The United States patent system underwent a major overhaul last March with the implementation of key provisions of the America Invents Act (“AIA”).  The AIA is considered the most substantial change in patent law since 1952 and an effort to harmonize the U.S. patent system with the rest of the world.

In preparing for the AIA, most companies focused on the most significant change – the move from a “first to invent” to a “first inventor to file” patent system.  This resulted in a flurry of new patent application filings, prior to the March 16, 2013 effective date, in an effort to have these applications reviewed under the pre-AIA “first to invent” rules.

Now that the dust has settled and the new rules apply, it is a good time for companies to evaluate other aspects of the AIA and how they may affect their patent practices moving forward.

Patents, publications, sales, and other evidence of public use of an invention are considered “prior art.”  Overcoming prior art is a common hurdle in securing any patent as it is frequently used by Patent Examiners in rejecting claims for lacking novelty.

Novelty, a requirement to obtaining a patent in the U.S, is defined by post-AIA 35 U.S.C §102(a).  Section 102(a) states, in relevant part, that 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[1], or in an application for patent published or deemed published under section 122(b)[2] , 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.

[1] 35 U.S.C. §151 provides for the applicant to be notified of the allowance of a patent application and the fees due for the application to issue as a patent.

 [2] 35 U.S.C. §122(b) provides for the publication of patent applications after the end of an eighteen month confidentiality period. 

A “grace period” provided by 35 U.S.C . §102(b), has long been relied upon by inventors to exclude certain public disclosures, which would otherwise be considered prior art, if they occurred less than one year prior to the filing date of a patent application.

Reliance on this grace period enabled companies to postpone the cost of preparing and filing patent applications while gauging market interest, securing funding, or performing additional feasibility testing.  The grace period has also served as a “safety net” for companies in cases of inadvertent disclosure of patentable subject matter, such as at a trade show or during a technical presentation, giving them a year from any such disclosure to file their patent application.

Under pre-AIA rules, the §102(b) grace period was defined rather broadly, stating that a person was entitled to an invention, unless:

the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

While the AIA does retain this grace period, which is a unique feature of U.S. patent law, the amended rule is very different.  The post-AIA grace period only excludes from the prior art those disclosures that can be attributed, either directly or indirectly, to the inventor.  Section 102(b) now states:

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.

New §102(b) provides further changes to disclosures appearing in patents and applications:

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.

The personal nature of this new grace period, combined with the new “first inventor to file” patent system, has significant implications for companies that previous postponed the filing of patent applications. The following example highlights the importance of considering both aspects of the AIA:

Scenario: Inventor A discloses his invention at a trade show on January 1, 2014.  Inventor B files a patent application on March 15, 2014 for the same subject matter disclosed by Inventor A.  Inventor A files a patent application on April 1, 2014. 

Result: Inventor A’s disclosure at the trade show will start the one year grace period as to Inventor A.  Since Inventor A filed his application within the year, his disclosure will not be considered prior art against Inventor A. However, Inventor A’s disclosure will be considered prior art against Inventor B.  This is an example of when a public disclosure by one inventor may block the first application to be filed on the subject matter by another inventor.  Note that if Inventor A had filed his application on January 2, 2015, the disclosure would be considered prior art against his application because the grace period has expired.

Therefore, companies should file complete patent applications, containing a detailed and fully enabled description of the invention,  as soon as possible and ensure that any public disclosure of patentable subject matter is attributable to the inventor.

Even though the provisions of the AIA have been implemented, it will be some time before the issues it raises are clarified by the Courts.  Therefore, during this transition, we recommend companies evaluate their current patent practices and take steps to reduce their risk, including:

• Use standard Invention Disclosure Forms to document and track important details relating to inventions including the state of the prior art, any planed publications containing the invention, and any planned sales or marketing efforts that could be considered a sale or offer for sale of a product or service incorporating the invention.
• Avoid inadvertent and premature disclosures of inventions by implementing processes and procedures for reviewing invention disclosures, educating employees as to the new rules under the AIA and the implications of public disclosures, and encourage communication between marketing, sales, and technical leads within the organization.
• Prior to any public disclosure or offer for sale of the invention, carefully review whether or not any patent applications have been filed and the status of those applications. If no patent applications have been filed, consider filing an application prior to the disclosure that contains a complete description of the subject matter regarded as the invention.
• Remember that the grace period is unique to U.S. patent law and not recognized by many foreign jurisdictions.  Therefore, if your company has plans to seek international patent protection, it is critical no public disclosures or offers for sale are made prior to filing the associated patent application.
• Remember that the new grace period is personal to the inventor.  If a company plans on relying on such grace period, any public disclosure must be attributable to the inventor.

[1] 35 U.S.C. §151 provides for the applicant to be notified of the allowance of a patent application and the fees due for the application to issue as a patent.

[2] 35 U.S.C. §122(b) provides for the publication of patent applications after the end of an eighteen month confidentiality period.

This article originally appeared in Iron & Steel Technology, July 2014