Secret Prior Art

Secret prior art consists of patent applications filed before your application but not yet published at the time of your filing: AIA § 102(a)(2): 'a claimed invention [is anticipated or lacks novelty] if the claimed invention was described in a patent granted on an application for patent by another inventor or inventors, filed in the United States before the effective filing date of the claimed invention, or in an application for patent by another inventor or inventors, which was filed before the effective filing date of the claimed invention'; KEY FEATURE: the earlier application is prior art AS OF ITS FILING DATE, not its publication date; an application filed before yours, but published AFTER yours, is still prior art against your claims; WHY IT IS 'SECRET': at the time you (or your attorney) conducted prior art searches before filing, the earlier application had not yet published; it was unknown to the public; there was no way to find it in a prior art search; the applicant could not have known about it; COMPARED TO PRE-AIA SECRET PRIOR ART: under pre-AIA law, a patent application filed by ANOTHER INVENTOR had secret prior art effect under 35 U.S.C. § 102(e) for anticipation only; under AIA § 102(a)(2), the same concept applies but with different effective date rules (particularly for PCT applications); AIA SCOPE: US patents, US published applications, AND PCT applications designating the US qualify under § 102(a)(2); the effective filing date includes the benefit of claimed domestic and foreign priority dates; PRACTICAL SIGNIFICANCE: secret prior art is discovered by applicants during examination when an examiner cites a newly-published application filed before the applicant's filing date that the applicant could not have known about.

Three statutory safe harbors under § 102(b)(2) can eliminate secret prior art effect: SAFE HARBOR (A) — DISCLOSED BY INVENTOR: § 102(b)(2)(A): the secret prior art does NOT qualify under § 102(a)(2) if the subject matter was FIRST DISCLOSED by the inventor or joint inventor; REQUIRES: the inventor of the challenged application must have disclosed the invention publicly before the effective filing date of the conflicting application; this safe harbor rewards inventors who publish or disclose early; SAFE HARBOR (B) — COMMON DISCLOSURE: § 102(b)(2)(B): the secret prior art does NOT qualify if the subject matter was effectively the same as a disclosure made before the effective filing date of the conflicting application by either: (a) the inventor; OR (b) a person who obtained the subject matter directly or indirectly from the inventor; SCOPE: this is broader than (A) — it covers disclosures by others who got the information from the inventor; SAFE HARBOR (C) — COMMON OWNERSHIP: § 102(b)(2)(C): the secret prior art does NOT qualify under § 102(a)(2) if the subject matter and the claimed invention, AT THE TIME OF FILING, were OWNED BY THE SAME PERSON or subject to an obligation to assign to the same person; PRACTICAL USE: this is the most commonly invoked safe harbor; when two inventors at the same company independently file applications on related subject matter, common ownership eliminates the secret prior art problem; JOINT RESEARCH AGREEMENTS: subject matter developed under a joint research agreement can qualify under § 103 for common ownership treatment (§ 102(c) cross-reference); requires that both applications/patents were made under a joint research agreement.

USPTO examiners cite secret prior art in § 102(a)(2) rejections with specific requirements: TIMING OF CITATION: an examiner cannot cite a § 102(a)(2) reference until it publishes or issues; the reference must be a granted patent or published application at the time of the rejection; but once published, the examiner applies it as of its earlier filing date; WHAT THE EXAMINER MUST SHOW: (a) identify the reference (patent or published application number); (b) show that the reference's effective filing date (including any priority claim) is BEFORE the applicant's effective filing date; (c) identify the disclosure in the reference that anticipates or renders obvious the claimed invention; APPLICANT'S INITIAL RESPONSE OPTIONS: (1) argue the reference's effective date does not actually predate applicant's effective filing date (check priority claims carefully); (2) argue the reference does not disclose every element of the claim; (3) invoke one of the § 102(b)(2) safe harbors — most commonly common ownership; INVOKING COMMON OWNERSHIP: applicant submits a statement that as of the filing date, the applicant and the reference's inventor were owned by the same person OR obligated to assign to the same person; no formal declaration required — a statement in the response suffices; must be accurate as of the filing date; BURDEN SHIFTING: once applicant invokes common ownership under § 102(b)(2)(C), the examiner cannot maintain the § 102(a)(2) rejection; if the reference is owned by the same assignee, it cannot be secret prior art; DOUBLE PATENTING: common ownership eliminates § 102(a)(2) prior art effect but may create an obviousness-type double patenting issue; a terminal disclaimer may still be required.

The joint research agreement (JRA) context creates additional complexity for secret prior art analysis: § 103(c) PRE-AIA / § 102(c) AIA: subject matter developed under a joint research agreement is treated as commonly owned for the purpose of eliminating secret prior art rejections; the parties do not need to be the same legal entity — they must have had a joint research agreement at the time the invention was made; JRA REQUIREMENTS (AIA § 102(c)/§ 103 cross-reference): (a) the claimed invention was made by or on behalf of the parties to the JRA; (b) the claimed invention was made as a result of activities undertaken within the scope of the JRA; (c) the application for which a JRA exception is invoked must disclose or be amended to disclose the names of the parties to the JRA; PRACTICAL USE: a university and a company co-fund research; the university files a patent application before the company files an application on related work; without JRA treatment, the university's application is secret prior art against the company's application; with JRA treatment, common development context can eliminate the prior art effect; COMPARED TO COMMON OWNERSHIP: JRA is more complex to establish than common ownership (which just requires same assignee); JRA requires a formal agreement, scope of activities, and disclosure of the agreement in the patent application; FOR § 103 ONLY: the JRA exception under AIA applies to § 102(a)(2) AND § 103 rejections — a JRA-excluded reference cannot be used as a basis for obviousness either; PROSECUTION PRACTICE: when invoking JRA exclusion, amend the specification or claims to identify the JRA parties; failure to disclose the parties prevents reliance on the JRA exception.

Yes — secret prior art under AIA § 102(a)(2) can support both anticipation (§ 102) and obviousness (§ 103) rejections: § 102 ANTICIPATION: a § 102(a)(2) reference can anticipate a claim if it discloses every element of the claim within a single document; the reference's effective date must predate the applicant's effective filing date; § 103 OBVIOUSNESS: § 102(a)(2) references can also be combined with other prior art in an obviousness rejection; a secret prior art reference can serve as one of multiple references in a § 103 combination; SECRET PRIOR ART + PUBLIC PRIOR ART: examiner cites a secret § 102(a)(2) reference disclosing element A and a public prior art reference disclosing element B; combining A + B = obvious under § 103; PRIOR ART EXCLUSION APPLIES TO BOTH: if the § 102(b)(2) safe harbors apply (common ownership, inventor disclosure, or JRA), the reference is EXCLUDED from both § 102(a)(2) anticipation AND § 103 obviousness; applying for the common ownership exclusion eliminates the reference for all purposes; EFFECTIVE DATE CONFUSION: for § 102(a)(2), only the reference's FILING DATE matters; publication date is irrelevant to the prior art status; a reference filed in 2020 and published in 2022 is prior art as of 2020 for an application with a 2021 filing date; FOREIGN FILING PRIORITY: if the § 102(a)(2) reference claims foreign priority under 35 U.S.C. § 119, the effective date for § 102(a)(2) purposes is the PCT or national phase entry filing date or the § 119 foreign priority date IF the foreign application's subject matter is entirely disclosed in the US application.