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[temple]

Hi all, I was wondering if someone could clarify the US guidelines for the grace period, particularly as they apply to obviousness rejections? Does the grace period cover all prior art available one year before filing, even if the prior art is from someone other than the applicant? Presumably, I should be looking at 35 U.S.C. 102?

I am asking because I found some sources that indicate that the US grace period covers all art, irrespective of author. I'm in Canada, and grace period here only applies to disclosure by the applicants, so any clarification of the US system would be greatly appreciated.

Thanks in advance!

Temple

[NJ Patent1]

Temple: Sorry for late response.  We’ve had all sorts of spam problems.

Thechnically, the term grace period is usually used in connection with applicant’s own activities.  But if a reference is available only under 102(a) - i.e not available more than one year before the filing date - then, regardless of the “author” of the publication, it could be “sworn behind”.  Is that UR question? 

[temple]

Hi NJ Patent1, yes, thanks. Just to clarify my specific situation, I have found a scientific paper that was published 6 months before the filing date of the patent I am looking at. This paper was published by authors other than the inventors on the patent. This paper is definitely useful for forming an obviousness argument, but you are saying that the inventors would be protected by the grace period?

Thanks again,

Temple 

[Oh, Crud]

I have found a scientific paper that was published 6 months before the filing date of the patent I am looking at. This paper was published by authors other than the inventors on the patent. This paper is definitely useful for forming an obviousness argument, but you are saying that the inventors would be protected by the grace period?

There is no "grace period" available in this case.  As mentioned by NJP1, a grace period can apply to acts of the inventors.  For example, they disclose their invention at a trade show, and prior to 1 year therefrom can file for U.S. patent.  Their own prior disclosure then can not be used against them as prior art.

Here, you have a disclosure by another which published before your patent filing.  It can be used either to destroy novelty or to show obviousness, because it counts as a 102(a) prior art disclosure.

What is possible here, though, depending on the facts, is to "swear behind" the reference.  If I can show I invented something prior to the other person's publication, and file my US application less than 1 year after that publication, then by an affidavit showing the facts I can make the publication no longer available to the USPTO as prior art.