AIA 35 U.S.C. 102(b)(2)(B) provides a second exception to prior art under AIA 35 U.S.C. 102(a)(2). This provision excepts as prior art subject matter that was effectively filed by another after the subject matter had 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. The AIA 35 U.S.C. 102(b)(2)(B) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.

Specifically, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) (a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”)) is excepted as prior art if the subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. If a previous inventor-originated public disclosure is not within the grace period of AIA 35 U.S.C. 102(b)(1), it would qualify as prior art under AIA 35 U.S.C. 102(a)(1), and could not be excepted under AIA 35 U.S.C. 102(b)(1). MPEP § 2155.02 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by the inventor or a joint inventor, and MPEP § 2155.03 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.” The exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under 35 U.S.C. 102(b)(2)(B) that the mode of prior disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening U.S. patent document(e.g., patenting, publication, public use, sale activity). There is also no requirement that the prior disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening U.S. patent document. What is required for subject matter in the intervening U.S. patent document to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). 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. The exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply even if the only differences between the subject matter in the prior art disclosure that is relied upon under AIA 35 U.S.C. 102(a) and the subject matter previously publicly disclosed by the inventor are mere insubstantial changes, or only trivial or obvious variations. This guidance maintains the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B).

Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.” The exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under 35 U.S.C. 102(b)(2)(B) that the mode of prior disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening U.S. patent document(e.g., patenting, publication, public use, sale activity). There is also no requirement that the prior disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening U.S. patent document. What is required for subject matter in the intervening U.S. patent document to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). 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. The exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply even if the only differences between the subject matter in the prior art disclosure that is relied upon under AIA 35 U.S.C. 102(a) and the subject matter previously publicly disclosed by the inventor are mere insubstantial changes, or only trivial or obvious variations. This guidance maintains the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B).

Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.” The exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under 35 U.S.C. 102(b)(2)(B) that the mode of prior disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening U.S. patent document(e.g., patenting, publication, public use, sale activity). There is also no requirement that the prior disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening U.S. patent document. What is required for subject matter in the intervening U.S. patent document to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). 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. The exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply even if the only differences between the subject matter in the prior art disclosure that is relied upon under AIA 35 U.S.C. 102(a) and the subject matter previously publicly disclosed by the inventor are mere insubstantial changes, or only trivial or obvious variations. This guidance maintains the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B).

The exception in AIA 35 U.S.C. 102(b)(2)(B) applies only to the subject matter in the intervening U.S. patent document being relied upon for a rejection under AIA 35 U.S.C. 102(a)(2) that was also publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) before the date the subject matter relied upon was effectively filed. The subject matter of an intervening U.S. patent document that was not previously publicly disclosed by the inventor or a joint inventor (or by another who obtained the subject matter from the inventor or joint inventor) is available as prior art under AIA 35 U.S.C. 102(a)(2). For example, if the inventor or a joint inventor had publicly disclosed A, B, and C, and a subsequent intervening U.S. patent document discloses A, B, C, and D, then D of the intervening U.S. patent document remains available as prior art under AIA 35 U.S.C. 102(a)(2). In other words, the exception in AIA 35 U.S.C. 102(b)(2)(B) does not necessarily remove the entire disclosure in the intervening reference from being prior art.

The exception in AIA 35 U.S.C. 102(b)(2)(B) applies only to the subject matter in the intervening U.S. patent document being relied upon for a rejection under AIA 35 U.S.C. 102(a)(2) that was also publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) before the date the subject matter relied upon was effectively filed. The subject matter of an intervening U.S. patent document that was not previously publicly disclosed by the inventor or a joint inventor (or by another who obtained the subject matter from the inventor or joint inventor) is available as prior art under AIA 35 U.S.C. 102(a)(2). For example, if the inventor or a joint inventor had publicly disclosed A, B, and C, and a subsequent intervening U.S. patent document discloses A, B, C, and D, then D of the intervening U.S. patent document remains available as prior art under AIA 35 U.S.C. 102(a)(2). In other words, the exception in AIA 35 U.S.C. 102(b)(2)(B) does not necessarily remove the entire disclosure in the intervening reference from being prior art.

