Now that the AIA is in force, and it is clearer how the new law will be interpreted, Reddie & Grose attorney Paul Loustalan provides a brief update to our previous articles.
The biggest change brought in by the AIA was the shift from the “first to invent” system to a “first to file” system. But, is it really the clear cut “first to file” system that we, in Europe and elsewhere, are used to? Rather, since the US provisions maintain a grace period, the new US system appears more akin to a “first to disclose” system.
The grace period provided in the new section on novelty (35 USC Section 102) provides the inventor with significant advantages not available in most other territories, and certainly not in Europe. In particular, section 102(b)(1) excludes any disclosure made one year or less before the effective filing date of the claimed invention from being prior art, providing:
- (A) it is made by the inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor, or
- (B) the subject matter disclosed by the third party had, before such disclosure, been publicly disclosed by the inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor.
Looking at sub-section (B) it can be seen that as long as the inventor discloses his invention, and then subsequently files a patent application with one year of that disclosure, any intervening disclosure, even an intervening patent application filed by the third party, should not be considered prior art. The prior disclosure of the inventor therefore trumps the patent filing of the third party.
There are however still some questions relating to what exactly has been disclosed and the extent to which the disclosure is or is not relevant as prior art. In reality, the intervening disclosure by a third party is unlikely to be exactly the same as the disclosure by the inventor. How the differences in those disclosures will be determined is not yet known, but any subject matter that is disclosed by the third party that is different to that disclosed by the inventor will potentially be prior art against the inventor’s patent application. Although this can only act to restrict the patent monopoly available to the inventor, it is worth bearing in mind that in the rest of the world the inventor would likely have no patent monopoly at all.
Another change to Section 102 under the AIA, is that the one year grace period applies to the “effective” filing date of the US application, and so applies to the filing date or the priority date of the application when filed in other countries. A non-US based inventor who has inadvertently disclosed their invention before filing a patent application does not therefore need to file in the US first to take advantage of the grace period (though they would ultimately be prevented from obtaining patent protection in countries outside of the US). A UK inventor for example could still file in the UK within the one year grace period with the view of obtaining a relatively quick and inexpensive search and seeing whether it was worth proceeding with the later filed US application. They could then subsequently file an application in the US within the normal priority year if the UK search and examination report did not reveal any problematic third party prior art. Thus, under the new regime, the inventor has an extra year to late file an application in the US following an inadvertent disclosure of the subject matter.
No doubt the above issues will become clearer as time goes on and case law develops.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.