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New Patent Rules Substantially Weaken “Grace Period”
February 22, 2013—The U.S. Patent and Trademark Office (USPTO) Feb. 13 published its final rules implementing the first-inventor-to-file (FITF) provisions of the 2001 Leahy-Smith America Invents Act (AIA), the nation’s first major patent reform legislation in more than half a century. Under FITF, the “priority” of competing patent applications will be based on the date the applications are filed, not the dates the claimed inventions were made. The United States switches to the new FITF system on March 16.
In a setback for academic institutions, which seek to balance open communication of research with reliable protections for intellectual property, the USPTO’s final rule includes only a narrow interpretation of the AIA’s provisions for a “grace period.”
U.S. patent law long has protected inventors, such as university faculty, who publicly speak or publish about their inventions before filing a patent application. Under the new rule, as well as in the old system the rule replaces, an inventor can publicly disclose an invention — for example, in a presentation at a scientific meeting — up to one year before filing a patent application; a statutory grace period prevents that inventor’s own disclosure from being considered “prior art,” a possible basis for rejecting the patent application.
However, under the new rules, any subsequent disclosure by a third party — e.g., a colleague, rival, or independent inventor — about that invention before the patent application is filed may well be considered prior art unless the patent applicant can demonstrate to the USPTO that the second disclosure was based entirely on the first. Even then, other changes or variations in the third party’s description of the invention might also be used as a basis for rejecting the patent application.
The USPTO did, however, soften its earlier proposed requirement that language in an inventor’s public disclosure and patent application would need to be nearly identical for the grace period to apply. In October 2012, the AAMC joined with other higher education associations objecting to the proposed narrowing of the grace period protection [see Washington Highlights, Oct. 19, 2012]. The associations continue to believe that Congress intended to provide a robust grace period for faculty inventors.
University tech transfer offices, meanwhile, are moving apace to adapt to the new rules, including filing patent applications expeditiously. Under the AIA, the USPTO also provides higher education institutions an opportunity for discounted application fees.
The USPTO notes that the AIA and the final rule implementing it are intended to help harmonize the U.S. patent system with those of the United States’ major trading partners, allowing greater consistency in the prosecution and enforcement of U.S. patents. The agency also notes that the AIA includes safeguards to ensure that only an original inventor or her or his assignee may be awarded a patent under the first-inventor-to-file system, which many argue is consistent with Article 1, Section 8 of the U.S. Constitution.
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