If you can’t beatem joinem: America Invents Act

The “first to file” provisions of the American Invents Act [AIA] became effective on March 16, 2013. These provisions implement (i) circumstances under which filing of a patent application is prohibited, and (ii) exceptions to these circumstances. The Act appears to be here to stay and so the best approach is to educate clients on these circumstances. In fact, most of my business person clients have already (i) confronted pitfalls from this law that can irreversibly prevent them from filing an application, or (ii) participated in activities by which third persons can easily file an application ahead of them. This article will address one group of AIA pitfalls that can prevent a patent application from obtaining a filing date. In particular my article addresses the AIA prohibition for filing a patent application based upon activities such as, but not exclusively, prior public exposure, sales and printed publications related to a claimed invention.

One AIA section provides that printed publications disclosing, and sales of, the invention immediately prohibit filing of a patent application. As a preliminary matter, it is not clear from the statute how “sales” relate to “disclosure,” or whether these two words are equivalent. In contrast, previous patent law clearly allowed sales and offers to sell as long as a patent application was filed within a year of the first sale activity. Under the prior law if a new client informed my office that sales had commenced, generally there was sufficient time to file an application. This happy scenario was generally the case even if the client was previously unaware that sale activities automatically trigger non-extendable filing deadlines.

Unfortunately, under the AIA provision there is more difficulty in advising clients about pitfalls such as sales and printed publications prior to the actual patenting process. There is also no intuitive manner by which an inventor can predict that certain activities immediately prohibit the filing of patent applications. When invention owners now arrive in my office and learn of the consequences of sales or publication activity, the damage may already have become irreversible. Additional filing pitfalls that correspond to this AIA section include disclosure by the inventor(s) or their associates prior to filing the relevant patent application [where associates are the persons who receive the disclosure from the inventor(s)]. Fortunately there is a corresponding statutory exception by which (i) if the claimed invention is disclosed by the inventor(s) or their associates within one year of the application’s filing date then (ii) the filed application is not immediately disqualified. However, the new law also prohibits filing if a disclosure by the inventor(s) or associates occurs more than one year prior to the filing the application.

The disclosure by the inventor(s) or associates during this one year need not be public if there is no intervening disclosure of the claimed invention by unrelated third persons. However, qualifying for an exception to the general filing prohibition becomes more complicated when there is (i) a disclosure by the inventor(s) or associates of the claimed invention and (ii) a subsequent disclosure by a third person who did not receive the disclosure from the inventors(s) [that is, not an associate of the inventor(s)]. Under these circumstances, disclosure of the claimed invention by the inventor(s) or associates must occur (i) within the one year between the inventor(s)’ disclosure and effective filing date of the application and (ii) prior to the disclosure by the third person. In addition, for this qualifying exception the inventor(s)’ or associates’ prior disclosure must also be public. For printed publications, a photocopy or electronic copy should be submitted to the patent office as best evidence of the inventor(s) prior disclosure during the one year window. However, if the prior public disclosure was an oral presentation then there must be a detailed description of presentation contents as evidence that the patent examiner should disregard the third party disclosure.
© 2013 Adrienne B. Naumann, Esq.
Ms. Naumann does not endorse or sponsor the advertisements at adreinnebnaumann.wordpress.com.

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