\ See Brown v. Gardner, 513 U.S. 115, 118 (1994) (presumption 
that a given term is used to mean the same thing throughout a 
statute).
    \25\ See 35 U.S.C. 100(f), (g), and (j).
    \26\ See 35 U.S.C. 112(b).
    \27\ Pre-AIA 35 U.S.C. 135(b)(2) provides that ``[a] claim which 
is the same as, or for the same or substantially the same subject 
matter as, a claim of an application published under section 122(b) 
of this title may be made in an application filed after the 
application is published only if the claim is made before one year 
after the date on which the application is published.''
    \28\ Pre-AIA 35 U.S.C. 135(a) provides that ``[a]ny such 
petition may be filed only within the 1-year period beginning on the 
date of the first publication of a claim to an invention that is the 
same or substantially the same as the earlier application's claim to 
the invention, shall be made under oath, and shall be supported by 
substantial evidence.''
    \29\ Pre-AIA 35 U.S.C. 154(d)(2) provides that ``[t]he ``right 
under [35 U.S.C. 154(d)(1)] to obtain a reasonable royalty shall not 
be available under this subsection unless the invention as claimed 
in the patent is substantially identical to the invention as claimed 
in the published patent application.''
    \30\ Pre-AIA 35 U.S.C. 252 provides that ``[t]he surrender of 
the original patent shall take effect upon the issue of the reissued 
patent, and every reissued patent shall have the same effect and 
operation in law, on the trial of actions for causes thereafter 
arising, as if the same had been originally granted in such amended 
form, but in so far as the claims of the original and reissued 
patents are substantially identical, such surrender shall not affect 
any action then pending nor abate any cause of action then existing, 
and the reissued patent, to the extent that its claims are 
substantially identical with the original patent, shall constitute a 
continuation thereof and have effect continuously from the date of 
the original patent.''
    \31\ See Duncan v. Walker, 533 U.S. 167, 174 (2001) (quoting 
United States v. Menasche, 348 U.S. 528, 538-39 (1955)).
    \32\ See Shannon v. United States, 512 U.S. 573, 584 (1994) (no 
authority to enforce concepts gleaned solely from legislative 
history that have no statutory reference point).
    \33\ See H.R. Rep. No. 112-98 at 73 (2011).
    \34\ There are floor statements that discuss what would be 
encompassed by the term ``the subject matter'' in subparagraph (B) 
of 35 U.S.C. 102(b)(1) and 102(b)(2). One can find support for the 
``same subject matter'' standard (157 Cong. Rec. 1496-97 (Mar. 9, 
2011) (``An additional clarification we have been asked about deals 
with subparagraph 102(b)(1)(B) * * * . The inventor is protected not 
only from the inventor's own disclosure being prior art against the 
inventor's claimed invention, but also against the disclosures of 
any of the same subject matter in disclosures made by others being 
prior art against the inventor's claimed invention under section 
102(a) or section 103--so long as the prior art disclosures from 
others came after the public disclosure by the inventor.'')), as 
well as for the ``the subject matter of the claimed invention'' 
standard (157 Cong. Rec. 1370 (Mar. 8, 2011) (``Under the first 
subparagraph (B), at section 102(b)(1)(B), if an inventor publicly 
discloses his invention, no subsequent disclosure made by anyone, 
regardless of whether the subsequent discloser obtained the subject 
matter from the inventor, will constitute prior art against the 
inventor's subsequent application for patent in the United States. 
The parallel provision at section 102(b)(2)(B) applies the same rule 
to subsequent applications: If the inventor discloses his invention, 
a subsequently filed application by another will not constitute 
prior art against the inventor's later-filed application for patent 
in the United States, even if the other filer did not obtain the 
subject matter from the first-disclosing inventor.'')). See also 
H.R. Rep. No. 110-314 at 57 (2007) (the provision disqualifying 
prior art if ``the subject matter had, before such disclosure, been 
publicly disclosed by the inventor or a joint inventor or others who 
obtained the subject matter disclosed directly or indirectly from 
the inventor or a joint inventor'' disqualifies any prior art under 
section 102(a)(1) if ``the same subject matter'' had already been 
publicly disclosed by the inventor).
