US Patent Law 102: Everything You Need To Know

US Patent Law 102 covers the guidelines about what types of inventions can be patented and what novelty (newness) means in the context of intellectual property.3 min read

The America Invents Act (AIA)

This change to the U.S. patent laws took effect in March 2013. With the passage of the AIA, the nation moved to a first to file patent system from the previous first to invent system. This requires inventors to file their patent application before or immediately after disclosing their invention or risk losing the patent to someone else who files first. Inventors should note that:

• A patent cannot be obtained if the invention was already described in a patent application in the U.S. or another nation.
• A patent cannot be obtained if the invention has previously been described in a national or international print publication.
• A patent cannot be obtained if the invention is already public knowledge in the U.S., even if it has not been described in print or in a patent application.
• A patent cannot be obtained if the invention was described in an internationally issued patent more than 12 months before the U.S. patent application was filed.
• A patent cannot be obtained if the invention was used or sold in the U.S. more than 12 months before a patent application is filed.

First To File

When considering the American first to file system, it's important to understand that the term first to file is used differently in other countries. With true first to file, a patent application will not be approved unless the invention in question is completely novel, meaning it has never been described, used, or sold publicly.

However, the U.S. first to file system does allow some exceptions to this rule. If the disclosure in question occurs no more than 12 months before the patent application is filed, the invention may still be considered novel and the disclosure is not reviewed as part of prior art. However, this is not the case if the disclosure was made by a third party rather than by the inventor.

The inventor does still have a personal grace period. If a disclosure is made and another inventor discloses an invention that adds an element to the first invention, this new piece will be considered prior art and can be used against the first inventor during his or her patent review process.

Given this information, inventors should not rely on the grace period when determining when to file a patent application. That's because there is no way to control for the possibility of independent third-party disclosure of similar prior art, which would render your patent application invalid. For best results, file your patent application before disclosing anything about your invention publicly if at all possible.

Text of US Patent Law 102

This text is quoted from the Cornell Law School Legal Information Institute.

(a) Novelty; Prior Art.—A person shall be entitled to a patent unless— (1) the claimed 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; or (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b)Exceptions.—

(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