Introduction Patent Prosecution Under The AIA William R. Childs, Ph.D., J.D. Drinker Biddle & Reath LLP 1500 K Street, N.W. Washington, DC 20005-1209 (202) 230-5140 phone (202) 842-8465 fax William.Childs@dbr.com This paper is being written to provide new lawyers and patent agents with a quick, practical guide for prosecuting patent applications under the America Invents Act (AIA). As such, the guidance provided herein is tailored for the need to respond to Office Actions or client instructions in a short time frame and with a limited budget. This paper is not intended to be a comprehensive guide to the America Invents Act or patent prosecution in general. This paper does not constitute legal advice. 1 First-Inventor To File (or Disclose) Under the America Invents Act (hereafter AIA ), the U.S. Patent and Trademark Office (hereafter USPTO ) is switching to a first-inventor-to-file (or disclose) (hereafter FITF ) system for determining which disclosures constitute prior art. In terms of practical patent prosecution, there are two situations in which this change will become an issue. Two Issues Where AIA Must Be Considered 1. Whenever an application is filed after March 16, 2013, a practitioner will need to determine whether or not to make a transition statement in the Application Data Sheet. 2. Determining if alleged prior art is actually prior art. Suggested Analysis I suggest the following analysis for determining if the AIA FITF provisions apply to an application. (1) determine whether an application is a pre-aia, post-aia, or Transition Application by determining the actual filing date of the instant application and the claim of priority; (2) determine the Effective Filing Date ; and (3) determine if the disclosure is prior art. 1 These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law and practice. These materials reflect only the personal views of the speaker and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, Drinker Biddle & Reath LLP and the speaker cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with Drinker Biddle & Reath LLP and the speaker. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed. 1
Determine Whether An Application is a Pre-AIA, Post-AIA, or Transition Application. The goal of this analysis is to quickly determine if an application of interest falls under one of the two easy cases of a pre-aia or post-aia application. If not, then the application is a Transition Application, and a more thorough analysis will be necessary to determine if the Transition Application falls under pre-aia provisions or is a Hybrid Application. The AIA FITF provisions apply to an application having an Effective Filing Date on or after March 16, 2013. 2 Thus, the determination necessarily follows the determination of the Effective Filing Date. However, the following procedure represents a quick guide for determining if an application falls within the AIA FITF provisions. The first question to ask is whether the instant application has a filing date before March 16, 2013. If the instant application has a filing date before March 16, 2013, then the instant application is a pre-aia application and the AIA FITF provisions do not apply. Regardless of enablement or written description, the default Effective Filing Date of any application is, at the latest, the filing date of the instant application. Thus, the instant application must have an Effective Filing Date before March 16, 2013. In practice this determination will be quick and easy, because the filing date of the instant application is found on the Filing Receipt, unless the instant application is a 371 national stage application, which would use the PCT filing date. If the filing date of the instant application is before March 16, 2013, use the pre-aia statues and rules. If this date is on or after March 16, 2013, then proceed to the second question below. The second question to ask is whether the instant application has a filing date on or after March 16, 2013, and does not claim priority to a filing date before March 16, 2013. If so, then the instant Application must have an Effective Filing Date on or after March 16, 2013. Thus, the instant application is a post-aia application and the AIA FITF provisions must apply. This situation is the other easy case, because the Effective Filing Date cannot be before March 16, 2013, if no claim of priority to a date before March 16, 2013 has been made. To determine if priority has been claimed to a prior application, the Application Data Sheet and/or Official Filing Receipt can be consulted. Transition Applications A more difficult determination arises when the instant application has a filing date on or after March 16, 2013, and claims priority to a filing date before March 16, 2013. If the instant application has a filing date on or after March 16, 2013, and claims priority to an application having a filing date before March 16, 2013, then the third question to ask is whether a claim in the instant application contains new subject matter. That is, it must be 2 35 U.S.C. 100(i)(1)(A). 2
