End of the One Year Grace Period

Under current law, applicants are given a year to try to sell or commercialize their invention before they have to get a patent application on file. This is particularly of benefit to small inventors and startups who may want to see if there is any demand for their invention before they commit funds to the patent process.

Under the America Invents Act, strongly supported by Microsoft and IBM, the one year grace period will be much more limited. Inventors will have a one year grace period for their own disclosures, or disclosures of joint inventors. But what happens if someone else publishes something similar the next day? There is no grace period for that and patentability is barred. By the time the inventor learns about the publication, it is too late to file a patent application. Thus, inventors who file under the new system should assume that there is no grace period. They should file something before seeking venture capital or disclosing their invention.

The U.S. Patent and Trademark Office has published proposed rules relating to the new first-to-file system. Under the new rules, third party disclosures and patent applications are not prior art if the subject matter disclosed had previously been disclosed by the inventor.

In the proposed rules, only exactly identical third-party disclosures are precluded by the prior inventor disclosure exemption.

Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.

Thus, if an inventor discloses an invention and subsequently a third party independently discloses a trivial variation on January 2, the third party’s disclosure is not excluded from prior art. This renders the invention unpatentable as obvious.

Patent reform is likely to benefit larger multinational companies that have monopoly or near-monopoly positions, who don't need patents and are often accused of stealing other people's ideas, and will hurt the start-ups that create the jobs in this country. Patents have been the one tool to help Davids battle the Goliaths, but there are endless efforts underway to weaken the patent system.

The first-to-file rules should become effective March 16, 2013.

Changes to Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act

In the Federal Register of July 17, 2012, changes to implement the preissuance submissions by third party provisions of the America Invents Act were published by the U.S. Patent and Trademark Office.

The notice can be found here:
http://www.uspto.gov/aia_implementation/120707-preissuance_submission_fr.pdf

The changes in this final rule take effect on September 16, 2012. The final rule implements 35 U.S.C. 122(e) in a new rule 37 CFR 1.290. The provisions of 35 U.S.C. 122(e) and 37 CFR 1.290 apply to any patent application filed any date, even to applications filed before the provisions take effect.

The changes provide a mechanism for third parties to submit to the Office printed publications of potential relevance to the examination of a patent application.

A third-party preissuance submission must be filed in writing within a certain statutorily specified time period and include:
(1) a list identifying the items being submitted;
(2) a concise description of the relevance of each item listed;
(3) a legible copy of each non-U.S. patent document listed;
(4) an English language translation of any non-English language item listed:
(5) a statement by the party making the submission that the submission complies with the statute and the rule; and
(6) the required fee.

Any third-party submission must be filed prior to the earlier of:
(1) the date a Notice of Allowance under 37 CFR 1.311 is given or mailed in the application; or
(2) the later of:
(i) six months after the date on which the application is first published, or
(ii) the date the first rejection of any claim by the examiner is given or mailed.

This will mean that, in many cases, the third-party submission cannot be filed until a first office action is issued.

Information on prior public use may continue to be submitted by third parties via a protest under 37 CFR 1.291.

A web-based interface has been developed to permit third party submissions under new 37 CFR 1.290 to be filed electronically.