2152 Detailed Discussion of AIA 35 U.S.C. 102(a) and (b) [R-11.2013]

Created On
byChhabra Law Firm

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131–MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

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—

  • (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.

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. See 35 U.S.C. 132, 37 CFR 1.104(c) and MPEP § 706.

The categories of prior art documents and activities are set forth in AIA 35 U.S.C. 102(a)(1) and the categories of prior art patent documents are set forth in AIA 35 U.S.C. 102(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 under 35 U.S.C. 102(a)(1) may be based are an issued patent, a published application, and a non-patent printed publication. The documents upon which a prior art rejection under 35 U.S.C. 102(a)(2) may be based are U.S. patent documents only (see discussion of U.S. patent documents in MPEP § 2151). 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 under 35 U.S.C. 102(a)(1). 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). See In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) and MPEP § 2133.03(b), subsection III.C.

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 under 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 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 a 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.”

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—

  • (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
  • (B) 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
  • (C) 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.”

Although some of the provisions of AIA 35 U.S.C. 102(a) and (b) are similar 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 U.S. patent document as prior art to a claimed invention is measured from the effective filing date of the claimed invention as defined in 35 U.S.C. 100(i), which takes into account both foreign priority and domestic benefit dates. Note that this differs from practice under pre-AIA 35 U.S.C. 102 wherein the availability of a patent document as prior art is measured from either “the date of the application for patent in the United States” (pre-AIA 35 U.S.C. 102(b)) or “the invention thereof by the applicant for patent” (pre-AIA 35 U.S.C. 102(a) and (e)). 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.