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The First-to-File System’s One-Year Grace Period

Posted Thursday, December 27, 2012 by Mike Cicero

On March 16, 2013, the United States patent system will be switching from a first-to-invent system to a first-to-file system. Then, instead of deciding priority by date of invention, which is often difficult to precisely determine, the new simplified 35 U.S.C. §102(a) redefines novelty by providing that an applicant is not entitled to a patent if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or if another inventor had already filed an application for the same invention.

The new first-to-file system, however, is not strictly first-to-file in the sense that the first person to file will always prevail over an applicant that subsequently files. This is partly because the new system provides an inventor with a somewhat narrow one-year grace period in the event that the invention is publicly disclosed prior to filing an application. Two examples are provided below.

Example 1: The new 35 U.S.C. §102(b)(1)(A) provides that “[a] disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention” if “the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” In other words, if the information of a disclosure originated with an inventor or joint inventor then that disclosure will not be prior art against the inventor and joint inventor for a period of one-year. Therefore, if an inventor publicly discloses her invention then she will have one year to file an application for the invention or have the invention lose novelty and be statutorily barred from patentability. Moreover, if a non-inventor obtains information from an inventor and then publicly discloses the invention the inventor(s) will still have one year to file an application. Note that this grace period only benefits inventors who were the source of information for the disclosure and so even if another applicant files for an invention before an inventor who is first to disclose, the first applicant to file may not be entitled to a patent.

Example 2: The new 35 U.S.C. §102(b)(1)(B) provides that “[a] disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention” if “the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” In other words, in the rare instance two or more parties independently invent the same thing the first party to publicly disclose the invention cannot lose novelty due to subsequent disclosures of the invention. Therefore, if parties A and B both independently invent an identical widget and party A publicly discloses the invention one month before party B does then B’s disclosure is not prior art against A for one year. Remember, however, that A’s disclosure will become prior art against A only after one year but becomes prior art against B immediately. Therefore, if A is the first to disclose then B may not be entitled to a patent even if B is the first-to-file.

Due to the effect of disclosures under the new system, it may be more accurately described as a first-to-file-or-disclose system. The new system gives a stronger incentive than the old system to both disclose and file early in order to both establish priority and avoid anticipation respectively.

Ruttler Mills PLLC
One Union Square, 1730, 600 University Street, Seattle, Washington 98101 US
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Phone: (206) 838-6400

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