A Different State of Grace: The New Grace Period under the AIA

Vol. 5 No. 6

By

Heath W. Hoglund is a vice president and chief patent counsel at Dolby Laboratories Inc., where he has global responsibility for patents. He can be reached at hhogl@dolby.com. Jay A. Erstling is a professor of law at William Mitchell College of Law and of counsel at the intellectual property law firm of Patterson Thuente IP. He can be reached at erstling@ptslaw.com or jay.erstling@wmitchell.edu. Frederik W. Struve is a 2014 J.D. candidate at William Mitchell College of Law. He has a B.Sc. in International Comparative Business Administration from Copenhagen Business School, Denmark. He can be reached at frederik.struve@wmitchell.edu.

T here is a new normal in American patent law. For anyone currently practicing in intellectual property, U.S. patent law has always included a novelty grace period that protected against the disclosure of an invention within one year prior to the filing of a patent application. The America Invents Act (AIA)1 has amended the novelty grace period in its scope and perhaps its usefulness. Unless and until the courts provide a broader interpretation, the AIA grace period requires applicants and their counsel to adopt new best practices.

The first-to-file system created by the AIA forces practitioners to think about issues of disclosure, novelty, and priority in ways that differ considerably from pre-AIA practice. The pure novelty grace period, which had been a core feature of the U.S. patent system, no longer exists.2 Pre-AIA, any publication within one year prior to an applicant’s filing date would not destroy the novelty of a claimed invention, while an inventor’s own or a third-party’s publication made more than a year before the filing date would destroy novelty even where an inventor had an earlier invention date. The AIA grace period is conceptually different because it does not rely on a novelty determination alone, but requires an inventor to be first in time to make a public disclosure to trigger the ability to exclude subsequent public disclosures of the same subject matter.3 In addition, the underlying switch to first-to-file from first-to-invent eliminates the ability under first-to-invent to swear behind another’s disclosure to obtain protection for all invented subject matter by establishing priority to claimed subject matter otherwise meeting the novelty requirement under pre-AIA § 102(b).

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