What is the “subject matter” requirement for the AIA 35 U.S.C. 102(b)(2)(B) exception?

The “subject matter” requirement is crucial for applying the AIA 35 U.S.C. 102(b)(2)(B) exception. The MPEP clarifies:

“The subject matter in the prior disclosure being relied upon under AIA 35 U.S.C. 102(a) must be the same ‘subject matter’ as the subject matter previously publicly disclosed by the inventor for the exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) to apply.“

This means:

• The subject matter in the intervening U.S. patent document must have been previously publicly disclosed by the inventor or a joint inventor (or someone who obtained it from them).
• The exception does not apply if there are more than insubstantial changes or trivial or obvious variations between the disclosed subject matter.
• The mode of disclosure (e.g., patenting, publication, public use, sale) does not need to be the same.
• The prior disclosure does not need to be verbatim; it just needs to cover the same subject matter.

It’s important to note that this exception only applies to the specific subject matter that was previously disclosed. Any new or different subject matter in the intervening U.S. patent document would still be considered prior art under AIA 35 U.S.C. 102(a)(2).

To learn more:

• AIA
• prior art exception
• subject matter
• public disclosure