When the America Invents Act is fully implemented on Saturday, the scope of prior art will be greatly expanded, even beyond prior art in the rest of the world.
In Europe and the majority of the rest of the world, the universe of “prior art” that may be used to show that an invention is obvious or does not possess inventive step is closed as of the filing date of the application. This means that anything that has published or any public activity or disclosure that would render the invention obvious is known as of the filing date. And the EPO only uses European applications in this regard. The America Invents Act, by contrast, will use applications filed anywhere in the world.
Patent applications are generally published 18 months after their earliest priority date. This means that there is an 18 month delay between the time that an application is filed and the time its contents become available and known to the public. During this intervening time, the application is held by the patent office in secrecy.
Once a patent application is published or issues, it becomes prior art as of its filing date. Thus, an application that was secret for 18 months suddenly becomes prior art as of 18 months ago. This can be a problem for patent applications filed during the 18 month interval when the application is kept secret.
In most countries, the application is only prior art for novelty or anticipation purposes. It is only prior art if the published application contains disclosure that it identical and anticipates the later-filed application. In the US, by contrast, the published application can also be prior art for obviousness purposes, such as when combined with another reference. This is the problem of “secret prior art.”
Under the America Invents Act, the secret prior art may only be disqualified if it is the inventor’s own disclosure or a disclosure from someone who obtained the subject matter from the inventor. This is the reduction of the grace period which currently applies to any inventor and third party activity, but will be reduced by the America Invents Act to only inventor activity during the year prior to patent application filing. Thus, the America Invents Act expands secret prior art beyond current US law which is already more extensive than other countries.
If one of the avowed reasons for the change in law is to harmonize US law with other countries, this amendment actually moves US law farther away rather than closer to them.