Chapter §7A.04 Novelty-Preserving Exceptions Under Post-AIA 35 U.S.C. §102(b)

• Jurisdiction: United States

§7A.04 Novelty-Preserving Exceptions Under Post-AIA 35 U.S.C. §102(b)

[A] Introduction

Novelty (or more precisely, the lack thereof) is not an absolute concept under the AIA. Even though one (or more) of the presumptively novelty-destroying events enumerated in post-AIA §102(a) has occurred, a claimed invention's novelty nevertheless may be preserved (in other words, the presumptively-established §102(a) prior art may be removed) if one of the "exceptions" or shields of 35 U.S.C.A. §102(b) (effective March 16, 2013) (hereafter "§102(b)" or "post-AIA §102(b)") applies.

The §102(b) exceptions operate in somewhat analogous fashion to "grace period" events under the pre-AIA regime.¹⁵³ Even though significantly amended by the AIA, the resultant U.S. Patent Act does not contain a European-style absolute novelty system. Despite Congress's stated intent to "promote harmonization of the United States patent system with the patent systems commonly used in nearly all other countries throughout the world with whom the United States conducts trade and thereby promote greater international uniformity and certainty in the procedures used for securing the exclusive rights of inventors to their discoveries,"¹⁵⁴ the AIA did not completely (or even largely) harmonize U.S. patent law with international standards. Rather, the AIA created a U.S. patent statute that is a unique hybrid, retaining many aspects of the pre-AIA regime. The "exceptions" of §102(b) are prime examples.

The following subsections separately discuss the exceptions provided for in post-AIA §102(b)(1) and §102(b)(2).

[B] Post-AIA §102(b)(1): Shields Against Post-AIA §102(a)(1) Presumptively Novelty-Destroying Events

Post-AIA §102(b)(1) enumerates two categories of exceptions that represent two different ways to remove what would otherwise be novelty-destroying prior art under post-AIA §102(a)(1). The post-AIA version of 35 U.S.C. §102 provides in pertinent part:

(b) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. ¹⁵⁵

In the discussion that follows, the two categories of §102(b)(1) exceptions are referred to as "(A)-type" and "(B)-type" exceptions. The "(A)-type" exceptions are those covered by post-AIA §102(b)(1)(A). The "(B)-type" exceptions are those covered by post-AIA §102(b)(1)(B).

[1] "(A)-Type" Exceptions

The first, or "(A)-type" exception, removes from the prior art certain pre-filing disclosures made by the inventor/patent applicant herself or based on information obtained from the applicant. The pertinent statutory language provides that "[a] disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if . . . (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor."¹⁵⁶ Thus, an "(A)-type" exception is triggered by the inventor, a joint inventor, or an "obtainer."¹⁵⁷ Note that the statute does not define "disclosure."

For example, consider an inventor who makes a "disclosure" of her invention and then files in the USPTO an application seeking to patent the invention within one year (to use pre-AIA parlance, during the one-year pre-filing "grace period"). On its face, the applicant's pre-filing date disclosure would appear to have destroyed novelty under post-AIA §102(a)(1). However, the statutory text explicitly ties together the §102(a)(1) presumptively novelty-destroying events and the §102(b)(1) exceptions. In view of this explicit statutory link, the applicant's pre-filing "disclosure" of her invention (i.e., "[a] disclosure made 1 year or less before the effective filing date of a claimed invention," as referred to in the preamble of §102(b)(1)) presumably took the form of the applicant having performed one (or more) of the five acts enumerated in §102(a)(1); that is, having "patented [the claimed invention], described[it] in a printed publication, or [placing the invention] in public use, on sale, or otherwise [making the invention] available to the public." The preamble language of §102(b)(1) provides that the §102(b)(1)(A) "disclosure" (by the inventor, joint inventor, or obtainer, within one year of the invention's effective filing date) "shall not be prior art to the claimed invention under subsection (a)(1)." In other words, the statute removes the inventor's §102(a)(1) disclosure as prior art by means of the "(A)-type" exception" of §102(b)(1). Consider this scenario as applied to facts from the hypothetical in §7A.03[D][1] supra.

Hypothetical: Assume that Aidan invents a widget "X." Aidan thereafter discloses the invention by publishing on February 1, 2014 an article in the International Herald Tribune newspaper that describes widget X. On July 1, 2014, Aidan files in the USPTO a non-provisional utility patent application disclosing and claiming the identical widget X. Because in this hypothetical Aidan's application is not entitled to any earlier filing date under 35 U.S.C. §§119, §120, or the like, the effective filing date of its claims is Aidan's actual USPTO filing date of July 1, 2014.¹⁵⁸

Applying post-AIA §102(a)(1) in isolation, the novelty of Aidan's claimed invention was presumptively destroyed (that is, anticipated) by Aidan's February 1, 2014 "descri[ption] [of the claimed invention] in a printed publication" that occurred "before the effective filing date of the claimed invention." The presumption of anticipation has been overcome, however, because post-AIA §102(b)(1)(A) covers a "disclosure . . . made by the inventor" and post-AIA §102(b)(1)'s preamble provides that Aidan's disclosure "shall not be prior art to the claimed invention." In sum, Aidan will still receive a U.S. patent on widget X...