Introduction

Patent law is a tricky and nit-picky realm to navigate. There are tons of rules to qualify for a patent and if you’re not careful, the slightest slip up can disqualify the patentability of your million dollar idea. However, we must not forget that obtaining a patent is still all about timing. One of the biggest changes to patent law was back in 2012-2013, with the implementation of the America Invents Act (AIA). Under the AIA (codified as Title 35 of the United States Code), the United States changed from a first to invent priority structure, to a first to file priority structure.

This change created new considerations in strategy for being the first inventor to file (or discourage others from filing) with the United States Patent and Trademark Office (USPTO). Arguably, the biggest consideration has to do with prior art and how something becomes prior art. This article discusses prior art and its effect on invention disclosures and filing.

Prior Art – Sales, Use, Disclosure, Other Patents

Prior art disqualifies an idea from becoming a patent. See 35 U.S.C. § 102(a). Section 102(a) has two parts. The first part (35 U.S.C. §102(a)(1)) essentially says that you cannot file a patent application for something that is already in the public domain before you file. The proof can come from prior patents, printed publications, public use, sale, or otherwise in the public domain in some way shape or form. Thanks to the AIA, the new rule is that prior art can come from anywhere in the world. MPEP 2152.02(c).

This rule can result in inventors hurting themselves, especially in the realm of use, sale, and disclosures. Often inventors will give a few samples away, use their invention in public, or otherwise disclose the invention to others. With few exceptions, such as careful experimentation, such use, even by the inventors, constitutes public use and will negate the invention’s future patentability.

Grace Period For Your Own Disclosure

With that, all hope is not lost, but one must act quickly after public use. 35 U.S.C. § 102(B)(1)(a) creates a grace period for disclosures. It essentially states that a disclosure made by the inventor, or a person who obtained the information by the inventor, within one year of the filing date, does not qualify as prior art. This means if you disclose or otherwise cause your invention to be disclosed, the USPTO will give you one year to file your patent application before such disclosure becomes disqualifying prior art.

Third-Party Disclosures

A common phrase resulting from the AIA is that patents have become even more of a  race. Since the United States is now a first-to-file priority structure, inventors are basically competing with one another to see who can file their application with the USPTO first. However, there are some strategic actions (relating to prior art) that can occur before a patent application is ever filed.

As discussed above, there is a one-year grace period after the public use (by the inventor) of an invention to file an application. But what about other people’s disclosures? We are not talking about people who obtained information from the inventor, as that has already been addressed by the statute. We are talking about the competition, other inventors, who are trying to invent the same or similar invention.

Disclosures by other inventors count as prior art against you as well. This means they could disclose their invention, thus creating prior art against you, and still have a one-year grace period to file under the law. The beauty of this is that the same can work for you as well. Disclosures compete in a similar way to filing. The statute is 35 U.S.C 102(B)(1)(b). It essentially states that if the subject matter of a third party’s disclosure, made within one year prior to filing, was made public by the inventor, or someone who obtained it from the inventor before the third-party disclosure thereof is, the third party disclosure is not prior art against the inventor.

Put simply, if some unrelated third party discloses the invention before you file your application, you can still beat their disclosure with your own disclosure. Their disclosure won’t become prior art against you, if your disclosure was first, and you still file within one year of your disclosure.

Conclusion

Patent law is complicated. There are risks and consequences to consider every step of the way, even before a patent application is ever filed. If you have questions regarding this topic, then seek the advice of an intellectual property law attorney. Contact the SW&L intellectual property team at 701-297-2890 or email us at: info@swlattorneys.com.

The information contained in this article and on this website is for informational purposes only. Do not rely on the information on this website as legal advice.

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