Author: Michael Blake

Is there still a 1 year grace period under the AIA?

I have heard some people say that there is no longer a 1 year grace period under the America Invents Act. The currently enacted 35 USC Section 102 states in relevant part:
“35 USC § 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
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or aFILING 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
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor…”pplication, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(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
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor…”
In fact, if “disclosure”, as some have suggested, doesn’t mean “on sale” or “public use”, then it also should not mean the other prior art listed in 102(a)(1), namely: “described in a printed publication”, or in “public use”, or “otherwise available to the public”. And if that is the case, what is left for “disclosure” to mean? Almost nothing. Thus, it is my view that there is still a 1 year grace period for when an inventor publicly discloses his invention, or offers his invention for sale, or otherwise makes a public disclosure of his invention. Of course, there has been no cases directly on point since the AIA was enacted in 2011.

Inventor’s Association of Connecticut Meeting on April 26, 2016

On April 26, 2016 at 7 pm at Fairfield University, IACT presents Frank Morse talking about Valuing Start-up & Early Stage Companies: Art or Science. Frank currently serves on the state board of Crossroads Venture Group and has served on the boards of several Connecticut based companies. More information can be seen here. This is a good opportunity for inventors to meet other inventors.

Patent Attorney Conflicts Issue Decided by MASS Supreme Court

The supreme court of Massachusetts decided in December of 2015 that just because a firm represented two competitors in patent preparation and prosecution in the same technological area before the USPTO, that that alone does not arise to a conflict of interest. The case is called CHRIS E. MALING vs. FINNEGAN, HENDERSON, FARABOW, GARRETT&DUNNER, LLP, & others and can be found by doing a search for “Maling” here.

As stated by the court on page 9:
“Maling advocates for a broad interpretation of rule 1.7 that would render all subject matter conflicts actionable, per se violations. We disagree. We conclude that although subject matter conflicts in patent prosecutions often may present a number of potential legal, ethical, and practical problems for lawyers and their clients, they do not, standing alone, constitute an actionable conflict of interest that violates rule 1.7.”

Also, at page 14: “Maling’s conclusory allegations as to the high degree of similarity between his device and the Masunaga device are contradicted by his acknowledgment elsewhere in the complaint that patents issued for both his applications and the Masunaga applications. Although Maling alleges that the Masunaga and Maling applications are “similar . . . in many important respects,” he does not allege that the claims are identical or obvious variants of each other such that the claims in one application would necessarily preclude claims contained in the other.”

The underlined part above is the important take away as to what might constitute an actionable conflict, that is a conflict may exist when preparing or prosecuting patent applications for different clients when the “claims are identical or obvious variants of each other such that the claims in one application would necessarily preclude claims contained in the other”.