Statutory Construction and Policy Arguments for a Symmetric Approach to Promulgating Guidelines for New Section 102(B) Subparagraphs (A) and (B) - The First-to-Publish Grace Period Exceptions to Prior Art
25 Pages Posted: 5 Oct 2012 Last revised: 10 Oct 2012
Date Written: October 1, 2012
On July 27, 2012, the United States Patent and Trademark Office (USPTO) published Proposed Examination Guidelines for the new First-Inventor-To-File (FITF) provisions enacted by Section 3 of the Leahy-Smith America Invents Act (AIA). These Proposed Guidelines set out the Patent Office’s interpretation of the new FITF provisions, and are aimed at advising the public and the Examining Corps on how the changes may impact the provisions of the Manual of Patent Examining Procedure (MPEP). The most important of the new FITF provisions are the major revisions to Section 102, including New Section 102(b) that now defines the only exceptions to what otherwise will be considered prior art under New Section 102(a) — often referred to as the First-To-Publish (FTP) Grace Period Exceptions. The Proposed Examination Guidelines have added fuel to the current debate over how the new First-To-Publish Grace Period Exceptions of New Section 102(b) should be interpreted. This article presents both statutory construction and policy arguments for why the Proposed Examination Guidelines should be modified to adopt a symmetric approach to how the Office will interpret and implement the FTP Grace Period Exceptions of New Section 102(b) subparagraphs (A) — for the inventor’s own grace period prior art — and subparagraphs (B) — for the grace period prior art of third parties.
Keywords: America Invents Act, US patent law, first-to-publish, first-inventor-to-file, AIA, FITF, FTP, one year grace period
Suggested Citation: Suggested Citation