    \35\ See 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B).
    \36\ See 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A).
    \37\ See 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B).
    \38\ In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). In Wands, 
the Federal Circuit set forth the following factors to consider when 
determining whether undue experimentation is needed: (1) The breadth 
of the claims; (2) the nature of the invention; (3) the state of the 
prior art; (4) the level of one of ordinary skill; (5) the level of 
predictability in the art; (6) the amount of direction provided by 
the inventor; (7) the existence of working examples; and (8) the 
quantity of experimentation needed to make or use the invention 
based on the content of the disclosure.
    \39\ See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252 (1965).
    \40\ See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252, 256 
(1965) (a previously filed patent application to another pending in 
the Office, but not patented or published, at the time an 
application is filed constitutes part of the ``prior art'' within 
the meaning of 35 U.S.C. 103).
    \41\ The Office is also treating such a situation under 35 
U.S.C. 101 because 35 U.S.C. 282 makes a distinction between a 
failure to comply with 35 U.S.C. 112 and a failure to comply with 35 
U.S.C. 115, in that a failure to comply with any requirement of 35 
U.S.C. 112 (except the failure to disclose the best mode) is listed 
in 35 U.S.C. 282(b)(3)(A) as a defense in any action involving the 
validity or infringement of a patent, whereas a failure to comply 
with 35 U.S.C. 115 is not discussed in 35 U.S.C. 282(b). In 
addition, 35 U.S.C. 115(i)(3) provides that a patent shall not be 
invalid or unenforceable based upon the failure to comply with a 
requirement under 35 U.S.C. 115 if the failure is remedied as 
provided under 35 U.S.C. 115(i)(1).
    \42\ See Final Bulletin for Agency Good Guidance Practices, 72 
FR 3432 (Jan. 25, 2007).
    \43\ See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336 (Fed. 
Cir. 2008) (explaining that in distinguishing between substantive 
and interpretative rules, a rule is substantive when it affects a 
change in existing law or policy that affects individual rights and 
obligations, where a rule which merely clarifies or explains 
existing law or regulations is interpretative). As these examination 
guidelines are not substantive rulemaking, but merely examination 
guidelines that set out the Office's interpretation of 35 U.S.C. 102 
and 103 as amended by the AIA, these examination guidelines are 
exempt from the notice-and-comment requirements of 5 U.S.C. 553(b) 
(or any other law) and the thirty day advance publication 
requirement of 5 U.S.C. 553(d). See Cooper Techs., 536 F.3d at 1336-
37 (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does 
not require notice and comment rulemaking for ``interpretative 
rules, general statements of policy, or rules of agency 
organization, procedure, or practice'') (quoting 5 U.S.C. 
553(b)(A)); see also Mikkilineni v. Stoll, 410 Fed. Appx. 311, 313 
(Fed. Cir. 2010) (Office's 2009 guidelines concerning 35 U.S.C. 101 
are interpretive, rather than substantive, and are thus exempt from 
the notice and comment requirements of 5 U.S.C. 553). As prior 
notice and an opportunity for public comment are not required 
pursuant to 5 U.S.C. 553 or any other law, neither a regulatory 
flexibility analysis nor a certification under the Regulatory 
Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 U.S.C. 
603.
    \44\ Chevron v. Natural Res. Def. Council, 467 U.S. 837 (1984).
    \45\ See Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 930-31 
(Fed. Cir. 1991); see also 35 U.S.C. 3(a)(2)(A) (``[t]he Director 
shall be responsible for providing policy direction and management 
supervision for the Office and for the issuance of patents and the 
registration of trademarks'' and ``shall perform these duties in a 
fair, impartial, and equitable manner'').
    \46\ See Final Bulletin for Agency Good Guidance Practices, 72 
FR 3432, 3440 (Jan. 25, 2007).
