Can independent 3rd party disclosures created during grace period after inventor disclosure be used against inventors after the grace period?

Question

I understand that the AIA considers prior art (among other states of publication/use not relevant here) anything that is greater than 12 months from the date of inventor's disclosure. I understand that works disclosed within that 12 month period by the inventor isn't considered prior art as well as publications which derived from the inventors disclosure. But, from what I read (and may need clarifying on), is if that 3rd party creates that same invention/element(s) of that invention independently in the grace period before the inventor files for a patent, the 3rd party would be able to challenge the inventor's patent with a request for re-examination via submission of the 3rd party's evidence. However, I read here (https://www.ipwatchdog.com/2017/06/10/patentability-novelty-requirement-102/id=84321/):

Under the U.S. first to file system it is true that the inventor will still have a personal grace-period to remove their own disclosures. This personal grace-period says that the inventor’s own disclosures, or the disclosures of others who have derived from the inventor, are not capable of being used as prior art as long as they occurred within 12 months of the filing date of a patent application. However, and this is a very big however, disclosures of third-parties who independently came up with the invention information themselves will be used against the inventor unless the disclosure is of the same subject matter.

Does this bold part mean that an independent 3rd party who releases a printed publication which is of the same subject matter of the inventor's disclosure after the inventor's disclosure and before the inventor's filing mean that the independent third party will be unable to effectively file their work as prior work or would they be able to file certain elements of it?

To clarify, I'm assuming subject matter means the contents of the elements of the independent 3rd party matches the contents of the inventor's disclosure/patent in a definitive way. Also, the 3rd party mentioned throughout this question has no intention to file a patent and wants to keep a patent from being enforceable. When I refer to disclosures I'm referring to the USPTO definition of "printed publication(s)"

The reason why I find this confusing is that the law described here looks like it's putting the burden on the patent holders to file before anyone else but screwing anyone who doesn't see the inventor's disclosure. I feel it should be fair game (i.e. spontaneous disclosures of the same thing by an independent body that can be enforced/protected) up until the inventor files. Any accurate clarification would be helpful.

Answer 1

I'll try to clarify. Under the AIA first to file system, the effective filing date of the pending application is important for figuring out what is in the prior art. The law (35 USC 102) is now set up such that it broadly defines the class of prior art and then carves out specific exceptions that can be used to disqualify references (publications or patent applications). https://www.uspto.gov/web/offices/pac/mpep/s2152.html

The class of prior art is essentially any references that were published or filed, for patent applications, prior to your earliest filing date. Thus, the first question is "was the reference in question available to the public or filed prior to my earliest filing date?"

If so, then you look at the exceptions in 35 USC 102(b) to see if you can still DQ the reference. Within one exception (102b1) is where the remnants of the 12 mo grace period can be found. If the reference falls within one of the specific exceptions, it is not prior art against your patent.

If you filed a patent application on March 1, 2020. Hypo A is that Bob published an article on January 1, 2019. Bob's article falls into the broad group of prior art that can be used to reject your application. There is nothing you can do to disqualify bc it has been public for more than 1 year prior to your filing date.

Hypo B is that Bob's article publishes January 1, 2020, two months prior. It still classifies as prior art, but now the exceptions of 35 USC 102(b)(1) are applicable to potentially DQ. If Bob obtained the content of the article from you or if you have an earlier public disclosure in November 2019 of the subject matter that predates Bob's article, that would knock out Bob's article as prior art that can be used against you.

Finally, I don't fully understand the Bold statement. Based on the law, a public disclosure of an independent inventor within 1 year before your filing date is like Hypo B above, it could be DQ'd by an earlier grace period disclosure by the inventor.

Answer 2

An answer to the question in your title is at How do others' publications during the grace period hinder patentability?

As interpreted by the USPTO the provisions for a grace period in the AIA protects the content of the inventor's publications (during the 12 month period) from being used against them on a very literal basis. Anything from a third party other than almost the exact wording of the inventors publication can be used as prior art.

A real one year grace period was an important feature of pre-AIA U.S. law, as was the principle that the first to invent should be the one who could get a patent. The AIA moved us towards the rest of the world. The rest of the world is very strictly first-to-file with no concept that someone who invented first but filed second should have priority. Logically, with a first to file system any publication by anyone kills everyone's ability to file so the rest of the world has a strict novelty requirement. Any disclosure before filing kills the application.

Regarding simultaneous invention, before the AIA inventors could use the interference procedure to argue who had first conceived of the invention and whether or not that person had diligently - on a day-by-day basis - proceeded to reduce the conception to practice. Was the one who lost "screwed" by not knowing that the other person had already conceived of it? No, they just came in second or could not substantiate the day they maintained they conceived of it.

Under AIA one inventor can preempt other inventors by filing first, or under the watered-down grace period can preempt by publishing first, but they only nail down exactly what they published. That is not written into the law but rather into the USPTO regulations putting the law into effect.

Response to a comment

A real one year grace period was an important feature of pre-AIA U.S. law, as was the principle that the first to invent should be the one who could get a patent. The AIA moved us towards the rest of the world. The rest of the world is very strictly first-to-file with no concept that someone who invented first but filed second should have priority. Logically, with a first to file system any publication by anyone kills everyone's ability to file so the rest of the world has a strict novelty requirement. The assumption is that if you filed first you are the inventor with no mechanism to prove it.

Any disclosure by anyone before filing kills an application. If you publish on Monday then 1000 people could file on Tuesday. With no mechanism to determine who invented first, or was an inventor at all, the situation would be untenable.

But, part of the compromise in the AIA was to keep some sort of grace period. If you publish, we do not hold that against you. Someone else's publication can be held against you to the extent is goes beyond what you published.