By , Date: Nov 20, 2012 in Newsletter, Noteworthy, Patent Noteworthy, Patent Publications, Publications Email This Post Email This Post | Print This Post Print This Post |

The Scope of Prior Art by Others under AIA and a Comparison with European and Japanese Patent Law


Jay Pattumudi

© 2012 Bruzga & Associates

Under the recently enacted U.S. patent reform act, America Invents Act (AIA), the scope of prior art for making novelty and obviousness determinations has been broadened in some aspects but, in some cases, has been narrowed. With regard to making such determinations, the act’s provisions are effective March 16, 2013. This article makes a comparison of the provisions of AIA with those of European (i.e., EPO) and Japanese (i.e., JPO) patent law in the following two tables, which will be discussed below.

The below table entitled “Five main categories of prior art by others under AIA and a Comparison” (hereinafter, the “first table”) highlights the five categories of prior art by others than the inventor and compares their applicability with treatment under corresponding European and Japanese jurisdictions (referred in the table as EPO and JPO respectively). As shown in the table below, an inventor, subject to important exceptions for his or her own actions[1. We will briefly discuss exceptions for an inventor’s own prior art later.], is barred from obtaining a patent if his or claimed invention was (1) patented by others; (2) described in a printed publication by others; (3) in public use by others; (4) on sale by others; or (5) otherwise available to the public before the effective filing date of his or her claimed invention. The effective filing date is the actual filing date of a patent or a patent application, or an earlier date where the patent or patent application claims priority to an earlier application (such as right of priority under (1) section 119 (e.g., Paris Convention priority), (2) section 365(a),[2. For example, a national application is entitled to right of priority based on an international application designating at least one country other than the United States.] or (3) section 365(b)[3. For example, an international application designating the U.S. is entitled to a right of priority based on a prior foreign application, or a prior international application designating at least one country other than the U.S.] or the benefit of an earlier filing date under (1) section 120 (e.g., continuation application or continuation-in-part application), (2) section 121 (i.e., divisional application) or (3) section 365[c]).[4. For example, an international application designating the U.S. is entitled to benefit of filing date of a prior national application or an international application designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States.] With respect to claiming priority to an earlier application, the earlier application must provide “continuity of disclosure” in that the earlier application must comply with 35 U.S.C. § 112; the earlier application must describe the claimed invention as well as enable a person to make and use the claimed invention. The “otherwise available to the public” is a new category under American patent law but analogous counterparts were already recognized in EPO and JPO.

Five main categories of prior art by others under AIA and a Comparison

JPO  Yes.[11. Covered generally; inventions that were described in a distributed publication in Japan or a foreign country, prior to the filing of a patent application, constitute a novelty bar. Article 29(iii)] Yes.[12. Covered under the category previously described for patents; see also specific table for discussion of published patent applications.] Yes.[13. Inventions that were publicly worked in Japan or a foreign country, prior to the filing of a patent application, constitute a novelty bar. Article 29(ii) See endnote 14 for further detail and information.] Generally yes.[14. Inventions that were publicly worked in Japan or a foreign country, prior to the filing of a patent application, constitute a novelty bar. Article 29(ii) The mere public use and the mere sale of an invention are novelty-destroying events against others. However, this presumption is rebuttable. For example, Japanese civil procedure allows a person to challenge the general presumption that the prior use and sale are novelty bars if the features of the invention are not readily ascertainable to others through external examination or further analysis of the sold invention. Rieko Yamazaki, a colleague at the firm, provided the foregoing advice.] Yes.[13. Inventions that were publicly known in Japan or a foreign country, prior to the filing of a patent application, constitute a novelty bar. Article 29(i)]
Patents Publications Public use Sale Catch-all provision
U.S. Patents prior to effective filing date of claimed invention are a bar.[5. The effective filing date is the actual filing date of a patent or a patent application, or an earlier date when the patent or patent application claims priority to an earlier application.] §102(a)(1) Printed publications that disclose the claimed invention and prior to effective filing date of claimed invention are a bar. §102(a)(1); see following second table for discussion of published patent applications. Public use of the claimed invention prior to effective filing date of claimed invention is a bar. §102(a)(1) Sale of the claimed invention prior to effective filing date of claimed invention is a bar. §102(a)(1) If the claimed invention is otherwise available to the public prior to effective filing date of claimed invention, such occurrence is a novelty bar. §102(a)(1)
EPO Yes.[6. Covered generally; everything made available to the public by means of a written or oral description before the date of filing of the European patent application constitutes a novelty bar. EPC Article 54(2)] Yes.[7. Covered under the category previously described for patents; see also second table.] Yes.[8. Everything made available to the public by use and before the date of the filing of the European patent application constitutes a novelty bar. EPC Article 54(2); see endnote 9 for further info.] Yes, under general catch-all provision.[9. Not specific; sale is covered by the catch-all provision under EPC Article 54(2); our European patent counsel, Manuel Schockmel of Dennemeyer and Associates, has kindly provided us with the following information: a mere sale or use of the invention can be a novelty-destroying event provided that it is available to the public without any bar of confidentiality restricting use or dissemination of the invention; this holds true even where the features of the invention are not readily ascertained from external examination (e.g., visual examination of the invention) but would require further analysis.] Yes.[10. Everything made available to the public in any other way and before the date of the filing of the European patent application constitutes a novelty bar. EPC Article 54(2)]