    \47\ Under 35 U.S.C. 102(e) as amended by the American Inventors 
Protection Act of 1999 (AIPA) (Pub. L. 106-113, 113 Stat. 1501 
(1999) and the Intellectual Property and High Technology Technical 
Amendments Act of 2002 (Pub. L. 107-273), the international filing 
date of a PCT application is a U.S. filing date for prior art 
purposes under 35 U.S.C. 102(e) if the international application: 
(1) Has an international filing date on or after November 29, 2000; 
(2) designated the United States; and (3) was published under PCT 
Article 21(2) in English. See MPEP

[[Page 11086]]

Sec.  706.02(f)(1). The AIA amends 35 U.S.C. 102, 363, and 374 to 
provide simply that the publication under the PCT of an 
international application designating the United States shall be 
deemed a publication under 35 U.S.C. 122(b).
    \48\ See 35 U.S.C. 101 (``[w]hoever invents or discovers * * *, 
may obtain a patent therefor, subject to the conditions and 
requirements of this title); see also P.J. Federico, Commentary on 
the New Patent Act, 75 J. Pat. & Trademark Off. Soc'y 161, 179 
(1993) (noting that pre-AIA 35 U.S.C. 102(f) is perhaps unnecessary 
since 35 U.S.C. 101 provides that (``[w]hoever invents or discovers 
* * *, may obtain a patent therefor, subject to the conditions and 
requirements of this title'').
    \49\ See 35 U.S.C. 115 (``An application for patent that is 
filed under section 111(a) or commences the national stage under 
section 371 shall include, or be amended to include, the name of the 
inventor for any invention claimed in the application.'')
    \50\ See Pub. L. 112-29, Sec.  3(n)(1), 125 Stat. at 293.
    \51\ See Pub. L. 112-29, Sec.  3(n)(1), 125 Stat. at 293.
    \52\ 35 U.S.C. 102(g) precludes the grant of a patent if: (1) 
During the course of an interference conducted under 35 U.S.C. 135 
or 291, another inventor involved therein establishes, to the extent 
permitted in 35 U.S.C. 104, that before such person's invention 
thereof the invention was made by such other inventor and not 
abandoned, suppressed, or concealed, or (2) before such person's 
invention thereof, the invention was made in this country by another 
inventor who had not abandoned, suppressed, or concealed it.
    \53\ See Pub. L. 112-29, Sec.  3(n)(2), 125 Stat. at 293.
    \54\ See Pub. L. 112-29, Sec.  3(n)(2), 125 Stat. at 293.
    \55\ See 35 U.S.C. 102(a).
    \56\ See 35 U.S.C. 132(a).
    \57\ See In re Epstein, 32 F.3d 1559 (Fed. Cir. 1994).
    \58\ See 35 U.S.C. 102(b)(1).
    \59\ See 35 U.S.C. 102(b)(2).
    \60\ See 35 U.S.C. 100(i)(1).
    \61\ See MPEP Sec.  706.02(VI).
    \62\ See 35 U.S.C. 100(i)(2).
    \63\ See In re Ekenstam, 256 F.2d 321, 323 (CCPA 1958); see also 
MPEP Sec.  2126.01.
    \64\ See In re Carlson, 983 F.2d 1032, 1037 (Fed. Cir. 1992); 
see also MPEP Sec.  2126.
    \65\ See Novo Nordisk Pharma., Inc. v. Bio-Tech. Gen. Corp., 424 
F.3d 1347, 1355 (Fed. Cir. 2005) (discussing pre-AIA 35 U.S.C. 112, 
first paragraph, and pre-AIA 35 U.S.C. 102).
    \66\ See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), 
citing Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 
1369, 1375 (Fed. Cir. 2006); Net MoneyIN, Inc. v. VeriSign, Inc., 
545 F.3d 1359, 1370 (Fed. Cir. 2008); In re Bond, 910 F.2d 831, 832-
33 (Fed. Cir. 1990).
    \67\ See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) 
(citing Impax Labs., Inc. v. Aventis Pharms. Inc., 545 F.3d 1312, 
1314 (Fed. Cir. 2008), and In re LeGrice, 301 F.2d 929, 940-44 (CCPA 
1962)).
