[Congressional Record Volume 157, Number 35 (Wednesday, March 9, 2011)]
[Senate]
[Pages S1496-S1497]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                          AMERICA INVENTS ACT

  Mr. LEAHY. Mr. President, Congress has been working on the America 
Invents Act going back many years. It has gone through numerous 
iterations and changes have been made over time. Accordingly, I want to 
take a few minutes to discuss some important legislative history of a 
critical piece of this bill--section 2 of the legislation, which amends 
section 102 of title 35 of the United States Code. There has been a 
great deal of attention paid to subsections 102(a) and (b) and how 
those two subsections will work together. Senator Bennet and others 
have asked about this issue in particular.
  Mr. HATCH. I thank the Senator. I agree with the chairman that it is 
important that we set down a definitive legislative history of those 
subsections, which will be important for each and every patent 
application.
  Mr. LEAHY. One key issue on which people have asked for clarification 
is the interplay between patent-defeating disclosures under subsection 
102(a) and the situations where those disclosures are excepted and have 
no patent-defeating effect under the grace period provided in 
subsection 102(b).
  In particular, some in the small inventor community have been 
concerned that a disclosure by an inventor might qualify as patent-
defeating prior art under subsection 102(a) because, for example, the 
inventor's public disclosure and by a ``public disclosure'' I mean one 
that results in the claimed invention being ``described in a printed 
publication, or in public use, on sale, or otherwise available to the 
public''--might in some situation not be excluded as prior art under 
section 102(b)'s grace period. There is absolutely no situation in 
which this could happen given the interplay between subsections 102(a) 
and 102(b) as these subsections are drafted.
  We intend that if an inventor's actions are such as to constitute 
prior art under subsection 102(a), then those actions necessarily 
trigger subsection 102(b)'s protections for the inventor and, what 
would otherwise have been section 102(a) prior art, would be excluded 
as prior art by the grace period provided by subsection 102(b). Indeed, 
as an example of this, subsection 102(b)(1)(A), as written, was 
deliberately couched in broader terms than subsection 102(a)(1). This 
means that any disclosure by the inventor whatsoever, whether or not in 
a form that resulted in the disclosure being available to the public, 
is wholly disregarded as prior art. A simple way of looking at new 
subsection 102(a) is that no aspect of the protections under current 
law for inventors who disclose their inventions before filing is in any 
way changed.
  Mr. HATCH. The Senator from Vermont is correct. For the purposes of 
grace-period protection, the legislation intends parallelism between 
the treatment of an inventor's actions under subsection 102(a) that 
might create prior art and the treatment of those actions that negate 
any prior-art effect under subsection 102(b). Accordingly, small 
inventors and others will not accidentally create a patent-defeating 
bar by their prefiling actions that would otherwise be prior art under 
subsection 102(a) as long as they file their patent applications within 
the grace period provided by subsection 102(b). But, the important 
point is that if an inventor's disclosure triggers the 102(a) bar with 
respect to an invention, which can only be done by a disclosure that is 
both made available to the public and enabled, then he or she has 
thereby also triggered the grace period under 102(b). If a disclosure 
resulting from the inventor's actions is not one that is enabled, or is 
not made available to the public, then such a disclosure would not 
constitute patent-defeating prior art under 102(a) in the first place.
  But even if the disclosure was enabled and available to the public so 
that it did qualify as prior art under subsection 102(a), subsection 
102(b) would require that the disclosure be disregarded if it occurred 
during the 1-year grace period before the patent was sought. Indeed, a 
disclosure that does not satisfy the requirements to be prior art under 
subsection 102(a), nonetheless constitutes a disclosure that is fully 
protected under the more inclusive language of subsection 102(b). This 
relationship between these subsections will fully protect the inventor 
and, together with the provisions of subsection 101 limiting patenting 
to inventors, prevent others from obtaining a patent on the inventor's 
creation.
  Mr. LEAHY. I agree. One of the implications of the point we are 
making is that subsection 102(a) was drafted in part to do away with 
precedent under current law that private offers for sale or private 
uses or secret processes practiced in the United States that result in 
a product or service that is then made public may be deemed patent-
defeating prior art. That will no longer be the case. In effect, the 
new paragraph 102(a)(1) imposes an overarching requirement for 
availability to the public, that is a public disclosure, which will 
limit paragraph 102(a)(1) prior art to subject matter meeting the 
public accessibility standard that is well-settled in current law, 
especially case law of the Federal Circuit.
  Mr. HATCH. An additional clarification we have been asked about deals

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with subparagraph 102(b)(1)(B). There has been some confusion over how 
this provision will work. It is my understanding that this provision 
ensures that an inventor who has made a public disclosure--that is, a 
disclosure made available to the public by any means--is fully 
protected during the grace period. The inventor is protected not only 
from the inventor's own disclosure being prior art against the 
inventor's claimed invention, but also against the disclosures of any 
of the same subject matter in disclosures made by others being prior 
art against the inventor's claimed invention under section 102(a) or 
section 103--so long as the prior art disclosures from others came 
after the public disclosure by the inventor. Is that the Senators' 
understanding of this provision?
  Mr. LEAHY. That is correct. Subparagraph 102(b)(1)(B) is designed to 
work in tandem with subparagraph 102(b)(1)(A) to make a very strong 
grace period for inventors that have made a public disclosure before 
seeking a patent. Inventors who have made such disclosures are 
protected during the grace period, not only from their own disclosure, 
but also from disclosures by others that are made after their 
disclosure. This is an important protection we offer in our bill that 
will benefit independent and university inventors in particular.

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