The deadline for the transition of the US patent system from first-to-invent to first-to-file is fast approaching. This change is significant and will result in applicants not being permitted to swear behind or prove prior invention of prior art references cited against applications filed after March 16 with claims that don’t have support in an earlier application.
There is, however, another significant reason to file by March 16. The grace period is being significantly curtailed.
In the US, applicants have typically had a year to file a patent application after first public use or sale. They could also pre-date prior art used in obviousness rejections that relied on prior art dated within a year of their application’s filing date. This is changing.
Disclosure v. Public Use or Sale
While the PTO and a number of others argue that applicants will retain the ability to publicly use or disclose their inventions or offer them for sale 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 protect disclosures, but not public uses or sales. The courts (including the Supreme Court) have previously ruled that there is a difference between these activities.
Third Party Disclosures/Derivations
Perhaps just as importantly, the PTO has issued guidelines that indicate that there is no grace period for third party disclosures that pre-date an application’s filing that are obvious variants of the claimed invention. There are several implications of this issue.
First, as seems to be intended by Congress, applicants cannot file patent applications that are obvious variations of inventions on which third parties have already filed. Under current law (pre-March 16), if the applicant could prove an earlier invention date, it does not matter if the invention is obvious in light of the third party’s prior filing.
Second, this is a significant limitation of the grace period. Under the letter of the new law, applicants can still publicly disclose their inventions and then file an application within a year. Their own disclosures are not prior art. If a third party sees that disclosure, however, and files a patent application that is not exactly what was disclosed by the applicant, but is instead an obvious variation of that disclosure, there is no grace period for the third party’s filing. The applicant’s claims will be rejected as being obvious over the third party’s earlier filing.
It does not matter whether the third party “derived” the invention from the inventor or not. Derivation protection only applies for identical disclosures.
What to Do
Until this situation is resolved and clarified (and perhaps even after depending on the results), applicants would do well to assume there is no longer an effective grace period in the US. They should at least file a provisional application prior to any public use, sale, or disclosure.
HT: Hal Wegner has been writing on this issue.