    \68\ See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); see 
also In re Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992) (holding 
that a claimed compound was anticipated even though the prior art 
reference did not disclose a use for the compound); Schering Corp. 
v. Geneva Pharms., Inc., 339 F.3d 1373, 1380-81 (Fed. Cir. 2003) 
(pointing out that actually reducing the invention to practice is 
not necessary in order for a prior art reference to anticipate); 
Impax Labs. Inc. v. Aventis Pharm. Inc., 468 F.3d 1366, 1382 (Fed. 
Cir. 2006) (stating that ``proof of efficacy is not required for a 
prior art reference to be enabling for purposes of anticipation'').
    \69\ See In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985).
    \70\ See Rasmussen v. SmithKline Beecham Corp., 413 F.3d 1318 
(Fed. Cir. 2005).
    \71\ See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. 
Cir. 1991) (``As the court pointed out, `the description of a single 
embodiment of broadly claimed subject matter constitutes a 
description of the invention for anticipation purposes * * *, 
whereas the same information in a specification might not alone be 
enough to provide a description of that invention for purposes of 
adequate disclosure.' '') (quoting In re Lukach, 442 F.2d 967 (CCPA 
1971)); see also In re Van Langenhoven, 458 F.2d 132 (CCPA 1972), 
and In re Ruscetta, 255 F.2d 687 (CCPA 1958).
    \72\ Under pre-AIA 35 U.S.C. 102(b), the critical date is the 
date that is one year prior to the date of application for patent in 
the United States.
    \73\ See Invitrogen Corp. v. Biocrest Mfg. L.P., 424 F.3d 1374, 
1379-80 (Fed. Cir. 2005).
    \74\ See American Seating Co. v. USSC Group, Inc., 514 F.3d 
1262, 1267 (Fed. Cir. 2008).
    \75\ See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 
1368, 1371 (Fed. Cir. 1998).
    \76\ See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 
1368, 1370 (Fed. Cir. 1998).
    \77\ See American Seating Co. v. USSC Group, Inc., 514 F.3d 
1262, 1267 (Fed. Cir. 2008).
    \78\ See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 
1368, 1370 (Fed. Cir. 1998).
    \79\ See Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 
1368, 1370 (Fed. Cir. 1998) (quoting Carella v. Starlight Archery, 
804 F.2d 135, 139 (Fed. Cir. 1986)).
    \80\ See Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).
    \81\ See In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994).
    \82\ Cf. Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 
1325 (Fed. Cir. 2009) (an invention is in public use if it is shown 
to or used by an individual other than the inventor under no 
limitation, restriction, or obligation of confidentiality to the 
inventor).
    \83\ See, e.g, In re Cronyn, 890 F.2d 1158 (Fed. Cir. 1989); In 
re Hall, 781 F.2d 897 (Fed. Cir. 1986); In re Bayer, 568 F.2d 1357 
(CCPA 1978).
    \84\ See, e.g, In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 
2004), Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 
1104 (Fed. Cir. 1985).
    \85\ See, e.g, In re Wyer, 655 F.2d 221 (CCPA 1981); see also 
Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir. 2006).
    \86\ See, e.g, Voter Verified, Inc. v. Premier Election 
Solutions, Inc., 687 F.3d 1380-81 (Fed. Cir. 2012), In re Lister, 
583 F.3d 1307 (Fed. Cir. 2009), and SRI Int'l, Inc. v. Internet Sec. 
Sys., Inc., 511 F.3d 1186 (Fed. Cir. 2008).
    \87\ See, e.g, Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 
1041 (Fed. Cir. 2001).
    \88\ See Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 
1346, 1354 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices 
Inc., 848 F.2d 1560, 1570 (Fed. Cir.1988).
    \89\ See 35 U.S.C. 102(b)(1) (``[a] disclosure made one year or 
less before the effective filing date of a claimed invention shall 
not be prior art to the claimed invention under [35 U.S.C. 
