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    Wednesday, February 1, 2012

    Patent Laws' Fall from Grace-Part III-A Graceless Mess

    President Obama signed the Leahy-Smith America Invents Act ("2011 AIA") into law on September 16, 2011, making the largest change to patent law in half a century. The last whole sale change to patent law was the 1952 Patent Act. That act provided for the one year statutory bar related to inventions on sale, printed publications, and public use--also known as the one year grace period.

    The sea-change represented by the 2011 AIA, is felt keenly in the change to the one year grace period. Simply put, it is no longer clear what falls within the one year grace period, or whether it is even available at all.

    The 2011 AIA states in pertinent part that there is NO grace period with a highly complicated, and currently un-interpreted, exception:
    "§102. Conditions for patentability; novelty
    "(a) NOVELTY; PRIOR ART. A person shall be entitled to a patent unless—
    "(1) 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;...
    "(b) EXCEPTIONS. …(1) … 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 under subsection (a)(1) 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.
    This “exception” to an exception inserts a lot of ambiguity into the one year grace period. What is the difference between “the disclosure”, the “claimed invention” and “the subject matter disclosed”? What is a “public disclosure”? What does it mean that the disclosure can be “by another who obtained … directly or indirectly from the inventor”?

    For example, does the “disclosure” or the “subject matter disclosed” have to be enabling (within the meaning of 35 USC Sec. 112) in comparison to the eventually “claimed invention”? Is a “public disclosure” of the “claimed invention” or of the “subject matter”, or “other”? And is the “public disclosure” the same thing as a “patent[]”, “printed publication”, a “public use”, a product “on sale”, or something “otherwise available to the public”? What is covered by the category of a disclosure “by another who obtained…indirectly from the inventor”? Does this cover illicit acts? Breaches of non-disclosure agreements?

    It took the Supreme Court over 10 years to substantively rule on key sections of the 1952 Patent Act. If it takes over 10 years to get clear and final guidance on the questions above, inventors will be in a state of limbo until after 2022. This guarantees years of litigation and attorneys’ fees. A graceless mess indeed.

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