In addition, if subject matter of an intervening U.S. patent document is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening U.S. patent document. To hold otherwise would unfairly deprive an inventor of a patent merely because a third party became aware of the inventor’s public disclosure and then filed a patent application disclosing a genericized version of it. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent document is not available as prior art under AIA 35 U.S.C. 102(a)(2). Conversely, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent document discloses a species, the disclosure of the species in the subsequent intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2) because the “subject matter disclosed” requirement of AIA 35 U.S.C. 102(b)(2)(B) would not have been met.

In addition, if subject matter of an intervening U.S. patent document is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening U.S. patent document. To hold otherwise would unfairly deprive an inventor of a patent merely because a third party became aware of the inventor’s public disclosure and then filed a patent application disclosing a genericized version of it. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent document is not available as prior art under AIA 35 U.S.C. 102(a)(2). Conversely, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent document discloses a species, the disclosure of the species in the subsequent intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2) because the “subject matter disclosed” requirement of AIA 35 U.S.C. 102(b)(2)(B) would not have been met.

AIA 35 U.S.C. 102(b)(2)(B) provides a second exception to prior art under AIA 35 U.S.C. 102(a)(2). This provision excepts as prior art subject matter that was effectively filed by another after the subject matter had 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. The AIA 35 U.S.C. 102(b)(2)(B) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.

Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.” The exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under 35 U.S.C. 102(b)(2)(B) that the mode of prior disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening U.S. patent document(e.g., patenting, publication, public use, sale activity). There is also no requirement that the prior disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening U.S. patent document. What is required for subject matter in the intervening U.S. patent document to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). 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. The exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply even if the only differences between the subject matter in the prior art disclosure that is relied upon under AIA 35 U.S.C. 102(a) and the subject matter previously publicly disclosed by the inventor are mere insubstantial changes, or only trivial or obvious variations. This guidance maintains the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B).

The exception in AIA 35 U.S.C. 102(b)(2)(B) applies only to the subject matter in the intervening U.S. patent document being relied upon for a rejection under AIA 35 U.S.C. 102(a)(2) that was also publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) before the date the subject matter relied upon was effectively filed. The subject matter of an intervening U.S. patent document that was not previously publicly disclosed by the inventor or a joint inventor (or by another who obtained the subject matter from the inventor or joint inventor) is available as prior art under AIA 35 U.S.C. 102(a)(2). For example, if the inventor or a joint inventor had publicly disclosed A, B, and C, and a subsequent intervening U.S. patent document discloses A, B, C, and D, then D of the intervening U.S. patent document remains available as prior art under AIA 35 U.S.C. 102(a)(2). In other words, the exception in AIA 35 U.S.C. 102(b)(2)(B) does not necessarily remove the entire disclosure in the intervening reference from being prior art.

In addition, if subject matter of an intervening U.S. patent document is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening U.S. patent document. To hold otherwise would unfairly deprive an inventor of a patent merely because a third party became aware of the inventor’s public disclosure and then filed a patent application disclosing a genericized version of it. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent document is not available as prior art under AIA 35 U.S.C. 102(a)(2). Conversely, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent document discloses a species, the disclosure of the species in the subsequent intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2) because the “subject matter disclosed” requirement of AIA 35 U.S.C. 102(b)(2)(B) would not have been met.

In addition, if subject matter of an intervening U.S. patent document is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening U.S. patent document. To hold otherwise would unfairly deprive an inventor of a patent merely because a third party became aware of the inventor’s public disclosure and then filed a patent application disclosing a genericized version of it. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent document is not available as prior art under AIA 35 U.S.C. 102(a)(2). Conversely, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent document discloses a species, the disclosure of the species in the subsequent intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2) because the “subject matter disclosed” requirement of AIA 35 U.S.C. 102(b)(2)(B) would not have been met.

AIA 35 U.S.C. 102(b)(2)(B) provides a second exception to prior art under AIA 35 U.S.C. 102(a)(2). This provision excepts as prior art subject matter that was effectively filed by another after the subject matter had 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. The AIA 35 U.S.C. 102(b)(2)(B) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.

