All member countries of the Paris Convention and the PCT approve the novelty of an invention claimed in the patent application going back to the priority date in the origin country. Therefore, as to the novelty of a claimed invention, all member countries treat foreign and domestic patent applications equally. Still, the member countries’ treatment of the “grace period” poses a serious issue: no patent law in any country recognizes the grace period as starting from the priority date, but only from the domestic filing date.
Thus, if a U.S. inventor publishes his invention, files a U.S. patent application within one year, and files a Japanese patent application within one year from the U.S. filing date claiming priority, he will get a U.S. patent but not a Japanese patent. This is so because the Japanese Patent Law allows a six-month grace period from the Japanese filing date, not U.S. priority date. This six-month grace period is same in the rest of world except for the United States and Korea.
The AIA broke this barrier by giving both the novelty and the grace period on an effective filing date which goes back to the original filing date, so long as there is priority claim to the original foreign application date. Thus, under AIA, both U.S. and foreign applications are completely equal with respect to both novelty and grace period.
This is extremely unusual, since no other country provides a grace period commencing from the priority date. In this respect, the AIA is the first and sole universally equal patent law in the world.
Public Disclosure Before Filing and Its Potential Abuse
There is a new unique prior art exception (grace period) under §102(b)(1)(A), (B) and (b)(2)(B) of the AIA.
If U.S. inventor A publicly discloses his invention and files a U.S. patent application within one year, his disclosure is not a prior art against his own U.S. application (for convenience, I’ll call this grace period as a standard grace period since other countries’ patent offices also have similar (six-month) grace period). Moreover, even if a third party B publicly publishes same subject matter prior to A’s patent application, or even if B files a patent application on same subject matter prior to A’s patent application, B’s subject matter disclosed in his publication or in B’s patent application is not prior art (for convenience, I’ll call this period as an absolute grace period since this is completely different from the standard grace period). Thus, U.S. inventor A can obtain a patent regardless of B’s prior act is either publication or patent application.
However, if U.S. inventor A files a foreign application within one year from the U.S. application date claiming priority, he cannot obtain a foreign patent since no foreign countries recognize a grace period from the priority date.
In contrast, a foreign inventor has a huge advantage created by the AIA. If a Japanese inventor publicly publishes an invention, files a patent application in the Japanese Patent Office within six months (the standard grace period under Japanese Patent Law), and files a U.S. application claiming priority within one year, the Japanese inventor can get a patent both in Japan and in the U.S. This is so because the AIA recognizes a grace period from the earliest effective filing date which is the priority date.
Even if the Japanese inventor publicly publishes the invention one year before his Japanese application and files a U.S. application within one year from the Japanese filing date, the Japanese inventor can still get a U.S. patent although he cannot get a Japanese patent due to his own publication.
Thus, a Japanese inventor or an inventor in any other foreign country can publicly disclose his invention almost two years before the U.S. filing date! As such, the AIA works better for a foreign applicant than for a U.S applicant.
Moreover, the prior art exception under AIA §102(b)(1)(A), (B) and (b)(2)(B), does not specify languages for the public disclosure. Suppose an inventor A in a remote foreign country publicly discloses an invention in an unusual foreign language, files a patent application in his county within one year, and files a U.S. application claiming priority within one year, the foreign inventor A can get a U.S. patent by removing as prior art a third party’s disclosure or U.S. patent application concerning the same subject matter disclosed which was filed immediately after the foreign inventor A’s public disclosure. The foreign inventor A’s U.S. patent application may be filed almost two years from the foreign inventor A’s public disclosure.
And it is quite possible that someone in a remote foreign country might try to abuse this prior art exception.
There is a further unique advantage by foreign inventors. Suppose a foreign inventor files a foreign application but not files a U.S. application for some reasons. The foreign application will be published as a laid-open publication after 18 months of the filing. Then, the foreign inventor all of sudden changed his mind and files a U.S. application within one year from the laid-open publication. Will the laid-open publication be given the absolute grace period by excluding subsequent third party’s disclosure or a U.S. patent application? Since the Federal Court traditionally treats the foreign patent publication as an inventor’s own publication for the purpose of pre-AIA §102 (b), it appears it is quite likely so.
Potential Conflict with Paris Convention
As explained above, under AIA §102(b)(2)(B), once a foreign inventor publishes a subject matter, due to the absolute grace period, he can exclude subsequent U.S. patent application describing same subject matter for almost two years. It seems that he can extend priority date for almost two years, perhaps conflicting with Paris Convention Article 11 which defines as follows:
(1) The countries of the Union shall, in conformity with their domestic legislation, grant temporary protection (Authors’ note: grace period) to patentable inventions, utility models, industrial designs, and trademarks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them.
(2) Such temporary protection shall not extend the periods provided by Article A (Authors’ note: one year priority period). If, later, the right of priority is invoked, the authorities of any country may provide that the period shall start from the date of introduction of the goods into the exhibition.
Article 11 (1) allows the Union countries to provide temporary protector, i.e., a grace period, however, (2) also requires that it shall not extend one year priority period as defined in Article 4.
