In addition to the often discussed “first-to-file” provisions of the America Invents Act (“AIA”), the expanded scope of public materials which patent examiners can now cite as “prior art” (when evaluating whether a patent should be granted on an applicant’s invention) provides some additional motivation for filing U.S. patent applications with more urgency than in the past. For instance, public disclosures made anywhere in the world prior to the effective filing date of a new U.S. patent application can now, for the most part, be considered as prior art. By way of contrast, under the “old” laws, there was a one year grace period in which third party publications could potentially be exempt from citation if published no more than one year before the application filing date.
One exception to the broadened scope of prior art under the AIA is the “new” one year grace period which exempts only those public disclosures that are made by the applicant. While the one year grace period for the inventor’s own public disclosure might seem encouraging — in that it can provide some recourse for inventors who unwittingly publicize their invention before seeking patent protection — it could potentially provide a false sense of security for some. For example, some U.S. based inventors might publicize their invention before filing a patent application, mistakenly relying on the U.S. grace period alone. In some cases, that approach could ruin the possibility of certain foreign protection because many other countries follow the doctrine of “absolute novelty” which bars patent eligibility for inventions that are made public before an appropriate patent application is filed. As such, the stricter rules of other countries should at least be considered by U.S. applicants if foreign protection is a possibility.
Accordingly, these additional “prior art” considerations tend to provide inventors with further incentive to file for patent protection as soon as practicable. Also, due in part to these new timing concerns, inventors will probably be more likely to file U.S. provisional patent applications as an initial step (since they can usually be prepared relatively quickly), provided that the disclosure of such filings is reasonably expected to support patentable claims of ensuing non-provisional patent applications.