David French has been writing about the proposed change to a first-to-file system in the Patent Reform Act of 2010. Mr. French was closely involved with Canada’s 1989 switch to a first-to-file system.
Rather than moving to an absolute novelty system, the proposal calls for a limited grace period for “disclosures made one year or less before the effective filing date of the claimed invention.” To qualify for the grace period, the disclosures must either (A) come from the inventor(s), either directly or indirectly or (B) disclose subject matter that had already been publicly disclosed by the inventor(s), either directly or indirectly.
Section 102(b) EXCEPTIONS:
DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION
A disclosure made one year or less before the effective filing date of the 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 had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
In a limited sense, this rule promotes pre-filing disclosure because the grace period is only available for those who publicly disclose the invention before filing. I am confident that the prudent approach will usually be to file the patent application as early as possible.
It is unclear to me how the provision would operate during a nonobviousness determination. I.e., what if the inventor disclosed INV-A; then a few months later someone else disclosed INV-B; and then the inventor filed on INV-A? Would the grace period apply to “knock-out” the INV-B disclosure as prior art?
I would personally prefer the addition of a caveat (C) to the grace period that “the subject matter had been previously invented by the inventor or a joint inventor.”