IP: An uneasy state of grace under the AIA

The AIA’s one-year grace period means now is the time to familiarize yourself with the first-inventor-to-file system

When the America Invents Act (AIA) was signed into law in the fall of 2011, only a small number of the provisions became effective immediately. Many of the provisions, including those addressing the new and revamped administrative trials within the U.S. Patent and Trademark Office (PTO), will only come into effect this fall. Perhaps the AIA’s most fundamental change to the U.S. patent system, shifting it from a first-to-invent system to a first-inventor-to-file system, will not become effective until spring 2013.

One thing that the shift from first-to-invent to first-inventor-to-file did not change is the existence of a “grace period.” Under a grace period, certain actions that might otherwise render an invention unpatentable or invalid do not, if they occurred within a set period of time prior to the filing date of the application. The AIA adopts a one-year grace period.

As I have indicated in the past, however, the devil is frequently in the details of the AIA. As little as a single word may tip the balance.

It has been argued by some that an inventor’s public uses and on-sale activity may not be included in the inventor’s excepted disclosures. As such, the inventor’s public use or on-sale activity may threaten the patentability or validity of the invention, even if the inventor files his or her application within one year of the public use or on-sale activity. If this position is adopted by the PTO and the courts, a significant hole may exist in the new grace period.

Contributing Author

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Paul Craane

Paul Craane is a partner at Marshall, Gerstein & Borun LLP in Chicago, Illinois. For nearly twenty years, Paul has been prosecuting patent...

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