Guest Post: Preclusive Inventor Disclosure Under Leahy-Smith

Guest Post by Jeffrey Lefstin, Ph.D., Professor of Law at the University of California Hastings College of the Law

Under Leahy-Smith, inventor disclosures made less than one year before filing are themselves not prior art.  But these  disclosures play two entirely new roles in the Leahy-Smith scheme.  New § 102(b)(2) provides that a disclosure is not prior art if the “subject matter disclosed” had previously been “publicly disclosed” by an inventor (or one who derived it from an inventor).  And inventor disclosure precludes the defense of prior commercial use if that use commences less than one year before the inventor's disclosure.

Patent academics and practitioners are hotly debating whether inventor “disclosures” under § 102(b) are coterminous with the events that defeat patentability under § 102(a). But this debate overlooks what may be a more difficult conceptual question:  what is the preclusive scope of a disclosure under § 102(b)?

A preliminary question is whether an inventor who has made a “disclosure” protected by § 102(b)(1)(A) has “publicly disclosed” subject matter so as to preclude prior art under § 102(b)(1)(B). Did Congress intend that some inventor disclosures do not bar patentability, but nonetheless fail to preclude subsequent prior art? And must inventor preclusive disclosures under § 102(b)(1)(B) actually be within one year of filing?

Regardless of what it means to “publicly” disclose, Leahy-Smith seems to require a qualitatively different analysis than those we are familiar with in patent law. Section 102(b)(1)(B) defines the ability of an inventor to exclude prior part not in terms of comparison between disclosure and claim, but between the inventor’s disclosure and a subsequent third-party disclosure:  the inventor must have previously disclosed the “subject matter” appearing in a later third party disclosure to exclude it as prior art. This inquiry may pose some perplexing problems. The inventor’s disclosure and the third party’s disclosure may well be of incommensurable forms. How do we compare a publication to sale, or a public use of a tangible object to a patent disclosure? Moreover, the inventor’s disclosure and the third party’s disclosure are unlikely to be at the same level of generality:  one is likely to be broader or narrower then the other.

Consider, for example, an inventor who publicly discloses a fuel consisting of 80% gasoline and 20% ethanol. Does that disclosure preclude a third-party disclosure of a 75%-25% mixture? A generic third-party disclosure of mixtures of ethanol with petroleum products? What if the inventor disclosed a mixture of gasoline and ethanol in generic terms rather than a particular composition?

Answers to these questions depend on the approach the courts take to the scope of preclusive disclosure under Leahy-Smith, and the choice of approach may have a huge impact on the inventor’s ability to preclude later prior art by disclosure. I outline two basic approaches here:  a claim-focused approach that is easier to administer and more generous to inventors, but seems less grounded in the statutory text; and a subject matter-focused approach, that is more supportable by the statutory text, but potentially less favorable to inventors and much more difficult to administer. 

Claim-Focused Approaches
The simplest approach would be that inventor disclosure immunizes any claim that encompasses the inventor’s disclosure.   Under this approach, prior art appearing subsequent to the preclusive disclosure cannot be asserted against a claim reading on the preclusive disclosure. That immunity could either be extended to dependent claims that do not themselves read on the preclusive disclosure (thereby permitting the inventor to claim species disclosed by third parties), or restricted to claims that directly read upon the preclusive disclosure (thereby prohibiting the inventor to claim species disclosed by a third party).

The claim-focused approach permits us to use our existing framework for assessing novelty under § 102, because the only inquiry would be inclusion of the preclusive disclosure in a later claim. In addition, because in the strong form of the approach preclusive scope does not depend on the content of the later third-party disclosure, it eliminates the possibility of strategic disclosures by third parties and the disputes likely to ensue over whether the third-party’s disclosure was derived from the inventor’s.

The claim-focused approach is not the most faithful to the statutory text, because new § 102(b) defines the prior art exclusion by the subject matter disclosed by the inventor, not by a claim encompassing the inventor’s disclosure. Nonetheless, this interpretation  would be attractive to a court seeking a straightforward analysis, or a court seeking to temper Leahy-Smith’s impact on the prior art regime.

Subject Matter-Focused Approaches
What if we confine preclusion to the actual “subject matter” disclosed by the inventor? We then need a methodology to define the preclusive scope of an inventor disclosure.  We might establish the broadest preclusive scope based on an inventor disclosure, and exclude from prior art all subject matter within that scope.  All things within the broadest preclusive scope of the disclosure would be claimable – including species later disclosed by third parties – although the inventor would not be immunized against disclosures lying outside the maximum preclusive scope.

