CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent
AEON law logo on grey background

Defensive Publication Under The AIA

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.

Related Articles

Patent and Trademark Offices Publish Study on NFT IP Issues

The US Patent and Trademark Office (USPTO) and the Copyright Office have published the results of their joint study on non-fungible tokens (NFTs) and intellectual property (IP). ...
Read More

Fourth Circuit Overturns $1 Billion Copyright Infringement Verdict

The Fourth Circuit has overturned a $1 billion verdict in a copyright case against Cox Communications. As the court explained, Defendant Cox Communications sells internet, ...
Read More

Will Federal Circuit Soften Test for Design Patent Obviousness?

An en banc panel of the Federal Circuit recently heard arguments in a case that could change how courts assess design patents for “obviousness.” LKQ ...
Read More

Let's work together.

Contact us to set up a meeting with an attorney or team member.

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.

SECTORS

HIGH
TECHNOLOGY

Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices

MECHANICAL
& PRODUCTS​

Cleantech

Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games

LIFE SCIENCES
& CHEMISTRY​

Biotechnology

Chemical Compounds

Digital Health

Healthcare Products

Pharmaceuticals

BRANDING
& CREATIVE​

Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design

SERVICES

PROTECT

DEAL

DEFEND