Does the AIA Have a Prior Art Exception You Can Use?

U.S. patent applications filed after March 16, 2013, when the “First-Inventor-to-File” portion of the America Invents Act (AIA) took effect, have started to be published.  Thus, it is a good time for applicants to consider filing U.S. patent applications that can be patentable over applications that otherwise would be considered prior art.  The AIA provides for such a prior art exception in 35 U.S.C. § 102, although it comes with drawbacks and risks that applicants may generally wish to avoid, as discussed further below.

Among other changes, the AIA expanded protection under the common ownership exception  -  an applicant’s own work will not be used as prior art against the applicant’s new, later-filed applications for both anticipation and obviousness, as long as the new applications are filed before the prior application is published.  This pertains to applications that are owned by the same entity, have inventors that are under obligation to assign to the same entity, or are unassigned but have common inventorship.  For the exception to apply, the common ownership should be in place by the effective filing date of the later application.

In common ownership situations, applicants can consider filing additional U.S. applications before prior-filed, commonly owned U.S. applications are published.  This can be done to correct certain issues in the prior applications, to add additional disclosure, to elaborate on research results, or for other purposes.  The prior application that will not be counted as prior art can include any subject matter.  Thus, at least concerns regarding the applicant’s own work when preparing a new application can be reduced, which can be particularly useful for applicants filing multiple applications in similar or overlapping technologies.

The subsequent applications should be filed sooner rather than later, since it may be risky to bet on exactly when the U.S. Patent and Trademark Office (USPTO) will publish the earlier application.  For example, if that earlier application is a continuation-in-part (CIP) application, it may be published before the standard 18 months after filing.

Remember that in jurisdictions outside the U.S., it is typical for any prior-filed application to be considered prior art to a later-filed application. Thus, even if a later-filed application may be patentable over an earlier-filed application in the U.S. given AIA rules, the earlier-filed application may be an absolute bar to patentability of that later-filed application if it is filed outside the U.S.  So should a reason arise to file an application that may have patentability issues over a prior-filed, commonly-owned, unpublished U.S. application, that later-filed application may be able to mature into a patent in the U.S. but not in other jurisdictions. The AIA’s prior art exception may thus be able to “save” some patentable subject matter in the U.S. but not elsewhere.

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