Alternatively, we might define preclusive scope at a particular level of generality.  Under this variation a preclusive disclosure of a genus might not immunize a generic claim from anticipation by a third party’s disclosure of a species.

The difficulty with the subject matter-focused approaches is how to define the preclusive scope, whether it be the broadest possible or confined to a particular level of generality. The problem seems parallel to the question of support for a claim under § 112 – particularly if we regard the written description requirement as defining the level of generality or specificity at which an inventor may claim. However, a patent disclosure is drafted specifically to support claims.  How could we derive a permissible scope from a non-patent disclosure, particularly if  § 102(b) “disclosures” include non-informing public uses or sales?  In interferences, we do ask whether an inventor is entitled to make the interference count based on a non-patent disclosure, such as a documented conception or reduction to practice. But traditional interference practice awards priority of a generic count upon a showing of priority to a species, so the question of permissible scope from non-patent disclosure does not arise.

An alternative method of defining preclusive scope would rely instead on analogy to § 103:  preclusive scope might be defined by what is obvious in light of the inventor’s disclosure. An obviousness-based definition would permit us to ask whether more specific subsequent disclosures were obvious in light of the inventor’s more general earlier disclosure. But since a later-disclosed genus would always be obvious over an earlier-disclosed species, the obviousness-based definition seems to always exclude any later disclosure more generic than the inventor’s. Worse, if a third party later discloses a non-obvious species, that species would seem to count as prior art, likely anticipating any generic claim by the inventor.

The Prior User Defense
The same conceptual problems arise in applying the Leahy-Smith Act’s new expanded defense of prior commercial use.  Under new § 273(a)(2)(B), the prior commercial use defense is not available if use commenced less than 1 year before “the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b).”

But new § 102(b) does not deal with disclosures of claimed inventions; it excepts from prior art disclosures by inventors or of the same subject matter previously disclosed by inventors. In deciding what claims are exempt from the prior use defense, we are faced with the same problem we face in interpreting the scope of preclusive disclosure.  Is any claim that would encompass a preclusive disclosure impervious against the prior use defense, or is some more complex 112- or 103-like inquiry necessary to decide which claims qualify?

The reference in § 273 to disclosure of  a “claimed invention” under § 102(b) might nonetheless provide the key to interpreting the scope of preclusive disclosure under § 102(b).  Although § 102(b) literally defines preclusive scope in terms of the subject matter actually disclosed by the inventor, if we can only harmonize § 102(b) and § 273(a)(2)(B) by defining preclusive scope in terms of a claimed invention, then the principle of in pari materia might lead a court to embrace the claim-focused approach in construing § 102(b).

46 thoughts on “Guest Post: Preclusive Inventor Disclosure Under Leahy-Smith

  1. Trademart.in – india’s largest B2B marketplace provides the list of petroleum products, petroleum based products, energy and power, petroleum products manufacturers, petroleum products suppliers, petroleum products exporters, diesel oils, biofules, natural gas, crude petroleum, petroleum and coal products.

  2. Does a preclusive disclosure remove a subsequent third party on-sale from the prior art? Hal Wegner has argued that a preclusive disclosure probably has to be a publication, and that an on-sale should not act as a preclusive disclosure. (link to foley.com, sec.210+). But assuming A publishes an invention, is B’s subsequent independent on-sale of the same invention removed from the prior art to A’s later patent application?

    A sensible goal of the preclusive disclosure sections would be that once an inventor publishes, he/she can wait a year to file a patent application without worrying about any prior art arising in between. But it seems to me this would require a slightly tortured reading of the new statute.

    The Act says that “A DISCLOSURE … shall not be prior art under subsection (a)(1) if (A) the disclosure was made by the inventor…; or (B) the SUBJECT MATTER DISCLOSED had, before such disclosure, been PUBLICLY DISCLOSED by the inventor….”

    So in order to interpret this such that an on-sale can’t be a preclusive disclosure, yet an on-sale is a type of prior art that can be precluded, we would have to interpret “disclosure” as including on-sale activity, but “subject matter … publicly disclosed” as not including on-sale activity.

    Does anyone have any thoughts about how the statutory language can be interpreted to reach a conclusion that an on-sale can’t be a preclusive disclosure, yet an on-sale is a type of prior art that can be precluded from the prior art? Or does anyone think that’s the wrong interpretation?

