The America Invents Act (AIA) is poised to make the most significant changes to the examination of U.S. patent applications in more than 50 years. While certain provisions of the AIA became effective in November 2011, the most significant changes to the fundamentals of patentability will not take effect until March 2013. At this point, the U.S. will change from a first-to-invent system to a first-inventor-to-file system.
In addition to changing the focus from inventorship to filing date, the AIA also makes some significant changes to the U.S. grace period, the period during which certain actions that might otherwise render an invention unpatentable or invalid are permitted. While the new grace period will be effective for applications with a filing date after March 2013, because the grace period extends back one year from the filing date, now is the time to consider whether the changes to the grace period should be altering your internal practices and policies.
Because of the changes made to the grace period by the AIA, the above provision may obtain the right information but send the wrong message. Instead, the company may wish to send the message that filing should be encouraged before commercial activity, even in the U.S., because the grace period no longer addresses both the inventor’s and third parties’ disclosures, but only the inventor’s disclosure and the disclosures of others directly related to him or her by disclosure or control. The company may also wish to encourage early disclosure and filing because of a third party’s public disclosure can terminate the inventor’s grace period.
Still, because the AIA provides a grace period and because not every disclosure will be vetted prior to commercial activity (regardless of the company’s aspirations), the company may wish to include some mention of the grace period so that disclosures are routed to a vetting committee for consideration even when pre-filing commercialization has occurred. Thus, the committee may consider keeping the provision, but editing it to emphasize the importance of speedy disclosure in all instances because of new limitations on the grace period.