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Bill seeks to clarify AIA grace period

Peter Leung, Washington DC

A bill introduced last week in the House seeks to amend changes to the grace period brought around by the America Invents Act (AIA)

According to bill sponsors Representatives James Sensenbrenner and John Conyers, HR 1791 is intended to correct an unintended flaw introduced by the AIA to how grace periods are handled. Furthermore, the Grace Period Restoration Act of 2015 seeks to correct the regulatory reading of the AIA’s grace period provisions, which according to the bill “does not comport with the intent of the sponsors of that Act”.

Third party problems

One of the key issues stems from the language in Section 102(b), which covers third party disclosures. Though 102(b)(1)(B) appeared to treat third party disclosures made after the inventor’s disclosure as falling within the grace period, the USPTO has interpreted the grace period to only cover a third party disclosure of the same subject matter. If an inventor makes a public disclosure of the invention within the one-year grace period and a third party makes a disclosure also within that grace period of that invention plus additional elements, then that third party disclosure would count as prior art to the patent application.

The new bill seeks to address this issue. Among other things, it clarifies the definition of a “covered person” for the grace period and also seeks to remove ambiguities concerning the scope of the grace period.

Senators Tammy Baldwin and David Vitter are expected to introduce the Senate version shortly.


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