H.R. 1249 Voted Out Of Committee: No Grace Period For You!

You may well be tired of hearing about the contending amendments, but I must note that the House version of the America Invents Act was voted out of Committee after being amended to reinstate the section of 102 that limits the exceptions for inventor activity within one year of filing to publications and disclosures, while not including the inventor’s “public use” or “on sale” activity in the grace period. The upshot is that the bill that will reach the House floor for a vote is identical in this section as it appears in S. 23, which the Senate passed. Amendments can still be made before the House votes, but the odds of having a broadly protective grace period are getting long. As Hal Wegner has repeatedly noted and Matt Osenga have pointed out in his useful note, “(Lack of) Grace Period in America Invents Act”, 102(b) currently provides that public use or sale (by anyone) is only a problem if it takes place more than one year prior to the date of application for the patent. Under the amended bill, an inventor’s (or anyone else’s) offer for sale one day prior to filing a patent application would be a bar to obtaining a patent (even if the inventor had made an “excepted disclosure” 363 days earlier).  This is getting as hard to follow as a double-jointed rattle snake, but it may be as dangerous to early-stage developers. At least there is some rattling going on.