The U.S. Senate has now passed its new patent bill, S. 23. Numerous comments have been made, particularly about the first-to-file revisions of this law. However, no one is commenting on the effect of the following clauses in amended section 102:
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a) (1) if–
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
Subparagraph (B) has the following result: If you disclose your invention to the public, or more precisely if the subject matter of your later patent application has been previously “publicly disclosed”, then you effectively have established your US filing date.
This is an unusual provision in patent law, indeed unique. But it appears to be good policy. It’s true; anyone relying on this provision would lose their rights in Europe. But if an inadvertent disclosure were to occur as through a public use or a public presentation, then if that disclosure meets the requirements of this section, the applicant would have thereby locked-in their right to obtain a US patent. This would be true, of course, only so long as they do not otherwise violate the one-year deadline to file based their own personal disclosures which have made the invention available to the public. This assumes, as well, that there has been no prior disclosure by a third-party.
This provision repairs a flaw in the present Canadian law. Under the Canadian patent statute, an inventor who puts his invention on the market and relies on the one-year grace period before filing in Canada, can still lose his patent rights if an independent inventor makes the invention “available to the public” before the inventor has filed his patent application. In other words, it’s still a “race to the patent office” as between strangers in Canada.
The exception of Section 102(b)(1)(B) provides relief from that pressure. Effectively, publicly disclosing your invention will shield any application from after-arising prior art. This is equivalent to obtaining a filing date.
Another way to look at the exception is that it provides a presumption that anyone who subsequently publishes an invention is assumed to have acquired knowledge of the invention from the inventor. This would bring such a disclosure within the scope of Section 102(b)(1)(A). This Section 102(b)(1)(A) is the classic Canadian pioneered “one-year inventor originating grace period”.
While this section may be good policy, it may still have a flaw that could be corrected before the House.
What does “publicly disclosed” mean? The main novelty provision of section 102 uses the expression “available to the public” to characterize fatal prior art. This has been interpreted in Europe and Canada as requiring that a prior disclosure must be “enabling” in order to be effective as prior art. If a tractor is driven around town but doesn’t make the invention understandable, then this enablement requirement means that the invention has not been made “available to the public”. Will the same requirement of enablement be imported into the expression “publicly disclosed”?
This uncertainty could be dispelled if, before the House, the bill where amended as follows:
102(b)(1)(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor so as to make the invention available to the public.
On the other hand, the legislators may not wish to commit to such an interpretation. Perhaps they want the Courts to resolve this issue rather than take the responsibility themselves.
To make the amendment proposed would raise the standard required when something is “publicly disclosed” in order for such an event to serve as a shield against after-arising prior art. Perhaps the legislators do not want to be the ones that stipulate for an increase standard.
Under the existing law, once a conception of an invention has occurred and the invention has been reduced to practice, (including reduction to practice under confidential circumstances), the inventor does not have to make a public disclosure that arises to the standard of being “enabling”. He/she can delay filing up to the limit that the invention has not been suppressed or abandoned. A delay of one year is probably not unreasonable if it fits within the statutory one-year grace period.
Under this new provision of section 102(b)(1)(B), the sheltering of the invention will live or die according to whether an invention has been “publicly disclosed” to the standard that the law requires.
To clarify or not to clarify, that is the dilemma that the House must face in reviewing its equivalent to S. 23.