Prior Art in a First-Inventor-to-File World: Novelty, Grace Periods, and What Counts Against You
By Casey Scott McKay ·
The single most expensive misunderstanding in patent practice is the belief that an inventor gets a year to file after telling people about an invention. That was never quite true and it is much less true now. This article explains what became prior art under the America Invents Act, why the grace period protects far less than its name suggests, how the on-sale and public-use bars catch companies that never published anything, and why the phrase first to file understates how completely the filing date now governs. It then turns to obviousness, which invalidates far more claims than novelty does, and explains the framework courts and examiners actually apply. It closes with the practical consequence: a filing calendar driven by business events rather than by when the lawyers are ready. The companion guide and checklist supply the response drafting and the searching.
IP and Technology > Patent Counseling Transactions | Article | Published 23 September 2025 - Updated 15 March 2026 | Casey Scott McKay - marksy.us
Summary. The single most expensive misunderstanding in patent practice is the belief that an inventor gets a year to file after telling people about an invention. That was never quite true and it is much less true now. This article explains what became prior art under the America Invents Act, why the grace period protects far less than its name suggests, how the on-sale and public-use bars catch companies that never published anything, and why the phrase first to file understates how completely the filing date now governs. It then turns to obviousness, which invalidates far more claims than novelty does, and explains the framework courts and examiners actually apply. It closes with the practical consequence: a filing calendar driven by business events rather than by when the lawyers are ready. The companion guide and checklist supply the response drafting and the searching.
Keywords: prior art, first inventor to file, America Invents Act, novelty, Section 102, obviousness, Section 103, grace period, on sale bar, public use, printed publication, effective filing date, anticipation, Graham factors, secondary considerations, prior art searching, disclosure, derivation, common ownership, patentability
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