Sales, Public Disclosure, and the One-Year Grace PeriodNovember 19, 2015

The America Invents Act (AIA) changed a number of provisions in the Patent Act (Title 35, U.S.C.). While many of these changes have not yet been subjected to scrutiny through litigation, a large number have been the subject of analysis by the USPTO, by virtue of their implementation into the rules of patent examination. Among the statutory provisions and rules that have the greatest impact on patent examination are those that relate to the change-over from first-to-invent (under the old law) to first-inventor-to-file (under the AIA). These changes can have significant implications for what types of documents and activities can preclude obtaining a patent.

The language of 35 U.S.C. 102(a), as enacted under the AIA, provides that a person is entitled to a patent, unless there has been a previous patent, publication, or sale of the invention, or the invention was “otherwise [made] available to the public.”Section 102(b) then sets out the situations in which a person is still entitled to a patent, even in the instance of one of those documents or activities. In particular, section 102(b) retains at least some of the one-year “grace period”for inventors to file an application on an invention. The new grace period applies where a disclosure was made 1 year or less before the application was filed, and was made by an inventor, or another person who obtained the subject of the disclosure from an inventor. Because there is no reference to a “disclosure”in the provisions that pertain to precluding patentability (Section 102(a)), it is not clear from the statute itself whether the grace period applies to only some of the documents or activities, e.g. sales, or applies to anything that falls within 102(a).

While the scope of the grace period will likely ultimately be determined by the courts, the USPTO has included a specific provision in the Manual of Patent Examination Procedure (MPEP) that sets out the its stance on the issue. Specifically, section 2152.04 of the MPEP provides “the Office is treating the term ‚¬Ëœdisclosure’ as a generic expression intended to encompass the documents and activities enumerated in AIA 35 U.S.C. 102(a) (i.e., being patented, described in a printed publication, in public use, on sale, or otherwise available to the public, or being described in a U.S. patent, U.S. patent application publication, or WIPO published application).”Thus, it is the official position of the USPTO that the grace period applies to anything that falls within 102(a), including publications and sales.

Given the stated position of the USPTO, inventors (and assignees) can have some confidence that their own sales or other disclosure should not, by themselves, preclude obtaining a patent under the AIA. This confidence, however, should be tempered by the absence of any court decisions on the issue, and the possibility that a future decision could significantly limit the grace period, and any patent rights relying thereon. Accordingly, best practice remains to file a patent application in advance of any type of “disclosure,” and avoid the possibility that changes in statutory interpretation could result in patent invalidity.  

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