Errors in Citation of Prior Art by USPTO Examiners

By: Jonathan P. Osha


At the U.S. offices of Osha Liang, we have noted a significant increase in instances of USPTO Examiners rejecting claims on the basis of prior art that is not actually prior art as defined by 35 U.S.C. §102.  If not noticed by the applicant and pointed out to the Examiner in the next response, this error can lead to the introduction of unnecessary arguments and limitations into the application.  Accordingly, it is vital to understand what is –and what is not– prior art under U.S. law, and to consistently verify the prior art citations made by the Examiner.

The definition of what qualifies as prior art in the United States changed dramatically with the enactment of the America Invents Act (AIA).  Under the AIA, for U.S. applications having at least one claim with an effective filing date on or after March 16, 2013, the following rules apply:

(a) Novelty; Prior Art.—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.

(b) Exceptions —

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.—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; 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.

(2) Disclosures appearing in applications and patents.—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.

(c) Common Ownership Under Joint Research Agreements. —Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—

(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(d)Patents and Published Applications Effective as Prior Art. —For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

(Emphasis added.)

The areas of these rules that seem to cause the most confusion for USPTO Examiners are highlighted above and will be considered individually below.

1)  §102(a)(2) “effective filing date.” This section of the AIA defines what is commonly referred to as “secret prior art,” i.e., prior art that was not public at the time the patent application being examined was first filed but publishes or issues during examination.  Unlike pre-AIA §102, AIA §102 gives the same “effective filing date” to secret prior art as it does to U.S. applications and patents (overturning what was known as the “Hilmer Doctrine” under pre-AIA practice).  Thus, in the post-AIA world, determining what is or is not “secret prior art” is greatly simplified; it is simply a comparison of the effective filing date of the invention being examined with the effective filing date of the disclosure being relied upon for a rejection.  However, recent experience shows that many USPTO examiners confuse this, and attempt to apply prior art under §102(a)(2) having effective filing dates that do not pre-date the effective filing date of the invention being examined. Thus, it is always important to verify the relevant dates whenever prior art is applied under 102(a)(2).

2)  §102(d)(2) clarifies that while the test for prior art status of secret prior art is now an apples-to-apples comparison of effective filing dates, the effective filing date of the prior art is limited to the filing date of the earliest priority application that describes the subject matter. Thus, it is not sufficient simply for a patent or published application to claim priority to an earlier application having a filing date pre-dating the effective filing date of the application being examined.  Rather, that earlier application must describe the subject matter being relied upon.  For example, consider a published U.S. application that discloses A, B, and C in combination, which an Examiner has cited in a rejection under §102(a)(2).  Imagine that this application claims priority to Japanese applications A, B, and C, each of which were filed on different dates and each of which respectively discloses only A, B, and C alone.  If Japanese applications A and B were filed before the effective filing date of the application being examined, but C was filed after, then the cited publication is good only for the individual disclosures of A and B alone, and not of C or of the combination of A, B, and C.  This is quite a common problem, and requires careful scrutiny to ensure any prior art cited under §102(d)(2) is, in fact, prior art.

3)  102(b)(2)(C) excludes from secret prior art any disclosure in a patent or patent publication if 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. Thus, it is always important to check to determine whether any prior art cited by the Examiner under §102(a)(2) was commonly owned with the application being examined at the time the application being examined was filed.

As a final observation, we note that in order to be used in an obviousness rejection under §103, a prior art reference must nonetheless qualify as prior art under either §102(a)(1) or §102(a)(2).  When an Examiner makes an anticipation rejection under §102, the applicable subsection of §102 is normally indicated.  Thus, when a rejection under §102(a)(2) is seen, this is a clear reminder to check for any of the issues discussed above.  However, when a rejection is made under §103, the subsection of §102 under which the prior art qualifies is not normally stated.  Thus, it is much easier to “miss” an improper 102(a)(2) prior art reference when it is “hidden” inside a §103 rejection than when it is applied by itself in an anticipation rejection.