Effective March 16, 2013, the AIA first- to-file provisions contained in 35 USC 102 retain a one year grace period for inventor disclosures. However, because some uncertainty exists as to whether the first-to-file provisions shield a pre- filing offer for sale or public use, it is recommended that a provisional be filed before commencing either of these activities. This uncertainty has sprouted from the fact that Leahy-Smith Act maintains the concept of a one-year grace period for an inventor’s pre-filing activities, but defines the grace period as limited to the applicant’s “disclosures” of the invention. Thus, some patent scholars have suggested that a secret commercialization or other “public use” or “sale” may constitute a “disclosure” under the new Act.
For those inventors choosing to file their own provisional applications using emerging technologies such as the Cislo & Thomas PatentFiler system ( http://patentfiler.com/), it is of the utmost importance that those provisional applications satisfy the enablement, written description, and best mode requirements of 35 USC 112. Doing so will ensure that the effective filing date is indeed the provisional filing date, and will protect your invention in the event of future litigation. See future Blog posts for details regarding the requirements of 35 USC 112