Posts Tagged: "invention disclosures"

Many people situated variously within and outside of the patent system of the United States urged the adoption of first-to-file. There are, however, many questions about the scope and possible impact of the AIA. Exactly how it will all play out remains to be seen. A significant question is what will be the likely impact of the AIA upon the operations of the USPTO, an organization that has been so greatly over-burdened in recent times. Anyone interested in reading this is likely old enough to have heard the old saying “Be careful what you wish for – you may get it.” Now we have it.

If (B) gives a blanket exclusion to subject matter, which cannot be used as prior art after a disclosure by an inventor, that would lead to nearly ridiculous results. Imagine for example that an inventor discloses a specific embodiment of a coffee cup and then subsequently another who did not derive independently comes up with and discloses a coffee cup with a lid. If (B) does more than relate to a personal grace-period the subsequent disclosure could not be used against the first to publish inventor as prior art because it relates to the same “subject matter.” That would mean that the inventor could incorporate the cup and the lid into his/her patent application and obtain claims. You might be tempted to say that is impossible, but if the cup with the lid is not prior art then under what rationale could an examiner issue a good rejection? This would lead to results that turn the patent system upside down, and was clear evidence to me that those arguing that 102(b)(1)(B) excluded out subsequent independently disclosed inventions was fanciful at best.

During fiscal year 2009, 596 new companies were formed as a result of university research, which is one more than the 595 formed in 2008 and 41 more than the 555 formed in 2007. The increase, while modest, does come despite a downturn in the U.S. and global economy, proving that even during a down economy good technology and innovation can and does create jobs. The AUTM survey also shows that invention disclosures continue to rise, patent applications are up, and during fiscal year 2009 there was a surprisingly high increase in foreign filings over fiscal year 2008.