The Leahy-Smith America Invents Act (AIA), the most comprehensive review of American Patent Law since the 1950s, was passed into law in September 2011. Many important aspects of the new act come into force on 16 March 2013. We reviewed some of these in our earlier article entitled “United States switches from first-to-invent to first-inventor-to-file system in 2013”.
In July 2012, the United States Patent and Trademark Office (USPTO) published a set of proposed rules and examination guidelines which outlined how it intended to interpret the new act. Following a period of public consultation, the USPTO released the final version of its new rules and guidelines on 14 February 2013. These clarify the USPTO’s approach to several important aspects of the new law, including its interpretation of the “grace period” provisions.
Disclosure of the Invention / Grace Periods
Under the AIA, an invention is only patentable if it has not been disclosed to the public (whether in a printed publication, or by other means such as public use or offer for sale) before the effective filing date of the patent application. However, the act also contains a “grace period” provision, whereby an invention is still patentable if the inventor files a patent application within 12 months of their first disclosure of the invention. Moreover, the AIA allows an invention to be patented where a third party has made their own, independent disclosure, after the first inventor has themselves disclosed the invention.
The final rules make it clear that where an inventor has disclosed their invention, and subsequently filed a patent application within 12 months of that disclosure, any third party disclosure of the same invention which occurs after that of the inventor will not form part of the patentability assessment (that is, will not be considered “prior art”) - even if that disclosure is in a different form to that made by the inventor.
This means that, for example, where an inventor publicly demonstrates an invention, and a competitor subsequently publishes a newsletter reporting development of a separately developed but otherwise identical invention, the newsletter will not be considered prior art. Similarly, where an inventor publishes details of a new invention in a printed document, any subsequent publication describing the same invention will not be considered prior art just by virtue of the fact that it uses different words to describe the same invention.
This interpretation of the grace period rules may result in some inventors, particularly those focused solely on the US, choosing to publish details of their new inventions as soon as possible, in order to pre-empt any publication by a third party.
While this strategy may be appropriate for inventors who are not interested in patent protection outside the USA, it will mean that the invention cannot be protected in many other countries around the world. Inventors who wish to obtain patent protection in countries other than the USA should still be careful to file a patent application before there is any disclosure of their invention. The fact that some US based inventors may be adopting an early publication strategy simply reinforces the need to file a patent application as early as possible.
If you require further advice about intellectual property matters in the United States or elsewhere, please contact Shelley Rowland
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. Please contact a AJ Park attorney or other IP professional before acting on any information contained in this publication.