AIA: Redefining What is "Prior Art"
Under the America Invents Act (AIA), any evidence showing that an invention was "in public use, on sale, or otherwise available to the public" can be used as prior art, even if that evidence relates to events that take place outside the U.S. Thus, companies and inventors who publicly use or offer their inventions for sale outside the U.S. could be barred from obtaining patent protection for those inventions in the U.S., depending on the circumstances. That change in the patent law is intended to harmonizes U.S. law with the patent laws of other countries. As discussed below, the AIA make many other changes to the definition of "prior art."
The AIA also abolishes the 1-year statutory bar under 35 U.S.C. 102(b), making any prior disclosure of an invention, with few exeptions, eligible as prior art. The new law excludes the inventor’s own disclosure of his invention and any subsequent disclosures of the inventor's own invention as prior art. While that may seem to encourage early disclosure by the inventor, any public disclosure of an invention could affect an inventor's ability to obtain protection outside the U.S., since many other countries still require absolute novelty and do not grant a grace period for public disclosure, even by the inventor.
Under the AIA, it is not entirely clear whether the on-sale bar is included in the one year grace period. A colloquy on the floor of the U.S. House of Representatives during debate over the AIA indicates that Congress intended that the grace period also include "on sale" activity.
The AIA expands the prior art common ownership exception under 35 U.S.C. 103(c). Under the current law, a prior published patent application would not be eligible prior art to show a claimed invention is obvious "where the subject matter [of the published application] and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person." The new law, however, would remove any published patent application or patent as prior art if "the subject matter disclosed [in the published application or patent] and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person." Under those circumstances, the earlier published application, if co-owned, will not be prior art under both an anticipation and obviousness inquiry.
The AIA also prohibits the patenting of any tax preparation invention by deeming those inventions indistinguishable from the prior art. This provision is already effective and applies to all pending U.S. patent applications. The provision excludes, however, computer programs or systems for preparing tax. As such, it may be possible to formulate a tax preparation invention as a computer program or system to avoid the statutory prohibition.
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