  3. Hey Horse, that’s really nice. Whether you are right or not, who knows.

    I gather that the USPTO’s Bob Stoll takes your line. I’m disappointed because the other view (that all subsequent disclosures, derived or not, are all graced) struck me as tidier, legally less fraught, and more likely to promote the progress.

    I shall now go back and make another attempt to discern the “plain” meaning of the language of the Statute.

  4. In 102(b)(1)(A) the disclosure is clearly only those disclosures from or derived from Inventor

    In 102(b)(1)(B) the subject of the sentence is different from (A) – subject matter versus disclosure.

    (This answers Tony’s post at 4:06 below) Tony is simply off when he states :”The exception in subpart (A) provides: the subject matter disclosed” because the subpart (A) does not say anything about subject matter.

    What is in subpart (B) is the subject matter and set off by commas, is the linking phrase “before such disclosure.” This phrase can only link to the disclosure of subpart (A). While poorly written, both (A) and (B) are only talking about derivative things (derivative disclosure and derivative subject matter).

    Independent Invention: the killer of the push for early disclosure. Ignore at your own peril.

  5. Dear Max,

    Indeed I look at it from a European point of view. A grace period makes sense in the first-to-invent system, because by default the invention date is one year before the filing date. However it does not make sense in a first-to-file system.

    In addition, when you would file a USA premier depot on which you base a PCT application designating the USA, the PCT application may not be novel over your prior publication. Thus, if the USA premier depot were abandoned before grant, you may have no patent right at all.

  6. Although it will now become academic, The PTO has been accepting way too many inadequate Rule 131 declarations ["swearing behind" intevening non-bar art of others] that do not provide proof of a prior-date COMPLETED invention, and can get patents obtained over prior art that way in serious trouble in reexaminatins or litigation. Valid Rule 131 declarations must comply with 35 USC 102(g)(2), which is the sole statutory basis for that Rule. That includes a COMPLETE conception AND continuous dilligence from conception to the date to get behind, or a completed actual reduction to practice. But at least there IS a statutory standard, even if the PTO or many examiners do not enforce it.

    However, in contrast, we seem to be starting from an inexcusably undefined blank slate in interpreting the scope of the new AIA 102 grace period “Exception” as to how much of the invention has to be disclosed in the prior pubic disclosure of the grace-period-applicants invention in order to overcome intervening prior art.

  7. Dear Ton, when you write:

    “If the second disclosure made by X had not been obtained from the first disclosure made by the inventor A, this second disclosure is prior art.”

    you are talking about Europe, I suppose, and not Section 102 of the AIA. The way I read 102, the second disclosure is NOT prior art.

  8. Dear Tony,

    If the second disclosure made by X had not been obtained from the first disclosure made by the inventor A, this second disclosure is prior art.

    In addition, although you may not be concerned with filing patent applications outside the USA, but the publication made by the inventor before the priority date is prior art for, for example European patent applications. The first thing a European patent attorney would do when contesting a European patent based on a USA premier depot is looking for publications made by the inventor.

  9. Oops, another drafting goof. How do you get the discovery to prove that?

    Current statute, 35 USC 23 and 24, creates authority for PTO to accept evidence and to compel discovery, sufficient for today’s law.

    I kept pointing out to PTO staff and congressional staff that they had to modify the procedural statutes to track the substantive statutes. They didn’t.

    So an applicant confronted by prior art that the inventor knows is derived can’t get discovery to prove (or disprove) it.

    A substantive statute with no procedural implementation is a dud.

  10. An interesting idea. Post it on the PTO’s new web site for rulemaking suggestions!

    Also, re your other post below, changing the claims and/or correspondingly changing some inventors can already be a useful problem solving tool, where appropriate, so isn’t that just now adding an additional advantage – of being able to do so in these untypical applications of people relying on the new grace period to avoid intervening art?

  11. Lulz, thanks for the article. But that’s nothing new. Save for the data. The theories about Neutrinos being able to (if not always going) faster than light have been around for awhile. And they’re not the only particles theorized to (be able to?) do this.

    But it is nice to see some data.

    And also, since I doubt you’re more than an armchair physicist Mr. Drinking, I’d just like to take a second to make sure that you don’t hurt yourself while thinking about possible “ramifications” of this. They are very few and far between, some few smart people will have some headaches, papers will be written, some few nerds will ooo and ahhhh, and everyone else will continue doing whatever it was they were doing.

  12. One possibility is that the PTO and courts will draw from current Rule 131 jurisprudence. The inventor’s disclosure will have to show either the claimed invention or as much of the claimed invention as the intervening publication shows.

