The America Invents Act, which President Obama signed into law on September 16, 2011, has been gradually overhauling the United States patent system. March 16, 2013 marked the biggest change – the United States switched from a first-to-invent to a first-inventor-to-file system. Subject to some limited exceptions, the first-inventor-to-file his patent application will be entitled to patent protection, even against an earlier inventor who later files. With the switch, the requirements for patentability have also been revised. Inventions still must be novel, nonobvious, and useful to secure patent protection. However, the definitions of what constitutes a “novel” and “nonobvious” invention are now different. In particular, the one year statutory bar, also called the grace period and on-sale bar, has changed.
Previously, an inventor had a one year grace period after disclosure of an invention in which to file his application. Disclosures included printed publications in the United States and foreign countries, public use in the United States, and sales or offers for sale in the United States. Importantly, it did not matter who made these disclosures. In practice, most businesses associated the statutory bar with their own actions – one year from putting a product on the market or publishing a journal article, the application was due. However, what many businesses and inventors may not have realized, is that the one year grace period also affected the prior art used by the United States Patent and Trademark Office (USPTO). “Prior art” is a term used in patent law to describe information that has been made available to the public and that is relevant to a particular application. It may include previous patent applications and patents, journal articles, books, and event websites. In most situations, the USPTO examined applications using prior art references dated earlier than one year prior to an application’s filing date.
However, the new one year grace period only applies to certain disclosures, namely those that originate with an inventor. The one year grace period applies if (1) the disclosure was made by an inventor or a third party who obtained the subject matter from an inventor or (2) the disclosure, although not traceable to an inventor, was made after a disclosure by an inventor or a third party who obtained the subject matter from the inventor. The policy behind these rules is the hope that they will promote early disclosure of inventions to the public, which will increase innovation in the United States.
So, what does this mean for businesses going forward?
- The USPTO will consider more recent prior art when examining applications.
- Public disclosures by businesses must be documented. All businesses should have procedures in place to document inventions as they are made. However, it will be more important to document when and to whom disclosures are made as part of these procedures. Having this information may determine the outcome of prosecution of a patent application or many years down the line in a patent infringement proceeding.
- Confidentiality remains critical. Businesses should have a confidentiality agreement on file to use during private disclosures.
- Consider provisional patent applications more often. The USPTO does not examine provisional patent applications, and oftentimes they are much less detailed than nonprovisional patent applications. A provisional patent application secures a filing date and is useful when an invention is in its early stages. A related nonprovisional patent application must be filed within one year of the provisional patent application to benefit from the provisional filing date.
- Do not rush to disclose inventions if you intend to file a patent application and have not yet done so. While disclosure may have benefits in some situations, the law is just too new in this area right now to know all of the negatives associated with disclosure.