This is the fourth and final video covering the change in patent law to first inventor
to file. Here we will cover the exceptions to the prior art that we talked about in the
third video. There are three specific exceptions that we need to talk about. Keep in mind that
these exceptions apply only to disclosures made in the documents we talked about in the
third video. Those documents are: a U.S. patent, a published U.S. patent application or a WIPO-published
PCT application. They must name another inventor and must have filed before the effective filing
date of the claimed invention but not issued or published until after the effective filing
date of the claimed invention. So just remember that as we move through. Ready? Okay, here's
an exception-by-exception look at this area of the law, officially called 35 USC 102 section
b, subsection 2. It is broken into three parts: A, B, and C.
Part A says a disclosure in any of these three documents made by someone else who acquired
the claimed invention's subject matter from an inventor will not be considered prior art
against the claimed invention. Part B says that a disclosure made in any of these three
documents would be excluded from prior art if the subject matter had already been publicly
disclosed by the inventor or another who obtained the subject matter directly or indirectly
from the inventor or any co-inventors. However, if the subject matter was disclosed more than
one year before the effective filing date of the claimed invention, it would be prior
art under section 102(a)(1), which we covered in the first video. Finally, part C states
these documents are not considered prior art against a claimed invention if it and the
disclosed subject matter were owned by, or under an obligation of assignment to, the
same person before the effective filing date of the claimed invention. Okay, so what does
this mean for you? Let's say you file a patent application for a claimed invention.
Let's also say there is another published U.S. patent application that contains a disclosure
of your claimed invention's subject matter. If that application names any inventor other
than what is listed for your claimed invention and that application was filed before your
effective filing date, then it could be prior art against your claimed invention. But hold
on; let's check the exceptions. Was the disclosure in the published application obtained
from you or a co-inventor? Then it may be excluded as prior art.
Or, before the published application was effectively filed, had the subject matter already been
publicly disclosed by you, a co-inventor, or someone else who obtained the subject matter
from you? If so, then it may be excluded as prior art. And lastly, did you own, or were
under an obligation of assignment to, both the disclosed subject matter and the claimed
invention before you effectively filed your claimed invention? Then the published application
may be excluded as prior art. Alright, that's a mouthful, but if you still have questions,
you can view a more in-depth discussion by selecting the link at the bottom of this video.
This concludes our coverage of the America Invents Act change to patent law from first-to-invent
to first-inventor-to-file.