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Fixing The Holes – Proposed Amendment De-Bugs Grace Period

Today, a Manager’s Amendment to H.R. 1249, the “Patent Reform Bill” was circulated that exempts all disclosures made by the inventor from patent defeating activities, if they are made within one year of filing on the invention. In other words, the patent-defeating activities that the inventor can duck are when the claimed invention was “patented, described in a printed publication or otherwise disclosed to the public before the effective filing date.” As noted by Hal Wegner (see below), this wording in the bill effectively overrules Metallizing Engineering, a 2d Cir., Learned Hand opinion handed down in 1946 which barred inventors from patenting who secretly commercialized their inventions for more than a year prior to filing, since such activities are not patent-defeating acts under the new  first-to file provisions of the act.

From Hal Wegner:

Today, House Judiciary Committee Chairman Lamar Smith circulated a Manager’s Amendment to the America Invents Act, Smith, H.R. 1249, which is designed, inter alia, to maintain the grace period versus the patent applicant’s pre-filing commercialization of the invention.

Congratulations to the Chairman for his prompt recognition of an otherwise serious glitch in the legislation and his immediate corrective action.

Restoration of the grace period is accomplished by eliminating “public use” and “on sale” activities as prior art and instead focusing patent-defeating activity to situations where “the claimed invention was patented, described in a printed publication, or otherwise disclosed to public before the effective filing date of the claimed invention ***”.  The grace period embraces all such activities as it exempts “[a]  disclosure to the public made 1 year or less before the effective filing date of a claimed invention … if …the disclosure was made by the inventor….”

Overruling 65 Years of Case Law:  The legislation, if enacted into law, will overrule the holding in Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts, 153 F.2d 516 (2d Cir. 1946)(L. Hand, J.), a leading case quoted or cited with approval in Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 68 (1998);  Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 484 n.13 (1974); and Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141,149 (1989).

The pdf version of this note includes a detailed analysis of the Manager’s Amendment (p. 2), the new relevant text (p. 3) and a version of the text showing additions and deletions vis a vis the original bill (p. 4).



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