102](a)(1)'') and 102(b)(2) (``[a] disclosure shall not be prior art 
to a claimed invention under [35 U.S.C. 102](a)(2)''); see also H.R. 
Rep. No. 112-98 at 43 (2011) (indicating that the grace period 
provision of 35 U.S.C. 102(b) would apply to all patent applicant 
actions during the grace period that would create prior art under 35 
U.S.C. 102(a)).
    \90\ See 35 U.S.C. 102(b)(1)(B).
    \91\ See In re Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011) 
(subject matter does not change as a function of how one chooses to 
describe it).
    \92\ See 157 Cong. Rec. 1370 (Mar. 8, 2011) (distinguishing 
between the core requirement that the prior-filed application 
include an enabling disclosure and the ministerial requirements that 
the applications be copendent and specifically referenced); see also 
MPEP Sec.  201.08 (permitting a claim to the benefit of a prior-
filed application in a continuation-in-part application provided 
that the continuation-in-part application has a common inventor, has 
copendency with the prior-filed application, and includes a specific 
reference to the prior-filed application, regardless of whether the 
prior-filed application contains support under 35 U.S.C. 112 for any 
claim in the continuation-in-part application).
    \93\ The legislative history of the AIA discusses an important 
distinction between ministerial entitlement to make a priority or 
benefit claim, and actual legal entitlement to the priority or 
benefit. In section 100(i), which defines the effective filing date 
of the patent under review, the patent must be entitled to the 
priority or benefit itself under the relevant sections. In section 
102(d), however, the application need only be entitled to claim the 
benefit or priority under those sections. This difference in 
language distinguishes between the core requirement of section 120 
et al.--that the application include an enabling disclosure--and the 
ministerial requirements of that section--that the application be 
copendent and specifically referenced. In effect, an application 
that meets the ministerial requirements of copendency and specific 
reference is entitled to claim the benefit or priority, but only an 
application that also offers an enabling disclosure is actually 
entitled to the benefit or priority itself. See 157 Cong. Rec. 1370 
(Mar. 8, 2011).
    \94\ See In re Wertheim, 646 F.2d 527 (CCPA 1981), which relies 
upon Alexander Milburn Co. v. Davis-Bournonville, 270 U.S. 390

[[Page 11087]]

(1926), for its conclusion that the patent must actually be entitled 
to the benefit of the prior-application for any subject matter in 
the patent to have a prior art date under 35 U.S.C. 102(e) as of the 
filing date of the prior application. The legislative history of the 
AIA indicates that paragraph (2) of AIA 102(d) is intended to 
overrule what remained of In re Wertheim, 646 F.2d 527 (CCPA 1981), 
which appeared to hold that only an application that could have 
become a patent on the day that it was filed can constitute prior 
art against another application or patent. See 157 Cong. Rec. 1369-
70 (Mar. 8, 2011). The Office has previously indicated that the 
reasoning of In re Wertheim, 646 F.2d 527 (CCPA 1981), did not 
survive the amendment to 35 U.S.C. 102(e) in the American Inventor's 
Protection Act. See, e.g, Ex parte Yamaguchi, 88 U.S.P.Q.2d 1606, 
1610-12 (Bd. Pat. App. & Interf. 2008). In In re Giacomini, 612 F.3d 
1380 (Fed. Cir. 2010), the Federal Circuit held that a patent was 
effective as prior art as of the filing date of a provisional 
application claimed under 35 U.S.C. 119(e), so long as the subject 
matter upon which the rejection was based was described in the 
provisional application filing.
    \95\ See MPEP Sec.  2136.03 IV (``In other words, the subject 
matter used in the rejection must be disclosed in the earlier-filed 
application in compliance with 35 U.S.C. 112, first paragraph, in 
order for that subject matter to be entitled to the earlier filing 
date under 35 U.S.C. 102(e).''); see also Ex parte Yamaguchi, 88 
U.S.P.Q.2d 1606, 1610-12 (Bd. Pat. App. & Interf. 2008) (discussing 
the legislative displacement of In re Wertheim, 646 F.2d 527 (CCPA 
1981), prior to enactment of the AIA by the provisional application 
provisions of the Uruguay Round Agreements Act (URAA) (Pub. L. 103-
465, 108 Stat. 4809 (1994)), and the eighteen-month publication 
provisions of the American Inventor's Protection Act of 1999 
(AIPA)).