determined if there is new subject matter not supported by an application filed prior to March 16, 2013. This is a claim-by-claim determination. 3 If none of the claims contain new subject matter between filing date of the instant application and a pre-aia filing date to which priority was claimed, then the AIA FITF provisions do not apply, because the Effective Filing Date of each claim is before March 16, 2013. However, if one or more of the claims contains new subject matter, then all claims in the instant application and any application that claims priority to the instant application are subject to both the AIA FITF provisions and 35 U.S.C. 102(g). This Transition Application is a Hybrid Application. The guide above represents a quick way to determine whether the AIA FITF provisions apply to an instant application. However, realistically, the USPTO has indicated that the PAIR (Patent Application Information Retrieval) system and the front of Office Actions will indicate whether or not the USPTO will apply the AIA FITF provisions to the instant application. To challenge the USPTO s decision to apply the AIA FITF provisions to an application, it will be necessary to appeal. No petition is available. Thus, the determination by the USPTO will probably not be worth fighting, unless a strong reference was applied only under the AIA FITF provisions. Also, all applications that contain a claim having an Effective Filing Date are required to include a Transition Statement admitting this point. Thus, an effective, practical way to determine whether the AIA FITF provisions apply to an application is to look in PAIR or on the front of an Office Action to see if the Office considers the AIA FITF provisions as applying. Similarly, it would be wise to locate the Transition Statement on the Application Data Sheet ( ADS ) to determine how the application was presented to the Office. Determine The Effective Filing Date The determination of the Effective Filing Date of an application will be critical to determining which reference are actually prior art. If it is determined that the application is subject to the AIA FITF provisions, then the Effective Filing Date can be determined as follows. The Effective Filing Date of a claim is the filing date of the instant application or the earliest priority date to which a claim is entitled. Specifically, under 35 U.S.C. 100(i)(1)(A) and 37 C.F.R. 1.109, the Effective Filing Date is the earliest U.S. provisional application, U.S. utility application, foreign priority document, or PCT application to which priority has been properly claimed under 37 C.F.R. 119, 365 (a, b, or c), 120, or 121 and has support under 35 U.S.C. 112. A quick way to determine the Effective Filing Date is to look at the Filing Receipt and find the filing date(s) to which priority is claimed, and then determine if each claim in the instant application is supported under 35 U.S.C. 112. For example, if a claim lacks support in the closest, pre-aia document in the chain of benefit or priority, then check the next earlier filing in the chain of priority for 112 support. Generally, the claims of an application will be fully supported by parent U.S. applications and PCT applications, because most practitioners avoid introducing new subject matter in claims between filings. However, the claims should also be checked to be sure. This practice will be 3 See, Examination Guidelines, 78 Fed. Reg. 11,073, section (VI)(B) (Feb. 14, 2013). 3
especially important when the Effective Filing Date is based on a U.S. provisional, Foreign Priority filing, or Continuation-In-Part applications, because the introduction of new subject matter in claims from these applications is common. I suggest looking for verbatim or near verbatim support. If the claims do not find verbatim support or the priority document is not in English, I suggest taking steps to determine if the claims are supported, such as requesting authorization for a more thorough inspection of the claims. A thorough determination of whether claims are entitled to full support under 112 will include a detailed analysis of written description and enablement. Determine if the Disclosure Is Prior Art If it is determined that the application is subject to the AIA FITF provisions, a Disclosure cited by the USPTO must be analyzed to determine if the Disclosure is prior art under 35 U.S.C. 102(a)(1) and/or 102(a)(2). The statutes, regulations, and guidelines for determining which Disclosures constitute prior art are complex, controversial, and untested. Therefore, it would be wise to consult with a partner and/or the client to determine if they have a preference for how to address prior art rejections falling under the AIA FITF provisions. That being said, the following represents a practical way to determine if a Disclosure qualifies as prior art. Determine if the Disclosure is Prior Art Under 35 U.S.C. 102(a)(1) The first