Preparing for the “First Inventor to File” Transition

January 29, 2013

By: John R. Van Amsterdam

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What This Means To You

  • After March 16, 2013, if you lose the race to the Patent Office, you will likely lose the chance to patent the full scope of your invention.

  • If you file your application after March 16, the old law applies only if all claims can establish priority to an application filed before March 16.

  • After March 16, any public disclosure, anywhere in the world, can be prior art against you.

  • Certain disclosures under a joint research agreement are no longer available as prior art.

  • Best advice is to file a patent application before any public disclosure of your invention.

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The Leahy-Smith America Invents Act (AIA) represents the most significant reform to the United States patent system in nearly 50 years. Although the AIA was enacted in September 2011, only a subset of the patent law changes have taken effect so far. The most significant change is yet to come.

On March 16, 2013, the current law of “first to invent” will be replaced by the new law of “first inventor to file.” This new law will dramatically alter how patents are obtained in the U.S. Since it may be advantageous to file under the old law, it is important for businesses, other organizations, and inventors to consider their options before the switch gets pulled on March 16.

Overview of “First Inventor to File”

The change from “first to invent” to “first inventor to file” will apply to all applications filed on or after March 16, 2013, as well as applications that have a claim with an effective filing date of March 16, 2013 or later.

In a nutshell, under the new law if you are the first inventor to file, you win. The actual date of the invention no longer matters, it is more important to win the race to the U.S. Patent and Trademark Office (USPTO). If you lose the race, you will likely lose the chance to patent the full scope of your invention.

In addition to filing your patent first, as of March 16, 2013 the scope of “prior art” changes to include everything publicly known before the invention. Because the scope of what is considered prior art broadens, there are more disclosures that potentially may prevent you from obtaining patent protection.

What law applies to my application?

How do you determine which law (old or new) applies to your application? If you file your application before March 16, 2013, the old law applies. If you file your application on or after March 16, the old law applies only if all claims in the application have an effective filing date before March 16, 2013 (such as an application claiming priority to another application filed prior to March 16.)

However, if an application filed on or after March 16 includes, or is later amended to include, even one claim that is not supported by the application as filed before March 16, 2013, the whole application will come under the new law.

Finally, the new law applies to applications filed on or after March 16, 2013 that do not claim priority to an application filed before March 16.

What can be prior art?

One major difference under the new law is an expanded definition of what can serve as prior art against your invention. Under the new law, prior art includes any information that has been disclosed to the public about an invention before the filing date of the patent application (such as published articles, conference presentations, etc.). Under the old law, most prior art disclosure was limited to activity in the U.S. However, the new definition of prior art includes worldwide information “otherwise available to the public.” Basically, any public disclosure, anywhere in the world, can be prior art.

No doubt the scope of what is prior art will be clarified by future lawsuits, but it potentially could include disclosures such as conversations in a foreign language at a conference outside the U.S. Furthermore, any U.S. patent application will become prior art as of its earliest filing date, regardless of where or in what language the earliest application was filed. Thus, you not only will need to win the race to the USPTO, but you most likely also will need to win the race to any patent office.

Research collaborations and prior art

Under the new law, certain disclosures based on a collaboration under a joint research agreement are no longer available as prior art. Previously, minimizing prior art issues meant collaborating companies needed a written agreement in place before making an invention. Now, such collaboration agreements can be put in place after making an invention but prior to the filing of a patent application for that invention.

Grace periods for public disclosures

Under the new law, limited exceptions are provided for certain disclosures occurring one year or less before the filing date of a patent application. For example, a disclosure by the inventor, or by another who obtained the subject matter from the inventor, will not be prior art. Nor will disclosures occurring after a public disclosure by the inventor of the exact same subject matter (or by another who obtained the subject matter from the inventor) be considered prior art. However, this prior art exception may be a narrow exception that should not be relied on. For instance, only the exact disclosure may be exempt from being available as prior art, thereby limiting the scope that can be pursued in a subsequent patent application. Therefore, it becomes even more important to file a patent application before any public disclosure.

Trade secret or patent?

The balance between keeping the underlying technology of a commercial process/product as a trade secret or obtaining patent protection will shift under the new law. Under the old law, it was risky to keep inventions as trade secrets because one business could potentially patent what another business had been doing in secret for years. Under the new law, the company with a trade secret on a process/product used or manufactured in the U.S. can rely on an expanded prior-use defense if later sued for patent infringement, provided it used the trade secret in commerce for more than one year.

Conclusion

The important features of the new law are evident. In light of this changing landscape, businesses, other organizations, and inventors should begin anticipating what these changes could mean for them and developing a proactive strategy that protects their valuable IP.

The time to act is now. If you want the current law to apply to your patent applications on new inventions, you must be ready to file before March 16, 2013.