14 October 2011
Currently, you have one year from the date of certain events to file for a US patent. This one year is commonly called the “one year grace period”. The events include: 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.
Under the America Invents Act, on March 16, 2013, there will no longer be a grace period for public use or commercial activities such as sales or offers for sale.
The removal of this grace period is part of the upcoming transition from a first-to-invent system to a first-to-file system. Under the current first-to-invent system, if two inventors file patent applications for the same invention, the person who invented first is the one entitled to a patent, regardless of when the two inventors filed their patent applications. Under the first-to-file system, the invention date will no longer control. Instead, the inventor who filed a patent application first will be the one entitled to the patent.
There will be some exceptions for disclosures by the inventor or one who obtained the subject matter disclosed directly or indirectly from the inventor within one year prior to the application’s filing date. These exceptions will be discussed in a later post.
Commentary by author: Even though March 16, 2013 seems far away, we do not know yet the details of how the transition will occur. For example, what if you have a public use or commercial activity between March 16, 2012 and March 16, 2013? If you file after March 16, 2013 but within a year of your public use/commercial activity, do you or don’t you still have your one year grace period? The plain language of the new statute suggests that you don’t. In short, starting March 16, 2012, keep an eye on your public uses and commercial activities. You may not have your full one year grace period and will need to file for patent protection before March 16, 2013.