question to ask is whether the Disclosure was patented, published, on sale, in public use, or otherwise publically available more than one year before the Effective Filing date of a claim. If it was, then the Disclosure is prior art under 102(a)(1), because no exception under 35 U.S.C. 102(b)(1) applies. If not, proceed to the next question. The second question to ask is whether the Disclosure was patented, published, on sale, in public use, or otherwise publically available one year or less before the Effective Filing Date. If it was, then the Disclosure is prior art under 102(a)(1), unless an exception under 102(b)(1) applies. However, both exceptions turn on whether the disclosure or the subject matter thereof was obtained from the inventor or a joint inventor. Therefore, I suggest proceeding as if the Disclosure is prior art under 102(a)(1) for the purposes of preparing comments and/or draft amendments for the client. I also suggest asking the client if there were any public disclosures that could be an exception under 102(b)(1). I suggest this course of action, because the in-house counsel and/or inventors are in a much better position to know if the inventors made any public disclosures that could qualify as an exception. Further, the procedure and rules for disqualifying art under 35 U.S.C. 102(b)(1) are new and untested. Also, the procedure will almost certainly require a time consuming (expensive) submission of Declarations and other evidence. The client is in the best position to determine if such an costly and uncertain course of action should be taken. Further, the USPTO has interpreted the exceptions under 102(b)(1) as applying narrowly to a Disclosure. In particular, the USPTO Examination guidelines indicate the Disclosure must be identical to that of the subject matter to be disqualified. 4 However, the 4 See, USPTO Examination Guidelines of February 14, 2013, response to comment 22. 4
guidelines bend the term identical by indicating that the mode of disclosure need not be the same, need not be word-for-word, and can be a more general description. This vague interpretation creates uncertainty as to which parts of a Disclosure may be disqualified as prior art. For at least these reasons, I suggest proceeding as if 102(b)(1) exceptions do not apply, until the client indicates a willingness to accept the expense, delay, and uncertainly this option will likely require. If the Disclosure was not patented, published, on sale, in public use, or otherwise publically available before the Effective Filing Date, then the Disclosure is not prior art under 102(a)(1). However, the Disclosure should be analyzed to determine if it is prior art under 35 U.S.C. 102(a)(2), because this is a completely separate basis for a prior art rejection. Determine if the Disclosure is Prior Art Under 35 U.S.C. 102(a)(2) The determination of whether a Disclosure is prior art under 102(a)(2) is a completely separate analysis from that of 102(a)(1), above. For example, the exceptions under 102(b)(1) apply only to 102(a)(1), and the exceptions under 102(b)(2) apply only to 102(a)(2). The first question to ask is whether the Disclosure is a U.S. Patent, U.S. Publication, or WIPO published PCT application that designates the U.S., has a non-identical inventorship, and was Effectively Filed before the Effective Filing Date of a claim. If the type of reference is permitted, and inventorhip is non-identical, then this question will turn on the following question. Is the effective filing date of the subject matter being relied upon in the Disclosure earlier than the Effective Filing Date of a claim? If so, then the Disclosure is prior art, unless an exception under 102(b)(2) applies. The problems with the exceptions under 102(b)(2) are analogous to those under section 102(a)(1). Therefore, I generally suggest proceeding as if the Disclosure is prior art under section 102(a)(2) for the purposes of addressing the rejections on the merits. However, if the Disclosure was commonly assigned as of the Effective Filing Date of a claim, then I suggest proceeding as if the Disclosure can be disqualified under 102(b)(2)(C). I suggest this course of action, because the determination of a common assignee is usually possible without having to ask the client. Once the assignments are confirmed to have the exact same assignee as of the Effective Filing Date in the USPTO assignments data base, 5 then the attorney of record can remove the Disclosure as prior art under 102(a)(2) by submitting a statement of common ownership. Alternatively, the client can provide an attorney with sufficient proof for a statement of common ownership to be submitted. A Quick Summary and Guide to the America Invents Act First Inventor To File Provisions (AIA FITF). If the actual filing date of the instant U.S. application was before March 16, 2013, then the AIA FITF provisions do not apply. If the actual filing date of the instant application was on or after March 16, 2013, and no priority date before March 16, 2013 is claimed, then the AIA FITF provisions apply. 5 http://assignments.uspto.gov/assignments/. 5
