Summary
On April 14, 2015, the House of Representatives introduced a bill to amend the pre-filing grace period provisions of the America Invents Act (AIA). The bill, entitled "Grace Period Restoration Act of 2015" (H.R. 1791), proposes to clarify the standard for determining whether a third-party disclosure subsequent to an inventor disclosure eliminates the grace period. If enacted, the effect of the legislation will be important to inventors and applicants who make an early disclosure of an invention and rely on a one-year grace period to decide whether to pursue patent protection for the invention. In addition, the USPTO has updated its software for calculating patent term adjustment when an initial deadline falls over the weekend.
Legislation Introduced in the House Proposes to Eliminate Uncertainty in AIA Grace Period
Under the AIA, certain disclosures made one year or less before the effective filing date of a claimed invention (the "grace period") do not qualify as prior art. Within the grace period, an inventor disclosure (i.e., a disclosure traceable to the inventor) is not prior art. Also, a third party disclosure within the grace period is not prior art if the disclosed subject matter was previously in an inventor disclosure. However, the standard for determining whether the third party disclosed subject matter previously disclosed in the inventor disclosure is uncertain. For example, it is unclear whether a third party’s publication of a modified version of the inventor disclosure is considered prior art that abolishes the grace period.
The bill proposes to clarify the standard by specifying that any disclosure subsequent to an inventor disclosure made within the grace period is not prior art, so long as the inventor disclosure (a) publicly discloses the claimed invention in a printed publication, and (b) satisfies written description and enablement requirements. Thus, under the proposed AIA amendment, if the inventors publish the claimed invention in a manner satisfying written description and enablement requirements, applicants are "immunized" against any subsequent disclosures that may defeat the grace period.
Changes to USPTO Patent Term Adjustment Algorithm
The United States Patent and Trademark Office (USPTO) has finally updated its software for calculating patent term adjustment when an initial deadline falls over the weekend. The USPTO’s rules penalizing applicants for waiting until the next business day to file a response were overruled in ArQule v. Kappos in 2011, but securing the budget to actually change the software took a few years longer.
The USPTO’s algorithm takes a fairly patentee-friendly approach by delaying the start of the "Applicant delay" until the next business day after the initial deadline. For example, if an initial response is due on Friday, January 1 and a response is filed on February 1, the Office will only reduce PTA by the period between Monday January 4 and February 1 (as opposed to January 1 to February 1).
View Document(s):
