Senate Passes America Invents Act, HR 1249
On September 8, 2011, the US Senate passed HR 1249, The America Invents Act patent reform bill, without amendment with respect to the passed House version of the Bill. President Barack Obama has already indicated that he will sign the bill into law.
The America Invents Act amends the 1952 Patent Act to change the US to a "first inventor to file" patent regime, where between two competing inventors (who have not derived their inventions from others), the first to file an application will be awarded the patent. Previously, under the "first to invent" regime, it would have been awarded to the first to conceive of the invention, who can demonstrate diligence to reduction to practice or constructive reduction to practice (patent application filing). The Act thus creates an urgency to file patent applications, with a reduction or elimination, in various cases, of a grace period.
There are many aspects of the Bill which will require judicial and administrative interpretation before fully understood.
The new section 102 (novelty) and 103 (non-obviousness) are as follows:
Sec. 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 application, 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.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if--
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
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Sec. 103. Conditions for patentability; non-obvious subject matter
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Many issues remain to be resolved, including:
35 USC 102(a)(1) includes the language "in public use, on sale, or otherwise available to the public", which may be distinct from the "disclosures" of 35 USC 102(b)(2). Therefore, activities other than mere publication or communication may constitute absolute bars to later patenting. Note that the word "disclosures" is not defined, but is likely not intended to encompass the full scope of 102(a)(1).
35 USC 103 refers to "prior art", as of the date of filing, not the date of invention. Therefore, an inventor's disclosure of its invention which contributes to the level of skill in the art, and thus the range of obviousness, could be prejudicial to patentability.
The ability to prove derivation requires jurisdiction over the purported deriver. If that deriver has not filed a patent application, but rather transforms and republishes the inventor's work before the inventor's patent application is filed, then the inventor may be denied the ability to obtain a patent.
This page is under construction.