Often overlooked when discussing the myriad changes wrought by the America Invents Act (AIA), 35 USC Section 102(b)(2)(C) deserves close scrutiny by any company that hires potential inventors or that enters into joint development agreements with third parties. This new provision created by the AIA provides such companies with a powerful tool for removing potentially harmful prior art from consideration by the USPTO against patent applications that such companies might file in the future. To work properly, though, 102(b)(2)(C) needs to be considered when negotiating a joint development agreement and when first hiring any new potential inventor employees.
The post-AIA Section 102 defines prior art in just two short subsections. Subsection 102(a)(1) sets forth that anything made public before the filing date of an application is prior art. Subsection 102(a)(2) sets forth that patents and patent applications become prior art as of their filing dates once they publish. Unless they are granted sooner, most patent applications will publish 18 months after they are filed, and then become prior art as of their filing dates. For example, if a patent application is filed on January 1, 2013 and publishes on July 1, 2014, it becomes eligible as of July 1, 2014 to be used as prior art against any application filed after January 1, 2013. The provisions of 102(b)(2)(C), however, provide a method for proactively removing such patent applications from the definition of prior art under 102(a)(2), using what I refer to as “prior art recapture.”
It’s helpful to think of prior art recapture in the context of two situations, hiring of new employees and negotiating joint development agreements. As to the former situation, imagine a company hiring a prolific inventor to join the company’s research and development group. Further imagine that this new employee was named as an inventor on ten patent applications filed in the year before she was hired and that all these applications relate to the technology field in which the company intends to file patent applications in the future. It stands to reason that all of these patent application may become prior art that can be used by the USPTO against the company’s future applications pursuant to the provisions of subsection 102(a)(2). The risk that these applications might be used against the company in this way by the USPTO, however, can be removed with prior art recapture if the company can obtain an assignment of the previously-filed applications. Once thus assigned to the company, these previously filed patent applications can no longer be used as prior art under subsection 102(a)(2) against any application the company files after the date of the assignment.
As to the situation involving joint development agreements, 35 USC Section 102(c) allows that prior art recapture also applies when parties bind themselves to a joint development agreement. Now imagine that Company X and Company Y are both interested in joining forces to develop new advanced widget technology. Further, Company X and Company Y have each filed patent applications in the field of advanced widget technology in the past. Clearly, there is a danger that whatever inventions developed by the joint endeavor may later have to overcome the prior art applications of each of the companies during patent prosecution related to such inventions. However, prior art recapture allows these companies to potentially remove their previous patents and patent applications from the prior art provisions of subsection 102(a)(2) by entering into a joint development agreement and meeting the other requirements of 35 USC Section 102(c).
In light of the above, prior art recapture should be considered when a company hires a new inventor and when a company contemplates any joint development endeavor that might generate patent applications. Keep in mind, however, that prior art recapture only exempts prior art from the provisions of subsection 102(a)(2). Subsection 102(a)(1) might still be a problem for those applications and patents that publish before the company files new applications. In any event, what you don’t know about the patent applications filed by new employees and potential third party joint developers can’t help you unless you inquire about them. Once such potential prior art has been identified, the provisions of 35 USC Section 102(b)(2)(c) should be consulted to determine if any of that prior art can be recaptured.
One of the founding partners of Carstens & Cahoon, LLP, Colin Cahoon concentrates his practice in patent law with an emphasis on patent portfolio management.
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