How does the AIA treat an inventor’s own prior use compared to pre-AIA law?
The AIA treats an inventor’s own prior use differently from pre-AIA law. Under the AIA, an inventor’s own public use is subject to the same rules as third-party public uses, but with important exceptions. The MPEP explains:
“The public use provision of AIA 35 U.S.C. 102(a)(1) thus has the same substantive scope, with respect to uses by either the inventor or a third party, as public uses under pre-AIA 35 U.S.C. 102(b) by unrelated third parties or others under pre-AIA 35 U.S.C. 102(a).”
However, the AIA provides exceptions under 35 U.S.C. 102(b)(1) for inventor-originated disclosures within one year of the effective filing date.
In contrast, under pre-AIA law, an inventor’s own commercial use, even if secret, could create a bar to patentability:
“[A]n inventor’s own prior commercial use, albeit kept secret, may constitute a public use or sale under [pre-AIA 35 U.S.C.] 102(b), barring him from obtaining a patent.”
This change in the AIA provides more protection for inventors’ own uses and disclosures, as long as they file within the one-year grace period.
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