The below table “Earlier-filed later-published patent applications of others” (hereinafter the “second table”) focuses on a separate sub-category of prior art printed publications. The second table focuses on the prior art applicability of earlier-filed applications by others which become prior art when they become published.  The earlier-filed later-published application of others, unlike other prior art, could not be discovered by an inventor because it was not published at the time an inventor had filed his or her own patent application. The second table compares the applicability of such earlier-filed application as prior art with those of corresponding European and Japanese jurisdictions. As shown below, under U.S. patent law, an inventor, subject to important exceptions for his or her own actions, is barred from obtaining a patent if the claimed invention was described in another inventor’s published patent application which was filed before the effective filing date of the claimed invention.

Earlier-Filed Later-Published Patent Applications of Others

Novelty Obviousness
U.S. An earlier-filed application of another, from any country is prior art from earliest effective filing date of claimed invention, provided that the application is subsequently published. 35 U.S.C. §102(a)(2) Same standard as for novelty.
EPO Yes, provided that the EPO application is published on or after the filing date of the later-filed application.[16. General standard for prior art criteria applies; an earlier-filed EPO application of another, is prior art against a later-filed application provided that the EPO application was published prior to the filing date of a later application. Article 56, Article 54]Article 54 No.
JPO Yes.[17. Articles 29(1), 29(2), Article 39 of the Patent Act of Japan.] No.

However, AIA recognizes an exception for this separate sub-category of prior art. For example, earlier-filed later-published applications having a common inventor or common assignee are not considered to be prior art. However, double patenting issues may arise. JPO has a similar exception regarding prior art applicability of earlier applications having a common assignee. EPO, unlike JPO and the U.S., does not have such an exception.[18. EPC Article 54(3); contrast with Article 29bis of Patent Act of Japan]

Summary of Main Points

We will now discuss several key points that can be gathered from the foregoing tables. Although many of AIA’s provisions are conforming to aspects of European and Japanese patent law, AIA has some importance differences.

Point #1: Earliest effective filing date of a patent application is an important criterion for determining prior scope.

The effective filing date of a patent application by another inventor is now a key criterion for determining the scope of prior art. The effective filing date is the actual filing date of a patent or a patent application, or an earlier date where the patent or patent application claims priority to an earlier application, as further detailed previously.

Thus, only the effective filing date determines the applicability of a prior art reference. Accordingly, under U.S. patent law, a Rule 131 affidavit which was used in order to provide evidence that than applicant had an earlier invention date, can no longer be used.

Point #2: Public use and sale of the claimed invention are now novelty-destroying prior art regardless of where they occurred.

As shown in the first table, public use and public sale, under the AIA, anywhere in the world, acts as a novelty bar. Thus, another inventor who sells, offers to a sell an invention or uses the invention anywhere in the world can create novelty-destroying prior art. Previously under older U.S. patent law, acts of public use and public sale by another inventor were novelty-destroying only if such activities occurred in the United States.[19. See http://www.uspto.gov/web/offices/com/doc/uruguay/URPAPER.html] Inventors, however, could use their own activities, such as sale or use of the invention outside the U.S., such as in countries bound by NAFTA and WTO regulations, in order to establish an earlier date of invention. Id. Accordingly, AIA now treats such acts of public use and sale as novelty-destroying in the same way as European and Japanese patent law.

Point #3: Patent application of another inventor creates novelty and obviousness bars from the earliest effective filing date, regardless of whether the language of filing is in English.