  13. If their are co-authors on the paper that aren’t joint inventors on the patent app, then in most circumstances the issue is that they should in fact have been joint inventors on the patent app.

  14. You are joking, right? I mean, the year is part of the decision number, so 25 years. But I suppose the question was rhetorical. I have an alarming tendency to take people literally.

  15. Some of the reasons you point to are kind of crazy, which is why there is much of this discussion. But, my interpretation (agreed to by Ned, Red Monkey, Jeff Dixon and others) is correct based on the language. This has also been shared by many commentators outside of PatentlyO.

    The interpretation by Horse, Basics, etc, doesn’t seem to add anything to the exception in subpart (A).

    We don’t remove the phrase “obtained… directly or indirectly.” That modifies “another.”

    The language states:

    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.]”

    In my first hypothetical, there was no “another” involved. So you can delete the bracketed portion of the statute. Now do you see that my interpretation is correct? I’m not sure how to explain it any other way. The only way to another interpretation is to mix around the words and add commas where they are not.

    Actually, I can’t even figure out a way to re-arrange the statute, add commas, etc, to make it have the interpretation that Basics and Horses are arguing for. If that interpretation was correct, the exception in subpart (B) would be entirely useless. The exception in subpart (A) provides:

    “the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;”

    You don’t have to first publish to prevent work derived from you from becoming prior art.

  16. The reply links are not working again.

    But above, Jeff Dixon replies to a post by Paul F Morgan:

    grace period . . . further limited to only the first disclosing inventors themselves

    Paul – don’t you have this backwards? I.e., my impression was that EG’s concern is whether the application would get priority from a prior publication if not every author of the prior publication was an inventor, not whether the application would get priority if not every inventor was an author. I thought it was clear that the first disclosing inventors AND their co-inventors would get the priority benefit, but not so clear whether inventors with co-AUTHORS could claim the benefit of the entire subject matter of the prior publication.

    Except the point of Paul’s post is not the multiple inventor/author issue of EG at all.

    The point of Paul’s post is that the statutory construction being advanced by those who would remove the phrase “obtained… directly or indirectly” would yield a result that is nonsensical. The nonsensical result would be that a mere disclosure – without any 112 support would EFFECTIVELY provide more than (or at least equal to) a current method of obtaining an intermediate prior art patent-defeating item.

    Why should a lower content item provide better protection (or at least equal protection) against any and all independent intervening and independent prior art?

    Such a reading then, obviates the need of a provisional patent application.

    So now, not only are the direct words of the new statute made to disappear in effect, the need of provisional patent applications themselves are made to disappear.

  17. Respectfully, I think Basics and Horse are misreading who “another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor” is.

    Read the entire (B):

    “(B) the subject matter disclosed had, *before such disclosure*, been publicly disclosed *by…another* who obtained…”

    “[A]nother” is not the source of “such disclosure” (i.e., the disclosure that would otherwise be prior art), but rather the source of the saving prior disclosure that came “before” “such disclosure.” In effect, “another” is the disclosing agent of the applicant. As long as the prior public disclosure originated from you, you don’t have to have made it yourself for it to protect you from intervening public disclosures.

  18. I think Tony is correct. The statute says

    “A disclosure [i.e. ref X] made 1 year or less before the effective filing date of a claimed invention shall not be prior art…under subsection (a)(1) if—
    (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor [ref A]…

    So it looks like ref A immunizes inventor from ref X.

  19. “grace period . . . further limited to only the first disclosing inventors themselves”

    Paul – don’t you have this backwards? I.e., my impression was that EG’s concern is whether the application would get priority from a prior publication if not every author of the prior publication was an inventor, not whether the application would get priority if not every inventor was an author. I thought it was clear that the first disclosing inventors AND their co-inventors would get the priority benefit, but not so clear whether inventors with co-AUTHORS could claim the benefit of the entire subject matter of the prior publication.

  20. The portion that states “another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor” has everything to do with independent invention.

    Corrected.

    Tony in your example of the first case, reference X is indeed prior art.

    That’s the whole point of the debate.

    The grace period provided by 102(b)(1)(B) is only applicable for derivative works.

    Everyone seems to get that this may not have been what was intended, but the language itself is unambiguous as that is what the language actually says.

    This construction is the only possible meaning of the debated phrase – otherwise the phrase itself can be deleted without impact. Statutory construction prevents the meaning you wish to advance.

    Further, this is not a case of ambiguity. If it were, then the non-quorum Senator Kyl quote might (just might) be applicable. As it is, the quote is meaningless, regardless of the quorum state.

