Further to our earlier update on the new definition of prior art, the AIA also redefines the prior art exceptions. The AIA retains the one-year grace period to file an application following an enabling public disclosure by the inventor or someone who derived the disclosure from the inventor. This was added primarily to accommodate the early publication desires of research universities and independent inventors. More specifically,

  • The AIA continues to recognize a one year grace period by providing that public disclosures by the inventor within one year prior to filing an application are not prior art.
  • The AIA also provides that an inventor's public disclosure within one year prior to filing prevents any subsequent third party disclosures from becoming prior art.
  • The AIA expands the common ownership exception. Under the AIA, an earlier published application or patent, if co-owned, is disqualified as prior art for anticipation and obviousness if published within a year of the effective filing date. Under the current law, a prior published application or patent could not be used as prior art to show obviousness, but could still be used to anticipate a claim. The new §102 disqualifies any published application or patent if "the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by [or under obligation of assignment to] the same person." This would include joint research agreements.
  • The AIA changes the standard for obviousness under §103 by expanding the breadth of available prior art. Under the new §103, obviousness will be determined as of the effective filing date of the application rather than at the time of invention (since the date of invention conception is irrelevant in a first-to-file system). Accordingly, under the new §103, a claim will be rejected as obvious, if the difference between the claimed invention and the prior art is such that the claimed invention as a whole would have been obvious as of the effective filing date.

Although the exceptions may encourage early public disclosure, by maintaining the one year grace period that inventors currently enjoy, keep in mind that the exceptions only affect U.S. patent rights, as many other countries require absolute novelty and do not provide a grace period. In view of the upcoming expansion of the definition of prior art and the related exceptions (for applications having an effective filing date on or after March 16, 2013), applicants should consider additional action as will be addressed in our next update in this series.