Defensive Publication Under The AIA

by Adam Philipp on June 4, 2012

Under AIA
Defensive publication
Becomes an issue

Although the America Invents Act (AIA) is commonly described as changing the US patent system from a “first to invent” to a “first to file” system, as previously discussed in this blog  it’s more accurately described as creating a “first to file or publish” regime.

This “first to file or publish” system will apply to patent applications filed on or after March 16, 2013.

The “pure” first-to-file system used in the rest of the industrialized world can use the inventor’s own prior art to preclude issuance of a patent.  Most jurisdictions (including the EU and Japan) apply the “absolute novelty” test and bar issuance of a patent based on prior disclosures anywhere in the world.  Some jurisdictions use the “local novelty” test and only consider disclosures within that jurisdiction to be prior art.

The new US system allows a one-year grace period during which inventors can publish their inventions without fear of these disclosures being used against them as prior art. 

The Act says:

Sec. 102. Conditions for patentability; novelty
(a) Novelty; Prior Art- A person shall be entitled to a patent unless–
   (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or ….

(b) Exceptions-
   (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if–
      (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or…

Thus, inventors must now consider whether to engage in “strategic publication” in order to take advantage of that one-year grace period before filing a patent.

If an inventor publicly discloses an invention, the inventor “reserves” the right to file for a patent for that invention within one year.  This gives inventors the incentive to disclose before their competitors do.

For example, if company A invents first and files first, and company B independently invents and files second, but company B publishes before A files, company B will be the party entitled to the patent (assuming other requirements are met).

An inventor (especially at a start-ups short on cash) may want to publish to buy time before investing in a patent application, or may fear that competitors will file (or publish) while the original patent application is in process.

However, it’s important to balance the benefit of gaining an advantage under US patent law with the potential of losing patent rights in other patent jurisdictions that apply the “absolute novelty” rule.

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