For example, an inventor could disclose subject matter to a third party and, before the inventor files a patent application, the third party could disclose an invention or idea which includes the inventor’s original idea, but which builds upon or otherwise modifies it. Conversely, the exceptions do not apply to variations of the subject matter. With regard to third-party disclosures, the exceptions apply only to disclosure of the same subject matter obtained from the inventor. However, certain pitfalls make it risky to rely on the new one-year grace period. Thus, in a case where the inventor discloses subject matter to a third party less than one year before the filing date, and the third party subsequently discloses the same subject matter publicly, the third-party disclosure is not prior art.Īt first glance, the grace period appears quite similar to the current law. In a marked departure from the old law, however, a third-party disclosure made less than one year before the application filing date is not prior art, if the subject matter of the disclosure was directly or indirectly obtained from the inventor. For example, if an inventor publishes a paper or demonstrates a product less than one year before filing a patent application based on the paper or product, the grace period applies and the disclosure is not prior art. As under the old law, a disclosure made by an inventor less than one year before filing a patent application is not prior art. The AIA’s Section 102(b) provides that certain disclosures shall not be considered prior art. Thus, it is important to understand how the new grace period works, and to what extent it can be relied on to protect your inventions. Because most have come to rely on the one-year grace period which has existed in US Patent Law for over 70 years, this change requires some modification of best practices in patent prosecution.įirst and foremost, the one-year grace period under the new law is not as robust as the one-year grace period under the previous law. This includes disclosures made by both the inventors themselves and third parties. Yet the AIA does not provide a clean break with the past: new Section 102(b) provides that certain public disclosures which take place less than a year before filing will now be considered prior art.

Among the most controversial changes introduced by the America Invents Act (AIA) is the switch from a first-to-invent system to a first-to-file system.

Pre aia 102