(Lack of) Grace Period in America Invents Act

As noted earlier, the two congressional versions of the America Invents Act, S. 23 and H.R. 1249, both seek to eliminate the ability to ante-date or “swear behind” prior art dated within a year of an application’s filing date.

Disclosure v. Public Use or Sale

That should still leave the current grace period intact for public disclosures or commercial activity by the inventor, right?  Actually, no.  The bill that passed the Senate provides an exception to what is considered prior art for “disclosures” of the invention by the inventor (or someone who obtained or derived the invention from the inventor) within one year prior to filing the patent application.  There is no such grace period, however, for public uses or commercialization activities such as sales or offers for sale.  Thus, an offer for sale one day prior to filing a patent application would be a bar to obtaining a patent.

Isn’t a public use or sale a “disclosure”?  Actually, Supreme Court and other Federal court precedent dating to 1829 provide that a public use or even a secret sale prior to filing a patent application will defeat the applicant’s ability to obtain a patent.  The Federal Circuit has also followed this precedent.

The saving grace (pun intended) for inventors under current law is that § 102(b) specifically recites that public use or sale is only a problem if it takes place “more than one year prior to the date of application for patent.”

This seems to have been an oversight on the part of the Senate, as demonstrated by some of the legislative history during the debate prior to passage, but is most readily demonstrated by remarks from Sens. Patrick Leahy (D-VT) and Orrin Hatch (R-UT) after the bill had passed the Senate.  See 157 Cong. S1496 (March 9, 2011).  Although these remarks probably won’t have any affect on the plain language of the bill, perhaps Sens. Leahy and Hatch were signalling the House to fix this issue in its version of the bill.

House Bill

Unfortunately, when the bill was introduced in the House, it contained the same language that was included in the Senate bill.  No problem.  The issue was addressed by Judiciary Committee Chairman Lamar Smith (R-TX) in his Manager’s Amendment.  His amendment sought to basically overrule the earlier court decisions and change the definition of prior art in the bill from “. . . in public use, on sale, or otherwise available to the public” to “otherwise disclosed to the public.”  The exceptions for inventor’s activities within one year of filing were amended to be consistent with this and a definition was added to make clear what was intended by “disclosed to the public.”

(o) IMPLEMENTATION BY THE PATENT AND TRADEMARK OFFICE.–In any guidelines for the examination of patents addressing whether a disclosure to the public has been maded under section 102 of title 35, United States Code, as amended by this section, the Office shall use the public accessability criteria employed by the courts in addressing whether a disclosure constitutes a printed publication under section 102 of title 35, United States Code, as in effect on the day before the date of the enactment of this Act.  Such public accessability criteria shall be used regardless of the manner in which the disclosure resulted in the subject matter disclosed being known or used.

Thus, the Manager’s Amendment sought to fix this issue so that any public use, sale, or other public disclosure by the inventor within one year of the application’s filing date would not preclude him from getting a patent on the invention.  This would restore the grace period as it currently exists for inventor activities.

Judiciary Committee Action

As I noted earlier today, however, Rep. Zoe Lofgren (D-CA) introduced an amendment that specifically undoes the fix to the grace period in the Manager’s Amendment.  Rep. Lofgren’s change passed the Judiciary Committee by voice vote.

Do all members of the Committee really intend for a public use or sale by an inventor one day prior to the application filing to defeat his ability to obtain a patent?  Or is something else going on here?  Will this section be fixed on the House floor or in conference committee?

To be sure, there are better and easier ways to fix this provision than that proposed in the Manager’s Amendment.  Hopefully, Congress restores the grace period prior to final passage of the bill.

HT:  Hal Wegner and Patently-O for originally pointing out this issue.

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15 Responses to “(Lack of) Grace Period in America Invents Act”

  1. Patent Litigation Says:

    Here is a similar story

    American Innovators for Patent Reform (AIPR) joined eight other national organizations in a letter sent to all members of the House of Representatives and the staff of the House Judiciary Committee on March 29. The letter details the organizations’ objections to the House’s version of Senate bill S. 23, the America Invents Act, H.R. 1249. The letter explains why this proposed legislation will increase the cost of securing a patent, reduce access to the patent system for inventors and small businesses, increase the current 700,000 patent application backlog at the Patent Office, and decrease the ability of patent holders with limited resources to enforce their patents.

