I’m trying to figure out corner cases under the new America Invents Act rules. In most cases, people won’t be directly affected by the rule change, but I can see the below four scenarios coming up.
• Scenario #1: Inventor A invents and immediately discloses (by publishing in obscure journal). Inventor B invents, and files a patent application, but does not disclose. Inventor A files a patent application, after Inventor B. Who if anyone gets a patent?
• Scenario #2: If Inventor A and Inventor B both disclose at the same conference. Both then file a patent, Inventor A files before Inventor B. Who if anyone gets a patent?
• Scenario #3: Inventor A discloses X. Inventor B files a patent for X+Y. Subsequently, Inventor A files a patent for X+Y. Who, if anyone, gets a patent, on X, Y, and X+Y.
• Scenario #4: Inventor A has a non-enabling disclosure. A third party C publishes an enabling disclosure. Inventor B files a patent on the invention. Subsequently, Inventor A files a patent. (Timing is A disclosure, C publication, B filing, A filing). Who, if anyone, can get a patent?
I can’t answer all of your examples, but I think Scenario #1 is easy. A’s disclosure counts as prior art against B, so B can’t get the patent. Further, A’s disclosure gives A 12 months to file, regardless of whether there are other intervening disclosures. So I vote A gets the patent. Eric.
I think you’re right on Scenario 1.
Scenario 2, neither party gets the patent, I think.
Scenario 3, A can get a patent on X, B can get a patent on Y and X+Y.
Scenario 4, although it is not specified in the law, I think it will fall out to requiring disclosures support the invention at the same level as provisional filings do. (As someone on another blog said, disclosures are the poor man’s provisional patents.) Which would mean that in this scenario, only C can get a patent, as long as C files within one year of that enabling disclosure.
Several thanks for sharing this fine piece. Really fascinating tips! (as always, btw)