Patent Reform Should Preserve a Real 1 Year Grace Period

Presumably at some point the debate over health care will be over.  Either the government will radically reform health care, or they won’t.  While it is impossible to know for sure when the debate will be over, it does seem as if there is a light at the end of the tunnel.  Whether that light is a train or not remains to be seen, of course.  Within the next few days, few weeks or few months Congress will be released to consider other issues.  Whether they actually will actually get anything done between whenever health care passes or fails and the November 2010 elections is likewise questionable, and remains to be seen.  But one of the things that is seemingly on the horizon is consideration of patent reform, which itself has become a constant, nagging and unresolvable issue that has bogged down Congress for at least 5 years now.  As I continue to review the pending patent reform legislation there are questions that I have, and changes that I would like made to the pending bill.  So with the belief that sooner or later Congress will turn to patent reform, I present some of my thoughts on key changes that needs to be made to S. 515.

First, as I have explained repeatedly over the last 4 months, there is no reason to fear a first inventor to file system.  In practical effect we already have a first inventor to file system.  On top of that, the ones typically viewed as benefiting from the current first to invent system realistically could never benefit from such a system.  To prevail as the first to invent and second to file you must prevail in an Interference proceeding, and according to 2005 data from the AIPLA the average cost through an interference is over $600,000.  So lets not kid ourselves, the first to invent system cannot be used by independent inventors in any real, logical or intellectually honest way.  So it is largely a “feel good” approach to patents where the underdog at least has a chance, if they happen to have $600,000 in disposable income to invest on the crap-shoot that is an Interference proceeding.

Having said this, there is absolutely no reason why we cannot change from a first to invent system to a first inventor to file system that would still retain a real and substantial grace period and still retain the right for patent applicants to swear behind references to demonstrate an earlier date of invention, at least with respect to pieces of prior art that are not the progeny of earlier filed patent applications.  So the currently proposed revisions to 102 need to be amended prior to passage of S. 515.

As it stands now, the currently proposed 102 in S. 515 says, in relevant part:

§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.

The trouble here is that 102(a)(1) sets up an absolute novelty provision that says you must file your patent application prior to it being disclosed in a printed publication, in public use, on sale or otherwise available to the public.  Lets save for now that what is “otherwise available to the public” is horribly ambiguous and could mean virtually anything, and that the long line of cases interpreting the current 102(a) law regarding what suffices for “knowledge” likely would not apply.  As written the proposed 102(a) does not set up a first inventor to file system, but rather sets up a pure first to file system that would result in a race to the Patent Office.  It would harmonize US law with the laws of the rest of the world, but such a substantial change in US law would not be justified in my opinion.

Looking at the proposed 102(b), it becomes clear to me that there is an effort to morph what in (a)(1) is a first to file approach and turn it into a first inventor to file system.  The proposed 102(b) seeks to eliminate from the universe of prior art disclosures made by the inventor or which owe their substance to the inventor.  So if the inventor discloses his or her invention less than a year before filing  a patent application the patent can still be awarded.  If someone learns of the invention from the inventor and discloses less than a year before filing a patent application, the patent can likewise still be awarded.  What is notably missing here are several things.  First, a definition for “disclosure.”  Second, an exception that applies to third-party activities within 1 year of filing.  So the grace period set up by proposed 102(b) excepts disclosures (whatever they are) made by or through an inventor less than 1 year before the inventor files, but does not extend to disclosures (whatever they are) made by others less than 1 year before the inventor files.  This is a substantial departure from the current law of novelty, and not a good one.

Under the current 102(b), a patent applicant is entitled to a patent unless —

the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States…

Under current 102(b) an inventor can create their own bar to patentability as a result of activity such as publication, public use in the US or sale in the US if it occurs more than 1 year before a US patent application is filed.  A bar can likewise be created if a third party, either known or unknown to the inventor, engages in the same activity more than one year before a US patent application is filed.  What this necessarily means, and has long been interpreted to mean, is that a patent can be awarded so long as the invention has not been patented, published, on public use in the US or on sale in the US for more than 1 year.  The current 102(b) provides a solid grace period that applies across the board, the proposed 102(b) does not.

