Prior Art Exceptions
When it comes to exceptions, the passage of the American Invents Act (“AIA”) actually simplified what previously was a long list of possible 102 prior art exceptions. And the drafters of the AIA made it somewhat easier on us to correlate the exceptions with the dictated prior art sections. For example, the exceptions for section 102(a)(1) correspond with 102(b)(1), and, as you likely surmised, the exceptions for section 102(a)(2) correspond with 102(b)(2).
102(b)(1)
35 U.S.C. § 102(b)(1) discusses exceptions to documents and activities that qualify as prior art under 35 U.S.C. § 102(a)(1).
102(b)(1)(A) (Grace Period Inventor, Inventor-Originated Disclosure Exception)
35 U.S.C. § 102(b)(1)(A) limits the use of an inventor’s own work as prior art in instances when: (1) the inventor’s own work was disclosed not more than one year before the effective filing date of the claimed invention; and (2) the disclosure was made by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. The evidence necessary to show that the disclosure was indeed made by the inventor, a joint inventor, or a third party who directly or indirectly obtained the subject matter from the inventor or joint inventor varies on a case-by-case basis. For example, in some cases it may be apparent where the authorship associated with the disclosure matches that of the claimed invention.[1]See, e.g., MPEP § 2153.01.
102(b)(1)(B) (Inventor, Inventor-Originated Prior Public Disclosure Exception)
35 U.S.C. § 102(b)(1)(B) disqualifies disclosures of subject matter made via a patent, printed publication, public use, public sale, or other means of public availability when the disclosure was made: (1) not more than one year before the effective filing date of the claimed invention; and (2) after the subject matter had already been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. Such 102(b)(1)(B) disclosure may be referred to as “grace period intervening disclosures.” The mode/form of the initial inventor or inventor-originated disclosure need not be the same as the subsequent grace period intervening disclosure. Moreover, the initial inventor or inventor-originated disclosure need not be a verbatim disclosure of the subsequent grace period intervening disclosure. It is important to note, however, that the initial inventor or inventor-originated disclosure must also fall within the grace period (i.e., within a year or less of the effective filing date of the claimed invention), or else it runs the risk of qualifying as prior art under 35 U.S.C. § 102(a)(1).[2]See, e.g., MPEP § 2153.02.
102(b)(2)
35 U.S.C. § 102(b)(2) discusses exceptions to documents and activities that qualify as prior art under 35 U.S.C. § 102(a)(2).
102(b)(2)(A) (Inventor-Originated Disclosure Exception)
35 U.S.C. § 102(b)(2)(A) limits the use of an inventor’s own work when: (1) the inventor’s own work was disclosed in a U.S. patent, U.S. patent application publication, or WIPO published PCT application not more than one year before the effective filing date of the claimed invention; and (2) the disclosure was made by another who obtained the subject matter directly or indirectly from the inventor or joint inventor.[3]See, e.g., MPEP § 2154.02(a).
102(b)(2)(B) (Inventor, Inventor-Originated Prior Public Disclosure Exception)
35 U.S.C. § 102(b)(2)(B) disqualifies disclosures of subject matter made via a U.S. patent, U.S. printed publication or WIPO published PCT application when the disclosure was made: (1) not more than one year before the effective filing date of the claimed invention; and (2) after the subject matter had already been publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. This 102(b)(2)(B) disclosure may also be referred to as “grace period intervening disclosures.”[4]See, e.g., MPEP § 2154.02(b).
102(b)(2)(C) (Common Ownership of Obligation of Assignment)
35 U.S.C. § 102(b)(2)(C) disqualifies disclosures of subject matter made via a U.S. patent, U.S. printed publication or WIPO published PCT application where: (1) the disclosure was made not more than one year before the effective filing date of the claimed invention; and (2) the subject matter disclosed and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention.[5]See, e.g., MPEP § 2154.02(c).