EDITOR’S NOTE: This article is Part 2 in the America Invents Act: Traps for the Unwary series. I will be speaking on this topic at the AIPLA annual meeting on October 24, 2013. CLICK HERE to register for the AIPLA annual meeting.
The AIA is a complex bill that includes the most significant changes to U.S. patent law since at least the 1952 Patent Act, perhaps since the inception of patent laws in the United States in 1790. What makes these changes so significant is the fact that they are widespread and relate fundamentally to what is considered prior art, which at its base makes up the fabric of patent examination and review of issued patents for validity purposes. Add to it the procedural changes and the AIA easily is one of the most momentous, if not the most momentous, changes to patent law and patent practice ever. Thus, summarizing the AIA in a few pages while providing any semblance of exhaustive treatment is simply not possible. Notwithstanding, I endeavor to provide a high level overview of some of the provisions of the AIA that contain issues that could be characterized as traps for the unwary.
First, it is worth noting that the most significant changes did not go into effect right away. Rather, there were waves or phases of implementation. The first phase of implementation was relatively minor and occurred within the first 60 days. The second phase of AIA implementation became effective on September 16, 2012, and brought with it a host of new post-grant procedures, supplemental examination, changes to the oath or declaration requirement, and other various items. By any objective measure phase two ushered in massive changes to patent law and procedure.
By comparison, however, the second phase of AIA implementation pales in comparison to the third phase of AIA implementation. Effective on Saturday, March 16, 2013, the United States became a first to file country (more or less), abandoning the first to invent laws that were long the hallmark of U.S. patent law and practice. The oddity, however, is that what has been adopted is not really a true first to file system that resembles what first to file means to the international community. Thus, the United States remains an island on to itself with respect to whether a claimed invention is novel.
Under the U.S. version of first to file there are still some exceptions whereby a person who files a patent application second can still prevail over a prior filing party, but those exceptions are infinitesimally insignificant, and the law surrounding the parameters of the exceptions is non-existent and unfortunately rather ill defined by the United States Patent and Trademark Office (USPTO) at this point.
It is also critical to understand that the new law contains traps and loopholes. For those who have not spent adequate time considering the many nuances of the law you will be surprised to learn what it really means. For example, long held and previously unpatentable trade secrets can now be patented.
A. First to File
Undoubtedly the biggest change to U.S. patent laws contained within the AIA, and certainly the most discussed, is the fact that the United States has now converted from a “first to invent” system to a “first inventor to file” system. Saying that we have a first to file system, however, might be a little misleading given that the term “first to file” has certain international meanings that will not apply.
A traditional, and pure, first to file system is one that demands absolute novelty in order to obtain a patent. A traditional first to file system means that if there is a use or publication of information relating to the invention prior to the filing of a patent application no patent can be obtained. This is not what the U.S. first to file system mandates.
Under the U.S. first to file system the inventor will still have a personal grace-period, which is not available to inventors outside the U.S. in many countries that follow a more traditional formulation of the first to file rule. This personal grace-period says that the inventor’s own disclosures, or the disclosures of others who have derived from the inventor, are not used as prior art as long as they occurred within 12 months of the filing date of a patent application relating to the invention. However, and this is a very big however, disclosures of third-parties who independently arrived at the invention information will be used against the inventor unless the disclosure is of the same subject matter. Said another way, there is virtually no chance that a grace-period will exist relative to third party, independently created disclosures. This is an enormous difference between the old law and the new law.
Let’s take a step back and consider the nuance of the so-called grace period that remains under the AIA. Under the new law we know that in some cases an inventor who publishes information about his or her invention will not be prevented from obtaining a patent if someone obtained or derived a subsequent disclosure from the inventor. The USPTO has told us that the second party, the deriving party, does not have to publish something that is verbatim in order for the true first inventor to be able to prove that the second party is a deriving party. In other words, the USPTO is telling us what the second party does not have to do in order for the first, disclosing inventor to claim entitlement to the grace-period. Unfortunately, stating something in the negative is not particularly illuminating as any patent practitioner can tell you. Saying something is “non-planar” is useful information but it doesn’t exactly tell you what that something is, instead it only removes one of an endless number of possibilities.