    \96\ As discussed previously, in In re Hilmer, 359 F.2d 859 
(CCPA 1966), the CCPA held that reliance on the foreign priority 
date of a reference applied in a rejection under pre-AIA 35 U.S.C. 
102(e) was improper.
    \97\ When examining an application to which the changes in 35 
U.S.C. 102 and 103 do not apply, Office personnel will continue to 
apply the Hilmer doctrine, and foreign priority dates may not be 
used in determining 35 U.S.C. 102(e) prior art dates. Note that the 
international filing date of a published PCT application may be the 
35 U.S.C. 102(e) prior art date under pre-AIA law under certain 
circumstances. See MPEP Sec.  706.02(f).
    \98\ See 35 U.S.C. 102(b)(2)(B).
    \99\ See MPEP Sec.  804.03 (prior art disqualified under the 
CREATE Act may be the basis for a double patenting rejection).
    \100\ See MPEP Sec.  2124 (publications after the critical date 
may be used to show factual evidence that, as of an application's 
filing date, undue experimentation would have been required to make 
or use the invention, that a parameter absent from the claims was or 
was not critical, that a statement in the specification was 
inaccurate, that the invention was inoperative or lacked utility, 
that a claim was indefinite, or that characteristics of prior art 
products were known).
    \101\ See MPEP Sec.  706.02(l)(2)(II).
    \102\ See In re Katz, 687 F.2d 450, 455 (CCPA 1982).
    \103\ See In re DeBaun, 687 F.2d 459, 463 (CCPA 1982).
    \104\ See Ex parte Kroger, 219 USPQ 370 (Bd. App. 1982) 
(affirming rejection notwithstanding declarations by the alleged 
actual inventors as to their inventorship in view of a nonapplicant 
author submitting a letter declaring the nonapplicant author's 
inventorship).
    \105\ See 35 U.S.C. 102(b)(1)(A) or 102(b)(2)(A).
    \106\ See 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B).
    \107\ See In re Deckler, 977 F.2d 1449, 1451-52 (Fed. Cir. 1992) 
(35 U.S.C. 102, 103, and 135 ``clearly contemplate--where different 
inventive entities are concerned--only one patent should issue for 
inventions which are either identical to or not patentably distinct 
from each other'') (quoting Aelony v. Arni, 547 F.2d 566, 570 (CCPA 
1977)).
    \108\ See 35 U.S.C. 102(c)(1).
    \109\ See 35 U.S.C. 100(h).
    \110\ See 35 U.S.C. 102(c)(2).
    \111\ See 35 U.S.C. 102(c)(3).
    \112\ See Public Law 108-453, 118 Stat. 3596 (2004), which was 
an amendment to pre-AIA 35 U.S.C. 103(c). Congress has made it clear 
that the intent of AIA 35 U.S.C. 102(c) is to continue the promotion 
of joint research activities that was begun under the CREATE Act, 
stating in section 3(b) of the AIA that ``[t]he United States Patent 
and Trademark Office shall administer section 102(c) of title 35, 
United States Code, in a manner consistent with the legislative 
history of the CREATE Act that was relevant to its administration by 
the United States Patent and Trademark Office.'' See 125 Stat. at 
287.
    \113\ See 35 U.S.C. 115(a) (``[a]n application for patent that 
is filed under [35 U.S.C.] 111(a) or commences the national stage 
under [35 U.S.C.] 371 shall include, or be amended to include, the 
name of the inventor for any invention claimed in the 
application'').
    \114\ See MPEP Sec.  2137.01.
    \115\ As discussed previously, 35 U.S.C. 101 provides that 
``[w]hoever invents or discovers * * *, may obtain a patent 
therefor, subject to the conditions and requirements of this 
title,'' while 35 U.S.C. 115 requires that ``[a]n application for 
patent that is filed under section 111(a) or commences the national 
stage under section 371 shall include, or be amended to include, the 
name of the inventor for any invention claimed in the application.''
