Prior Art Under the 2011 Patent Law Amendments:Traps for the Unwary

How changes to patent law may affect your inventions
By Gary D. Colby | November 21, 2011

Obtaining patents can be critical for companies that use innovative technology for competitive advantage. Recent amendments to U.S. patent law will change the boundaries of what can and cannot be patented. Unless innovators take heed of those changes, those seeking to patent their inventions in the U.S. may inadvertently surrender valuable proprietary rights. 

On Sept. 16, the America Invents Act was enacted, starting a series of changes to U.S. patent law that will occur over about 18 months. Two important changes are: the patent system will transition from a first-to-invent system, in which patent rights are awarded to the first inventor, to a first-to-file system, in which patent rights are awarded to the first inventor to file a patent application; and the one-year grace period, which under current U.S. patent law excludes certain information and acts from the prior art, will be effectively eliminated. Both of these changes will expand the universe of prior art that precludes patenting. Unless patent applicants alter their practices to conform to the new law, patent rights can be inadvertently lost.

Under current U.S. patent laws, an inventor obtains a patent by submitting to the government an application that adequately describes the invention. Prior to awarding a patent to the applicant, the government compares the invention with the prior art—information considered in the public domain relative to the invention. A patent is awarded if the invention is neither identical to nor an obvious variant of what is in the prior art. Thus, the content of the prior art is critical to patentability.

Under pre-AIA U.S. patent law, the prior art was defined, in part, by the date on which the inventor(s) made the invention. Thus, an inventor could avoid at least some prior art by proving an invention date earlier than the filing date of the corresponding patent application. Furthermore, some acts and information that would otherwise qualify as prior art were excluded from the prior art on account of the date or geographical location of their occurrence.

Under the AIA, the following changes to each of these aspects of the prior art will take effect on March 16, 2013. The AIA will eliminate an inventor’s ability to rely on an invention date earlier than his earliest patent application filing date. It will remove geographical restrictions on prior art information. And it will effectively eliminate the one-year grace period previously provided under U.S. patent law for excluding certain information and acts from the prior art. 

The grace period will technically remain available to disqualify prior art in limited circumstances. Those circumstances relate generally to nonpatent disclosures made by the inventor(s) and by others who derive the disclosed information from the inventor(s). Significant details remain unresolved (pending Patent Office rule-making and judicial interpretation of the AIA) regarding the types and quality of inventor-made disclosures that will satisfy the grace-period requirements. Also, the grace-period requirements for disclosures made by non-inventors will likely be difficult and expensive for inventors to prove.  In short, it would be unwise to believe that acts and information adverse to patentability can reliably be excluded from the prior art by grace-period exclusions from the AIA. Instead, innovators should alter their behavior to avoid the expanded prior art after the AIA changes are implemented.

What this means in a practical sense is that innovators should carefully assess protection for their potential U.S. patent rights before foreseeable prior art is created—especially after the March 16, 2013, date on which the universe of prior art is expanded by the AIA. For example, situations in which it can be appropriate to consider or reconsider the sufficiency of current patent protection include: innovative subject matter has been recently conceived or successfully tested; others are developing similar subject matter; innovative technical subject matter will be disclosed to someone (e.g., a potential collaborator, a customer, a noninventor employee, an investor) not having a strong, vested interest in maintaining its secrecy; a sale or an offer to sell may be made for an innovative product or service; a competitor may have enough information about your development plans to prospectively prepare an “offensive” public disclosure that will preclude patenting by you.

The AIA will increase the frequency with which innovators need to consider the adequacy of their patent protection.  The AIA will also likely require earlier and more frequent patent filings to prevent unintended surrender of proprietary rights in innovative technologies. 

Innovators should work with their patent counsel to develop and implement ways to assess threats to potential patent rights and procedures for securing them.  In view of the likely increase in the frequency of patent filings, innovators and their counsel should also seek patenting strategies that minimize cost and disruption to other business activities.

Author: Gary D. Colby
Patent Attorney, Dilworth Paxson LLP
(215) 575-7075