The controversy over whether an obvious modification of an invention published by a third party during the grace period is prior art is well known both from the analysis of Robert A. Armitage as well as the Patent Office interpretation of the Leahy Smith America Invents Act.

“State of the Art” is not Saved by the Grace Period:  But, there is yet another problem with the grace period: The “state of the art” to determine whether an invention is “obvious” under 35 USC § 103 is established as of the filing date (and not the invention date): On an a case by case basis this may destroy the value of the grace period.

Whither the Federal Circuit:  Until the Federal Circuit resolves issues surrounding the grace period under the Leahy Smith America Invents Act the safer filing strategy is to never prospectively rely upon the grace period.

Attached is an excerpt from the writer’s monograph explaining the situation, First To File Patent Drafting: A Practitioner’s Guide, § 2[a][6][C], State of the Art as of the Filing Date (pp. 108-113).