Specifically, the USPTO provided this explanation of the grace-period in the Examination Guidelines for Implementing First Inventor to File Provisions of the Leahy-Smith America Invents Act:
The exception in AIA 35 U.S.C. 102(b)(1)(B) focuses on the ‘‘subject matter’’ that had been publicly disclosed by the inventor or a joint inventor. There is no requirement under AIA 35 U.S.C. 102(b)(1)(B) that the mode of disclosure by the inventor or a joint inventor (e.g., patenting, publication, public use, sale activity) be the same as the mode of disclosure of the intervening grace period disclosure. There is also no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of the intervening grace period disclosure. What is required for subject matter in an intervening grace period disclosure to be excepted under AIA 35 U.S.C. 102(b)(1)(B) is that the subject matter of the disclosure to be disqualified as prior art must have been previously publicly disclosed by the inventor or a joint inventor. 
Most significantly, the USPTO also explained:
The subject matter of an intervening grace period disclosure that was not previously publicly disclosed by the inventor or a joint inventor is available as prior art under AIA 35 U.S.C. 102(a)(1). 
Then the USPTO provided this example:
For example, the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening grace period disclosure discloses elements A, B, C, and D, then only element D of the intervening grace period disclosure is available as prior art under AIA 35 U.S.C. 102(a)(1). 
Let’s translate this example given by the USPTO. Inventor A invents and discloses a jacket that uses a Velcro closing mechanism. Inventor B subsequently, but before inventor A files a patent application, discloses a jacket that uses snaps as a closing mechanism. Then snaps used as a closing mechanism would be prior art to the patent application filed by inventor A. But what if a Velcro closing mechanism would be viewed as obvious in light of snaps? It is conceivable that inventor A would not be able to obtain a patent on his or her disclosed invention as the result of an independent, slightly different disclosure. Thus, it seems that the grace-period will only be useful in the limited, and extremely unlikely, situation where the subsequent disclosure is nearly identical to the first disclosure. Of course, the USPTO says that such disclosures do not have to be verbatim or ipsissimis verbis, but again, telling us what they do not have to be is not nearly as useful or informative as telling us what they do need to be.
But the limitation of the grace-period is even more obvious when you consider what the USPTO has said their interpretation is with respect to genus-species disclosures. The USPTO explains:
[I]f the inventor or a joint inventor had publicly disclosed a genus, and a subsequent intervening grace period disclosure discloses a species, the intervening grace period disclosure of the species would be available as prior art under AIA 35 U.S.C. 102(a)(1). Likewise, if the inventor or a joint inventor had publicly disclosed a species, and a subsequent intervening grace period disclosure discloses an alternative species not also disclosed by the inventor or a joint inventor, the intervening grace period disclosure of the alternative species would be available as prior art under AIA 35 U.S.C. 102(a)(1). 
While the disclosure of a genus and a subsequent disclosure of a species cannot be used as prior art, the subsequent disclosure of a genus or different species can be prior art. Again, one has to question whether in this circumstance that which can be used as prior art may render the underlying disclosed subject matter unpatentable pursuant to 35 U.S.C. 103.
The grace-period questions raised about the applicability of prior art under 35 U.S.C. 103 to render the disclosed invention unpatentable are simply not answered and won’t be until unwitting souls rely upon its existence and the Patent Trial and Appeal Board or the Courts give us the answer on the peculiar facts presented.
What does this mean? It means first to file absolutely needs to be treated as file first! While we do not now have a pure first to file system, anyone who relies on the existence of a grace period really is foolish in the extreme. File first. File often. With any invention there will be a stream of conceptions and reductions to practice. File as soon as you have an articulated invention that is susceptible to adequate description through words and drawings. File first. File often. Even if that means filing serial provisional patent applications prior to filing a non-provisional patent application that wraps everything together.
It is important to understand that under the new law an inventor is always better off filing sooner rather than later. Nevertheless, there is not a true race to the Patent Office set up by the new law. In order to be awarded a patent one must still be an inventor. Those who learn of an invention cannot now, nor could they previously under the old law, beat the inventor to the Patent Office and obtain a patent. Inventors must contribute conception and stealing from another provides no conception that will support the awarding of a patent.
