In the move to a first-to-file patent system, the U.S. narrowed its pre-filing grace period previously codified under 35 U.S.C. 102(b)(2010). The new law enacted as part of the Leahy-Smith America Invents Act (AIA) continues to permit a one-year grace period but limits the scope of coverage only to a pre-filing “disclosure . . . of a claimed invention” (A) “made by the inventor or joint inventor or by another who obtained the subject matter directly or indirectly from the inventor” or (B) made subsequent to an (A) disclosure. 35 U.S.C. §102(b)(1)(A) and (B)(2015). There are a number of questions up for interpretation regarding the AIA grace period. Examples: Does the grace period apply when the inventor’s initial disclosure is slightly different than the invention being claimed? Does the grace period apply when a third party publishes a modified version of the inventor’s original disclosure?
The proposed Grace Period Restoration Act of 2015 (H.R. 1791 / S. 926) is designed to “correct the drafting problem in the Leahy-Smith America Invents Act relating to the grace period.” In particular, the bill would add a new section 102(b)(3) that creates a stronger first-to-disclose system.
The general hypothetical setup here is that we have a pending patent application or perhaps an issued patent (the claimed invention) that is being challenged based upon prior art whose effective date is less than one year before that of the claimed invention in question. Pre-AIA, the applicant might be able to negate the that reference by showing prior-invention through a process often termed “swearing behind” the asserted art. However, under a first-to-file system, invention-date is no longer directly relevant.
The proposed AIA-amendment here would allow the patentee to negate the prior art so long as the claimed invention had been previously – but still within the one-year timeline – “publicly disclosed in a printed publication by a covered person in a manner that satisfies the relevant section 112(a) requirements.”
Thus, if the inventor (1) first discloses the invention in a way that satisfies the enablement and written description requirements of section 112(a) and (2) subsequently files the patent application within one-year of the disclosure; then the inventor will be immunized against any prior art whose effective date follows that disclosure. To be clear here, the immunizing would require “public disclosure in a printed publication” and could either be done by an inventor or someone who obtained the information an inventor (either directly or indirectly).
The proposed language:
102(b)(3)(b) PUBLIC DISCLOSURE.—A disclosure by any person shall not be prior art to a claimed invention under subsection (a) or section 103 if
(i) the disclosure is made under subsection (a)(1) or effectively filed under subsection (a)(2) 1 year or less before the effective filing date of the claimed invention; and
(ii) before the disclosure described in clause (i) is made or filed, and 1 year or less before the effective filing date of the claimed invention, the claimed invention is publicly disclosed in a printed publication by a covered person in a manner that satisfies the relevant section 112(a) requirements.
Here, I have only excerpted the most relevant portions of the statutory proposal. In his remarks, Professor Hal Wegner has identified the proposed amendment as largely serving the purpose of “expand[ing] the definition of novelty under 35 U.S.C. 102 to roughly 1200 words, an unreasonable mass of verbiage that the sponsors couldn’t figure out.”
As proposed, the new grace period definition serves as a layer in addition to the grace period already available under 102(b). The grace period already in existence is narrower in some ways but broader in others. For instance, the triggering initial public disclosure need have been disclosed in a printed publication.
Time will tell whether the proposal has legs. It it does, I hope that we will first see a less cumbersome rewrite.