The rules were published yesterday in the Federal Register, along with proposed examination guidelines. Those guidelines indicate how the Office has interpreted several ambiguous sections of the statute.
Most surprising was the Office’s take on what is required for third party disclosures made after an inventor’s public disclosure of his/her invention to meet the exception to the prior art rule. The guidelines indicate that “even if the only differences between the subject matter in the prior art disclosure…and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception …does not apply”.
For example, if Alexander Graham Bell published research about his invention, the telephone, on April 15, and a third-party published almost exactly the same research one week later – before Bell filed a patent application - with the exception that one “trivial” element of the handset varied from Bell’s description, Bell would presumably be barred from getting a patent on his telephone, explained Matthew Smith of Foley & Lardner.
Smith said that this interpretation of the statute “will absolutely discourage people from relying on this exception”. He added: “If I were an IP lawyer in a university tech transfer office, I would not allow my researchers to publish an important invention before a patent application is filed, even if I were only concerned with US rights.”
Jeffrey Lefstin of Hastings College of Law called this a “radical stance” by the Office in a guest post for Patently O. He wrote: “If the position in the Guidelines is sustained, the AIA’s grace period with respect to later independent third-party disclosures would seem to be nearly eviscerated.”
However, Lefstin added that most sophisticated universities are thinking globally and probably don't rely on the US grace period anyway. "It will have some effect but maybe not as much as you think," said Lefstin.
Smith said it is not clear why the Office interpreted the exception this way, but that they may simply feel it is the only correct way to read the statute.
If there is enough opposition and the Office feels its interpretation of the statute is still correct, a technical amendment may be necessary from Congress. Rumours about other possible technical amendments to the AIA have been circulating for months, but no official amendments have been announced.
Lefstin added that the Office may simply want to ensure simplicity and efficiency, although he said that goal could backfire. Instead of long, complicated arguments about how similar a disclosure has to be to meet the prior art exception, the Office would be fielding arguments from inventors about about whether the later disclosure was obtained from the inventor's earlier disclosure.
No matter what, the present interpretation is going to be “truly disappointing to the academic community”, said Smith.
The USPTO did not return Managing IP’s request for comment on the potential effects of the proposed guidance.
Questions also remain about whether so-called secret commercialisation of an invention will be a bar to patentability under the new law, which could broadly affect companies that develop and commercialise their products outside the US. “If the PTO says secret commercialisations are prior art, those companies will have to change what they’re doing,” said Smith.
Most other countries do not consider secret commercialisations a bar to patentability, and public use outside the US did not affect US patent applications under the old patent law.
The key takeaway for companies is that they should file their patent applications before March 16 next year, when the new law becomes effective. “The universe of prior art expands exponentially” after that date, said Smith.
The rules are not yet final and will be open for public comment and revision until October 5. Update: A USPTO spokesperson emphasised in a voicemail subsequent to filing this story that these are only proposed rules and the Office is asking for public comment to flesh out the very problems posed by hypotehticals such as the Bell scenario above. The Office also confirmed that this is one of the topics being considered for a possible technical amendment to the AIA.