What is the Grace Period for a US Patent Priority Date?

The grace period for a US patent priority date is calculated 12 months before the effective priority date, which can be either a US or foreign priority date. Inventors have a 1-year grace period to apply for US patents, so if the publication date of the applicant's foreign patent application is less than one year old, they can still file a patent application in the US. The categories of documents and activities of the prior art are set out in AIA 35 USC. These documents and activities are used to determine if a claimed invention is new or not obvious.

The documents on which the state of the art has been rejected according to the 35 USC are patent documents only. The availability of an US patent document as a prior art of a claimed invention is measured from the effective filing date of the claimed invention, as defined in 35 USC. The AIA takes a global view of the disclosures of the prior art and does not require that an activity of public use or sale be “in this country” to be an activity of the previous art. The general category of state of the art “otherwise available to the public” is also added.

As a result, it is no longer possible to anticipate or “swear” behind certain disclosures of the prior art by demonstrating that the inventor invented the claimed object before the effective date of the disclosure of the prior technique. When reviewing applications subject to AIA 35 USC, unless situation (A), (B), (C) or (D) applies as set out below, the actual filing date of an application that entered the domestic stage in the 35th USC will be used as priority request or benefit filing date of a foreign or domestic application filed earlier in international design requests. The grace period of one year (as defined in Article 215 of MPEP in AIA 35 USC) applies to any US or foreign patent application to which the patent or application has right to benefit or priority with respect to said invention. The effective filing date of a claimed invention is determined claim by claim and not request by request.

MPEP § 2151 and MPEP § 2159 discuss provisions on applicability date of section 3 of AIA. The “effective date” of an invention claimed in a reissued patent or reissue patent application will be determined by considering that the claimed claim of the invention appeared in the patent for which reissue was requested. Prior art documents and activities that may prevent patentability are set out in AIA 35 USC. Such documents and activities include prior patenting of claimed invention, descriptions of claimed invention in printed publication, public use of claimed invention, making claimed invention available for sale, and otherwise making claimed invention available to public.

A disclosure can be cited for everything that would have reasonably been disclosed to an expert in field and public use would have to occur before actual presentation date of claimed invention to constitute prior technique under AIA 35 USC. An advance description is not required for disclosure to be considered prior technique, unless disclosure is used as basis for early rejection.

Mitchell Michniak
Mitchell Michniak

Hipster-friendly coffeeaholic. Total coffee junkie. Subtly charming pop culture specialist. Internet scholar. Certified tv aficionado.

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