As shown in the second table, a prior application by another inventor (i.e., earlier-filed later-published applications) can be used for novelty and obviousness bars against later-filed applications.

Now concerning this category of earlier-filed later-published applications, AIA makes no distinction between foreign and United States applications which become published patent applications for purposes of being applicable prior art. Under section 102(e) of the old U.S. patent law, a published U.S. application that claimed priority to a non-English language application, such as a Japanese application, was prior art as of its U.S. filing date because the earlier application was not filed in an English language. Now, under AIA, any U.S. patent application of another inventor is prior art as of its earliest effective filing date, regardless of whether the earliest application was filed in the English language. Thus, a published U.S. patent application can now be used for both novelty and obviousness determinations against patent applications of other inventors irrespective of whether the priority application was filed in a non-English language.[20. A U.S. application is applicable prior art from earliest effective filing date provided that the application is subsequently published.] Comparisons with Europe and Japan are discussed below.

Point #4: Earlier-filed applications under AIA can be used for both novelty and obviousness determinations unlike Europe and Japan.

As shown in the second table, an earlier-filed application by another inventor, provided that the application was subsequently published, can be used as prior art for both novelty and obviousness applications.

By contrast, an earlier-filed application under European patent law, can be used as prior art for novelty purposes only and under certain conditions. First, under EPC Article 54(3), the earlier application must be a European national application that is a novelty-destroying prior art from earliest effective filing date provided that the application by the other inventor was published on or after the filing date of the later application of the inventor.[21. For purposes of this article, we use the term “earliest effective filing date,” to be consistent with US AIA language. For example, EPC Article 87 allows a “right of priority” for a later-filed application within twelve months from the date of filing of the first application.] However, non-European patent applications cannot be used for novelty purposes; however, a PCT application is considered prior art under EPC Article 54(3) provided that the international application, accompanied by a national fee, is filed in an official language of the EPO.[22. EPC Article 158(2)]  Yet even the scope of the European national application is limited; the European patent application under EPC Article 56 cannot be used as prior art for obviousness purposes.

A Japanese patent application by another inventor is prior art from the earliest effective date (regardless of country of origin), but can only be applicable prior art for novelty.[23. Article 29(1), Article 29(2) and Article 39 of Patent Act of Japan] In addition, Japanese patent law, like the AIA, recognizes the inapplicability of earlier-filed applications having a common inventor or a common assignee).[24. Article 29bis of Patent Act of Japan] Thus, Japanese patent law, like European patent law, treats such earlier-filed application of another inventor only for novelty applications.

Accordingly, under AIA, the scope of prior art with respect to the applicability of earlier-filed, later-published application by others is greater than those of Europe or Japan because they can be used for both novelty and obviousness rejections. Thus, a European or a Japanese patent application that did not encounter such rejections could still face them in the United States.

Point #5: Inventors still have protections for their own actions under AIA.

The foregoing two tables do not mention important exceptions for prior art provided that such prior art is due to the inventor’s own actions. Regarding these exceptions, the USPTO will be publishing new rules regarding the scope of exceptions for an inventor’s own acts, but the following points can be made. For example, certain actions by an inventor, if such actions were done a year or less before the effective filing date of the claimed invention, are not prior art against the inventor.[25. See 35 U.S.C. § 102(b)(1)(A)-(B); in addition to actions by an inventor, actions by a joint inventor, or by another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor, are also to be considered for prior art exceptions.] A journal article that was published less than a year before the filing of a patent application, is one such example. Important exceptions for prior art also include earlier-filed later-published applications having a common inventor or common assignee and filed before the effective filing date of the second patent application.[26. See 35 U.S.C. § 102(2)(C); under certain circumstances, applications having a common inventor or a common assignee, are not prior art.]

Conclusion

Inventors and corporate executives alike should now consider the following points: (1) the earliest effective filing date of a patent or a patent application is a key criterion for prior art analysis; (2) prior art can no longer be overcome by an earlier date of an invention by using a Rule 131 affidavit in the U.S.; (3) a prior art analysis should consider five main categories of prior art set forth in the first table; (4) public use and sale are potential novelty-bars, irrespective of geographic location; (5) U.S. patent applications of others are prior art as of their earliest effective filing date, regardless of whether they were filed in an English language, provided that they are subsequently published; and (6) the foregoing published patent applications can be used for  both novelty and obviousness determinations.

Note: This commentary does not represent legal advice. Comments on this article are appreciated. Should you have any questions, please contact the author at jpattumudi@aboutiplaw.com.