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Get Ready, Set, Go! – A Race to File

12.01.12

A new race is soon to begin—and another is currently underway. On September 16, 2011, the America Invents Act (AIA) was enacted into law. See Leahy-Smith America Invents Act, Pub. Law 112-29 (Sept. 16, 2011).

The “first to file” provisions of the AIA, inter alia, will begin to align the U.S. with the rest of the world. See id. at §102(a); see also First-to-File or
First-to Invent New Patent Reform Act Changes the Game, SUTHERLAND NEWSLETTER Sept. 14, 2011.2 This is the first substantial change to U.S. patent system since 1952. Id. Once effective, inventors—large and small—will have to file patent applications quickly and frequently to stay ahead of their competition. The never ending race to file is soon to begin, but there is another race currently underway that is just as important.

For U.S. patent applications filed on or after March 16, 2013, the AIA substitutes a new novelty standard that is quite different from the current one. See Pub. Law, 112-29, at §§ 3 & 102. The AIA novelty standard is comprised of two rules: one relating to acts and the other relating to previously filed U.S. patent applications. Id. at §102. New Section 102(a)(1) requires that the claimed invention cannot have been “patented, described in a printed publication, or in public use or on sale, or otherwise available to the public” before the earliest effective filing date for the claimed invention. Id. at §102(a)(1). Further, the prior art includes “all patent and patent applications that have been published or deemed published under Section 122(b)” and that have an earlier effective filing date than the claimed invention. Id. at §102(a)(2).

The AIA novelty standard differs significantly from the absolute-novelty requirements of most countries. Unlike most absolute-novelty rules, the AIA standard specifies that novelty is lost when the claimed invention has been “in public use” or “on sale.” See Pub. Law, 112-29, at §102(a)(1). Further, the AIA standard has a grace period for two situations: one relating to an inventor’s direct or indirect disclosure and the other relating to a third party’s disclosure. Id. at §102(b). For disclosures up to one year before the effective filing date, Section 102(b)(1)(A) excludes an inventor’s disclosure of the claimed invention from prior art if the disclosure is made by the inventor himself or by someone who learned of the subject matter either directly or
indirectly from the inventor, and Section 102(b)(1)(B) excludes a third party’s disclosure if the third party’s disclosure is made after the inventor or someone obtaining it from the inventor discloses the subject matter to the public. Id. at §102(b)(1).

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