Early Public Disclosure of Patentable Inventions Under the America Invents Act

February 29, 2012, 10:16 AM

Changes to U.S. patent laws enacted at the end of last year will eventually change our system from one that awards patent rights in an invention to the first inventor(s) in cases where the same invention is created by more than one inventor or group of joint inventors acting independently of each other, to one in which those rights will be awarded to the first legitimate inventor or group of joint inventors to file an application to patent the invention with the U.S. Patent and Trademark Office. As with all rules, this new one will be subject to certain exceptions. The most interesting of those is an exception based on the new laws treatment of public disclosures made prior to filing of a patent application. The pertinent language from Section 102(b)(1) of the new law which follows will apply to U.S. Patent applications filed on or after March 16, 2013:

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
A. 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; or
B. 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.

The upshot of this statutory language is that if an inventor makes a public disclosure of his or her invention within the one-year period preceding filing of a U.S. patent application on the invention, that disclosure will not cause any problems for that particular inventors U.S. patent application. This preserves the one-year grace period for filing of U.S. patent applications that existed under prior law, but only with regard to public disclosures by the inventor who files the application. However, because the new law limits availability of this grace period only to the inventor who made the public disclosure, someone else who independently came up with the same invention and was the first to file a patent application on it would not be entitled to a patent, because public disclosure by the other inventor would be prior art against this application. In such a case, the inventor who made the public disclosure would be the one entitled to the patent, even though his or her patent application is filed later than the one filed by the other independent inventor. One might conclude from this that public disclosure of invention details at the earliest possible time even before one is ready to file a patent application will be desirable strategy under the new law, because it could preempt others who independently are working on the same invention from wrapping up patent rights in it by filing first. However, loss of foreign patent rights and other potential consequences of such early disclosure make this a questionable conclusion. Under the new law, as under the old, it will remain prudent to file your U.S. patent application -- which in many cases will be a provisional application -- before any publication or other detailed disclosure with regard to your invention. --Robert E. Smartschan