File Patent Applications Early and Do Not Rely On AIA Grace Period

Before the America Invents Act (AIA), an inventor had a one year grace period between the time of first public disclosure by the inventor of the invention and the time a patent application was required to be filed.  A grace period is provided under the AIA, but for the reasons explained above, the best practice is to avoid relying on the grace period and to file an application early before public disclosures or uses.

Explaining The Grace Period
The grace period provided in 35 USC 102(b)(1)(A) provides that the inventors own disclosure made less than one year before the filing of a patent application will not be prior art against the inventors patent application. Sections (b)(1)(B) and (b)(2)(B) provide that if the inventor (or a third party who obtained the subject matter from the inventor) first discloses the subject matter, then later disclosures (or later filed third party application) of the same subject matter within a year will not be prior art against an inventor’s later filed application on that subject matter. Section (b)(1)(B) and (b)(2)(B) therefore purportedly provides a later filing inventor the ability to overcome a prior disclosure (or patent application) by a third party.

For example, if an inventor Joe publicly disclosed an invention having A, B, and C. Then a subsequently filed US patent or published application by another inventor Bob discloses A, B, C, and D. Under the 102(b) grace period exception, only element D of Bob’s intervening application would be prior art against Joe’s later filed patent application. Bob’s application could not be relied to reject A, B, and C of Joe’s patent application.

But there’s a catch.

Narrow Grace: Only Identical Subject Matter According to USPTO
The USPTO interpreted the law to require the third party’s disclosure be the “identical subject matter” of the inventor’s invention. 78 CFR 11061. This is a narrow view of what prior disclosures can be overcome. Under the prior law, any disclosure including both identical disclosures and disclosures that were not identical, but were an obvious variant, could be excluded as prior art by proving an invention date (with diligence) before the date of the third party disclosure.

Now, under the AIA, the USPTO concluded that the grace period does not cover obvious variants only identical subject matter disclosure. There is debate whether the USPTO is correct. However, it will likely take years before a court rules on whether the grace period should cover obvious variants.

In response to comments made during rule making, the USPTO clarified that there is “no requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure (e.g., inventor discloses his invention at a trade show and the intervening disclosure is in a peer-reviewed journal).” 78 FR 11035, 11079. The USPTO further stated that there is “no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply. id. The USPTO further stated, “the exception [grace period] applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor.” 78 FR 11035.

So the disclosure does not have to be verbatim, but how far from verbatim can we go? In other words, how “close” does the disclosure need to be to the inventor’s invention for the grace period exceptions to apply? No one knows at this point.

The Problem Illustrated
How would a problem arise? Consider this example. Matt publishes the details of his invention on the Internet. Jake reads Matt’s disclosure and thinks of a way to improve Matt’s invention in an obvious way. Jake publishes the obvious improvement to Matt’s invention within one year of Matt’s first publication. Matt then files a patent application on his invention within one year of his first publication of his invention on the Internet.

The USPTO might reject Matt’s patent based on Jake’s publication, given that Jake’s publication (of the obvious improvement) was not identical to Matt’s invention. This is true even though Jake’s improvement is based on Matt’s first publication of his invention on the Internet.

Conclusion: File Early
Given the USPTO’s interpretation of the grace period exception, it is important to file a patent application early. Further, if there is ongoing development for an invention, the ongoing developments should be covered by subsequent patent filings as they are invented or refined so that the new subject matter will have the benefit of an early filing date. The problems is that you don’t know what others might independently be doing independently or after seeing your disclosures.

If you have disclosed your invention, you’re not necessarily out of luck given the grace period. But you are in a riskier position. The safest approach is to file early and do not rely on the grace period.

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