If the filing date of the instant U.S. application is on or after March 16, 2013, and claims priority to an application filed before March 16, 2013, then check to see if each claim is supported by an earlier application. If there is no new subject matter present in any claim, then pre-aia provisions apply. If any new subject matter is present in a claim, then the application is a Hybrid Application and both AIA and pre-aia rules apply. Independent of the above determination, check the Transition Statement and the PAIR system to see which law the USPTO will be applying. Under the AIA FITF provisions, the Effective Filing Date is determined on a claim-byclaim basis, and is the earliest filing date to which a claim is entitled to priority (i.e., enablement and written description). Under the AIA FITF provisions, if a Disclosure was publically available more than one year before the Effective Filing Date of a claim, then the Disclosure is prior art under 35 U.S.C. 102(a)(1). No exceptions apply. If the Disclosure was publically available one year or less before the Effective Filing Date of a claim, then proceed as if the Disclosure is prior art until an exception under 102(b)(1) can be established. If the Disclosure is a U.S. Patent, U.S. Publication, or WIPO publication designating the U.S., has non-identical inventorship, and had an effective filing date before the Effective Filing Date of the instant application, then proceed as if the Disclosure is prior art unless an exception under 102(b)(2) can be established (i.e., a common assignee as of the Effective Filing Date). If the Disclosure was not publically available before the Effective Filing Date, and the Disclosure was not a U.S. Patent, U.S. Publication, or WIPO publication designating the U.S. that was effectively filed before the Effective Filing Date of the instant application, then the Disclosure is not prior art. Pre-Issuance Submission of Prior Art Under 35 U.S.C. 122, 35 U.S.C. 301 and 37 C.F.R. 1.290, a third party can file prior art consisting of patents or publications with a concise description of relevance. Basically, this provision of the AIA allows for the crowd sourcing of prior art that may be relevant to a published patent application. This will typically arise in practice when a U.S. published patent application with threatening claims is detected. A client will then inquire how to avoid potential infringement or may directly request that a lawyer invoke this procedure. Who? Any member of the public may file a third-party submission provided that they are not the applicant or an individual having a duty to disclose under 1.56. When? A third party can file the pre-issuance submission before the later of 6 months after publication or before the first rejection, and before a Notice of Allowance issues. The first step should be to determine the status of the Application. The status of an application can be determined by looking up the application on PAIR. Determine if the application of interest is available in PAIR (i.e., it or a child application was published), and determine if a first Office 6
Action has issued (rejecting a claim) or if a Notice of Allowance has issued. If no claim has been rejected and no Notice of Allowance has issued, then a submission can be filed. If a Notice of Allowance has issued, then no submission can be made. If a claim has been rejected, then determine the U.S. publication date of the application of interest. If the six month period has not expired and no Notice of Allowance has issued, then a submission can still be filed. If a claim has been rejected six months past the publication date or a Notice of Allowance has issued, then no submission can be made. Which type of application? A submission can be filed in any non-provisional utility, design, or plant application that has been published or is publically available. A submission can even be filed in an application which has been abandoned, as long as the application or its child was published. No pre-issuance submission can be filed for an issued patent, a reissue application, or a reexamination proceeding. How? A submission can be filed via EFS (electronic), hand delivery, first-class mailing, or USPS. No facsimiles. A submission must include: a form PTO/SB/429 (i.e., the list ), a legible copy of each document listed (except U.S. Patents and U.S. Application Publications), an English language translation of Non-English documents (do not need to be certified translations), a statement that the individual is not an individual having a duty to disclose (and 35 U.S.C. 122(e) and 1.290), and a concise statement of relevance of each item listed in the document list. The concise statement of relevance must be factual: it cannot contain arguments. Cost? The USPTO requires $180 for every ten items, rounded up. The fee is waived if the submission includes a first and only statement and cites three or fewer items. Practical Resources 6 6 (1) USPTO s FAQs: http://www.uspto.gov/aia_implementation/faqs-preissuance-submissions.jsp, and (2) 77 Federal Register 42150 (July 17, 2012). 7