I have long written and explained that under the current 102(b) you should not assume the existence of a full 1 year grace period because activities by others unknown to you can start the 1 year clock running without you ever knowing, so you are better off to file earlier rather than later.  Without a grace period of any kind relative to third party activities under the proposed 102(b) we might as well not have any grace period whatsoever.  It would be enormously naive for inventors, whether they are independent inventors or those employed by corporations, to do anything other than race to the Patent Office.  If the publication, public use or sale by a third party even 1 day before filing would prevent a patent from issuing that is, for all intents and purposes, an absolute novelty provision.  No inventor could or should ever assume that as long as THEY have not disclosed they are safe.  That is the exact downfall of relying on current 102(b) and it becomes exceedingly exaggerated under the proposed 102(b).

There are many who think this carving out of a grace period relative to third-party activities was intentional, and when USPTO Director David Kappos talks about the new system as a “first inventor to file system” he is being disingenuous.  I don’t think that is the case.  In reading the proposed 102(b) it seems that what is happening is there is great concern with respect to a major fear on the part of independent inventors, namely that someone else will learn of their invention and win the race to the Patent Office, thereby obtaining the exclusive rights in their invention.  That cannot happen today thanks to 102(f), and that couldn’t happen under the proposed changes in S. 515, which is indeed very good.  In reading the proposed 102(b) it seems to me that so much focus was placed on addressing this concern that it overwhelmed the exception and obfuscated the simplicity of an across the board grace period.

Independent inventors are rightly concerned about whether they will be able to enjoy a grace period relative to third party activities.  They are rightly concerned to wonder whether the term “disclosure” in 102(b) would mean that the exception applied to their own public use or sale activities, which is anything but clear.  Inventors are also rightly concerned about whether they will be able to swear behind and prove prior inventorship relative to prior art not associated with an earlier filed patent application.  In short, I see no reason why we cannot have a first inventor to file system that does away with Interference proceedings, awards patents to the first inventor who files a patent application but which also preserves a 12 month, across the board grace period.

The goal of the patent system is to encourage disclosure and reward those who disclose in an enabling manner their inventions.  Those who do not seek patent protection and thereby disclose their inventions in an ordered fashion, which will be archivable and searchable, should not be able to prevent the awarding of a patent to one who has contributed to the database of knowledge through adequate description in a US patent application.  If the proposed 102(b) is not fixed one way that corporate America could manipulate the system to the disadvantage of independent inventors is by extreme defensive publication.  That would be bad for independent inventors and bad for the US economy.

To fix the proposed 102 the following should be done:

• Define “disclosure” to make clear that any exception to absolute novelty applies to prior patents, printed publications, public use and sale activities.  This is in keeping with current law and does not need to be changed for there to be a first inventor to file system.
• Define “otherwise available” or delete it from 102(a).  My preference would be to delete it from 102(a) because it seems to suggest that mere knowledge anywhere in the world prior to the filing of a US patent application would prevent patentability.  Presently, mere knowledge is enough to defeat patentability only if it is knowledge in the US prior to the date of invention by the inventor.  As written, this likely would be interpreted to be a substantial departure from current law, and one that would lead to far fewer patents and much easier challenge for invalidity.
• Combine 102(a) and 102(b) to say that an patent applicant is entitled to a patent provided they are the first inventor to file and further provided that the invention was the invention was not patented or described in a printed publication anywhere in the world, or in public use or on sale in the US, more than one year prior to the date of the application for patent in the United States.  This would eliminate interferences, but not create a race to the Patent Office.  It would allow for patent applicants to swear behind prior art other than an earlier filed US patent application covering the same invention.  That is what we have been told was the goal of reform, I believe it is the goal and modifying the language so that it is actually the law seems appropriate.