AIA 35 U.S.C. 102(b)(2)(B) provides a second exception to prior art under AIA 35 U.S.C. 102(a)(2). This provision excepts as prior art subject matter that was effectively filed by another after the subject matter had 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. The AIA 35 U.S.C. 102(b)(2)(B) exception may possibly apply to any U.S. patent document, regardless of its potential prior art date under AIA 35 U.S.C. 102(a)(2). In other words, there is no grace period limitation to the applicability of the AIA 35 U.S.C. 102(b)(2)(B) exception.

Specifically, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) (a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”)) is excepted as prior art if the subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. If a previous inventor-originated public disclosure is not within the grace period of AIA 35 U.S.C. 102(b)(1), it would qualify as prior art under AIA 35 U.S.C. 102(a)(1), and could not be excepted under AIA 35 U.S.C. 102(b)(1). MPEP § 2155.02 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by the inventor or a joint inventor, and MPEP § 2155.03 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

The exception in AIA 35 U.S.C. 102(b)(2)(B) applies only to the subject matter in the intervening U.S. patent document being relied upon for a rejection under AIA 35 U.S.C. 102(a)(2) that was also publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) before the date the subject matter relied upon was effectively filed. The subject matter of an intervening U.S. patent document that was not previously publicly disclosed by the inventor or a joint inventor (or by another who obtained the subject matter from the inventor or joint inventor) is available as prior art under AIA 35 U.S.C. 102(a)(2). For example, if the inventor or a joint inventor had publicly disclosed A, B, and C, and a subsequent intervening U.S. patent document discloses A, B, C, and D, then D of the intervening U.S. patent document remains available as prior art under AIA 35 U.S.C. 102(a)(2). In other words, the exception in AIA 35 U.S.C. 102(b)(2)(B) does not necessarily remove the entire disclosure in the intervening reference from being prior art.

Specifically, AIA 35 U.S.C. 102(b)(2)(B) provides that a disclosure which would otherwise qualify as prior art under AIA 35 U.S.C. 102(a)(2) (a U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”)) is excepted as prior art if the subject matter disclosed had been previously publicly disclosed by the inventor, a joint inventor, or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. If a previous inventor-originated public disclosure is not within the grace period of AIA 35 U.S.C. 102(b)(1), it would qualify as prior art under AIA 35 U.S.C. 102(a)(1), and could not be excepted under AIA 35 U.S.C. 102(b)(1). MPEP § 2155.02 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by the inventor or a joint inventor, and MPEP § 2155.03 discusses the use of affidavits or declarations to show a prior public disclosure of the subject matter by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

In addition, if subject matter of an intervening U.S. patent document is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies to such subject matter of the intervening U.S. patent document. To hold otherwise would unfairly deprive an inventor of a patent merely because a third party became aware of the inventor’s public disclosure and then filed a patent application disclosing a genericized version of it. For example, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses a genus (i.e., provides a more generic disclosure of the species), the disclosure of the genus in the intervening U.S. patent document is not available as prior art under AIA 35 U.S.C. 102(a)(2). Conversely, if the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening U.S. patent document discloses a species, the disclosure of the species in the subsequent intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening U.S. patent document discloses an alternative species not also disclosed by the inventor or a joint inventor, the disclosure of the alternative species in the intervening U.S. patent document would be available as prior art under AIA 35 U.S.C. 102(a)(2) because the “subject matter disclosed” requirement of AIA 35 U.S.C. 102(b)(2)(B) would not have been met.

Finally, AIA 35 U.S.C. 102(b)(2)(B) does not discuss “the claimed invention” with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent intervening U.S. patent document. The only inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention. A determination of whether the exception in AIA 35 U.S.C. 102(b)(2)(B) is applicable to subject matter in an intervening U.S. patent document does not involve a comparison of the subject matter of the claimed invention to either the subject matter disclosed by the inventor or a joint inventor, or to the subject matter of the subsequent intervening U.S. patent document.