Of course, if you have a client that comes to you to seek a patent after they have publicly disclosed it would be worthwhile to file a patent application immediately. Truthfully, the facts don’t matter in determining whether you should file after a disclosure, even if there has been a subsequent disclosure. This is true because many expect that the USPTO interpretation on the grace-period and subsequent filing will be modified by the courts, so if there is any argument that can be made you should file and let things sort out in the courts as they inevitably will determine the meaning of the grace period. But despite the grace period being infinitely small, it does still exist. Of course, it is still only a one year grace period. 
CLICK to CONTINUE READING — patent eligibility of tax strategies and human organisms.
 Examination Guidelines for Implementing First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 FR 11059 at 11077 (col. 1)(February 14, 2013).
 Id. (col. 2) at 11077.
 35 U.S.C. 102(b)(1); Examination Guidelines for Implementing First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 FR 11059 at 11076 (col. 3)(February 14, 2013)(“a disclosure which would otherwise qualify a prior art under AIA 35 U.S.C. 102(a)(1)… may be disqualified as prior art if… made one year or less before the effective filing date of the claimed invention…”).
Join the Discussion
17 comments so far.
Ron HiltonSeptember 16, 2013 02:38 pm
No problem. Just to be clear, i am not saying or implying that advising a client against filing over a second disclosure is malpractice. I am just saying that it depends on the facts of situation and the cost/risk tradeoffs that the client chooses to make in light of those facts and associated uncertainties..
AnonSeptember 16, 2013 02:26 pm
I stand corrected Ron – mea culpa.
Ron HiltonSeptember 16, 2013 02:10 pm
Anon, please re-read my comment 7 above. I said nothing about a second disclosure at all. You added the second disclosure to the “fact pattern” – I was responding to Joseph, who did not mention a second disclosure either.
AnonSeptember 16, 2013 01:29 pm
Once again, you are missing the point of what I am saying. You are changing the fact pattern when you state “and then the second discloser files first.” You are not looking at the situation correctly.
So ‘as you state above’ does NOT carry, because you are changing the fact pattern under discussion.
If you now want to set up multiple and DIFFERENT hypotheticals, please do so with a modicum of clarity.
Ron HiltonSeptember 16, 2013 12:48 pm
What will the client think if they are advised not to file, and then the second discloser files first, and successfully argues that their disclosure did in fact contribute non-obvious differences to the invention and is awarded a patent? As I stated above, there is risk either way, and the client should be informed of the risks and allowed to make their own decision. And what if there has been no second disclosure yet? Telling the client to give up at that point because there is “no grace period at all” under AIA is what i stated would be malpractice.
AnonSeptember 16, 2013 12:10 pm
You are missing the point here Ron.
You are asking someone to file – with knowledge – after the second party publication.
You (should) know that you are barred, and your action disregarding the law – that you know of – should stop and make you think – and not think in the way that you are thinking.
At the very least, I would hope that you are including the knowledge of such third party information on an IDS with your filing.
A critical point you do not seem to grasp is that you are wasting the client’s time and money – under currently understood law.
Now if you want to add to your hypothetical that you explain this risk to the client, and that the client still wishes to pursue the application, I will temper the harshness that I view your practice.
Ron HiltonSeptember 16, 2013 10:26 am
The fact that the “same subject matter” requirement may depend to some extent on “obviousness” leaves even more room for reasonable doubt. If any argument can be made for non-obviousness of the second disclosure vs. the first disclosure (in which case there may be two separate, patentably distinct inventions), why would the first discloser hesitate to file as soon as possible? Under AIA, it’s all about timely filing.
AnonSeptember 14, 2013 01:11 pm
This is not the first time that your practice methods fill me with some apprehension.
At the risk of sounding ‘preachy,’ let me be a little more direct: this is not a case wherein the law is ambiguous and you get to decide what it means. The law concerning the level of grace period remaining after the changes of AIA is not at a state that you can ignore what the agency applying that law has indicated its meaning, or ignore what several attorneys have indicated because you ‘like’ a more benefical view. You cannot claim ignorance of the law, or claim that to you the law seems ‘unsettled.’ and open to future changes, modifications, or clarifications by upcoming caselaw, and thus choose a version that you find more amenable.
You do not have that luxury as an attorney. Your willingness to give “the benefit of the doubt” is irresponsible. Even if you are not as sure of the law and what it means TODAY, the prudent thing to do is to err on the side of caution if you have any doubt as to what the law is.
