The following analysis of the changes to 35 USC § 102 under the America Invents Act comes from Courtenay Brinckerhoff ,writer of PharmaPatents Blog and Partner at Foley & Lardner. Brinckerhoff questions whether any patent application will be better off under the new law?
On September 19, 2012, Inventor discloses Subject Matter in a printed conference abstract.
Inventor continues to develop Subject Matter and completes Invention.
On Monday, March 18, 2013, Inventor files a Foreign Patent Application directed to Invention.
On March 17, 2014, Inventor files a PCT application that designates the U.S. and/or a U.S. Application
(either/both claim priority to the Foreign Patent Application)
The Current Law
Under the current law, the Inventor’s September 19, 2012 disclosure would qualify as § 102(b) prior art against the U.S. Application because it occurred more than one year before the U.S. filing date:
A person shall be entitled to a patent unless—
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
The Invention only would be patentable if it is patentably distinct from the disclosed Subject Matter.
The America Invents Act
Under new § 102(b)(1)(A) of the AIA, it is possible that the Inventor’s September 19, 2012 disclosure would not qualify as prior art:
(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) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—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 . . . .
This is because new § 100(i)(1)(B) of the AIA defines “effective filing date” to include any foreign priority date:
(i)(1) The term ‘effective filing date’ for a claimed invention in a patent or application for patent means—
(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).
In the scenario outlined above, the Inventor’s disclosure was made less than one year before the Foreign Application was filed. Thus, as long as the U.S. Application is entitled to claim priority to the Foreign Application, the Inventor’s disclosure should fall under the exception of § 102(b)(1)(A).
What About Foreign Patent Rights?
This fact pattern might not be very useful if the Inventor’s disclosure presents a hurdle to foreign patent rights. While the EPO does not provide a grace period for an inventor’s own disclosure, many other countries do provide some leeway, including Australia, Canada, China, Japan, Korea and Taiwan. Applicants in these countries who file a patent application within the local grace period could find it easier to obtain a U.S. patent under the AIA.
Because the AIA will apply to applications with effective filing dates on or after March 16, 2013, it is the foreign priority application–not the U.S. application–that must be filed on or after March 16, 2013 in order for this potentially advantageous scenario to be realized. Foreign applicants faced with a pre-filing date inventor disclosure may want to consider whether the local grace period would permit the priority application to be filed after March 16, 2013, so that a U.S. patent can be pursued without being encumbered by the inventor’s disclosure.
Tags: America Invents Act, foreign patent rights, Patent Applications, Post Grant Review, prior art, priority claim
Actually, the AIA will apply even if the Foreign Application is filed BEFORE the effective date of AIA , i.e. March 16, 2013, and the U.S. application (or PCT designating U.S.) is filed after March 16, 2013, in the case where the U.S. application contains a claim to a claimed invention that did not appear in the Foreign Application. Foreign applicants often describe and claim additional subject in their U.S. applications that does not appear in their native country’s application. See section 3(n) of the AIA for effective date of section 102.
This alters your last recommendation that foreign applicants should wait until after March 16, 2013, to file their priority application. The foreign applicant does not have to endure such wait if the foreign applicant adds additional subject matter and an additional claim to a claimed invention in the U.S. application.