Finally, AIA 35 U.S.C. 102(b)(2)(B) does not discuss “the claimed invention” with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent intervening U.S. patent document. The only inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention. A determination of whether the exception in AIA 35 U.S.C. 102(b)(2)(B) is applicable to subject matter in an intervening U.S. patent document does not involve a comparison of the subject matter of the claimed invention to either the subject matter disclosed by the inventor or a joint inventor, or to the subject matter of the subsequent intervening U.S. patent document.

Applicants can include a statement in the specification upon filing regarding any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). In order to be effective to show that a potential AIA 35 U.S.C. 102(a)(2) disclosure of subject matter is not prior art under AIA 35 U.S.C. 102(a)(2) because the AIA 35 U.S.C. 102(b)(2)(B) exception applies, the statement must convey the same information as would be required in a declaration under 37 CFR 1.130(b). See MPEP §§ 717.01(b)(1), 2155.02, and 2155.03. An applicant is not required to identify any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, or to use the format specified in 37 CFR 1.77(b)(6), but identifying any such public disclosures may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification as filed contains a specific reference to an inventor-originated public disclosure of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the potential AIA 35 U.S.C. 102(a)(2) disclosure of the same subject matter is not in fact prior art under AIA 35 U.S.C. 102(a)(2), provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary. The applicant must also provide a copy of the prior inventor-originated public disclosure if it was made by way of a printed publication; see 37 CFR 1.130(b)(1). Applicants may not use 37 CFR 1.77(b)(6) to add information to the specification about inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter after the date that the application is filed. Applicants should use 37 CFR 1.130(b) to submit such information after filing.

Applicants can include a statement in the specification upon filing regarding any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). In order to be effective to show that a potential AIA 35 U.S.C. 102(a)(2) disclosure of subject matter is not prior art under AIA 35 U.S.C. 102(a)(2) because the AIA 35 U.S.C. 102(b)(2)(B) exception applies, the statement must convey the same information as would be required in a declaration under 37 CFR 1.130(b). See MPEP §§ 717.01(b)(1), 2155.02, and 2155.03. An applicant is not required to identify any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, or to use the format specified in 37 CFR 1.77(b)(6), but identifying any such public disclosures may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification as filed contains a specific reference to an inventor-originated public disclosure of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the potential AIA 35 U.S.C. 102(a)(2) disclosure of the same subject matter is not in fact prior art under AIA 35 U.S.C. 102(a)(2), provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary. The applicant must also provide a copy of the prior inventor-originated public disclosure if it was made by way of a printed publication; see 37 CFR 1.130(b)(1). Applicants may not use 37 CFR 1.77(b)(6) to add information to the specification about inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter after the date that the application is filed. Applicants should use 37 CFR 1.130(b) to submit such information after filing.

Applicants can include a statement in the specification upon filing regarding any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). In order to be effective to show that a potential AIA 35 U.S.C. 102(a)(2) disclosure of subject matter is not prior art under AIA 35 U.S.C. 102(a)(2) because the AIA 35 U.S.C. 102(b)(2)(B) exception applies, the statement must convey the same information as would be required in a declaration under 37 CFR 1.130(b). See MPEP §§ 717.01(b)(1), 2155.02, and 2155.03. An applicant is not required to identify any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, or to use the format specified in 37 CFR 1.77(b)(6), but identifying any such public disclosures may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification as filed contains a specific reference to an inventor-originated public disclosure of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the potential AIA 35 U.S.C. 102(a)(2) disclosure of the same subject matter is not in fact prior art under AIA 35 U.S.C. 102(a)(2), provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary. The applicant must also provide a copy of the prior inventor-originated public disclosure if it was made by way of a printed publication; see 37 CFR 1.130(b)(1). Applicants may not use 37 CFR 1.77(b)(6) to add information to the specification about inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter after the date that the application is filed. Applicants should use 37 CFR 1.130(b) to submit such information after filing.