    The good Senator’s comments just do not apply as the language simply is not ambiguous.

    Not saying what so many want it to say is not the same as “ambiguous.”. The language does not provide a blanket “first-to-publish-against-everyone” type of grace period. There is still a race to file, even after a disclosure.

    Please brush up on your statutory construction.

  21. Say horse, why don't you give up your quixotic quest. You really are tilting at windmills. The way the statute reads and the way most everybody else is interpreting it, is quite favorable to patentees and inventors. The way you interpreted the publication exception to prior art is virtually meaningless and not useful at all.

    Sent from iPhone

  22. Can you imagine this?
    He tells you to get lost. He says sell it on QVC I am no longer your Atty. Then after you finally get your Boards, it happens to be in Nov. right after you fire him and tell him to give B my stuff. I get that, I really do! the receiving of the Boards they changed shows the Triangle and that’s how they did it to me! They hired him while he worked for Them and Me and PHK&K. that’s a Triple Dipper!!!!!!
    The Tripod is LLB top Sod. and that’s not LL Bean.
    So do I get a Prize for the Story finally being understood.
    I will not send anything on the Double DIPS till the Triple’s DIP decision. I am tired of being told to Get Lost!!

  23. “Drug shortages endanger patients, disrupt hospital operations, raise cost of care”

    Where are our pharmaceutical companies?

  24. People keep making this incorrect argument. It doesn’t make any sense based on the language.
    indirectly from the inventor or a joint inventor;

    “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—
    (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.”

    To provide a hypothetical: Applicant publishes an article (“Article A”). One month later Person X publishes (“Reference X”) an article with the same subject matter. Three months later, Applicant files.

    Reference X is not prior art.

    The portion that states “another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor” has nothing to do with independent invention.

    To change my hypothetical — now Applicant doesn’t publish Article A. Instead, Applicant’s co-worker finds Applicant’s notes or whatnot and publishes. Article A was thus publicly disclosed by “another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” Thus, Reference X is still not prior art.

    Don’t get me wrong, there’s still tons of ambiguities (e.g., publicly disclosed doesn’t have to be a publication necessarily, how do you apply “subject matter” as raised in the post). This independent invention argument is not one of them though.

  25. he still has to show that the subject matter of the public disclosure was his or was derived from him

    Independent invention will mess this up because the subject matter of a public disclosure from an independent inventor may be the same or substantially the same, but lacks the “obtained from” nexus required to invoke the 102(b)(1)(B) exception and thus is necessary to remove the reference.

    Subject matter alone is not a sufficient condition for the grace period protection. If it were, the phrase “obtained…directly or indirectly” would not be needed. The phrase is there. The phrase has meaning. Ignore the phrase at your own peril.

  26. Paul, you hit the nail on the head.

    The way big companies do things, diddly-squat incremental inventions that don’t require long development cycles, testing or cross-company collaboration — in short, the things that don’t really need the patent system — good.

    The way startups do things, and inventions that require long incubation, testing, outside investors or collaborations — all the early stage things that innovators do — bad. If happens before you see the patent attorneys, well, out of sight is out of mind. It must not matter.

    Ten years from now, Business Week, NYTimes, Wall Street Journal, Kaufmann Foundation — will all be wondering “what ever happened to the startups that used to form in the U.S.? Why are we now a copycat culture, with no ‘next big thing’ innovations?”

    Well, the date is March 16, 2013.

  27. Yeah. The last time we made any significant changes to § 102 in 1870, there was a parade to the Supreme Court. Ron Katznelson pulled all of the § 102 cases in history, about 2/3 of them fall between 1870 and 1890. And those changes were far smaller than the ones we have now.

    Certainty? Similicity? Good for business? Not likely.

  28. Frankly, I don’t see the “administrative” problems being identified here. The issue will rise in the context of ex parte prosecution or a court case where a reference is applied for its disclosure of certain subject matter. It is that subject matter which the inventor has to show that he published first. Issues about whether he has co-authors are somewhat irrelevant, because he still has to show that the subject matter of the public disclosure was his or was derived from him or his coinventor. He has the burden of proof.

    I think the courts will hold that if the subject matter of the reference is the same or substantially the same as the subject matter disclosed by the applicant, that will be sufficient to remove the reference.

