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.
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).