Applicants can include a statement in the specification upon filing regarding any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). In order to be effective to show that a potential AIA 35 U.S.C. 102(a)(2) disclosure of subject matter is not prior art under AIA 35 U.S.C. 102(a)(2) because the AIA 35 U.S.C. 102(b)(2)(B) exception applies, the statement must convey the same information as would be required in a declaration under 37 CFR 1.130(b). See MPEP §§ 717.01(b)(1), 2155.02, and 2155.03. An applicant is not required to identify any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, or to use the format specified in 37 CFR 1.77(b)(6), but identifying any such public disclosures may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification as filed contains a specific reference to an inventor-originated public disclosure of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the potential AIA 35 U.S.C. 102(a)(2) disclosure of the same subject matter is not in fact prior art under AIA 35 U.S.C. 102(a)(2), provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary. The applicant must also provide a copy of the prior inventor-originated public disclosure if it was made by way of a printed publication; see 37 CFR 1.130(b)(1). Applicants may not use 37 CFR 1.77(b)(6) to add information to the specification about inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter after the date that the application is filed. Applicants should use 37 CFR 1.130(b) to submit such information after filing.

Applicants can include a statement in the specification upon filing regarding any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). In order to be effective to show that a potential AIA 35 U.S.C. 102(a)(2) disclosure of subject matter is not prior art under AIA 35 U.S.C. 102(a)(2) because the AIA 35 U.S.C. 102(b)(2)(B) exception applies, the statement must convey the same information as would be required in a declaration under 37 CFR 1.130(b). See MPEP §§ 717.01(b)(1), 2155.02, and 2155.03. An applicant is not required to identify any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, or to use the format specified in 37 CFR 1.77(b)(6), but identifying any such public disclosures may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification as filed contains a specific reference to an inventor-originated public disclosure of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the potential AIA 35 U.S.C. 102(a)(2) disclosure of the same subject matter is not in fact prior art under AIA 35 U.S.C. 102(a)(2), provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary. The applicant must also provide a copy of the prior inventor-originated public disclosure if it was made by way of a printed publication; see 37 CFR 1.130(b)(1). Applicants may not use 37 CFR 1.77(b)(6) to add information to the specification about inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter after the date that the application is filed. Applicants should use 37 CFR 1.130(b) to submit such information after filing.

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2131 – MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.” The exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under 35 U.S.C. 102(b)(2)(B) that the mode of prior disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening U.S. patent document(e.g., patenting, publication, public use, sale activity). There is also no requirement that the prior disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening U.S. patent document. What is required for subject matter in the intervening U.S. patent document to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). 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. The exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply even if the only differences between the subject matter in the prior art disclosure that is relied upon under AIA 35 U.S.C. 102(a) and the subject matter previously publicly disclosed by the inventor are mere insubstantial changes, or only trivial or obvious variations. This guidance maintains the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B).

Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.” The exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under 35 U.S.C. 102(b)(2)(B) that the mode of prior disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening U.S. patent document(e.g., patenting, publication, public use, sale activity). There is also no requirement that the prior disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening U.S. patent document. What is required for subject matter in the intervening U.S. patent document to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). 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. The exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply even if the only differences between the subject matter in the prior art disclosure that is relied upon under AIA 35 U.S.C. 102(a) and the subject matter previously publicly disclosed by the inventor are mere insubstantial changes, or only trivial or obvious variations. This guidance maintains the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B).

Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.” The exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under 35 U.S.C. 102(b)(2)(B) that the mode of prior disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening U.S. patent document(e.g., patenting, publication, public use, sale activity). There is also no requirement that the prior disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening U.S. patent document. What is required for subject matter in the intervening U.S. patent document to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). 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. The exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply even if the only differences between the subject matter in the prior art disclosure that is relied upon under AIA 35 U.S.C. 102(a) and the subject matter previously publicly disclosed by the inventor are mere insubstantial changes, or only trivial or obvious variations. This guidance maintains the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B).

