by Dennis Crouch
Perhaps the greatest impact of the shift to a first-to-file system is that the US’s traditional one-year grace period has been greatly reduced. Prior to the America Invents Act (AIA), it was fairly straightforward process for patent applicants to take advantage of a one-year pre-filing grace period – with the basic result of negating would-be prior art created in the one-year time period prior to filing. Under the AIA, a grace period still exists, but only as to pre-filing disclosures either (1) made by (or derived from) the inventor or (2) subsequent to a prior disclosure by or from the inventor. This means that – under the AIA – a third-party disclosure made even one-day before your patent application filing date will normally negate your patent. From an international comparative law framework, the AIA grace period is still more forgiving than that of most other countries whose grace period only applies when an invention is disclosed pre-filing through malfeasance such as theft or fraud.
I should note here that the particular scope of the grace period under the AIA is somewhat unclear and will require interpretation by the courts. A reasonable reading of the statute would have the potential of greatly narrowing and limiting grace period so as to make it essentially ineffective.
Universities and independent inventors have pushed to restore the grace period to its prior expanse. Because these entities tend to lack fully-internal product development and funding regimes, they typically look to make pre-filing disclosures in order to at least test the waters of economic and practical viability.
Taking a middle ground, a bipartisan set of Senators and Representatives have proposed the Grace Period Restoration Act of 2015. [Senators Tammy Baldwin (D-WI) and David Vitter (R-LA), along with United States Representatives Jim Sensenbrenner (R-WI) and John Conyers, Jr. (D-MI)].
I have not yet seen the text of the proposal, but the basic idea is that the amended statute would not fully restore the grace period to pre-AIA days but would clarify the AIA grade period in the following ways:
- Clarify that no pre-filing disclosure by the inventor within the one-year will jeopardize patentability either on anticipation or obviousness grounds
- Clarify that the inventor’s pre-filing disclosure of the invention in a printed publication (within the one year grace period) immunizes the application any subsequent disclosure by a third-party.
The proposal here is being framed as fixing an unintended error in the AIA, and I think that is a largely correct historical statement and that there may be support from leaders in both the House and Senate. However, there will be push-back by those who (1) prefer a system better harmonized with the rest-of-the-world and (2) prefer a system where it is easier to invalidate a patent.