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Let's say Company A's patent application is rejected due to prior art, a public disclosure from Company B (made within Company B's 1 year grace period). Would Company B's very similar patent application, filed just after Company A, be rejected due to Company A's rejected, published patent application being considered prior art?

The question pertains to a potentially very valuable patent application, that has been deemed patentable except for a public disclosure (prior art) from Company B.

Interestingly, Company A filed 3/15/12, the last day of "first to invent" system, Company B filed 2 months later under "first inventor to file."

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  • Wouldn't Company B's public disclosure be prior art for Company B's application, regardless of whatever Company A has done in this time? Or are you implying that Company B's application relies on the 1 year grace period?
    – Maca
    Commented Aug 4, 2016 at 21:02
  • Yes, thank you, in this scenario Company B's public disclosure falls within their 1 year grace period (about 11 months prior to filing) and before Company A's filing/priority date. What's interesting is that Company B's public disclosure, within it's 1 year grace period, does not move back it's priority date or effective filing date (2nd to last par: wnlaw.com/ip-law-news/…). That public disclosure is only given an exception and not counted as prior art for Company B.
    – sdot
    Commented Aug 5, 2016 at 1:29
  • So, from my initial understanding Company B could invalidate Company A's patent application with the prior art submission (Company B's own public disclosure), but I'm not sure it could get past the prior art of Company A's published rejected patent, unless it proved Company A directly derived the invention from them. Very hard to prove.
    – sdot
    Commented Aug 5, 2016 at 1:34

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Update #2: Under the scenario described above, when Company B filed post-AIA, "first inventor to file" a prior, published patent application from Company A is not prior art under 102(B)(2)(b) from what I gather:

"(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

(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;"

Update #1: I now know a rejected or abandoned, but published patent application is considered prior art under the previous "first to invent" system (see 901.02), but can't find anything to confirm that for "first to file," post-AIA.

In sticking with the spirit of the law for "first to invent" that would seem to make sense, because the first to invent would still get the patent. But would not award the first to invent and publicly disclose under the first to file system in the scenario described above. Which given the 1 year grace period and spirit of the law, seems wrong.

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