How the America Invents Act weakens the grace period for disclosure of inventions

It is crucial for inventors to understand what constitutes prior art in the post-America Invents Act (AIA) era.

Under 35 U.S.C. 102(a)(1), public disclosures are prior art — and therefore preclude the patentability of an invention. Public disclosures include patents, descriptions in printed publications, public use, availability for sale or other availability to the public.

Prior to the AIA, only domestic disclosures were considered prior art. That geographic limitation no longer exists. The phrase “otherwise available to the public” was introduced by the AIA. It is meant to encompass any other means of making an invention public besides sale.

The AIA’s one minor strengthening of the grace period concerns secret sales of subject matter. Pre-AIA, a secret sale was prior art. Now, the sale must have been available to the public.

The “grace period” during which disclosures are not prior art is spelled out in 35 U.S.C. 102(b)(1)(A). For a period of one year prior to the filing date, a public disclosure is not prior art, provided that the disclosure was made by the inventor or by someone who obtained the subject matter directly or indirectly from the inventor.

Prior to the AIA, this one-year grace period fully protected third-party disclosures. Now, the grace period only protects disclosures made by the inventor or derived from the inventor. This distinction is critical, and it significantly weakens the grace period.

The only exception to this rule is spelled out in the following subsection (35 U.S.C. 102(b)(1)(B)). If a third-party disclosure is preceded by a disclosure by the inventor or by someone who obtained the subject matter directly or indirectly from the inventor, the third-party disclosure is not considered prior art.

In order for this exception to apply, the subject matter of the prior disclosure must be the same as the later third-party disclosure. The modes of disclosure need not be the same, and the disclosures need not be verbatim.

If the prior disclosure occurred more than one year prior to the effective application date, it is considered prior art against the inventor’s own application. It nevertheless renders the later third-party disclosure inapplicable as prior art.

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