TAKEAWAY: Under the AIA, the publication of an inventor’s earlier patent application becomes prior art to that inventor’s later-filed patent applications one year after the publication.

Now that a couple years have passed since enactment of the AIA, patent practitioners are beginning to face issues surrounding the application of the new Section 102. One issue they may face is when does an inventor’s earlier publication of a patent application act as prior art to a later application filed by that same inventor.

Generally, under 35 U.S.C. 102(b)(1)(A), a disclosure made one year or less before the effective filing date of a claimed invention is not prior art under 35 U.S.C. 102(a)(1) if the disclosure was made by the inventor or by another who obtained the disclosed subject matter from the inventor. How is this exception applied to an inventor’s earlier published patent application? The question involves (1) what constitutes the first “disclosure” when an inventor files a patent application, and (2) is the USPTO “another who obtained the subject matter from the inventor,” as defined in 35 U.S.C. 102(b)(1)(A)?

The MPEP provides guidance on the first question. The MPEP states that “the Office is treating the term ‘disclosure’ as a generic expression intended to encompass the documents and activities enumerated in AIA 35 U.S.C. 102(a) (i.e., being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application).” MPEP § 2152.04. Under this guidance, filing a patent application with the USPTO is not a “disclosure,” but the published application is.

To answer the second question, the plain language of the statute indicates that the exception applies. The USPTO (“another”) obtained the application from the inventor and published it. This suggests that the publication date of an application starts the one year grace period under 35 U.S.C. 102(b)(1)(A).

The author of this post contacted the USPTO’s Office of Patent Legal Administration (OPLA) for comment. A representative of OPLA indicated that the USPTO agrees with this interpretation, and, if an inventor files a patent application, any of the inventor’s other applications published within the preceding year would not constitute prior art. We note, however, that courts have yet to decide this issue and may employ various judicial review procedures, including review of legislative intent, which may result in a different outcome.