Author(s): Robert P. Merges
Year: 2012
Abstract:
The Leahy-Smith America Invents Act of 2011, Pub. L. No. 112-29, 125
Stat. 284 (2011) (“AIA”) radically transforms some of the most basic
rules in the U.S. patent system. For many inventors and patent owners
the most important changes center on priority and novelty. Practitioners
working under the new rules will need to understand three basic issues
to be most helpful to their clients. These are: (1) the critical date
for most purposes is now the date that a patent application is first
filed; (2) the prior art relevant to a given patent claim now consists
of all references available under the statute prior to the filing date;
and (3) priority contests between rival claimants to an invention will
now be determined almost exclusively by looking to when each of the
rivals filed their patent application. The discussion that follows
elaborates a bit on these basic principles, and describes in general
terms how they compare to the basic operating rules that pertain to the
old, 1952 Act, system of priority and novelty.
I begin with a
brief explanation of the overall structure of the AIA’s novelty
provisions. I then consider the related yet distinct concepts of novelty
and priority, and explain how the AIA changes the basic parameters of
both these fundamental issues. I pay particular attention to two new
statutory issues — the definition of “disclosure” and the creation of a
“grace period” within which inventors can file a patent application. I
explain a number of detailed aspects of the new rules, including: (1)
why “disclosure” should be read as a general reference to all prior art
references; (2) why this means that existing case law under the 1952 on
public use and on sale activities continues in effect under the AIA
(i.e., why the AIA does not overrule cases such as Metallizing
Engineering); and (3) how to interpret the phrase “publicly disclosed”
in the grace period part of the new statute, as distinct from
“disclosure” generally. I conclude with some observations, sparked by
the AIA, on continuity and change in the patent system.
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