Disqualifying an Inventor’s Prior Publication as Prior Art – Invoking §102(b)(1)(A)

An invention is not patentable if it was described in, or obvious in view of, an earlier printed publication. See 35 U.S.C. 102(a)(1). This blog post addresses how to overcome an anticipation or obviousness rejection where an inventor is the author or otherwise the source of subject matter in the publication cited as prior art.

As in most countries, the U.S. patent system prevents inventors from publishing their inventions and then later applying for a patent on the published invention. But the U.S. system provides a grace period of one year from publication in which an inventor may apply for a patent.

Specifically, a publication made less than a year before the effective filing date of a patent application is not available as prior art when the source of the subject matter disclosed is an inventor or joint inventors:

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 joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; …

35 U.S.C. 102(b)(1)(A).

Patent office regulations provide a mechanism for filing an affidavit or declaration to establish that a disclosure is not prior art. When the patent office rejects a patent application over an inventor’s or joint inventors’ own publication, if the §102(b)(1)(A) exception applies, the applicant may overcome the rejection by filing a declaration “establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.” 37 CFR 1.130(a). In line with the U.S. patent law’s one-year grace period, this mechanism is “not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention.” 37 CFR 1.130(c).

A common situation occurs when an inventor of a patent application was co-author with others of a publication made during the grace period. For example, the lead author of the publication might be the inventor, while the other co-authors are not.

In this co-authorship scenario, a declaration should provide two items examiners are instructed to accept at face value, absent evidence to the contrary:

(1) “an unequivocal statement from the inventor or a joint inventor that the inventor or joint inventor (or some combination of named inventors) invented the subject matter of the disclosure”; and

(2) “a reasonable explanation of the presence of additional authors.”

M.P.E.P. 2155.01

For example, a declaration might state that (1) the declarant “is the sole inventor of the subject matter herein claimed” and (2) “the other authors … are not coinventors but were simply students working under [the declarant’s] direction and supervision.” In re Katz, 687 F.2d 450, 453 (C.C.P.A. 1982) (commonly referred to as a “Katz Declaration”).

Further information on overcoming rejections of this type may be found in M.P.E.P. 717 and 2155, available at https://www.uspto.gov/web/offices/pac/mpep/.

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