Similar to the previous discussion of AIA 35 U.S.C. 102(b)(1)(B), the exception in AIA 35 U.S.C. 102(b)(2)(B) applies if the “subject matter disclosed [in the intervening disclosure] had, before such [intervening] disclosure was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor.” The exception in AIA 35 U.S.C. 102(b)(2)(B) focuses on the “subject matter” that had been publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). There is no requirement under 35 U.S.C. 102(b)(2)(B) that the mode of prior disclosure by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor) be the same as the mode of disclosure of the intervening U.S. patent document(e.g., patenting, publication, public use, sale activity). There is also no requirement that the prior disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening U.S. patent document. What is required for subject matter in the intervening U.S. patent document to be excepted under AIA 35 U.S.C. 102(b)(2)(B) is that the subject matter must have been previously publicly disclosed by the inventor or a joint inventor (or another who obtained the subject matter directly or indirectly from the inventor or joint inventor). 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. The exceptions in AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B) do not apply even if the only differences between the subject matter in the prior art disclosure that is relied upon under AIA 35 U.S.C. 102(a) and the subject matter previously publicly disclosed by the inventor are mere insubstantial changes, or only trivial or obvious variations. This guidance maintains the identical subject matter interpretation of AIA 35 U.S.C. 102(b)(1)(B) and 102(b)(2)(B).

Finally, AIA 35 U.S.C. 102(b)(2)(B) does not discuss “the claimed invention” with respect to either the subject matter disclosed by the inventor or a joint inventor, or the subject matter of the subsequent intervening U.S. patent document. The only inquiry with respect to the claimed invention is whether or not the subject matter in the prior art disclosure being relied upon anticipates or renders obvious the claimed invention. A determination of whether the exception in AIA 35 U.S.C. 102(b)(2)(B) is applicable to subject matter in an intervening U.S. patent document does not involve a comparison of the subject matter of the claimed invention to either the subject matter disclosed by the inventor or a joint inventor, or to the subject matter of the subsequent intervening U.S. patent document.

Applicants can include a statement in the specification upon filing regarding any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). In order to be effective to show that a potential AIA 35 U.S.C. 102(a)(2) disclosure of subject matter is not prior art under AIA 35 U.S.C. 102(a)(2) because the AIA 35 U.S.C. 102(b)(2)(B) exception applies, the statement must convey the same information as would be required in a declaration under 37 CFR 1.130(b). See MPEP §§ 717.01(b)(1), 2155.02, and 2155.03. An applicant is not required to identify any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, or to use the format specified in 37 CFR 1.77(b)(6), but identifying any such public disclosures may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification as filed contains a specific reference to an inventor-originated public disclosure of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the potential AIA 35 U.S.C. 102(a)(2) disclosure of the same subject matter is not in fact prior art under AIA 35 U.S.C. 102(a)(2), provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary. The applicant must also provide a copy of the prior inventor-originated public disclosure if it was made by way of a printed publication; see 37 CFR 1.130(b)(1). Applicants may not use 37 CFR 1.77(b)(6) to add information to the specification about inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter after the date that the application is filed. Applicants should use 37 CFR 1.130(b) to submit such information after filing.

Applicants can include a statement in the specification upon filing regarding any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter. See 37 CFR 1.77(b)(6) and MPEP § 608.01(a). In order to be effective to show that a potential AIA 35 U.S.C. 102(a)(2) disclosure of subject matter is not prior art under AIA 35 U.S.C. 102(a)(2) because the AIA 35 U.S.C. 102(b)(2)(B) exception applies, the statement must convey the same information as would be required in a declaration under 37 CFR 1.130(b). See MPEP §§ 717.01(b)(1), 2155.02, and 2155.03. An applicant is not required to identify any inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, or to use the format specified in 37 CFR 1.77(b)(6), but identifying any such public disclosures may expedite examination of the application and save applicants (and the Office) the costs related to an Office action and reply. If the patent application specification as filed contains a specific reference to an inventor-originated public disclosure of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the potential AIA 35 U.S.C. 102(a)(2) disclosure of the same subject matter is not in fact prior art under AIA 35 U.S.C. 102(a)(2), provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary. The applicant must also provide a copy of the prior inventor-originated public disclosure if it was made by way of a printed publication; see 37 CFR 1.130(b)(1). Applicants may not use 37 CFR 1.77(b)(6) to add information to the specification about inventor-originated public disclosures of subject matter made prior to a potential AIA 35 U.S.C. 102(a)(2) disclosure of that same subject matter after the date that the application is filed. Applicants should use 37 CFR 1.130(b) to submit such information after filing.