  2. H.R. 1249 Voted Out Of Committee: No Grace Period For You! | Biotechnology Patent Law Blog | Patents4Life by Warren Woessner Says:

    [...] long. As Hal Wegner has repeatedly noted and Matt Osenga have pointed out in his useful note, “(Lack of) Grace Period in America Invents Act”, 102(b) currently provides that public use or sale (by anyone) is only a problem if it takes [...]

  3. David Boundy Says:

    The Senate bill and this Manager’s Amendment are gibberish.

    It’s meaningful to ask whether a written document is “enabling.”

    But it’s meaningless to talk about whether an actual device that is right there in front of you doing its thing is or is not “enabled.” Of course it is! It works!

    Also important, the bill is out of committee. There’s essentially no further opportunity for the House to “fix” the bill. There will be no more meaningful opportunity to correct these kinds of drafting errors.

    The bill is good or bad as it stands. It’s not going to get fixed. It’s a collected display of ignorance, and should be voted down.

  4. General Global Week in Review 25 Apr 11 from IP Think Tank Says:

    [...] (Lack of) grace period in America Invents Act (Inventive Step) [...]

  5. IP Down Under » General Global Week in Review 25 Apr 11 from IP Think Tank Says:

    [...] (Lack of) grace period in America Invents Act (Inventive Step) [...]

  6. Amendments to America Invents Act « INVENTIVE STEP Says:

    [...] Near elimination of the grace period.  Although this provision may be fixed by amendment, it is hard to understand how or why this provision got as far as it did.  Under current law, patent applicants can use evidence of inventive activity to pre-date third party references and the inventor’s own public activity that occurred within a year of the application’s filing date.  Even under a first-to-file regime, inventors should be able to pre-date prior references that are used for obviousness rejections.  The current bill eliminates the grace period for all third party activity and for the inventor’s own activity of public use or sale. The way Congress has botched this provision of the bill shows how complicated § 102 of the current patent act is.  When one asks what the definition of “prior art” is, the answer is not always easy.  The answer is basically whatever § 102 says it is.  By completely changing the system, we disrupt the delicate balance created by the various subsections of § 102.  This will create uncertainty for a number of years until sorted out by the courts. [...]

  7. INVENTIVE STEP Says:

    [...] period is repudiated by the new patent reform bill.  The new patent reform bill only includes a grace period for disclosure activities by the inventor, but not for public uses or sales.  Therefore, under the reasoning of August Tech., if the [...]

  8. Patent Deadlines « INVENTIVE STEP Says:

    [...] a patent application within one year of that disclosure.  To a certain extent, this rule will be changing in a rather significant way as the America Invents Act goes into [...]

  9. America Invents Act: New Section 102 « INVENTIVE STEP Says:

    [...] Notably, there is no grace period for public use or commercial activities such as sales or offers for sale. [...]

  10. Implementation of First-to-File: PTO Rules and Guidelines « INVENTIVE STEP Says:

    [...] example, contrary to caselaw, the PTO will interpret “disclosure” as a “generic expression intended to [...]

  11. The Importance of Patent Deadlines « INVENTIVE STEP Says:

    [...] a patent application within one year of that disclosure.  To a certain extent, this rule will be changing in a rather significant way as the America Invents Act goes into [...]

  12. Patent Deadlines « INVENTIVE STEP Says:

    [...] a patent application within one year of that disclosure.  To a certain extent, this rule will be changing in a rather significant way as the America Invents Act goes into [...]

  13. What Grace Period? Another Reason to File by March 16 | INVENTIVE STEP Says:

    [...] for a year prior to filing a patent application, until the courts (read:  Federal Circuit) rule on the difference between a disclosure and a public use or sale, it would be risky for applicants to rely on the grace period.  The new law seems to literally [...]

  14. Deadlines | INVENTIVE STEP Says:

    […] files a patent application within one year of that disclosure.  To a certain extent, this rule is changing in a rather significant way as the America Invents Act goes into […]

  15. Patent Deadlines | INVENTIVE STEP Says:

    […] a patent application within one year of that disclosure.  To a certain extent, this rule has changed in a rather significant way as the America Invents Act goes into […]

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