I would take issue with how you are defining service to the client – and would be as bold as to say that you are doing a disservice to your clients by placing them in jeapordy of violating the oaths that you are having them sign.
That you are completely comfortable doing so is even more of a red flag to me. To me that indicates a lack of critical thinking coupled with a reckless disregard for how serious you should be treating an oath.
Ron HiltonSeptember 13, 2013 07:00 pm
Of course the client should not sign an invalid oath. But I am completely comfortable with giving an inventor the benefit of the doubt. To do otherwise would be a disservice to the client. And there remains tremendous doubt about the statutory meaning of “same subject matter” at this early point in AIA history.
AnonSeptember 13, 2013 04:36 pm
As you understand the law (here and now), would you be comfortable having your client make an oath that was invalid?
Do you not consider that malpractice?
Remember, as it now stands, the paper thin grace period simply does not cover another publication that has made even obvious changes. The law means that your filing – with knowledge of such other work – can no longer rightfully be called an invention and you must carefully contemplate the oath that you are having your client to sign. It’s not a matter of there being ‘no’ grace period – it’s a matter of understanding just how limited the grace period is.
Ron HiltonSeptember 13, 2013 04:05 pm
Joseph, suppose a client comes to you and says they want to file a patent on something they disclosed at a trade show last month. Based on your logic, would you tell them, sorry, you’re out of luck, there is absolutely no use in filing? In my opinion, the best course of action would be to advise the client of the risk but encourage them to file as soon as possible. On the downside, they incur the cost of filing a doomed application. On the upside, they potentially lock in the rights to a hugely profitable invention. Of course, like any business venture, there is an element of risk. A patent is really just IP insurance, part of the price of doing business. If the inventor is not willing to take that kind of small calculated risk, they probably don’t have what it takes to be an entrepreneur anyway. Bottom line, a patent practitioner would be doing the client a huge disservice and probably committing malpractice by telling them flat out there is no grace period.
Gene QuinnSeptember 13, 2013 12:31 pm
It is foolish for anyone to rely on the grace period, but to say that it does not exist under the AIA is absolutely wrong. There is a 1 year grace period under the AIA. It is perhaps infinitely small, but it does clearly exist. I recommend you read the First to File Guidelines I cite to and other articles on IPWatchdog.com that explain this in painstaking detail.
Ron HiltonSeptember 12, 2013 06:19 pm
Gene, Thank you for including the last paragraph in your article. It is the same point that I have trying make all along with regard to the AIA grace period, namely, don’t rely on the grace period as a deliberate strategy, but if a disclosure has already been made, do file as soon as possible, even and perhaps most especially if a subsequent disclosure by an independent third party has also been made.
Joseph ZitoSeptember 12, 2013 10:03 am
THERE IS NO 1 YEAR GRACE PERIOD, not even for disclosures by the inventor. The grace period has been eliminated by the AIA.
Section 102(a) contains the words “on sale”. The section 102(b) exceptions do not include exceptions to “on sale” only for discosures by the inventor.
On sale has a long judicial interpretation to include any activity toward commercialization including disclosures at trade shows, commissioning prototypes and soliciting investment for the invention. Thus any “commercialization” or attempted commercialization will be an instant and automatic bar to patentability, with no one-year grace period. Any non-commercial intended disclosure can be characterized (in litigation) as an attempt to commercialize thus there is NO ONE YEAR GRACE PERIOD under the AIA, not een for innocent disclosures. Inventors need to be made aware of this chilling fact that changes the accepted practice of inventors for generations. There are a number of articles on this shocking change for example: http://yarbroughlaw.com/Publications/pubs_patent_13_changes_to_35USC102.htm
Michael Feigin, Esq., NY, NJ Patent AttorneySeptember 11, 2013 12:19 pm
Very good point!
AnonSeptember 11, 2013 12:06 pm
My biggest concern (still) with provisional filing is the education required to establish that a provisional should not be a “quick and dirty” filing. To earn its full effect, a provisional needs be drafted with as much care (read that as time and money) as a non-provisional.
Michael Feigin, Esq., NY, NJ Patent AttorneySeptember 11, 2013 12:00 pm
Do you file more provisionals now to get earlier filing dates? I think it’s a good idea, but on the other hand, many clients who file provsiionals never come back to file the non-provisionals.