    \116\ AIA 35 U.S.C. 103 provides: ``A patent for a claimed 
invention may not be obtained, notwithstanding that the claimed 
invention is not identically disclosed as set forth in section 102, 
if the differences between the claimed invention and the prior art 
are such that the claimed invention as a whole would have been 
obvious before the effective filing date of the claimed invention to 
a person having ordinary skill in the art to which the claimed 
invention pertains. Patentability shall not be negated by the manner 
in which the invention was made.''
    \117\ As pointed out by the Federal Circuit, ``[t]he term 
`claims' has been used in patent legislation since the Patent Act of 
1836 to define the invention that an applicant believes is 
patentable.'' Hoechst-Roussel Pharms., Inc. v. Lehman, 109 F.3d 756, 
758 (Fed. Cir. 1997) (citing Act of July 4, 1836, ch. 357, Sec.  6, 
5 Stat. 117). Furthermore, in Graham v. John Deere, 383 U.S. 1 
(1966), the second of the Supreme Court's factual inquiries (the 
``Graham factors'') is that the ``differences between the prior art 
and the claims at issue are to be ascertained.'' Graham, 383 U.S. at 
17. Thus, in interpreting 35 U.S.C. 103 as enacted in the 1952 
Patent Act--language that remained unchanged until enactment of the 
AIA--the Court equated ``the subject matter sought to be patented'' 
with the claims.
    \118\ As stated in MPEP Sec.  706.02(n), in view of the Federal 
Circuit's decisions in In re Ochiai, 71 F.3d 1565 (Fed. Cir. 1995) 
and In re Brouwer, 77 F.3d 422 (Fed. Cir. 1996), the need to invoke 
pre-AIA 35 U.S.C. 103(b) rarely arose. Those cases continue to 
retain their validity under the AIA.
    \119\ See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252, 256 
(1965) (a previously filed patent application to another pending in 
the Office, but not patented or published, at the time an 
application is filed constitutes part of the ``prior art'' within 
the meaning of 35 U.S.C. 103).
    \120\ This is in accordance with pre-AIA case law indicating 
that in making determinations under 35 U.S.C. 103, ``it must be 
known whether a patent or publication is in the prior art under 35 
U.S.C. 102.'' Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 
1568 (Fed. Cir. 1987). However, while a disclosure must enable those 
skilled in the art to make the invention in order to anticipate 
under 35 U.S.C. 102, a non-enabling disclosure is prior art for all 
it teaches for purposes of determining obviousness under 35 U.S.C. 
103. Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578 (Fed. 
Cir. 1991); Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 
1551 (Fed. Cir. 1989) (``Even if a reference discloses an 
inoperative device, it is prior art for all that it teaches.'').
    \121\ See MPEP Sec.  706.07(a).
    \122\ 35 U.S.C. 132(a) provides that ``[n]o amendment shall 
introduce new matter into the disclosure of the invention.''
    \123\ The MPEP set forth the following process for treating 
amendments that are believed to contain new matter: (1) A new 
drawing should not be entered if the examiner discovers that the 
drawing contains new matter (MPEP Sec.  608.02); and (2) amendments 
to the written description or claims involving new matter are 
ordinarily entered, but the new matter is required to be canceled 
from the written description and the claims directed to the new 
matter are rejected under 35 U.S.C. 112(a) (MPEP Sec.  608.04). This 
process for treating amendments containing new matter is purely an 
administrative process for handling an amendment seeking to 
introduce new matter into the disclosure of the invention in 
violation of 35 U.S.C. 132(a), and for resolving disputes between 
the applicant and an examiner as to whether a new drawing or 
amendment to the written description or

[[Page 11088]]

claims would actually introduce new matter into the disclosure of 
the invention.

[FR Doc. 2013-03450 Filed 2-13-13; 8:45 am]
BILLING CODE 3510-16-P