Saturday, December 3, 2011

1-Year Grace Period for “Public Disclosure” under the new U.S. Patent Legislation

Today, I had a client ask about the effect of the Leahy-Smith America Invents Act (AIA) that was recently passed into law. He wanted to know how the new "first to file" rule affected the old 1-year grace period for an inventor publicly disclosing his invention before filing a patent application.

He said: "I think I recently read, and perhaps from you, that the U.S. just changed the law regarding who gets a patent with respect to the date of invention. The old law was first-to-invent, and the new law is first-to-file. Is that true? How does that apply to public disclosure? For example, if I disclose something publicly, do I have 12 months to file and then it becomes public domain?"

My response: Regarding your question, yes the United States law as moved to a "first to file" system. In priority disputes between patent applications, priority is given to the first inventor to file an application, or to the first inventor to disclose the invention to the public, if she or he then files within a year. An inventor on a patent application can no longer swear behind a reference; she or he can no longer certify under penalty of perjury that the invention was created before the date of a particular reference.

Note that there is some uncertainty as to what the new 1-year grace period to file after 'public disclosure' means. Senate legislative history and traditional use of the term in patent cases would apply it to any form of prior art, including a public use or a sale. That is the better view. But some have argued that it covers only published disclosures.

My best advice: File early. It is possible, though unlikely, that the grace period will be lost if based on sales or public uses.

The new "first-to-file" system applies to applications with effective filing dates after March 16, 2013.

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