Grace Periods – Not Always So Graceful

Generally, an inventor is barred from obtaining patent protection on an invention if the 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 [(“disclosed”)].” 35 U.S.C. §102(a)(1). However, U.S. patent law provides an inventor with a one-year “grace period” in which they may still be eligible for patent protection for an invention disclosed before the filing of a patent application. A disclosure made within a year of the claimed invention’s effective filing date will not be considered prior art to the claimed invention if:

(1) “The disclosure was made by the inventor or joint inventor or another party who obtained the subject matter disclosed either directly or indirectly from an inventor or joint inventor; or

(2) The subject matter had been previously publicly disclosed by the inventor or joint inventor or a third party who obtained the subject matter either directly or indirectly from the inventor or joint inventor before such disclosure was made.” 35 U.S.C. §102(b).

Inventors who publish the results of their work before filing a patent application on their invention often breathe a sigh of relief upon learning about the grace period. However, while the grace period seems straightforward, three overlooked issues may curtail the graciousness of the grace period:

  1. Publications Naming More Authors than Inventors Listed in the Patent Application
    Typically, an academic publication will name numerous authors, all of whom may or may not appear as joint inventors on the resulting patent application. Having a different number of authors on the publication than inventors named in the subsequent patent application may pose an issue during patent prosecution.If a publication made within the one-year grace period names less authors than joint inventors listed on the subsequent patent application, the Patent Office considers it to be “apparent that the disclosure is a grace period inventor disclosure, and the publication would not be considered prior art under 35 U.S.C. 102(a)(1).” MPEP 2153.01(a). However, if the publication names more authors than joint inventors listed in the subsequent patent application, the Patent Office holds that “it would not be readily apparent from the publication that it is by the inventor or a joint inventor and the publication would be treated as prior art under 35 U.S.C. 102(a)(1).” MPEP 2153.01(a).This significant distinction is not present in the text of the statute, and is often unknown by inventors. The Patent Office considers a publication made by an inventor or joint inventors within one year of the filing date of the subsequent patent application, which lists more authors than inventors on the subsequent patent application, to be prior art that can be used against the patent application and possibly prevent the grant of patent rights.To overcome this prohibition, the inventor or joint inventors must submit an “’unequivocal’ statement that the inventor or joint inventors invented the subject matter of the [publication], accompanied by a reasonable explanation of the presence of additional authors.” MPEP 2155.01.
  2. Publications Prior to Filing a Patent Application that Disclose a Species of the InventionSimilar to the classification of organisms, patents can be classified generally by their genus, and more specifically by their species. If the prior art discloses a species of an invention that falls within the genus claimed by the patent applicant, the more generic claim to a genus in the application will not be allowed. MPEP 2131.02.With respect to inventor publications made within the one-year grace period, and before the filing date of a patent application, both the law and Patent Office guidance are unclear as to whether a prior disclosure of a species on an invention will prohibit patent claims to the genus of the same invention. For many inventors, the loss of their ability to claim a more generic genus of their invention can significantly impact the commercial value of their invention.
  3. Scope of the Grace Period – Loss of Foreign Patent RightsWhile the grace period preserves an inventor’s rights to their invention for disclosures made within one year of the effective filing date of the resulting patent application, inventors often misunderstand the scope of the rights preserved by the grace period. The grace period only preserves an inventor’s right of priority to their invention within the United States for disclosures made before a patent application is filed. In many foreign jurisdictions, disclosing an invention before filing for patent protection prevents the inventor from later filing for patent rights. Loss of foreign patent rights may also significantly decrease the commercial value of an invention.These issues highlight how the minutiae of the patent law, which is often overlooked by inventors, may present challenges to gaining patent rights. Therefore, the ambitious inventor should consider and understand the consequences of disclosing their invention before filing a patent application.More often than not, it benefits inventors to file for a patent application before publishing their work, in order to fully preserve their patent rights in the United States and abroad.

To learn more about disclosure, attend To Kill a Patent Right. A 1 hour seminar presented by the Center for Research Innovation that explains how properly timed public disclosure and clearly delineated inventorship maximizes patent rights.

Northeastern Innovators: disclose your inventions to the Center for Research Innovation via the Invention Disclosure Form. To discuss disclosing your invention or to obtain further information about the disclosure process, please contact the CRI.


Credits
Written by Roger McLaughlin
Photo by ricafranca. All rights reserved.

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