Prioritized Examination Prioritized Examination is a USPTO program that allows an Applicant to pay an additional fee to have a qualifying patent application examined on an prioritized basis until a final disposition is reached. The goal of the program is to have a final disposition (i.e., Final Office Action or Notice of Allowance) within 12 month of the date prioritized status is granted. Who? Any applicant who desires to file an qualifying patent application. Which Types of Patent Applications Qualify? Prioritized Examination applies to non-provisional utility and plant applications filed under 35 U.S.C. 111(a), which includes Continuation Applications, Divisional Applications, Continuations-In-Part (CIP), and By-Pass Continuations (from PCT Applications). A Request for Continued Examination (RCE) can be prioritized, but only one per application. However, a National Stage Application claiming priority to a PCT Application under 35 U.S.C. 371 cannot be prioritized, until an RCE is filed in the application. Eligibility Requirements? No more than 4 independent claims. No more than 30 total claims. No multiple dependent claims. The petition ( Request ) must be present on the same day as the filing, and all filing requirements under 37 C.F.R 1.51(b) must be complete, including all fees paid. year. Requests for utility applications must be filed electronically (EFS-web). Requests for plant applications must be paper filed. Prioritized Examinations are currently limited to 10,000 applications or RCEs per fiscal Prioritized Until When? The grant of special status under prioritized examination does not necessarily last for the pendency of the application. Instead, prioritized status continues until one of the following events occurs: 1. A Petition for Extension of Time is filed. 2. The claims are amended to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim. 3. An RCE is filed. 4. A Notice of Appeal is filed. 5. Request for Suspension of Action is filed. 6. A Notice of Allowance is mailed. 7. A Final Office Action is mailed. 8
8. The Application goes abandoned. 9. Examination is complete. As long as Applicants do not file anything that results in a loss of special status (i.e., items 1-5), Prioritized Examination should proceed until the a Final Office Action or Notice of Allowance is mailed. Thus, best practices will include answering non-final Office Actions without filing Extensions of Time and without amending or adding claims to lose eligibility. How Much? To apply, Applicants must pay the $4,000 prioritized examination fee (large entity) and the prioritized processing fee under 37 C.F.R. 1.17(i) ($140). This prioritized examination fee is refunded if the Petition is not granted. Practical Resources 7 Micro Entity Status The default status of any application is to pay large entity fees. However, many fees can be discounted by 50% for Applicants that qualify for small entity status and, under 37 C.F.R. 1.29, 75% for Applicants that qualify for micro entity status. These discounts typically apply to USPTO fees associated with filing, searching, examining, issuing, or appealing patent applications, and maintaining patents. 8 There are two paths to qualify as a Micro Entity. The Higher Education Path requires that the majority of Applicant s income comes from an institution of higher education in the U.S. or its protectorates, or that the application is assigned, licensed, or under obligation to assign interest to such an institution. The Narrow Path requires that the Applicant qualify as a small entity, 9 not have been named as an inventor on 4 or more patent applications; not have a gross income exceeding three times the median household income ($150,162 in 2011); and not assigned, licensed, etc, the application to a party with a gross income exceeding three times the median household income. The higher education path should be considered whenever it s determined that the application is connected to an institution of higher education through assignment, license, or employment. The narrow path is best avoided, because it only applies to the first four applications, and includes a gross income phase out for both the individual and assignee/licensee. However, if the narrow path is used, then it is important to keep up with the gross income and the number of applications by each inventor, because the status must be updated if the applicant no longer qualifies for micro entity status. 7 (1) USPTO s FAQs: http://www.uspto.gov/aia_implementation/faqs_fees.jsp#heading-1 and (2) 76 Federal Register 59051 (September 23, 2011). 8 Always check the latest USPTO fees for large, small, and micro entities before filing. http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm 9 Generally, an entity qualifies as a small entity if one or more of the following applies: it s a non-profit organization, an individual, or a business with less than 500 employees. 9