  29. Thank you Prof. Lefstin for clearly raising one of the major problems in the statutory interpretation of the major AIA provisions that will go into effect in 18 months.
    We can only be grateful that this ambiguity provided by the mystery AIA legislation drafters will only affect a small percentage of applicants. Only those applicants dangerously delaying filing even a provisional application to rely on a limited and ambiguous grace period of only one year to delay their applcation filings, further limited to only the first disclosing inventors themselves.
    P.S. Note that the alternative and parallel choice of a provisional application requires full 112 support for an ultimate patent claims in order to obtain the filing date priority benefit of the provisional that will avoid intevening date prior art. Would it not be a strange result for inventors to get less legal protection from filing a provisional patent application based on a publication than from the publication itself under the AIA?

  30. EG has th right question – does this apply to any single inventor on the face of the patent or does the disclopsure need to be from the same “inventive entity” – e.g. all inventors and only inventors must be on the disclosure?

  31. …but won’t the approach always be claim focussed because both the patent office and the courts can only apply these to claims before them? Are we forgetting common sense in this post?

  32. You might hope that would be the case, but remember I said one or more “co-authors” who aren’t listed as one of the “inventors” on the patent application. Also, this section of the AIA is worded so oddly and poorly that it’s ripe for differing interpretations (and misinterpretations). I still have nightmares about how this section might be interpreted/misinterpreted.

  33. But new § 102(b) does not deal with disclosures of claimed inventions; it excepts from prior art disclosures by inventors or of the same subject matter previously disclosed by inventors when that subject matter has been derived from the inventor (directly or indirectly obtained)

    Fixed.

    Independent Invention: the killer of the push for early disclosure. Ignore at your own peril.

  34. A possible approach might be derived from the entitlement to priority claim under EPO practice. This new provision of the AIA is in fact very similar to a right to priority, i.e. a right allowing any third party disclosures made after this initial discosure by the inventor not to be considered as prior art. Similarly to the questions raised in this post, the question arose many times before the EPO, especially in opposition proceedings, as to whether a patent claim is entitled to its priority date claimed. If such patent claim proves not to be entitled to its priority date, then any intervening disclosure (in Europe even by the inventor itself) is prior art to the claim. So, the question arose what are the criteria for a patent claim to enjoy its priority. The EPC states that this right of priority can be enjoyed if the “same invention” is disclosed in the priority filing. The Enlarged Board of Appeal looked at what should be understood with “same invention” in its decision G2/98, and concluded that this term “means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC (i.e. priority) is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole”. This is, under EPO practice, a quite high level of identity between the initial disclosure and the subject-matter claimed.

  35. A public disclosure at least tends to leave more evidence behind than conception.

    Microsoft v i4i, anyone?

  36. In effect, we have changed the subject matter of interference from who invented first to who disclosed first. This is a bit easier since one is a mental act that by nature leaves no evidence behind other than communications (i.e. disclosures) to colleagues or to one’s self (in a lab notebook). A public disclosure at least tends to leave more evidence behind than conception.

  37. This seems to be covered because 102(b) refers to disclosure by inventor or joint inventor. New section 100 defines “inventor” as the inventive entity and “joint inventor” as the actual inventors. So in the scenario you describe, one author of the publication counts as a “joint inventor” and his disclosure should immunize the entire inventive entity.

  38. Jeffrey,

    Another scenario that will likely occur to lay on the table is what happens if the “inventor” has one or more co-authors on a publication (e.g., a journal article describing research) and who are not listed as an “inventor” on the patent application. What in that publication is deemed to be “subject matter” disclosed by the “inventor” or derived from the “inventor.” What if that publication includes data generated by one of the co-authors that is not directly attributable to the “inventor” (i.e., might not be “derived from” the “inventor”) but is sufficient to create novelty/obviousness issues? What happens in that situation? I’m just thinking a bit “out loud” here, so we may need to refine this scenario. On the whole, this new 102(b) “statutory bar” provision gives me nightmares as to how it will be or should be construed.

  39. From a European point of view, a great talking point. We went through the “prior claim vs whole contents” debate in the 1960′s, because every European country tackled this problem differently, and this debate brought us to Article 54(3) of the EPC in 1973, which everybody could sign up to. Since then, it has proved routinely difficult to adjudicate between two rival disclosures, when they are presented in two rival patent applications vying for priority. But at least we are comparing apples with apples (and not pears). After 30 years of this in Europe, we know where we stand. Germany has fallen into step, at last. The EPO’s annual caselaw digests these days are bare of anything new in this area.

    You, patent lawyers of America, have a very interesting 30 years ahead of you. You thought interferences were fun. well, here’s a whole new ball game, almost as much fun as interferences, I would think.

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