America Invents Act: New Section 102
One of the major changes to US patent law in the America Invents Act is the change to § 102. The new subsection (a) reads as follows:
(a) 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.
This new subsection greatly expands the prior art available for use against a patent or application. First, subsection (1) eliminates the grace period (subject to subsection (b)’s limited exceptions). A patent is not available if the invention was patented, described in a publication, in public use, on sale, or otherwise available to the public before the effective filing date of the application. No longer is there a distinction between activities conducted “in this country” or “in this or a foreign country.” Any public disclosure anywhere will negate the ability to obtain a patent.
Provisions of the Act that will likely affect individual inventors, small businesses, and start-ups.
The First Inventor to File (FITF) provisions transition the U.S. to a first-inventor-to-file system from a first-to-invent system
In general, the Act expands the pool of prior art references available to the Examiner to reject the invention:
– the date when an invention was conceived becomes mostly irrelevant (the inventor cannot use it no longer to overcome the prior art)
-public use or on sale is no longer limited to US only
-the one who files first wins,
BUT to counterbalance this potentially harmful for the inventor situation and to prevent fraud (inventor disclosed his/her invention to another person who rushed to the Patent Office and filed it first), the Act provides for a 1 year grace period that gives the applicant/inventor an opportunity to overcome the rejection
From the USPTO site: specifically, prior art disclosures made publicly available one year or less before the effective filing date can be overcome by applicant showing (1) the prior art disclosure was by another who obtained the disclosed subject matter from the applicant (a deriver), see 102(b)(1)(A), or (2) the applicant or a deriver publicly disclosed the subject matter before the date of the prior art disclosure, see 102(b)(1)(B).
From the USPTO site:
Establishment of a micro entity, which gives a 75% discount on fees (a small entity status gives a 50% discount on fees)
– a micro entity is an applicant who certifies that he/she:
- Qualifies as a small entity;
- Has not been named as an inventor on more than 4 previously filed patent applications;
- Did not, in the calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding 3 times the median household income; and
- Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income
When applying the micro-entity definition, applicants are not considered to be named on a previously-filed application if he/she has assigned, or is obligated to assign, ownership rights as a result of previous employment. The definition includes applicants who are employed by an institute of higher education (as defined in 20 U.S.C. 1001(a)) and have assigned, or are obligated to assign, ownership to that institute of higher education.