AIA §102 (b)(2)(B)provides not just a standard grace period but the absolute grace period on the foreign filing date since the foreign investor’s public disclosures exclude subsequent U.S. application for almost two years.
Although Paris Convention Article 4 and 11 depict a particular situation in which an inventor disclosed his invention in an exhibition and then files a patent application, it is still covered by AIA §102 (b)(2)(B), and whether or not AIA §102 (b)(2)(B) conflicts with Paris Convention Articles 4 and 11 is a future question for the Federal courts.
Hybrid Patent Law
AIA is a first-to-file system if an inventor files a patent application without disclosing his invention prior to filing the patent application since a patent is granted to the applicant who has filed the patent application having the earliest effective filing date.
However, due to the absolute grace period, AIA has essentially the nature of a first-to-publish or even first-to-invent aspect since the publication date can often be the invention date.
The USPTO publishes an examination guideline which states that the subject matter the inventor published must be identical to the subject matter disclosed by the third party to mitigate the first-to-publish effect. More precisely, it proposes that if there is “insubstantial change, or only trivial or obvious variation” in the two subject matters, the exception does not apply. Some say that, in order to apply §102(b)(1)(B), not only must the subject matter be identical, but also the disclosures (the way how the subject matter is published) must be identical as well.
I believe this is wrong in view of §102(b)(1)(B). Section 102(b)(2)(B) concerns the situation where a first inventor publicly published a subject matter and filed a first patent application, it excludes another inventor’s second patent application disclosing the same subject matter which was filed before the first patent application.
The USPTO also proposes in the above examination guideline that if there is “mere insubstantial change or only trivial or obvious variation” in the two subject matters, the exception does not apply. Thus, the USPTO treats §102(b)(1)(B) and (b)(2)(B) same as to the sameness between the two subject matters.
However, under §102(b)(2)(B), the first inventor’s disclosure is always different from the second inventor’s disclosure since the former is either a printed publication, or public use, or on sale while the latter is always a patent specification.
Thus, unless it is the subject matter which must be identical, §102(b)(2)(B) will never be applied. Therefore, same should be true under §102(b)(1)(B).
U.S. Patent With Priority Claim is a Strong Prior Art
Under Pre-AIA §102(e), the reference date of a U.S. patent with priority claim is the U.S. filing date unless the foreign patent application is published in English.
However, under AIA §102(d), the reference date is the earliest effective filing date which should be the foreign application date. Thus, the U.S. patents with priority claim become extremely strong prior art. This is especially so, since strict §112 is not required to the description in the foreign specification.
AIA is Tough Patent Law for the U.S. Inventors
This means that the AIA is the tough patent law for the U.S. because of the following reasons:
- U.S. applicant cannot get benefit of the standard and absolute grace periods on the earliest effective filing date in a foreign countries whereas foreign applicant can get benefit of their own standard grace period (usually six months) and complete benefit of AIA’s standard and absolute grace periods in the U.S. on the earliest effective filing date.
- U.S. patent claiming foreign priority becomes stronger prior art under AIA §102 (d); and
- Prior art of public use and on sale is now worldwide activity.
Thus, unless foreign countries adapt both standard and absolute grace period at the earliest effective filing date, U.S. applicants will get less benefit.
The big question for the U.S. is whether or not the foreign patent offices will adopt the AIA grace periods. Korea Patent Office has extended its standard grace period from six months to one year from the Korean filing date but not from the foreign priority date. No other countries have indicated thus far that it would adapt the AIA grace period.
A Big Mystery of AIA Application
The first-to-file provision of §102 will be applied to a new patent application filed on or after March 16, 2013.
AIA provides as follows:
—Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act, and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date as defined in section 100 (i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or
(B) (omitted here)
Thus, if a new application filed on or after the effective date has one claim having the effective filing date on or after the effective date, AIA § 102 is applied to the entire application. If so, AIA § 102 is also applied to other claims having the effective filing date BEFORE the effective date and how those claims will be examined?
Suppose a Japanese applicant publicly published subject matter A on June 30, 2012, filed a Japanese application claiming subject matter A on October 30, 2012, and then files a U.S. application having claims A and B respectively on March 16, 2013, claiming priority to the Japanese application.
The U.S. application is considered as AIA application because of new matter claim B. Thus, claim A is also examined under AIA § 102.
If so, will the public publication on June 30, 2012, have effects of § 102 (b)(1)(B) and (b)(2)(B)? Will it exclude third party’s disclosure of same subject matter A or U.S. application disclosing same subject matter A which was filed after June 30, 2012, but before October 30, 2012?
If AIA § 102 takes effect ONLY after the effective date, it is possible to argue that there will be no application of AIA § 102 before the effective date for any claims.
However, how can one argue that, while AIA § 102 is applied to examine the retroactive claims, but, § 102 (b)(1)(B) and (b)(2)(B) are not applied?
USPTO’s examination guideline draft does not address on this issue. This is also a question that the Federal Court should resolve.