The AIA's general rule on novelty is that a patent application has to be filed before a prior art disclosure. But there are exceptions, in the form of the grace period provisions in AIA § 102(b)(1), which allows for pre-filing disclosures of the invention. The definitional details of the grace period poses some of the most difficult issues in interpreting the AIA. Under AIA § 102(b)(1)(A), an inventor has one year from the time he or she discloses an invention within which to file a patent application. This simply continues the one year grace period practice established under the statutory bar provision of the Patent Act of 1952. It's the grace period afforded against third party disclosures, dubbed as the "grace period non-inventor disclosure" exception, that has the patent community talking. Under AIA § 102(b)(1)(B), if an inventor publicly discloses his or her invention prior to filing, then any third party disclosure made in the interim shall not be considered prior art to defeat patentability of the claimed invention. This provision has been touted by many as granting an inventor the ability to "antedate" prior art events dated less than a year before the inventor's effective filing date by demonstrating that the inventor had previously publicly disclosed the subject matter of the invention. The article "Monumental changes to US patent law," published in the August 2012 issue of the CIPA journal, has similarly expressed that by extending the grace period to third party disclosures, the AIA better protects those inventors who choose to publish before filing, and that the AIA "favours granting patents to inventors who take affirmative steps to make an invention public before filing, so that the public can promptly benefit from the disclosure."

At first blush, the § 102(b)(1)(B) exception appears to be effectively creating a "first-inventor-to-publish" system that prevents third parties from prevailing over inventors who choose to publicly disclose their invention before filing a patent application. However, the USPTO's Proposed Rules for the "First-to-File" system, published in the July 26, 2012, issue of the Federal Register, has clarified that most disclosures by third parties will continue to be treated as prior art even when a third party disclosure is preceded by an inventor's own public disclosure. According to the USPTO's Proposed Rules, the § 102(b)(1)(B) exception can only be invoked if the subject matter in the third party disclosure is substantially identical to the subject matter previously disclosed by the inventor. The Proposed Rules specify that even if the only differences between the inventor's disclosure and the third party disclosure "are mere insubstantial changes, or only trivial or obvious variations," the exception under §102(b)(1)(B) does not apply. The phrase "trivial or obvious variations" is not defined in the Proposed Rules and these are not established terms of art in the US patent law. Therefore, it will be interesting to see how this is interpreted in the forthcoming USPTO regulations or case law. As it stands, the one-year grace period is likely to apply only to an inventor's own public disclosure and duplicative disclosure of the same invention by a third party.

Thus, contrary to the views of many commentators, the § 102(b)(1)(B) exception in the AIA does not appear to have been crafted to engender early publication of inventions. In fact, prior publication of an invention is fraught with many downsides. Consider the following scenario: Inventor Alpha invents a widget, but rather than keeping the invention a secret and promptly filing a patent application, Inventor Alpha publishes an article disclosing elements A and B of his widget invention. After reading Inventor Alpha's article, Competitor Beta publishes his own article disclosing elements A, B, and C prior to the filing date of Inventor Alpha's patent application. Since Competitor Beta's article is not identical to Inventor Alpha's prior disclosure, Competitor Beta's article will become a prior art against Inventor Alpha's patent application. That is, the one-year grace period cannot be invoked to remove Competitor Beta's article as a prior art against Inventor Alpha's patent application.

The potential pitfalls of prior public disclosure behooves us to rethink the strategy of deliberate public disclosure of an invention prior to filing a patent application so as to defeat a third party's actions in the interim. Although the grace period may be helpful in instances of accidental public disclosure, publication before patent application filing should be a considered with trepidation in light of the uncertainties surrounding the "grace period non-inventor disclosure" exception in the AIA. A policy of early filing is therefore the recommended approach.

Originally printed in CIPA Journal.