by Dennis Crouch
The general rule in our new first-to-file patent system is that your effective application filing date* is of utmost importance. In general that date is the trigger-date for prior art. Prior Publications count as prior art (102(a)(1) prior art) as do Patents and Patent Applications filed prior to the trigger-date (102(a)(2) prior art). To be clear, publications are generally thought of as prior art as of their date of publication, but we have a special rule for U.S. patent filings — once published or patented they become prior art as of their effective filing date. [Note, the statute stretches the date back to the “earliest [priority] application that describes the subject matter”].
I have identified these 102(a)(2) prior art patent documents as “submarine prior art” because they are kept secret (usually for 18-months) and then suddenly emerge as back-dated prior art. Pre-AIA law included the submarine prior art under what was then known as 102(e) (2010). However (and in my view) the new law expands the scope of submarine prior art in a few ways. First, under the new law applicants can no longer swear-behind prior art based upon their prior invention date. Second, under the new law the submarine prior art will stretch back further in many cases to encompass (for instance) the original foreign-priority filing date. [As with the old rule, a prior application by the identical inventor does not create submarine prior art].
A Company’s Own Prior Patent Filings: One exception to the submarine-prior-art issue is 35 U.S.C. §102(b)(2)(C). That sub-section indicates that neither prior-filed patent application publications nor their resulting patents will be deemed prior art if:
(C) the subject matter disclosed [in the prior document] and the claimed invention . . . were owned by the same person or subject to an obligation of assignment to the same person [as of the claimed invention’s effective filing date].
The basic idea here is that a company’s own secret-filed applications will not serve as prior art against the company itself.**
The Pre-AIA statute included a similar exception codified in 35 U.S.C. 103(c). However, the new exception is more powerful in several ways. Most notably from the face of the statute is that the old law only excused prior art for obviousness purposes but not for novelty purposes while the new law negates the references for seemingly any prior art purpose. Second, the expansion of submarine prior art (noted above) makes the exception relatively more important. As more applications continue to be filed in crowded technology spaces, I expect that the exception will continue to rise in importance.
Questions that I would like to pursue is how important this expanded submarine prior art is to the system and likewise the relative importance of the intra-company-exception.*** Theoretically, the exception favors (a) larger entities who file many incremental patent applications with a variety of inventorship team combinations as well (b) as applicants who file applications under non-publication requests. For examiners, do you consider whether an applicant can claim the exception before issuing a rejection or do you wait for the applicant to claim the exception.
This question will be part of one project that I’m planning to pursue this summer that will provide some initial studies on how the AIA has impacted patent prosecution.
On-point comments are very welcome.
* The effective filing date is defined on a claim-by-claim basis as “the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).” 35 U.S.C. 100(i).
** Patents associated with inventions developed via a Joint Research Agreement (JRA) can also be avoided by parties to the Agreement. 35 U.S.C. 102(c).
*** I should note here that all countries have some form of submarine prior art, but many follow the European approach that the submarine art is not considered for obviousness (inventive step) purposes because of the reality that the secret prior art would not have been within the grasp of a person of skill in the art (since it was secret at the time).