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Tag Archives: Grace Period

First To File Practice: An Alternative Interpretation Of The Grace Period Shielding Disclosure Exception

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

I was honored to participate in the USPTO’s First-Inventor-To-File Roundtable yesterday (September 6, 2012). One issue raised by several speakers was the USPTO’s proposed requirements for invoking what I refer to as the “grace period shielding disclosure” exception to prior art under the first-to-file provisions of the America Invents Act (“AIA”). In a previous article I highlighted the USPTO’s controversial interpretation set forth in the USPTO’s proposed examination guidelines. Here, I offer an alternative interpretation of 35 USC § 102(b)(1)(B). Continue reading this entry

First To File Practice: Grace Period Shielding Disclosures

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

This is the third article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art, and the proposed requirements for invoking the “grace period non-inventor disclosure” exception to prior art. Here, I look at the proposed requirements for invoking what I refer to as the “grace period shielding disclosure” exception to prior art.Continue reading this entry

First To File Practice: Grace Period Non-Inventor Disclosures

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

This is the second article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, and the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art. Here, I look at the proposed requirements for invoking what the USPTO refers to as the “grace period non-inventor disclosure” exception to prior art. Continue reading this entry

First To File Practice: Grace Period Inventor Disclosures

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; USPTO Proposed Rule Changes

This is the first article in my First-To-File Friday series. On each Friday in August, I will publish an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules and the proposed examination guidelines. Here, I turn my attention to the specific requirements (as proposed) for invoking the “grace period inventor disclosure” exception to prior art. Continue reading this entry

Will Any Patent Application Be Better Off Under The America Invents Act?

Posted by Courtenay Brinckerhoff on Posted in 102; Patent Reform

The changes to 35 USC § 102 embodied in the America Invents Act (AIA) take effect on March 16, 2013, under complicated effective date provisions. The general consensus seems to be that applicants should try to file new applications before the law changes, because (for example) applications filed under the new law will be subject to a broader definition of prior art and will lose the ability to swear behind certain prior art by proving an earlier date of invention. Moreover, patents granted from such applications will be subject to challenge under the new post-grant review provisions.

In counseling clients on how to prepare for the impact of patent reform, I’ve been trying to identify situations where an application might be better off under the new law. So far, only one scenario comes to mind–an application threatened by an inventor-based disclosure that was made before a foreign priority date.

Continue reading this entry