Practical Resources 10 Supplemental Examination Under 35 U.S.C. 257, Supplemental Examination allows for a patent owner to request that the USPTO reopen examination of a patent to consider, correct, or reconsider any information believed to be relevant to the patent. Generally, a Certificate of Correction can correct insubstantial changes, such as typographical errors. Reissue and ex parte reexam can correct problems in the claims. Only Supplemental Examination can correct the file wrapper of an issued patent. Using Supplemental Examination, a patent owner can file a request for Supplemental Examination to immunize the claims against invalidity and/or unenforceability challenges based on mistakes or omissions in the file history. The main question to ask is if there were misstatements or omission during the pendency of the patent application that need to be corrected. This can range from a failure to submit references in an information disclosure statement ( IDS ) to misstatements in Declarations. Who? A Supplemental Examination can only be filed by the owner or all of the owners of an issued patent. No one else, not even an exclusive licensee, can file for Supplemental Examination. When? A Supplemental Examination can be filed any time during the period of enforceability of a patent. However, the results of Supplemental Examination do not immunize against allegations pled in a civil action or notice to the patentee before the filing of the Request for Supplemental Examination. Thus, Supplemental Examination cannot help with law suits already brought against a patent owner, so it s better to correct the patent as soon as the flaw is detected. How? A Request for Supplemental Examination can include up to 12 items of information, a listing of the items of information, and a separate explanation of each item of information to each and every claim. More than one Supplemental Examination can be filed. The Office will take three months to decide if the items of information raise a substantial new question of patentability. If so, the Office will order ex parte reexamination. If not, then the patent owner has the USPTO on record as saying that the issue did not raise a substantial new question of patentability. In some ways, this result could be the best one. Cost? The request fee is $5,140 and the reexamination fee is $16,120 for a total default cost of $21,260 per reexamination request filed. However, if the USPTO does not order the ex parte reexamination, then the $16,120 is refunded. 10 (1) http://www.uspto.gov/aia_implementation/faqs_fees.jsp#heading-4 and (2) 77 Federal Register 75019 (December 19, 2012). 10
That being said, the rules regarding the number items of information and page limits are complex. Further, the cost of having attorneys apply each item of information to each and every claim will probably cause the service fees to sky rocket. Of course, if the ex parte examination is ordered, then the costs will be those of an ex parte reexam. Practical Resources 11 Changes to Oaths, Declarations, and Transition Statements Applications filed on or after September 16, 2012, follow AIA declaration, assignment, power of attorney rules. Whether a case is subject to AIA declaration, assignment, power of attorney is based on filing date of the case being filed. Again, the filing date of a national stage application is the date the PCT application was filed, not the date the national stage application is filed at the USPTO. If the application has a filing date after September 16, 2012, then use the AIA forms on the USPTO site 12 or the post-aia forms at your firm, if applicable. If the application has a filing date before September 16, 2012, then use the pre-aia forms. This will mostly apply to National Stage Applications and previously filed applications. Regarding Transitions Statement, the box should only be checked for Hybrid Applications, as discussed above. Practical Resources 13 11 (1) USPTO s FAQs: http://www.uspto.gov/aia_implementation/faqs-supplemental-exam.jsp, and (2) 77 Federal Register 48828 (August 14, 2012). 12 http://www.uspto.gov/forms/index.jsp 13 http://www.uspto.gov/aia_implementation/faqs_inventors_oath.jsp#heading-5 11
Appendix (a) NOVELTY; PRIOR ART.--A person shall be entitled to a patent unless-- (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. (b) EXCEPTIONS.-- (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.--A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if-- (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, 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. (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.--A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-- (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; (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; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. 12