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Public disclosure and grace period in the first-to-file


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Until recently, patent attorneys categorically advised their clients against publicly disclosing their invention prior to filing a patent application—and for a very good reason. In the pre-AIA first-to-invent system, from a patent law perspective, public disclosure of an invention carried no benefits, but entailed several significant detriments. The main detriment being irreversible loss of an opportunity to seek patent protection abroad because, unlike United States (and a few other countries including Canada and Japan), most jurisdictions have an absolute novelty requirement, meaning that if an invention is publicly disclosed prior to the filing date, the public disclosure bars patentability. This remains true in the post-AIA first-to-file system.

AIA, however, has brought about a new important caveat, according to which, a timely public disclosure may be an advisable course of action in certain situations. This caveat may be illustrated by a recent example we encountered in our practice. In the first-to-file system, Applicant could overcome a rejection based on a prior art reference that predated the filing date by less than a year (35 U.S.C. §102(a)) by executing a declaration under 37 C.F.R. 1.131 and submitting supporting evidence establishing that the inventor has reduced the invention to practice prior to the effective date of the reference. Under the old rules, the evidence of private activity (such as laboratory experiments) and unpublished manuscripts was sufficient to "swear behind" a prior art reference. In the real-life example mentioned above, we recently relied on an inventor's unpublished thesis to successfully overcome a 102(a) rejection. However, according to the new rules, absent a public disclosure, Applicant will not be able to remove a prior art reference based on inventor's unpublished work and private activity, even when the evidence clearly demonstrates that the inventor was in possession of the invention prior to the effective date of the prior art.

Under the post-AIA rules, Applicant is awarded a 1-year grace period from the date of public disclosure during which Applicant may file a domestic patent application. Any third party disclosures subsequent to the public disclosure of inventor's work will not qualify as prior art. Conversely, if an inventor does not publicly disclose his invention prior to filing a patent application, Applicant will not be awarded the 1-year grace period, and any third party publications predating the filing date will qualify as eligible prior art potentially barring patentability, even domestically.

The takeaway from this caveat is this: filing a patent application as soon as possible is still the best course of action; however, if Applicant does not intend to protect his invention abroad, a timely public disclosure may be imperative to protect Applicant's domestic rights.

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