Lawyers Sceptical About Move To Clarify AIA Grace Period

The Grace Period Restoration Act of 2015 was introduced in April 2015 to clarify the language outlined in the Leahy-Smith America Invents Act (AIA) regarding the one-year grace period for which an inventor who discloses an invention to the public can decide whether to file a patent application for the invention. The new bill clarifies that inventors and third parties who obtain information (directly or indirectly) from the inventors may be covered by the grace period, as long as the public disclosure satisfies the enablement requirement outlined in Section 112(a). However, rights-holders have expressed concerns with this interpretation, which has caused skepticism among some lawyers, leading them to advise their clients against making pre-filing disclosures. Managing Intellectual Property reached to Finnegan partner Eric P. Raciti for his thoughts on the issue.

Raciti believes that is it best to simply file first and disclose later. He believes that although the enablement requirement will help clarify the boundary of the grace period, being able to prove compliance with that requirement will be cumbersome and costly. He also noted that the bill does not address the issue of disclosing your invention to third parties before filing. By educating third parties about what you are doing, it can result in the third party using the information disclosed to them to their advantage.