There has long been a concept, though often overstated and easily misunderstood, that inventors have a one year “grace period” in which they can file for patent protection – even after having publicly disclosed the invention itself, for instance, after selling, using, or otherwise making it available in the public domain. The America Invents Act (AIA), which has made several major changes to the patent system over the past couple years, has maintained the concept of a one year grace period, though it now makes the rule even less useful than it had been before. Relying on the concept broadly therefore, and without careful analysis, can be risky at best, and fatal at worst.

The original rationale for the thought of a “grace period” stems from a simple premise. The patent system is based on the government’s willingness to grant a limited monopoly to an inventor – in the form of a patent – in exchange for that inventor making the invention accessible to the public, and thereby adding to the common knowledge. The inventor can only meet his or her side of this bargain, the premise goes, by first filing a complete patent application that ‘enables’ people skilled in that particular technology to ‘make and use’ the invention. In turn, it follows that if an inventor were to, instead, first ‘disclose or sell’ the invention – in other words, make it accessible to the public without having first filed a patent application, then the rationale for providing that person with a patent falls away entirely.

The resulting rule, in the U.S., permits an inventor to file for an invention even after publicly disclosing it, as long as a patent application for the invention is filed within one year from the date of public disclosure, and even then, only in limited situations. Even without the recent changes, there have always been various risks associated with reliance on this grace period, including the likelihood that inventors might easily misjudge the actual date upon which that one year would begin and end. For instance, what they might assume would be the effective starting date of that one year period, based upon their first shipment of a product, may well have been much earlier, based instead upon the date they first ‘offered to sell’ the product itself.

It was risky also, because most other countries have no such grace period at all, and instead consider prior public disclosures by the inventor as an “absolute bar” to later getting a patent on their very own invention. For this reason alone, inventors have long been encouraged to ‘think globally,’ and not rely on the thought that they may someday be saved by a grace period.

There is now yet another reason to think very carefully before relying on the grace period – the new AIA rules redefine, and considerably narrow the definition of when the rule might apply, particularly in terms of ‘intervening’ prior art. By way of example, imagine a common scenario in which an inventor first publicly discloses her invention, and then files an application within one year of that disclosure, though later realizes that a piece of “prior art” has arisen in the interim, for instance, a third party patent application has been filed, or an article published, or a product or process has been publicly used by someone else.

Under the “first to invent” system that was in place prior to the AIA, but no longer exists, it may have been possible for the inventor to “swear behind” – and thereby avoid – the third party prior art, simply by convincing the patent examiner that they were the first to create their “invention”, and had filed their own application within one year of the third party’s disclosure. In other words, it was not necessary to show that the third party had somehow derived the information from the Applicant herself. Nor was it necessary that the Applicant had herself first disclosed her invention, or in turn, later filed an application within a different one year deadline established by that disclosure.

Under the new rules, however, the inventor’s ability to overcome such third party prior art is significantly limited, for various reasons. To begin with, the Applicant can no longer avoid the third party prior art by simply ‘swearing behind’ it. Rather, the Applicant will now need to show that the third party had indeed obtained their information from the Applicant. If the Applicant’s earlier disclosure had been public, the burden for proving this can be considerably lower. Otherwise, the Applicant needs to prove the extent to which the third party did, indeed, directly or indirectly obtain the information from the Applicant. Then, and only then, can the Applicant avoid having those portions of the third party’s disclosure treated as prior art against the Applicant.

Under both the previous system, and the current system, it can be seen that the Applicant would most likely have been in a much better position by simply filing first, and doing so before having disclosed, sold, etc. – thereby establishing the earliest possible filing date.

For these and many other reasons, and if only in view of the complex and unprecedented nature of these rules, it is advisable that Applicants do not rely on the concept of a grace period as an affirmative tool at all. Applicants should, instead, continue to see themselves as being in a race to consistently file the best possible patent application they can, at the earliest possible date, and to work with good counsel in order to determine how to do so cost effectively.