Priority and Novelty under the AIA

19 Pages Posted: 16 Aug 2012 Last revised: 12 Mar 2013

See all articles by Robert P. Merges

Robert P. Merges

University of California, Berkeley - School of Law

Date Written: September 25, 2012


The Leahy-Smith America Invents Act of 2011, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) radically transforms some of the most basic rules in the U.S. patent system. For many inventors and patent owners the most important changes center on priority and novelty. Practitioners working under the new rules will need to understand three basic issues to be most helpful to their clients. These are: (1) the critical date for most purposes is now the date that a patent application is first filed; (2) the prior art relevant to a given patent claim now consists of all references available under the statute prior to the filing date; and (3) priority contests between rival claimants to an invention will now be determined almost exclusively by looking to when each of the rivals filed their patent application. The discussion that follows elaborates a bit on these basic principles, and describes in general terms how they compare to the basic operating rules that pertain to the old, 1952 Act, system of priority and novelty.

I begin with a brief explanation of the overall structure of the AIA’s novelty provisions. I then consider the related yet distinct concepts of novelty and priority, and explain how the AIA changes the basic parameters of both these fundamental issues. I pay particular attention to two new statutory issues -- the definition of “disclosure” and the creation of a “grace period” within which inventors can file a patent application. I explain a number of detailed aspects of the new rules, including: (1) why “disclosure” should be read as a general reference to all prior art references; (2) why this means that existing case law under the 1952 on public use and on sale activities continues in effect under the AIA (i.e., why the AIA does not overrule cases such as Metallizing Engineering); and (3) how to interpret the phrase “publicly disclosed” in the grace period part of the new statute, as distinct from “disclosure” generally. I conclude with some observations, sparked by the AIA, on continuity and change in the patent system.

Suggested Citation

Merges, Robert P., Priority and Novelty under the AIA (September 25, 2012). UC Berkeley Public Law Research Paper No. 2130209, Available at SSRN: or

Robert P. Merges (Contact Author)

University of California, Berkeley - School of Law ( email )

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