Even where the applicant is entitled to the grace period, new Rule 130 suggests the need for a declaration to establish the grace period
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The grace period under the AIA law effective March 16, 2013, is highly problematic. For example, if the applicant files on a basic invention (e.g., a “refrigerator”) and then before filing a third party publishes on an obvious variant (e.g., a “refrigerator with a light bulb”), the third party publication is not (under PTO interpretation of the statute) entitled to benefit from the grace period.
Even where the applicant is entitled to the grace period, new Rule 130 suggests the need for a declaration to establish the grace period which includes particulars as to the disclosure sought to be exempted under the grace period including the date of any such disclosure to a third party.
Under Star Fruits the PTO appears to have a right to establish Rule 130, while also under Star Fruits any requirement by the Examiner to submit evidence under Rule 130 must be met on pain of abandonment.
Rule 130 is introduced in final form in Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act (Final Rule), 78 Federal Register 11024 (February 14, 2013).
Post Grant Review Challenges to Attack Grace Period Patents: All patents granted that are based upon the new AIA grace period will be subject to an invalidity attack in Post Grant Review proceedings. For example, where the applicant has obtained allowance of the patent by a detailed Rule 130 declaration that, for example, omits critical facts, a third party will be able to challenge the patent on the basis of anticipation under 35 USC § 102 because of a defective grace period.
The attacker will have several years to gather up his evidence, retain and prepare an expert witness and otherwise get ready to attack the patent after grant. (While the deadline for filing a Post Grant Review is nine months from the grant date, there will be a considerable interval of perhaps two or so years before the grant when the file history is available for public inspection, following the 18 month publication of the application.
Applicant’s Rule 130 Affidavit to Rely on the Grace Period: The affidavit should “establish[ ] that the [pre-filing] disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor.” 37 CFR §1.130(a). If the pre-filing disclosure was a public disclosure, the affidavit should “establish[ ] that the subject matter disclosed had, before such disclosure was made or before such subject matter was effectively filed, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” 37 CFR § 1.130(b). Such an affidavit “must identify the subject matter publicly disclosed and provide the date such subject matter was publicly disclosed…..” Id.; emphasis added).
Where the disclosure was not in a printed publication, “the affidavit … must describe the subject matter with sufficient detail and particularity to determine what subject matter had been publicly disclosed on that date ….” 37 CFR § 1.130(b)(2); emphasis added.
Timing: Unless the Examiner requires an earlier filing of the Rule 130 affidavit, the affidavit must be “timely or seasonably filed to be…entitled to consideration” Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act (Final Rule), 78 Federal Register 11024 (February 14, 2013).
Challenges Against Rule 130: New Rule 130 is akin to a requirement for information. It is unlikely that a challenge to Rule 130 would be overturned by the Federal Circuit, given that a rule providing for a requirement for information was sustained in Star Fruits where “[the] court made clear that the PTO had authority by rule to require applicants to provide information to the PTO.” In re Lovin, 652 F.3d 1349,1356 (Fed. Cir. 2011)(quoting Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1284 (Fed.Cir.2005)).