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USPTO’s narrow interpretation of prior art could make grace period exceptions “all but non-existent”

By David Schwartz
Published: October 3rd, 2012

According to one law firm’s analysis, the U.S. Patent & Trademark Office’s guidelines for implementing the America Invents Act would effectively erase the one-year grace period for publications that universities fought for and thought they had won.

The USPTO had assured university stakeholders that, under the new provisions of the AIA, researchers would enjoy a full-year grace period during which any prior art derived by others from the researcher’s own published could not be used to block a patent. “But it’s not that simple,” writes Dr. Paul C. Onderick, a partner at patent law firm Patterson Thuente. The big question is how similar the content of the published research must be to the more recently published prior art in order to qualify for the exception. He quotes a USPTO statement:

“…even if the only differences between the subject matter of the prior art disclosure that is relied upon under 35 USC § 102 (b)(1)(B) 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 under 35 USC § 102 (b)(1)(B) does not apply.”

Onderick argues that, if these guidelines are adopted, the exception would be made “all but non-existent,” only applying in the rare event that the inventor’s published work is identical to the others’ later prior art. The author hints that such narrow and severe interpretations of the AIA are an attempt by USPTO to elicit feedback from the academic community, but time is fast running out to comment on the rules. This Friday, October 5th is the deadline for filing comments.

Source: Patterson Thuente Christensen Pedersen. To post a comment, click here.

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