So it finally happened, on September 16, 2011, President Obama signed the H.R. 1249: Leahy-Smith Patent Reform Act into law. As previously stated, this bill is expected to “cut the red tape that stops too many inventors and entrepreneurs from quickly turning new ideas into thriving businesses” (President Obama; August 2, 2011).
At McElroy, prior art translation requests come from a significant number of customers, hence changes affecting the definitions of prior art have caught my attention.
In a blog from PATENTLYO, Jeffrey Lefstin Ph.D. (Professor of Law at the University of California Hastings College of the Law) opens with: “Under Leahy-Smith, inventor disclosures made less than one year before filing are themselves not prior art. But these disclosures play two entirely new roles in the Leahy-Smith scheme. New § 102(b)(2) provides that a disclosure is not prior art if the “subject matter disclosed” had previously been “publicly disclosed” by an inventor (or one who derived it from an inventor). And inventor disclosure precludes the defense of prior commercial use if that use commences less than one year before the inventor's disclosure.”
My biggest takeaway regarding inventor disclosures in § 102(b) is what is not defined. Do inventor disclosures under § 102(b) share common boundaries with the events that defeat patentability under § 102(a)? And, as Lefstin asks, what is the preclusive scope of a disclosure under § 102(b)? When an inventor publicly discloses a formula, does that disclosure preclude a third party’s disclosure of a slightly varied version of the formula (as explained in Lefstin’s gasoline/ethanol example)?
We will have to wait to see how the courts approach the scope of preclusive disclosure. Lefstin outlines two basic approaches: “a claim-focused approach that is easier to administer and more generous to inventors, but seems less grounded in the statutory text; and a subject matter-focused approach, that is more supportable by the statutory text, but potentially less favorable to inventors and much more difficult to administer.”
I’m placing my money on the claim-focused approach. Weren’t we trying to skirt the red tape? Check out Lefstin’s article on Preclusive Inventor Disclosure Under Leahy-Smith and decide for yourself.